Expert Analysis

• 22 Ways Congress Can Save Section 101

  

  As delightful as the post-Alice patent-invalidating trend may be to patent defendants, it has created enormous consequences for companies that rely on patent protection to protect crucial technology assets, including the loss of business contracts, disrupted partnerships and increased difficulty in obtaining venture funding. It is time for Congress to act, says Robert Sachs of Fenwick & West LLP.

• Top 5 IPR Discovery Tips For Patent Owners

  

  Recent Patent Trial and Appeal Board orders shed some light on how parties can use the inter partes review discovery periods to their best advantage, says Carly Levin of Venable LLP.

• What To Know About Extending Patent Term In Southeast Asia

  

  For pharmaceutical products, the most general form of extended patent protection available in Southeast Asia is currently data exclusivity, says James Kinnaird of Marks & Clerk.

• New Guidelines Suggest A Friendlier European Patent Office

  

  While many of the changes in the latest European Patent Office guidelines reflect the current practice of the EPO’s boards of appeal, they also suggest that the first-instance departments of the EPO may be moving toward a less rigid and formalistic approach to some issues, say Philip Cupitt and Hazel Ford of Finnegan Henderson Farabow Garrett & Dunner LLP.

• Why Canada's Patent Prosecution Highway Is A Huge Success

  

  Canada's Patent Prosecution Highway program has positioned the country as a highly cost-effective jurisdiction in which to procure patent protection with exceptional speed and efficacy, says Elliott Simcoe of Smart & Biggar.

• An Update On The Status Of EU Unitary Patents

  

  There no longer appears to be much doubt that the EU Unified Patent Court Agreement will receive the minimum required ratification, however the schedule is stretching out. While implementation was initially expected in 2015, the Unified Patent Court and unitary patent now appear unlikely to be available before spring 2016, say Frank Peterreins and John Pegram of Fish & Richardson PC.

• The Most Important New Changes To Russian IP Law

  

  New amendments bring Russian intellectual property law more into line with practices in other jurisdictions and will have a positive effect on the protection and enforcement of IP rights in Russia, says Irina Stepanova of Baker Botts LLP.

• Good News For Originators Of Antibody Products

  

  In Eli Lilly and Company v. Human Genome Sciences Inc., the English Patents Court recently gave its interpretation of the EU Court of Justice’s most recent decision on supplementary protection certificates. In doing so, the court confirmed that SPCs are available based on patents with claims that define the product in functional terms only, say Andrew Sharples and Emma Muncey of EIP.

• Tips On Disclosing Embodiments In Patent Apps Overseas

  

  Getting too used to permissive rules for claim amendment support before the U.S. Patent and Trademark Office can catch up with American patent attorneys as they prosecute and enforce intellectual property rights abroad, says Stephen Keefe, an attorney with Rabin & Berdo PC and former patent examiner at the USPTO.

• How To Protect In-House Legal Privilege Internationally

  

  Many companies regularly communicate with in-house legal advisers all over the globe. Are these communications privileged? By answering five questions, companies and attorneys can perform a high-level, initial assessment of legal privilege protection in a multijurisdictional context, says Martje Verhoeven-de Vries Lentsch of De Brauw Blackstone Westbroek and Haynes and Boone LLP.

• Inter Partes Review's Day Has Come For Pharma IP Cases

  

  Gnosis SpA v. South Alabama Medical Science Foundation and Gnosis SpA v. Merck & Cie, among other cases, represent the tipping point for the inter partes review process, making it the default, go-to option for pharmaceutical-related patent cases, says Joseph Cwik of Husch Blackwell LLP.

• Misconceptions About The European Unitary Patent

  

  Some believe the EU's proposed unitary patent system will make obtaining European protection cheaper, but the cost of obtaining and maintaining patent protection in Europe will be higher under the unitary patent system for most users, say Ilya Kazi and Caroline Warren of Mathys & Squire LLP.

• A Framework For Drafting Global Patent Applications

  

  Putting market strength and patent strength on a sliding scale, and using strength in one area to prop up weakness in the other area, the two criteria can form a framework to help optimize globally oriented patent drafting, says Stephen Keefe of Rabin & Berdo PC.

• What To Expect From Growing AIA Patent Challenges

  

  With over 1,000 inter partes reviews and covered business method reviews already filed and post-grant review-eligible patents beginning to issue, can we expect similar growth of PGR filings? One way to anticipate what to expect is by looking to European Patent Office opposition practice, says John Stephens of Sedgwick LLP.

• Good News From The Patent Prosecution Highway

  

  It is quite clear that the U.S. Patent and Trademark Office's Patent Prosecution Highway has done a great job extending its pavement internationally. However, most if not all USPTO applicants are primarily concerned with the road conditions on the so-called highway. Based on a review of certain statistics, it appears that things are indeed speeding up on the highway, says Aslan Ettehadieh of Birch Stewart Kolasch & Birch LLP.