Andrew F. Christie

A Legal Perspective

This book brings together innovative contributions on the management of intellectual property (IP) and intellectual property rights by an esteemed and multi-disciplinary group of economists, management scientists, accountants and lawyers.

Patents Associated with High-Cost Drugs in Australia

Australia, like most countries, faces high and rapidly-rising drug costs. There are longstanding concerns about pharmaceutical companies inappropriately extending their monopoly position by “evergreening” blockbuster drugs, through misuse of the patent system. There is, however, very little empirical information about this behaviour. We fill the gap by analysing all of the patents associated with 15 of the costliest drugs in Australia over the last 20 years. Specifically, we search the patent register to identify all the granted patents that cover the active pharmaceutical ingredient of the high-cost drugs. Then, we classify the patents by type, and identify their owners. We find a mean of 49 patents associated with each drug. Three-quarters of these patents are owned by companies other than the drugs originator. Surprisingly, the majority of all patents are owned by companies that do not have a record of developing top-selling drugs. Our findings show that a multitude of players seek monopoly control over innovations to blockbuster drugs. Consequently, attempts to control drug costs by mitigating misuse of the patent system are likely to miss the mark if they focus only on the patenting activities of originators.

Maximising Permissible Exceptions to Intellectual Property Rights

Much attention has been paid in recent times by academics and policy-makers to the issue of exceptions to IP rights, and in particular to the issue of the extent to which the ‘three-step test’ in international treaties restrict the ability of national legislatures to introduce new exceptions to IP rights. Unfortunately, much of the published discussion on this topic suffers from a failure to properly conceptualize the nature of exceptions to IP rights. This chapter seeks to remedy some of these failures. In particular, it seeks to provide a reasoned conceptualization of the nature of exceptions and limitations. Then, building on that conceptualization, this chapter offers an insight into how, in a practical manner, a national legislature can maximize the scope of permissible activities in respect of IP rights while remaining compliant with the three-step test.

Private international law principles for ubiquitous intellectual property infringement – a solution in search of a problem?

An empirical study of 56 cases from 19 jurisdictions dealing with a paradigmatic instance of ubiquitous infringement – cross-border online infringement of intellectual property rights (IPRs) – shows that the typical case will: involve a local plaintiff suing a foreign defendant for a foreign action causing local damage to a local IPR (being either a trademark or a copyright); neither challenge the validity of the IPR nor involve parallel proceedings elsewhere; seek the remedies of injunction and damages, to be enforced locally; resolve the issue of jurisdiction by determining whether local consumers have been targeted (in trademark cases) or can access the material (in copyright cases); and apply local law without expressly considering some other applicable law. These findings suggest that the harmonized private international law principles currently being developed for transnational IP disputes may not be necessary, as a matter of practice, in most, if not all, cases.

Online Dispute Resolution – The Phenomenon of the UDRP

Judged against its objective of providing an alternative to litigation in national courts for resolving domain name disputes, the ICANN Uniform Domain-Name Dispute-Resolution Policy (UDRP) has proved a phenomenal success. This chapter analyses the reasons for, and the consequences of that success. In particular, it explores the conceptual basis of the UDRP, to identify how a meaningful remedy can be obtained and implemented without the need to resort to a national law or a national court. It then reviews the actual utilisation of the UDRP, to identify the extent to which it provides efficient, effective and consistent outcomes. Finally, it identifies and assesses criticisms of the UDRP, to determine whether this phenomenon of online IP dispute resolution is a beneficial one.