Variations exist in the IP Law of the Major Jurisdictions. Some examples are:
Variations in United States
Exhausting patent rights – Agreements that only release liability for past sales, but did not retroactively authorize such sales, did not exhaust patent rights, and does not protect downstream resellers from being sued for infringement.
Terminating litigation – A covenant not to sue may not terminate a litigation if the covenant does not extend to customers.
Joining a lawsuit involuntarily – A majority owner of company accused of contract breach and misappropriation must stay in a lawsuit because of his involvement in the relationship between the manufacturer and the distributor.
Waiving arbitration – A lawsuit seeking an injunction does not waive the right to arbitration provided by an earlier agreement.
Compelling arbitration – A Non-Compete Agreement—not including an arbitration clause— superseded an earlier signed Dispute Resolution Agreement—including an arbitration clause, so the court did not compel the parties to arbitrate their disputes.
Enjoining trademark licensees – A court enjoined a trademark licensee from selling frozen pizza outside the scope of the license agreement.
Violating protective orders – A court can sanction a party for violating the confidentiality provision of a protective order by preventing the party from engaging in licensing activities for thirty months.
Variations in Europe
Transferring a right of termination – An isolated transfer of a right to terminate a trademark agreement may be made without the licensee’s consent.
Enforcing claims of a secured party – A secured party who receives rights from an IP owner is typically limited by the security agreement to rights of transfer and exploitation but not a right of use or right to collect royalties from licensees.
Concluding a license agreement – Under the principle of consensus, a license agreement is only concluded if the subject matter of the agreement, the specific contracting parties, the price and in particular the type of license are already named in the offer or can at least be determined by interpretation.
Customer group restrictions – Supply contract clauses aiming to ensure only the marketing of unmodified original products or products equipped with the manufacturer’s own components are a restriction of customer groups in violation of antitrust law. Under antitrust law such interest of the manufacturer can only be recognized within the framework of the exclusive rights granted by intellectual property rights.
Variations in Japan
Obligation to practice the patent – While an exclusive licensee may have an implicit obligation to practice the patent in some instances, it is possible that failure to practice the patent may also result in no breach of obligations by an exclusive licensee.
Challenging a patent after concluding a patent settlement agreement – A non-dispute clause in a patent settlement agreement had a literal meaning and prevented a party from suing to invalidate the patent.
Preventing parallel imports – Despite having no statutory provisions for parallel imports, Japanese courts allow parallel imports if the trademarks are legally affixed, the Japanese and foreign trademark rights holders are legally or economically identical, and the Japanese trademark rights holder can control the quality of the imported goods.
Variations in China
Since China in particular has become an important and growing business and IP market it must be noted that as of 2019 major changes have been underway in China’s Patent Law. On January 4, 2019, the National People’s Congress in China published the Fourth Amendment to China’s Patent Law. As a whole, the proposed changes addressed a lot of the criticisms people had regarding the strength of IP protection in China. These changes, once implemented, have made China a much more patent-friendly jurisdiction, benefiting innovators worldwide.
Examples of notable changes include (1) a longer patent term for innovative drugs and design patents; (2) litigation reform such as significantly higher damage amounts and streamlined processes for suing infringers; (3) new ways of rewarding innovators for their contributions; and (4) creation of an open-licensing regime to encourage use of patents in China.
Since 2022 the Chinese Courts have been seeking to exercise jurisdiction over the adjudication of the global rates of standard-essential patents by issuing anti-suit multinational injunctions on litigations filed in other countries.