Expert Analysis

• 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.

• 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.