When a Shield Becomes a Sword: Regulating Abusive Patent Litigation in the Context of Competition.

  • Jinheng Feng

Student thesis: Doctoral Thesis


A significant issue in the patent landscape in the past two decades is the explosion of patent litigation. This phenomenon reveals the functional change of patent litigation from shield to sword, meaning it is increasingly used by patent holders as a weapon to interfere with the commercial activities of alleged infringers for purposes other than ring fencing patent infringements. Bearing in mind that a patent is regarded as an exclusive right which gives the right holders some power over market price, the use of granted patents to intervene in the marketplace unavoidably raises concerns about competition. Especially, abusive patent litigation practices can lead to inefficient use of resources, distortion of market competition,negative externalities in innovation and ultimately loss of consumer welfare.

This problem is partly due to the dramatic technological change in recent decades, structural failures in patent administration and failed understanding of the legislative intent and policy function of patent law. Therefore, notwithstanding the capacity of competition law to capture some abusive patent litigation practices, primary solutions should be moulded within patent law. However, it must be borne in mind that the overall patent litigation mechanism is an important instrument for patent holders to protect their rights, and the initiation of patent litigation against an infringer is by itself ensured by patent law. Only when the intrinsic goal of the patent regime is at stake should patent holders’ practices beheld accountable. The necessary mechanism within patent law to control abusive patent litigation, therefore, shall be delicately balanced and only used in a well-defined framework,taking into account both the economic harm of abusive patent litigation and the chilling effect resulting from an over-expansive control mechanism on the patent landscape.

Following this logic, this thesis rolls out its discussion in seven chapters in the hope of finding a feasible solution to combat abusive patent litigation from within patent law.Starting from the context of patent protection in the competition-innovation-consumer welfare nexus, this thesis re-assesses the theoretical foundation of patent protection and uncovers and frames the abusive patent litigation problem from the perspective of the patent regime’s intrinsic goal. To avoid superficial discussion based on empty concepts, this thesis dives into four areas of law in four jurisdictions for reference and concludes by proposing a(dynamic) competition-oriented remedy for abusive patent litigation. The proposed test is based on the concept of abuse of economic dependence, and is supplemented by several discussed reform measures in legislative and administrative perspectives.
Date of Award11 Jun 2020
Original languageEnglish
SupervisorBrenda Marshall (Supervisor) & William Van Caenegem (Supervisor)

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