Expert Analysis

• Opinion

  US Should Learn From German Courts Balancing SEP Rights

  

  The German high court's recent decision in Sisvel v. Haier set a productive tone in balancing the rights of patentees and implementers in standard-essential patent disputes, and its understanding of negotiation realities should be followed by the U.S., say Cravath's David Kappos, former U.S. Patent and Trademark Office director, and Daniel Etcovitch.

• Examining EPO's Strict Approach To AI Patent Disclosure

  

  Because a recent decision by the European Patent Office Boards of Appeal takes a potentially problematic strict approach to disclosure requirements for machine learning-related patent applications, U.S. applicants filing in the EU should disclose several specific data training sets, says Ronny Amirsehhi at Clifford Chance.

• ITC Dispute May Lead To PTAB Litigation Strategy Shifts

  

  A pending motion to stay the dispute between AutoStore and Ocado at the U.S. International Trade Commission highlights competing timelines of the ITC and Patent Trial and Appeal Board, and has the potential to reshape the typical forum selection strategies for patentees and defense tactics for challengers, say attorneys at Reichman Jorgensen.

• Opinion

  US Courts Should Adjudicate FRAND Rates On A Global Basis

  

  Following the U.K. Supreme Court's recent Unwired Planet v. Huawei decision, U.S. courts should analyze compliance with contracts on fair, reasonable and nondiscriminatory terms by assessing them on a worldwide basis, because global licenses are the only technically and financially sound way to license standard-essential patents, say attorneys at McKool Smith.

• UK Top Court Ruling May Be Problematic For Global SEP Suits

  

  There are several reasons to question the wisdom of the U.K. Supreme Court's recent ruling that English judges have the power to set extraterritorial licensing royalty rates for standard-essential patents, including that it encourages forum shopping, says Thomas Cotter at the University of Minnesota Law School.

• UK Ruling Shows Global SEP Enforcement Dilemma

  

  The U.K. Supreme Court's recent ruling that U.K. judges have the power to set extraterritorial licensing royalty rates for standard-essential patents highlights a problem with global patent enforcement coordination and efficiency that could potentially be solved through the Patent Cooperation Treaty, says Roya Ghafele at Oxfirst.

• Time To Reassess Your Patent Cooperation Treaty Strategy

  

  In light of the trends outlined in the World Intellectual Property Organization's recent annual Patent Cooperation Treaty review, applicants should make decisions on which international search authority to use based on immediate cost, total cost and quality, says Karam Saab at Kilpatrick.

• German FRAND Decision May Shape Global SEP Landscape

  

  The German high court's recent decision that patent owner Sisvel didn't breach its fair, reasonable and nondiscriminatory patent licensing obligations by refusing to grant Haier a license represents a shift in the standard-essential patent landscape in favor of SEP holders' enforcement freedom, say Erik Puknys and Michelle Rice at Finnegan.

• Sustainable Food Progress May Close Global Regulatory Gap

  

  As the need for sustainable food production grows, the European sector will likely align with less stringent U.S. regulatory standards, which will further enable U.S. companies to expand globally and lead to more sophisticated intellectual property strategies in all regions, say Jane Hollywood and Fiona Carter at CMS Legal.

• Cos. Should Assess IP, Contractual Protections For Their AI

  

  Companies should understand the three types of intellectual property protection for safeguarding proprietary artificial intelligence — which is crucial to fighting the pandemic — as well as tools for creating protections when statutory means fall short, say Lori Bennett at Aetion and attorneys at Mayer Brown.

• Tips For Accelerating Patent Prosecution In China

  

  In light of recent Chinese patent statistics showing at least eight to 10 months to first office action and an average of 22.7 months to final disposition from the date of filing, there are several strategies applicants may explore to speed through examination, say Aaron Wininger at Schwegman Lundberg and Lei Tan at Pujing Chemical.

• Use Of AI To Treat COVID-19 Shows Novel Inventorship Issues

  

  As technology and medical companies collaborate to deploy artificial intelligence to combat COVID-19, questions arise about how best to protect AI innovations as well as who should get credit as an inventor, say attorneys at Cadwalader.

• Israel's Generic COVID-19 Drug Licensing Lacks Due Process

  

  The Israel attorney general's special compulsory license for imported generic versions of Abbvie's patented antiviral drug Kaletra to treat COVID-19 does not provide a right of response, a hearing or direct judicial review, says Ephraim Heiliczer at Pearl Cohen.

• New US Policy On SEP Remedies Restores Critical Balance

  

  The new joint U.S. Department of Justice-U.S. Patent and Trademark Office policy on standard-essential patents, clarifying that injunctions are available in accordance with general remedies law, helps restore a power balance between technology innovators and users, and realigns U.S. patent law with other jurisdictions, say attorneys at McKool Smith.

• Vaccine IP Under Microscope With Coronavirus Outbreak

  

  The coronavirus global outbreak, which has focused attention on the role patent systems play in encouraging investment in vaccines and cures, affords an opportunity to examine the tension among patent rights, investments, governments and public health, say Gaby Longsworth and Robert Greene Sterne at Sterne Kessler.