The Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI), or the International Association for the Protection of Intellectual Property, is a global organization dedicated to improving and harmonizing intellectual property (IP) laws worldwide.
A key objective of AIPPI’s resolutions is the harmonization of IP laws, ensuring consistency across jurisdictions in how IP rights are defined, enforced, and protected.
The 2024 resolution on unjustified allegations of IP infringement, adopted during the AIPPI World Congress in Hangzhou, exemplifies this goal. It proposes a unified framework to address unjustified IP infringement allegations, promoting fair treatment for all parties while safeguarding legitimate IP rights.
Definition of Unjustified Allegations of IP Infringement
The resolution defines “unjustified allegations of IP infringement” as allegations that go beyond the legitimate exercise of IP rights. Specifically, this includes situations where an IP right holder asserts infringement without a reasonable basis, driven by bad faith, or with knowledge of invalidating or non-infringing circumstances.
Determining When Allegations are Unjustified
AIPPI emphasizes that determining if an allegation is unjustified should consider objective and subjective factors, such as:
1. Whether the allegation was made with a reasonable basis (i.e., that a reasonable person in the position of the party making the allegation would have formed the belief that there was infringement).
2. The motivation of the party who made the allegation, in particular whether the allegation was made with malicious intent or bad faith.
3. The knowledge of the party who made the allegation, in particular whether said party had knowledge of (i) validity destroying circumstances or (ii) circumstances leading to non-infringement.
Impact of Incorrect Allegations
The resolution acknowledges that not every incorrect allegation is unjustified. Even if aa allegation is later proven unfounded, it does not automatically constitute an unjustified allegation. However, at least the following should be considered as unjustified allegations of IP infringement:
1. Making an allegation of IP infringement while having actual knowledge of validity destroying circumstances;
2. Making an allegation of IP infringement while having actual knowledge of circumstances leading to non-infringement;
3. Making an allegation of IP infringement when the IP right does not in fact exist;
4. Making an allegation of IP infringement aiming to obtain an injunction against an alleged further infringement when the invoked IP right has expired.
Exceptions for Low-Likelihood Claims and Pre-Grant Allegations
AIPPI clarifies that certain scenarios should not automatically render an allegation unjustified. For instance:
1. Making an allegation of IP infringement when the party making the allegation knew or should have known that the infringement claim had a low likelihood of succeeding;
2. Making an allegation of IP infringement before the IP right has been granted provided that such communications does not assert the IP right as granted; and
3. Making an allegation of IP infringement when settlement negotiations or other dispute resolution processes are ongoing.
Liability of Parties Making Allegations
Under this resolution, any party—not just the IP holder but also non-exclusive licensee, exclusive licensee, group company, and/or other third party —may be liable for unjustified infringement allegations. However, professionals, such as attorneys, who make allegations in a professional capacity and adhere to conduct standards are exempt from personal liability.
Remedies for Unjustified Allegations
A range of remedies is outlined for parties facing unjustified allegations, including:
a. Declaratory judgment that the allegation of IP infringement is unjustified;
b. Injunction;
c. Damages;
d. Fines;
e. Punitive damages;
f. Publication of the judgment;
g. Publication of correction;
h. Removal of the allegation; and/or
i. Reimbursement of court and legal costs.
Takeaway points
AIPPI’s 2024 resolution on unjustified allegations of IP infringement offers a comprehensive framework aimed at harmonizing international IP laws to ensure fairness and consistency in handling infringement allegations. By defining what constitutes an unjustified allegation, outlining factors for assessment, and setting boundaries around liability and remedies, AIPPI addresses a critical gap in the global IP landscape. This resolution not only protects IP holders’ rights but also safeguards those who may be unjustly targeted, promoting a balanced approach to IP enforcement across jurisdictions.
