On 12 October 2017, the European Commission published its much anticipated "Public consultation on supplementary protection certificates (SPCs) and patent research exemptions". The consultation is part of the Commission's Single Market Strategy, adopted in October 2015, in which it is looking for ways to improve the patent system in Europe, in particular for pharmaceutical and other industries whose products are subject to marketing authorisations.
Sunday, 29 October 2017
Thursday, 26 October 2017
VPATAPP Alert_German court extends comment period on UPC challenge
The German Constitutional
Court (Bundesverfassungsgericht) has extended the comment period on the
credibility of a challenge to the Unified Patent Court (UPC).
On
Friday, October 20, law firm Bristows reported that the court had extended the deadline for
comments from October 31 to December 31.
Monday, 23 October 2017
Sunday, 22 October 2017
VPATAPP Alert: #LetsTalkIP : Webinar on Unlocking Examiner Rejections: Using Forward Citations Strategically in Prosecution, Litigation and Due Diligence
http://www.ipwatchdog.com/2017/10/22/unlocking-examiner-rejections-using-forward-citations/id=89370/
Patent examiners and Art Units at the United States Patent and Trademark Office use patents and pending patent applications as references to issue 102 novelty rejections every day. Knowing when a patent or patent application you or your client owns has been used in a 102 novelty rejection for another application presents obvious strategic benefits. Until now, however, the searching required to learn this information was akin to finding a needle in a haystack.
A new tool has been created that quickly allows the searching of examiner rejections to uncover whether any patent or patent application within your portfolio has been used by an examiner against another application to support a 102 rejection. These “forward rejections” suggest that your asset must in the view of the patent examiner support the claims being sought, which provides unique strategic prosecution opportunities.
Furthermore, what if you could reasonably and cost effectively search arguments made to distinguish the patents in your portfolio used to support a 102 rejection. That corpus of data could be a potential goldmine for admissions that might provide a silver bullet argument in an inter partes review (IPR) or invalidity proceeding.
Join Gene Quinn, founder of IPWatchdog.com, on Thursday, October 26, 2017, to discuss the strategic prosecution, litigation and due diligence uses of “forward rejections.” Joining him will be patent attorney Bernard Tomsa, a partner with Brooks Kusham, to discuss the patent litigation and prosecution strategies. Also on the panel will be Kent Richardson, a business attorney and patent valuation expert who has represented LinkedIn and others, to discuss due diligence and the implication the strategies discussed could have on overall patent and portfolio value.
Friday, 13 October 2017
VPATAPP Alert: #LetsTalkIP : Free webinar on Strategies and Procedures for Effective and Streamlined Prosecution on 25th October
https://www.finnegan.com/en/insights/strategiesandproceduresforeffectiveandstreamlinedprosecution10252017.html
Not all patent applications are of equal value or have the benefit of available time. Priorities can change during prosecution, and in this fast-paced world of evolving technology and changing business needs, it is vital that patent systems keep up. Please join us for a discussion on the procedures available in Europe and the United States to control the pace and cost of prosecution. We will review the options, advantages, and risks for expediting or delaying patent prosecution, as well as the typical reasons for accelerating or slowing down examination. Topics include:
- Initiatives for Cutting Delays: Accelerated Prosecution (“Pace”), Early Certainty from Search; and Early Certainty from Opposition
- Making the Most of USPTO Initiatives: Post-Prosecution Pilot Program (“P3”); Track One Examination; and After Final Consideration Pilot 2.0
- The USPTO Examiner Count System and the USPTO Automated Interview Request (AIR) Procedure
- Proactive Prosecution of PCT Applications: PCT Direct; International Search and Examination at the EPO
- Double patenting, continuations, and other portfolio-level strategic considerations for pursuit of accelerated or delayed examination
This webinar is the third segment of Finnegan’s 2017 series, “Advanced US/EP Patent Prosecution Course: From Drafting to Grant.”
Sunday, 8 October 2017
VPATAPP Alert: #LetsTalkIP : IP Toolworks announces launch of Arguminer, patent prosecution software
A
tool allowing users to harness the insight of over 16,000 patent attorneys in
preparing responses.
