Expert Analysis

• UK Supreme Court Clarifies Scope Of EU Design Protection

  

  The U.K. Supreme Court's reasoning in a dispute involving children’s suitcase manufacturers raises important points for those filing community registered design right applications in Europe, says Dafydd Bevan of Marks & Clerk.

• A New Dawn For European Patents

  

  The creation of a new European Unified Patent Court and a new patent with unitary effect — expected to come into force next year — is the most important change in the European patent system since the European Patent Convention came into effect in October 1977. It will fundamentally change the international patent litigation landscape, say attorneys with Jones Day.

• A Successful Follow-On Inter Partes Review Petition

  

  The Patent Trial and Appeal Board's recent decision in World Bottling Cap shows that a second petition for inter partes review will be considered by the PTAB when the facts and additional prior art warrant, says Ted Baroody of Carstens & Cahoon LLP.

• Get Ready For EU Unified Patent Court And Unitary Patent

  

  Big change is coming to European patent litigation — as early as January 2017, a new single Unified Patent Court will commence operation. The time for U.S. companies with European patents to start planning and preparing is now, say Ron Lopez and Jennifer Hayes of Nixon Peabody LLP.

• Effective IP Enforcement Is Taking Shape In China

  

  As the Chinese economy grows and becomes more intertwined with other world economies, non-Chinese intellectual property rights holders in the energy sector must understand new enforcement mechanisms under the National Intellectual Property Rights Strategy Action Plan to maintain a competitive IP strategy, say Brad Chin and Kevin Tamm of Bracewell & Giuliani LLP.

• Privacy, Security, Risk: What You Missed At IAPP Conference

  

  A few weeks ago, privacy and security professionals from around the globe gathered for the second joint conference between the International Association of Privacy Professionals and the Cloud Security Alliance Congress. Aravind Swaminathan, Antony Kim and Emily Tabatabai of Orrick Herrington & Sutcliffe LLP offer seven key takeaways.

• Approach To '2nd Medical Use' Claims Varies Across EU

  

  A number of recent court decisions have highlighted important gaps and a lack of consensus between key EU member states on the law regarding infringement of second medical use patents. The rulings also demonstrate how differences in the drug dispensing and reimbursement systems between different EU countries can influence the nature of the relief available, say attorneys with Jones Day.

• 5 Ways University Students, Faculty Risk Forfeiting IP Rights

  

  Although academic institutions recognize the value of translating research into patents, licenses and commercial products, there remains a strong scholastic motivation for faculty and students to publish their research findings in journals and at academic conferences to advance their reputation and career. As a result, intellectual property is often an afterthought, say attorneys with Meunier Carlin & Curfman LLC.

• EPO Set To Clarify Priority And Divisional Application Problem

  

  In a recent decision, one European Patent Office Board of Appeal finally decided that the question of the possibility of poisonous priority and divisional applications should be settled once and for all. The Enlarged Board of Appeal may simply do away with poisonous applications or possibly formulate detailed criteria for the assessment of partial priority, say attorneys with CH KILGER Anwaltspartnerschaft mbB.

• EU High Court Sets Important SEP Precedent

  

  The EU high court's recent ruling in Huawei Technologies Co. Ltd. v. ZTE Corp. provided a significant amount of guidance on standard-essential patents, injunctions and abuse of dominance but addresses only some of the legal questions that SEP holders and alleged infringers face in these situations, and even the questions addressed are in part expressed in very broad terms inviting different interpretations, say Axel Gutermuth and Christopher Stothers of Arnold & Porter LLP.

• Procuring Personalized Medicine Patents In US Vs. Europe

  

  In the United States, many patent claims related to personalized medicine are being challenged based on patentable subject matter, whereas in Europe, most claims are questioned based on novelty and inventive step, says Gabriela Coman of Dickstein Shapiro LLP.

• Rival Global Views On Patent Disclosures

  

  When it comes to patent disclosure requirements, terminology varies widely across the world. But the major national patent players seem to break down into two chief opposing views on just how much support patent claims and amendments require in originally filed applications, says Stephen Keefe of Rabin & Berdo PC.

• Use Strategic Continuation Practice To Monetize IP

  

  Continuation patent applications provide a useful mechanism to raise the overall quality of patents within a given portfolio, says Michael Moore, intellectual property and deputy general counsel at Rambus Inc.

• Using Patents To Curtail Climate Change: A Proposal

  

  Last fall, 74 countries and more than 1,000 businesses signed a declaration calling on all nations to price carbon dioxide and other greenhouse gases, yet the prospects of meaningful government action are dim. We see a possible solution in our patent system — impose a flexible license fee tied to greenhouse gas emissions, say attorneys with Klarquist Sparkman LLP, Green Patent Law, Robins Kaplan LLP, Burns & Levinson LLP and Susman Godfrey LLP.

• 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.