VPATAPP Alert_Newly Established "International Litigation Chamber" to Hear Patent and Other IP Cases in Foreign Languages - Korean update

https://www.lexology.com/library/detail.aspx?g=07d0168a-36d5-4c8d-9869-736ccdca8962

  

On November 24, 2017, the Korean National Assembly passed an amendment to the Court Organization Act (the "Amendment"), which will take effect in May 2018. Importantly, the Amendment establishes a new international litigation chamber (the "International Litigation Chamber") within the Korean District Courts and the Patent Court, in which IP cases may be heard entirely in English or other foreign languages, with the consent of the parties ("International Cases"). Prior to the Amendment, all cases needed to be held in the Korean language to have legal effect.

VPATAPP Alert_Practice Tips for Avoiding Terminal Disclaimers and Maintaining PTA in USA

https://www.lexology.com/library/detail.aspx?g=a25c0aac-b59d-467f-ad6c-0b2362c2d60f

The doctrine of obviousness-type double patenting (OTDP) was developed when U.S. patents had a 17-year patent term. Because that patent term ran from the patent issue date, the filing of continuation applications on obvious variants of a previously claimed invention had the potential to extend the patent monopoly for the invention. The doctrine of OTDP was originally intended to prevent this result by requiring terminal disclaimers of later, commonly owned patents that did not claim patentably distinct subject matter over the earlier issued patents. Thus, in theory at least, all commonly owned patents that relate to a single invention or its obvious variants would have a single expiration date. Because the patent term is now 20 years from the first nonprovisional filing date, later-filed continuations and divisionals will expire on the same date as a parent patent, unless a patent is awarded patent term adjustment (PTA) from United States Patent and Trademark Office (USPTO) delays. This article will discuss practice tips to avoid filing terminal disclaimers that could reduce or eliminate PTA and shorten the patent term.

VPATAPP Alert_Federal Circuit Lacks Jurisdiction to Review Patent Trial and Appeal Board Termination of Re-examination Proceedings

https://www.jdsupra.com/legalnews/federal-circuit-lacks-jurisdiction-to-34955/

In a non-precedential decision, the Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB) inter partes review decision holding that the claims of Illumina, Inc.’s U.S. Patent No. 7,955,794 (“the ’794 patent”) are not anticipated by an earlier U.S. patent publication because the publication is not prior art.  In addition, the Federal Circuit dismissed Ariosa’s appeal of the PTAB’s termination of three ex-parte reexamination proceedings directed to the ‘794 patent, stating that the Federal Circuit lacks jurisdiction to review the PTAB’s termination decision.

VPATAPP Alert_European Union: EPO Enlarged Board Decision G1/16 - Disclaimers And Added Matter

http://www.mondaq.com/uk/x/658612/Patent/EPO+Enlarged+Board+Decision+G116

The inclusion of a disclaimer, where subject matter is carved out from the scope of a patent claim by means of a negative feature is not explicitly allowed for in the European Patent Convention (EPC). In most circumstances, the subject matter of amendments to European patent applications must be derivable from the application as filed. However, Enlarged Board decision G1/03 and G2/10 allowed disclaimers in some circumstances. G1/16 confirms that the criteria for the allowability of an undisclosed disclaimer set out in G1/03 remain applicable and it is not also necessary for the subject matter of the disclaimer to be derivable from the application as filed.

VPATAPP Alert_Calif. Judge, in First-of-Its-Kind Ruling, Sets FRAND Rate on Ericsson Patent Portfolio

https://www.law.com/therecorder/sites/therecorder/2017/12/22/calif-judge-in-first-of-its-kind-ruling-sets-frand-rate-on-ericsson-patent-portfolio/?slreturn=20171123114517

In a win for Sheppard Mullin partner Stephen Korniczky, a federal judge more than halved the rates the Swedish telecom was seeking from China's TCL Communication to license patents that are essential to implementing the 2G, 3G and 4G cellular communication standards.

U.S. District Judge James Selna has concluded a mammoth trial over FRAND royalties by more than halving the rates Swedish telecom Ericsson was seeking from China’s TCL Communication, the world’s seventh largest smartphone maker.