Arguminer goes beyond templates and statistical predictions to leverage big data to improve the substantive content of what actually goes into responses. The breaking of knowledge siloes in the patent industry is something that has only become possible with recent USPTO initiatives to make electronic data available. CEO, Yvonne Morriss explains, “The timing was right. We have been able to utilize sophisticated search technology combined with the accessibility of on demand processing platforms to turn this data into something that can have a real impact on the prosecution process.” The tool has attracted attention both for its potential in training for younger associates, and in providing experienced attorneys with new avenues for getting around impasses with difficult examiners. Inventor William Morriss, who uses the software in his own practice writes, “I want to do the best job possible for my clients. With this software I know that I do.”
Saturday, 7 October 2017
VPATAPP Alert: #LetsTalkIP : Canada Institutes Certificates of Supplementary Protection for Approved Drug Products
On September 21, 2017, the Comprehensive Economic and
Trade Agreement (CETA) signed between the European Union (EU) and Canada
provisionally entered into force in Canada. Among other things, this
agreement seeks to harmonize laws relating to protection of intellectual
property in the EU and Canada, thereby bringing about a number of changes in
Canadian patent law, particularly with respect to laws relating to the issuance
of patents covering pharmaceutical products. One of the biggest changes
is the implementation of a Certificate of Supplementary Protection (CSP) Regime
in Canada for pharmaceutical products that have been granted regulatory
approval.
Friday, 6 October 2017
VPATAPP Alert: #LetsTalkIP : Does Australia’s innovation patent (Second tier patent system) really have to die?
https://www.lexology.com/library/detail.aspx?g=d5e61207-ad7c-45e7-8179-54e6d0d40bc6
By Shelston IP Pty Ltd
By Shelston IP Pty Ltd
Australia’s second-tier innovation patent system is presently on death row. With all appeal avenues seemingly now exhausted, we ask the question – albeit somewhat academically, as to whether it indeed has to die – or whether it could be rehabilitated.
Tuesday, 3 October 2017
VPATAPP Alert: #LetsTalkIP : The Unified Patent Court: how to litigate?
By Accura Advokatpartnerselskab
With the launch of the upcoming Unified Patent Court (UPC), a brand-new set of applicable procedural rules (UPC Rules of Procedure) will enter into force.
In various ways, the UPC Rules of Procedure are fundamentally different from the litigation procedures in many UPC Member States.
The UPC employs a so-called front-loaded procedural system meaning each party must present its entire case (including the relevant evidence) in the first written submission. This system differs from that of many European jurisdictions, including Denmark, where the parties may produce relevant evidence continuously throughout the preparatory part of the case.
In addition, the UPC procedure operates with very tight deadlines for the parties’ filing of written pleadings. The front-loaded system paired with the tight deadlines entails that the parties to a UPC litigation must be able to promptly allocate significant resources to make their full case.
Consequently, patent holders and businesses in patent dominant markets and industries are advised to have a UPC patent litigation procedure in place, both to be able to swiftly address infringements of own patents and to respond to allegations of infringements within the tight deadline(s). In short, you have to be prepared!
Monday, 2 October 2017
VPATAPP Alert: #LetsTalkIP : No Right to Discovery of Unidentified Patents During BPCIA Litigation
http://www.jdsupra.com/legalnews/no-right-to-discovery-of-unidentified-76255/
Addressing for the first time the issue of whether a sponsor has the right to obtain discovery related to infringement of non-asserted patents in a biosimilar litigation, the US Court of Appeals for the Federal Circuit concluded that there is no right to discovery not otherwise permitted by the Federal Rules of Civil Procedure. Amgen, Inc. v. Hospira, Inc., Case No. 16-2179 (Fed. Cir., Aug. 10, 2017) (Dyk, J).
Sunday, 1 October 2017
VPATAPP Alert: #LetsTalkIP : 12 ways to manage global patent costs
http://www.wipo.int/wipo_magazine/en/2017/04/article_0007.html
By Anthony de Andrade, President and CEO, and Venkatesh Viswanath, Senior Analyst, Quantify IP
1. Do your homework before deciding where to file
2. Fees vary in relation to the number of claims
3. Go green – opt for e-filing services
4. Contain your translation costs
5. Use WIPO’s Patent Cooperation Treaty to defer national filing costs
6. Choose search and examination authorities wisely
7. Take advantage of expedited processing options
8. File a request for examination when you file your application
9. Don’t forget the modified substantive examination option
10. Keep any supporting documentation in order
11. Consider licensing rights to reduce maintenance fees
12. Be open to strategic abandonment
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