In the afternoon of July 20th, 2015, Emilio Varanini, Deputy Attorney General of California Attorney General’s Office responsible for antitrust, gives a speech titled “antitrust laws and intellectual property rights abuse” at Futian District’s center for public legal services. Sincere Qianhai’s president Mr. Chen Fang attended the speech along with Chen Huaxin, Ji Yuting, Niu Wanchun and Wei Fan, members of its intellectual property team.
Intellectual property right law protects innovation by giving right holders an exclusive right which conflicts with antitrust law’s goal of limiting exclusivity and of preserving market competitiveness. Therefore, to balance IP and antitrust remains a difficult task for the U.S., China and other countries. Mr. Emilio Varanini’s speech focuses on how the U.S. balance the conflict by examining five principles.
The first principle is the “baseball bat” rule. It means that anti-competitiveness conduct cannot be excused by saying anti-competitiveness conduct is involved. IP right’s purpose is to encourage innovation and not to promote market monopoly, exclusivity and limited competition. IP cannot shield other antitrust violations. Being a legal monopoly right, IP right is still subject to antitrust law. Microsoft’s case is an excellent example.
The second principle of “can’t take more than what the government gives you” guards against extension of property right past scope of grant. Extending the scope of right without limitation would lead to abuse of IP right, disallowed by antitrust laws. The U.S. Supreme Court reaffirmed this principle recently in its 2015 Marvel decision.
第三，不要以侵害消費者利益為代價與競爭對手達成協議以分割市場（或壟斷利潤）。如品牌藥（專利藥品）的廠商之間達成專利和解以抵制非專利藥物（質等價廉的藥品）進入相關市場，美國法院已明確該協議不能使已經到期的專利藥品所涉專利保護期延長。此外，在專利藥品與非專利藥品廠商之間達成協議的問題上的分歧，最近也有了新進展，如Actavis and In re CiproⅠ&Ⅱ案。
The third principle says one cannot use the settlement to split the market (and monopoly profits) with one’s competitor at the expense of consumers. In the event that name-brand medicine (IP medicine) producers reach an agreement among themselves in order to exclude non-IP medicine with the same property and lower price from certain market, U.S. courts have indicated that the agreement cannot extend the term of protection if the IP medicine’s IP is expired. There is a recent development on the question of an agreement between IP producers and non-IP producers in the case of Actavis and In re CiproⅠ&Ⅱ.
The fourth principle declares that IP right should not be obtained through fraudulent means. If clear evidence shows that an IP right holder obtained a patent through fraudulent means, a court can rule that the act is violating antitrust law. Mr. Emilio Varanini explains the principle with the example of Tricor. An IP-medicine that lowers blood fat, its holder attempts to acquire a new patent and regain the 20-years protection by slightly alter the form and dosage of the medicine, in order to grab mass monopoly profit and exclude similar non-IP medicine from the market.
The fifth principle: other than above-mentioned unfair practice, conditional sale is a classical abuse of IP right. In IP right licensing, licensor, by setting limiting conditions, usually sells non-IP or unnecessary technology to licensee. Microsoft, for example, sells its browser Internet Explorer along with its Windows operating system. In the lawsuit between Huawei and Qualcomm, the court find that Qualcomm, in licensing Huawei for necessary technology, sells unnecessary technology in conjunction; Qualcomm also leverages its strong position as a holder of necessary standard IP to demand Huawei to “reverse license” Qualcomm at unfair price.
The sixth principle-to establish standard and to make substantial commitment. Mr. Emilio Varanini examines the principle of disclosure, Fair， Reasonable And Non-Discriminatory, mutual-benefit with examples of Huawei v. Qualcomm and Huawei v. IDG.
在講座互動環節，曾留學香港和英國的我所智慧財產權團隊代表冀玉婷在會上用標準熟練的英文同Emilio Varanini先生就商業秘密的保護問題進行了友好交流。她提出在美國除了簽訂《競業禁止協定》外，有無更好地保護企業商業秘密的措施和方法。Emilio Varanini先生建議企業可以通過對文檔建立分級保密制度，設置高級機密的審閱權，來降低商業秘密被洩露的風險。
During interaction, Ji Yuting, who studied in Hong Kong and United Kingdom and represents Sincere Qianhai’s IP team, communicates with Emilio Varanini in standard English on the subject of commercial secret protection. She inquires if there is a better way to protect company trade secret other than signing the non-compete agreement. Emilio Varanini suggests that company should lower the risk by setting various level of security clearance for accessing documents.
陳方主任對Emilio Varanini先生的到來表示熱烈的歡迎，同時對主辦方的精心準備表示感謝。陳方主任說：前海是一個全新創新發展的區域，在該區域內新的業態、創新商業模式不斷湧現，但面臨法律監管的空白，為進一步營造良好的營商環境、鼓勵保護創新，如何對商業模式的創新進行保護？Emilio Varanini先生表示美國也面臨創新商業模式如何保護的問題，但是在美國較難對商業模式予以智慧財產權保護，除非該商業模式確有顯著的創新之處。商業模式創新往往採用商業秘密的保護方式，但對於非常超前的商業模式仍然有獲得專利保護的可能。
Mr. Chen Fang expresses warm welcome to Mr. Varanini and thanks the host for its preparation. He says, in Qianhai, being a zone for innovative development, a lot of new business model are emerging, but they have no government regulation. He asks, how should one protect the innovation of new business models? Mr. Varanini says the U.S. is also facing the problem, but in U.S. it’s difficult to protect a business model with IP right, unless the business model is significantly innovative. Business model innovation is usually better protected as a trade secret, but extremely innovative business model can still possibly be protected as an IP.
Recently, Sincere Qianhai lawyers participates in researching the drafting of the Qianhai Shenzhen Hong Kong Cooperation Zone Innovation Protection Rules and listens to advices of government offices, business associations and companies on protecting Qianhai’s innovation. Sincere Qianhai’s active role in protecting IP and its contribution to the dialogue and to protecting new business models earns the respect of Mr. Varanini and other attendees. Through this dialogue, Sincere Qianhai lawyers enrich their understanding of antitrust and abuse of IP and learn recent good practice on the subject in the U.S. Sincere Qianhai will, as always, observe Qianhai’s new business model, support the protection of new business model and capable of providing legal support for the protection of innovation.