Expert Analysis

• Conjunction Junction: PTAB Tackles 'And/Or' In Claims

  

  The Patent Trial and Appeal Board's recent decision in Ex Parte Gross sets forth its “preferred verbiage” for alternative claim limitations. While the PTAB indicated that “and/or” is acceptable, but disfavored, a patentee should take care when following this guidance, as the courts have read such claims much more narrowly, say Clifford Ulrich and Michael Turner of Kenyon & Kenyon LLP.

• SPCs — We Wait In Vain For Clarity From Europe

  

  In Europe, patent holders can obtain compensation for regulatory delays in bringing a new medicinal product to market via the award of a supplementary protection certificate. The system was intended to be clear and easy to implement, but after more than 20 years, courts and practitioners remain unsure as to how key terms in the legislation are to be interpreted, despite three recent EU Court of Justice judgments, say Matthew Jones and Andrew Sharples of EIP.

• Why Litigants Continue To Use Anti-Suit Injunctions

  

  Recent cases reveal that courts on both sides of the Atlantic are reluctant to use anti-suit injunctions to stop arbitration. However, upon a sufficient showing, courts will be prepared to issue such injunctions to restrain foreign judicial proceedings that unreasonably threaten to undermine an arbitral agreement — even if no arbitration proceeding is under way, say attorneys with Skadden Arps Slate Meagher & Flom LLP.

• What We've Learned From The 1st Year Of 1st-To-File

  

  While the conversion to a first-inventor-to-file patent system is in a transitional stage and will leave many issues of first impression for the courts, the first year of implementation offers lessons on securing an early filing date, the risks associated with racing to the patent office, and documentation of prior inventor activities for challenging rejections and for establishing a defense for potential patent infringement, says Michael Turner of Brooks Kushman PC.

• Coming Soon: Paradigm Shift In Genetic Resources Regs

  

  It has been 20 years in the making, but a new regulatory scheme is quickly moving into force, which may impact the development of, and intellectual property rights surrounding, an array of products, including pharmaceuticals, biotech products, agricultural products, nutritionals, supplements, cosmetics, perfumes and fragrances and industrial enzymes, says Bruce Manheim of WilmerHale.

• Best Practices For Navigating Europe's New Patent Process

  

  Perhaps the most exciting development in the European Patent Office is the upcoming launch of the Unitary European Patent system. Europe has historically been a very expensive patent destination due to the need to validate in each desired country, prepare multiple sets of translations and pay annuity fees in multiple countries. For several decades, there has been discussion about a single patent that would confer protection throughout Europe, but no agreement on it has been reached until now, says Jeffrey Shieh of Inovia.

• Declaratory Judgment Act: Must Suppliers Bet The Farm?

  

  The Supreme Court in MedImmune v. Genentech established that a declaratory judgment plaintiff need not "bet the farm" or "risk treble damages" before being able to seek a declaration that its acts do not violate another’s rights. Nonetheless, a line of Federal Circuit cases indicate a trend toward requiring declaratory judgment plaintiffs to do exactly that — "bet the farm" by risking substantial investments in the manufacture or sale of a potentially accused product, say Chris Ryan and Syed Fareed of Vinson & Elkins LLP.

• Kim Dotcom May Be Shooting Himself In The Foot

  

  Internet tycoon Kim Dotcom has claimed that he is the patent holder of a two-step authentication method employed by social media sites such as Facebook and Google and has threatened to sue these companies if they do not agree to help alleviate his mounting legal fees resulting from his impending criminal case on unrelated grounds. Ironically, if the companies take his threats seriously, they may find that they have a strong invalidity challenge to his patent, say attorneys with Haynes and Boone LLP.

• 13 FAQs About The EU Unified Patent Court Proposal

  

  After 40 years of debate, the EU has approved a package of proposals that will create a single patent court system for most of the EU. Twenty-five of the 27 EU states have signed the unified patent court agreement, however extensive preparations are required before the UPC opens for business, say Frank Peterreins and John Pegram of Fish & Richardson PC.

• Takeaways From UK's Vestergaard Trade Secrets Case

  

  The U.K. Supreme Court's recent decision in Vestergaard Frandsen A/S v. Bestnet Europe Ltd. demonstrates a clear appreciation of the significance of intellectual property rights to the promotion of commercial enterprise and the need to balance this with the right of former employees to compete honestly with their former employers, say Akash Sachdeva and Ben Hitchens of Edwards Wildman Palmer LLP.

• Myriad Ruling Vs. Biotech Patent Eligibility In Europe

  

  After the U.S. Supreme Court's decision in Association for Molecular Pathology v. Myriad Genetics Inc., practitioners need to ensure that clients’ patent applications are drafted and prosecuted in a way that valuable claims are still obtained in the U.S. while also taking into account the nuances of European biotechnology patent law, say Thomas Haag and Christian Kilger of Fanelli Haag & Kilger PLLC.

• PPH 2.0 Offers Ways To Reduce Prosecution Time And Costs

  

  Recent changes in the Patent Prosecution Highway open up new filing strategies for U.S. inventors who want expedited examination without the costs of Track 1 prioritized examination or who want greater flexibility and lower costs when building international patent portfolios, say attorneys with Foley & Lardner LLP.

• The Patent Box — Unlocking The Potential In UK R&D

  

  The recent introduction of the U.K.'s “patent box” — an initiative to drive down corporation tax for innovative and high-tech companies in the U.K. — should be of interest to companies and multinationals with, or considering acquiring, significant U.K. research and development and other technology-focused development operations, say Arun Birla and Ross McNaughton of Paul Hastings LLP.

• Should You Use A Patent Practitioner Or Litigator For IPR?

  

  Conflicting opinions have been expressed as to whether an experienced “litigator” or an experienced “patent practitioner” is more suited to handling an inter partes review trial before the Patent Trial and Appeal Board. A patent practitioner, particularly one with considerable inter partes experience within the U.S. Patent and Trademark Office, will usually be the best choice, says Gerald M. Murphy of Birch Stewart Kolasch & Birch LLP.

• Italian Court's Google Decision: A Significant Precedent

  

  The appellate court in Milan recently published its decision overturning the conviction of three Google Inc. executives for allowing video depicting the bullying of an autistic teenager to be uploaded to the Italian Google Video website. The opinion reduces the potential burdens facing content-hosting providers and other similar Internet companies, say attorneys with Jones Day.