By Scott Graham

The case is available at

http://images.law.com/contrib/content/uploads/documents/1/TCL-v.-Ericsson.Decision-part-1.pdf

http://images.law.com/contrib/content/uploads/documents/1/TCL-v.-Ericsson.Decision-part-2.pdf

http://images.law.com/contrib/content/uploads/documents/1/TCL-v.-Ericsson.Decision-part-3.pdf

VPATAPP Alert_Best method requirement continues to wreak havoc

https://www.lexology.com/library/detail.aspx?g=daa17c19-c87e-43e6-9fe5-72c2020b4175

By Davies Collison Cave

In Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2017] FCAFC 138 (“Sandvik”) the Full Federal Court recently revisited the requirement for patent applicants to disclose in their specifications the best method known to them at the filing date for performing the claimed invention. Additionally, the Australian Patent Office has considered the application of the ‘best method’ requirement in a number of recent decisions, including Smith Light Pty Ltd v Golight Pty Limited [2016] APO 37 (“Smith”); Merial New Zealand Limited v Jurox Pty Ltd [2017] APO 5 (“Merial”); and Kineta, Inc. [2017] APO 45 (“Kineta”).

VPATAPP Alert_Compulsory licensing threat in Europe requires vigilance from pharma patent owners

https://www.lexology.com/library/detail.aspx?g=5d16e08c-90af-4abd-96b1-7b5a7fa75a57

By Adam Houldsworth

VPATAPP Alert_Further steps taken towards UK ratification of the Unified Patent Court

https://www.out-law.com/en/articles/2017/december/further-steps-taken-towards-uk-ratification-of-the-unified-patent-court/

The Unified Patent Court (Immunities and Privileges) Order 2017 was approved by the House of Commons on 4 December and the House of Lords on 12 December following debates by committees in those houses on 29 November and 6 December respectively.

VPATAPP Alert_Antibody Patents Are Not Immune to § 112: Amgen Inc. v. Sanofi, Aventisub LLC

https://www.lexology.com/library/detail.aspx?g=f9103c44-7214-4bc3-b123-f81bc55576cf

By K&L Gates

In Amgen v. Sanofi, the Federal Circuit held that evidence that first came into existence after the priority date may be considered in determining whether a genus patent claim satisfies the written description requirement under 35 U.S.C. § 112. In addition, the Federal Circuit rejected the “newly characterized antigen” test as a means of satisfying the written description requirement for a claim to an antibody.

VPATAPP Alert_The Trans Pacific Partnership gets new life - minus the IP clauses

https://www.lexology.com/library/detail.aspx?g=1b5572ac-9016-4268-b0c8-78d2a9d9189b

By Watermark Patent & Trade Marks Attorneys

Alongside the recent APEC Summit in Vietnam last week, trade ministers from 11 countries, including Australia and New Zealand, announced their commitment to proceeding with the newly-named Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP). The CPTPP incorporates the Trans Pacific Partnership (TPP), but a number of draft provisions have been suspended, most notably from the chapter regarding intellectual property.

VPATAPP Alert_The Good, Bad and Ugly of Cross-Licensing Your Technology Patents

http://www.ipwatchdog.com/2017/12/15/good-bad-ugly-cross-licensing-technology-patents/id=90954/

By Shai Jalfin

When carried out wisely and strategically, everyone benefits from the cross-licensing of technology patents – the companies themselves, the industry, and consumers. It is necessary, however, for anti-trust, anti-collusion regulators, and other patent litigation bodies to keep a watchful eye on the larger and broader cross-licensing agreements to ensure that healthy competition is upheld.

VPATAPP Alert_The 2018 biosimilar litigation landscape: A primer

https://www.biopharmadive.com/news/the-2018-biosimilar-litigation-landscape-a-primer/512982/

By Michael Cottler, Joshua Whitehill, Alison Siedor

The 2010 Biologics Price Competition and Innovation Act (BPCIA), enacted as part of the Affordable Care Act, set up an abbreviated biosimilar regulatory pathway and a unique litigation framework for resolving related patent disputes. While regulatory and litigation activity for biosimilars began as a trickle — with the first patent case filed in 2014 and first Food and Drug Administration approval in 2015 — it has steadily increased each year.  Today there are nine FDA-approved biosimilars, including three on the market, and more active BPCIA litigations.  This year saw numerous new complaints about the law, five new FDA approvals, another biosimilar launch, the first U.S. Supreme Court decision concerning on the topic, the first jury trial and damages award in a biosimilar case, and other significant activity. 

VPATAPP Alert_Skilled in the Art: The Great Section 101 Attorney Fee Debate

https://www.law.com/sites/almstaff/2017/12/12/skilled-in-the-art-the-great-section-101-attorney-fee-debate/?slreturn=20171113234246

A look at the Federal Circuit's polarizing decision in Inventor Holdings. There were some differences of opinion about Federal Circuit decision in Inventor Holdings v. Bed, Bath & Beyond, which upheld a $932,000 attorney fee award in a Section 101 case.

