Getting Your Patent House in Order: Strategic Preparation for a Financing Due Diligence
You’ve got a great product. You’ve got a great team. You’re in a great market29/03/2017
Patents
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AIA Estoppel In US District Court
The America Invents Act (“AIA”) created three post-grant patent challenges: IPR, CBMR, and PGR29/03/2017 Kenneth R (Ken) Adamo, Kirkland & Ellis, US Eugene Goryunov, Kirkland & Ellis, US
An Opportunity to Reshape U.S. Patent Venue Practice in TC Heartland LLC v. Kraft Food Brands Group LLC
Few areas of litigation showcase greater disparity between the relative burdens experienced by plaintiff and defendant than certain types of patent infringement casesThe Cost-Effectiveness of Patent Litigation in Canada
Two important considerations for a patentee deciding whether to litigate the infringement of its patents are the likelihood of success and, of course, the cost of doing so29/03/2017 Ron Dimock, DLA Piper, Canada Bentley Gaikis, DLA Piper, Canada
What might the next few years hold for Canadian pharmaceutical patent law?
An appeal to the Supreme Court of Canada on patent utility, a NAFTA investor-state dispute also on utility, and CETA provisions changing the nature of Canadian patent litigation, appeal rights and patent term extension, all weigh on the path ahead for Canada’s patent law, particularly as it applies...Refreshment of the Mexican patent system at risk if TPP dies
The existing Mexican patent legal framework was enacted in the early 1990’s mainly as response to Mexico entering into the North American Free Trade Agreement (NAFTA) and TRIPS29/03/2017 Victor Garrido, Dumont, Mexico
Appeals in English patent cases – no more special treatment
Although patent cases are often technically complex, the English Court of Appeal has held that they are no longer entitled to special treatment when it comes to permission to appealArrow declarations: the English courts devise an end-run for technology users
Today, successful products are frequently protected by a number of patents (as well, potentially, as other intellectual property) directed towards specific aspects29/03/2017 Lorna Brazell, Osborne Clarke, United Kingdom
Process patents and the partial outsourcing of individual procedural steps into patent-free foreign countries – opportunity or risk? A view from practice
In the case of cross-border situations, the question arises as to whether a patent-infringing act of use can be assumed if, in the case of a process patent, only a part of the procedural steps are carried out in the domestic patent-protected country, and other procedural steps are transferred to a...29/03/2017 Marco Stief, Maiwald, Germany Katja Bolender, Maiwald, Germany
Recent developments in German patent law: doctrine of equivalents
Making use of an embodiment disclosed but unclaimed by the patent does not constitute infringement under the doctrine of equivalents (German Federal Court of Justice (FCJ) – Okklusionsvorrichtung [occlusion device] and Diglycidverbindung [diglycidyl compounds])29/03/2017 Markus Gampp, DLA Piper, Germany Philipp Krusemarck, DLA Piper, Germany
A brewing storm in India’s patent Arena: section 4: (Inventions related to Atomic energy)
India has been in the centre of IP debate worldwide quite often and now another issue seemingly is making an entry i.e. section 4 of the Indian Patents Act, 1971 which deals with the inventions relating to Atomic Energy being not patentable29/03/2017 Archana Shanker, Anand and Anand, India Priyanka Dubey, Anand and Anand, India
Recent UPC Developments
The Unitary Patent (UP) and Unified Patents Court (UPC) have been topics of discussion within Europe for decadesUnited States: Lessons Learned from Inter Partes
Since Inter Partes Reviews (IPR) first became available in September 2012, patent challengers have filed over 2,553 petitions (as of February 28 2015). Yet, only 193 (7.5%) involve biotech- or pharma-related patents assigned to Technology Center 1600 (Life Sciences IPRs). The majority of the...
13/04/2015 James F Haley Jr, Ropes & Gray, US
Clarification of the “promise” of utility doctrine in Canada
In a decision dated October 30 2014, the Federal Court of Appeal provided some clarification on the utility requirements for patentability in Canada, and in particular the nature and application of the "promise" of utility. This doctrine has recently been extensively relied on by generic companies...
