The European Parliament and the U.S. Biden Administration have declared that existing legal systems should be actively utilized or new legislation should be considered to regulate the act of product manufacturers preventing non-authorized vendors and consumers from repairing products. For an original equipment manufacturer (OEM), obtaining and asserting IP rights is one of the ways to prevent repair by recycling or replacing parts by anyone other than the OEM and its authorized repairers.
Printer OEMs and independent recycle/refill vendors of ink/toner cartridges have been competing for the ink/toner cartridge market which is considered the aftermarket of printers. OEMs obtain and enforce patents of cartridges so that recycling/refilling cartridges by third parties would infringe such patents. Recycle/refill vendors often argue that such patent enforcement is an abuse of dominant position in the market and/or abuse of patent right.
In this seminar, Professor Yuko Kimijima, Chair of Intellectual Property Law at Keio University, Tokyo, and Director of Keio University Global Research Institute, introduces several Japanese court cases involving patent infringement and anti-monopoly issues among printer OEMs and recycle/refill vendors. Then I will discuss possible reconsideration of IP law principles such as patent exhaustion in relation to competition laws and right to repair in demand of circular economies.
Programme of the seminar
10.00-10.10 Presentation of the Academy of Finland project Shaping, fixing and making markets via IPR: regulating sustainable innovation ecosystems (SHARE): Professor Rosa Ballardini (University of Lapland) and Professor Jukka Mähönen (University of Helsinki)
10.10-10.40 Case Study of Right to Repair and IP law: Patent Infringement Cases Concerning Refilling Printer Ink/Toner Cartridges: Professor Yuko Kimijima (Keio University)
10.40-11.00 Comments by SHARE researchers: Professor Rosa Ballardini (University of Lapland) and Dr Pratyush Upreti (Queen’s University Belfast and University of Helsinki)
11.00-11.30 Open discussion
Professor Yuko Kimijima, Ph.D. (Keio) and LL.M. (George Washington), teaches Intellectual Property (IP) Law at the Faculty of Law and Graduate School of Law, Keio University, and practices law in Japan since 1992.
Professor Kimijima’s research covers patentability and patent invalidity, inventor’s right, invention for hire, copyright, unfair competition, trade secrets, property, and civil and administrative procedure. She has participated in research projects such as standard essential patents in the era of IoT, right to repair from an IP law perspective, realization of society where cybernetic-avatars will be used safely and with trust.
Besides her academic career she managed Keio’s technology transfer as Deputy Director General of Headquarters for Research Coordination and Administration (2013-2014, 2015-2019). She has been invited as visiting professor to Technical University of Munich (2019, 2021 and 2022), and as guest professor to University of Wurzburg (2018) and to Musashino University (2020-). She was a scholarship recipient at the Max Planck Institute for IP and Competition Law and the University of Munich, Germany (1993-95) and the George Washington University Law School, Washington D.C. (2004-06), and was research associate of the University of San Diego School of Law, California (2014-15).
Recently, she has held seminars on innovation and law, patent invalidity procedure, AI and law, data sharing/ownership, standard essential patents, and burden of proof in patent infringement cases, all from a comparative law perspective.
The webinar is open to anyone. The link to the event will be published at the event page on the previous day 13 November before 18:00 EET.
Professor Jukka Mähönen jukka.mahonen(at)helsinki.fi
Research Assistant Aaro Eränen aaro.eranen(at)helsinki.fi