VPATAPP Alert_The ongoing problem with standards and patents in US and Europe

https://www.lexology.com/library/detail.aspx?g=001180c7-59f6-4c39-8706-6c30b5434b2c

By DLA Piper LLP

Standards and patents

Industry standards are an important tool to ensure that consistent, compatible approaches are adopted by all participants in a particular field. For example, in industries such as electronics and telecommunications, there is a need to ensure interoperability and compatibility of products made by competing manufacturers. This improves competition between manufacturers, and increases the usefulness of products in the market.

Compliance with standards can be commercially desirable, and in some cases may be required by law. However, just because a certain technology is required by a standard, that does not mean it is free for anyone to use. A technology that is required by a standard may be the subject of a patent, or in some cases, numerous patents. A patent that is essential to the implementation of a standard is known as a standard essential patent (SEP). Where SEPs exist, complying with the standard could mean infringing someone else’s patent.

VPATAPP Alert_EPO Study Shows Rise In Patents On Next Generation Technologies

https://www.ip-watch.org/2017/12/11/epo-study-shows-rise-patents-next-generation-technologies/

The European Patent Office (EPO) announced a study that showed “European patent applications related to smart connected objects are rising rapidly, achieving a growth rate of 54% in the last three years.”

VPATAPP Alert_EU Commission to set out European approach to Standard essential patents

http://europa.eu/rapid/press-release_IP-17-4942_en.htm

Intellectual property: Protecting Europe's know-how and innovation leadership

The Commission presented measures to ensure that intellectual property rights are well protected, thereby encouraging European companies, in particular SMEs and start-ups, to invest in innovation and creativity.

VPATAPP Alert_Patentability of Natural Products in Europe

https://www.lexology.com/library/detail.aspx?g=b6be338a-f1dd-4f7b-b166-c059307970b0

There is currently a significant divergence in practice between Europe and the United States when considering the patentability of naturally-occurring products. Since the Myriad decision of the U.S. Supreme Court, the USPTO has started to reject claims directed to naturally-occurring products under 35 USC §101. In the European Patent Office (EPO), such objections do not generally arise.

VPATAPP Alert_Controversial Strategy: Selling Patents to a Native American Tribe

https://www.law.com/thelegalintelligencer/sites/thelegalintelligencer/2017/12/01/controversial-strategy-selling-patents-to-a-native-american-tribe/?slreturn=20171107231303

Restasis is patented, and those patents received significant attention last month when they were sold to a Native American tribe—as a litigation strategy. The sale created a significant backlash both in court and from the U.S. Congress.

VPATAPP Alert_Changes in Patent Language to Ensure Eligibility Under Alice

http://www.ipwatchdog.com/2017/12/06/changes-patent-language-ensure-eligibility-alice/id=90721/

By Peter Glaser & William Gvoth. 

VPATAPP Alert_Enforcing Patents in Brazil: An Injunction Paradise?

https://www.natlawreview.com/article/enforcing-patents-brazil-injunction-paradise

In a nutshell, the lower standards for obtaining injunctive relief makes the Brazilian jurisdiction a very favorable battleground to enforce patent rights in global litigation. This favorable standard represents a substantial risk for multinational companies that are often sued for patent infringement, but also an opportunity for non-practicing entities.

VPATAPP Alert_EU Competitiveness Council to review Current Status of the Unitary Patent and Unified Patent Court

https://www.lexology.com/library/detail.aspx?g=2a6c308c-772c-4de8-b776-640560f73f0c

The Council of the European Union has published a note, from the Presidency to the Council, entitled “Unitary Patent and Unified Patent Court – Information from the Presidency on the state of play”.

The note relates to the upcoming meeting of the Competitiveness Council on 30 November, and explains as follows:

“The Presidency will give an overview of the status quo concerning the operationalisation of the Unified Patent Court and the Unitary Patent. Thereafter, the floor will be opened for any further information by Member States. All Member States which have not yet ratified the UPCA and/or joined its provisional application, but are in a position to do so within a foreseeable period of time, are invited and encouraged to briefly present their state of play.”

VPATAPP Alert_Has the Patent System failed US tech companies?

http://www.ipwatchdog.com/2017/12/03/patent-system-failed-us-tech/id=90660/

By John White

Report on the recent IAM Conference (11/14/27) in D.C.

VPATAPP Alert_Alice and TRIPS Compliance

https://patentlyo.com/patent/2017/11/alice-trips-compliance.html

By Daniel H. Brean