13/04/2015 Gunars A Gaikis, Smart & Biggar / Fetherstonhaugh, Canada
Updates on IP developments in South Africa
I am pleased to provide this update on IP developments in South Africa. In doing so the following key areas will be looked at briefly:
- Filing statistics
- Legislative developments
- Patent examination
- Relevant case law
Filing statistics
On the Patent front, South Africa has seen a 12% increase in...
13/04/2015 Bastiaan Koster, Von Seidels, South Africa
Simply complicated
"Making the simple complicated is commonplace; making the complicated simple, awesomely simple, that's creativity"
Charles Mingus – jazz musician and composer
When I first entered the IP profession, patent law seemed wonderfully, naïvely, simple. You met with your client, discussed their latest...
13/04/2015 Mark Kemp, Spoor & Fisher, South Africa
How National Patent Courts Could Mould the UPC
The buzz surrounding the not too distant entry into force of the Unified Patent Court (UPC) has understandably distracted attention from patent litigation in the national courts in the EU, even though they will continue, for at least seven years after establishment of the new court, to be a major...
13/04/2015 Trevor Cook, WilmerHale, US
Main procedural changes introduced by the Spanish Patents Act Draft
The Spanish Patents Act (SPA) Draft was published on November 28 2014. It aims to modernize the Spanish patent system and to adapt it to the European and international legal frameworks given that the current Patents Act dates back to 1986. The aim is for the SPA Draft to come into force on December...
13/04/2015 Jorge Grau, Grau & Angulo, Spain Laura Morales, Grau & Angulo, Spain
Recent developments in Spanish patent law
The patent legal scene in Spain has been focused lately around two subjects: the position of Spain against participating in the Unitary Patent system and the draft of a new Patent Act which is currently being discussed.
On one hand, Spain has declined to take part in the European patent system, that...
13/04/2015 Jorge Llevat, Cuatrecasas, Spain
Patent developments in Germany
The UPC is coming
In the advent of the Unitary Patent patent holders, in Germany and elsewhere in Europe, ask themselves what the future will bring. It's not the continuing uncertainty about the fee schedule, but first and foremost the question of the right choice. Some patentees have gotten so...
13/04/2015 Andreas von Falck, Hogan Lovells, Germany
The unitary patent and the unified patents court – at last?
The European Unitary Patent and Unified Patents Court (UPC) have been the Godot of European patent law for at least sixteen years (the current legislation can be traced back to the working party on an optional patent litigation protocol which was set up in June 1999 as part of the negotiations on...
13/04/2015 Rowan Freeland, Simmons & Simmons, United Kingdom
Japanese IP High Court’s Challenges
The Intellectual Property High Court of Japan established in April 2005 will have its 10th anniversary this April. The US Court of Appeals for the Federal Circuit founded in 1982 is the model for this IP specialized court. Its purpose is to provide more judicial protection for IP and to make unified...
Coming Changes in Hong Kong Patent Law
The Hong Kong Government has set a goal of transforming Hong Kong into a "world class knowledge based economy." As part of this, the Innovation and Technology Commission set up an Innovation and Technology Fund to assist local companies to introduce innovative ideas by subsidising patent...
Preliminary injunctions in China are back!
Preliminary injunctions are powerful weapons in patent infringement suits. A successful application – and sometimes even an unsuccessful application – for a preliminary injunction (PI) will often lead to an early resolution of litigation. Chinese law authorizes courts to issue PIs, either before or...
13/04/2015 Benjamin Bai, Allen & Overy, China
Patent development in Malaysia: MyIPO-JPO Patent Prosecution Highway (PPH)
A. INTRODUCTION
With effect from October 1 2014, the Intellectual Property Corporation of Malaysia (MyIPO) and the Japanese Patent Office (JPO) have commenced the Patent Prosecution Highway (PPH) pilot program for a trial period of three years. This program is an initiative between MyIPO and the JPO...
13/04/2015 Zaraihan Shaari, Shearn Delamore & Co, Malaysia Khoo Yee Mun, Shearn Delamore & Co, Malaysia
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