Expert Analysis

• 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.

• How To Protect In-House Legal Privilege Internationally

  

  Many companies regularly communicate with in-house legal advisers all over the globe. Are these communications privileged? By answering five questions, companies and attorneys can perform a high-level, initial assessment of legal privilege protection in a multijurisdictional context, says Martje Verhoeven-de Vries Lentsch of De Brauw Blackstone Westbroek and Haynes and Boone LLP.

• Inter Partes Review's Day Has Come For Pharma IP Cases

  

  Gnosis SpA v. South Alabama Medical Science Foundation and Gnosis SpA v. Merck & Cie, among other cases, represent the tipping point for the inter partes review process, making it the default, go-to option for pharmaceutical-related patent cases, says Joseph Cwik of Husch Blackwell LLP.

• Misconceptions About The European Unitary Patent

  

  Some believe the EU's proposed unitary patent system will make obtaining European protection cheaper, but the cost of obtaining and maintaining patent protection in Europe will be higher under the unitary patent system for most users, say Ilya Kazi and Caroline Warren of Mathys & Squire LLP.

• A Framework For Drafting Global Patent Applications

  

  Putting market strength and patent strength on a sliding scale, and using strength in one area to prop up weakness in the other area, the two criteria can form a framework to help optimize globally oriented patent drafting, says Stephen Keefe of Rabin & Berdo PC.

• What To Expect From Growing AIA Patent Challenges

  

  With over 1,000 inter partes reviews and covered business method reviews already filed and post-grant review-eligible patents beginning to issue, can we expect similar growth of PGR filings? One way to anticipate what to expect is by looking to European Patent Office opposition practice, says John Stephens of Sedgwick LLP.

• Good News From The Patent Prosecution Highway

  

  It is quite clear that the U.S. Patent and Trademark Office's Patent Prosecution Highway has done a great job extending its pavement internationally. However, most if not all USPTO applicants are primarily concerned with the road conditions on the so-called highway. Based on a review of certain statistics, it appears that things are indeed speeding up on the highway, says Aslan Ettehadieh of Birch Stewart Kolasch & Birch LLP.

• Conjunction Junction: PTAB Tackles 'And/Or' In Claims

  

  The Patent Trial and Appeal Board's recent decision in Ex Parte Gross sets forth its “preferred verbiage” for alternative claim limitations. While the PTAB indicated that “and/or” is acceptable, but disfavored, a patentee should take care when following this guidance, as the courts have read such claims much more narrowly, say Clifford Ulrich and Michael Turner of Kenyon & Kenyon LLP.

• SPCs — We Wait In Vain For Clarity From Europe

  

  In Europe, patent holders can obtain compensation for regulatory delays in bringing a new medicinal product to market via the award of a supplementary protection certificate. The system was intended to be clear and easy to implement, but after more than 20 years, courts and practitioners remain unsure as to how key terms in the legislation are to be interpreted, despite three recent EU Court of Justice judgments, say Matthew Jones and Andrew Sharples of EIP.

• Why Litigants Continue To Use Anti-Suit Injunctions

  

  Recent cases reveal that courts on both sides of the Atlantic are reluctant to use anti-suit injunctions to stop arbitration. However, upon a sufficient showing, courts will be prepared to issue such injunctions to restrain foreign judicial proceedings that unreasonably threaten to undermine an arbitral agreement — even if no arbitration proceeding is under way, say attorneys with Skadden Arps Slate Meagher & Flom LLP.

• What We've Learned From The 1st Year Of 1st-To-File

  

  While the conversion to a first-inventor-to-file patent system is in a transitional stage and will leave many issues of first impression for the courts, the first year of implementation offers lessons on securing an early filing date, the risks associated with racing to the patent office, and documentation of prior inventor activities for challenging rejections and for establishing a defense for potential patent infringement, says Michael Turner of Brooks Kushman PC.

• Coming Soon: Paradigm Shift In Genetic Resources Regs

  

  It has been 20 years in the making, but a new regulatory scheme is quickly moving into force, which may impact the development of, and intellectual property rights surrounding, an array of products, including pharmaceuticals, biotech products, agricultural products, nutritionals, supplements, cosmetics, perfumes and fragrances and industrial enzymes, says Bruce Manheim of WilmerHale.

• Best Practices For Navigating Europe's New Patent Process

  

  Perhaps the most exciting development in the European Patent Office is the upcoming launch of the Unitary European Patent system. Europe has historically been a very expensive patent destination due to the need to validate in each desired country, prepare multiple sets of translations and pay annuity fees in multiple countries. For several decades, there has been discussion about a single patent that would confer protection throughout Europe, but no agreement on it has been reached until now, says Jeffrey Shieh of Inovia.

• Declaratory Judgment Act: Must Suppliers Bet The Farm?

  

  The Supreme Court in MedImmune v. Genentech established that a declaratory judgment plaintiff need not "bet the farm" or "risk treble damages" before being able to seek a declaration that its acts do not violate another’s rights. Nonetheless, a line of Federal Circuit cases indicate a trend toward requiring declaratory judgment plaintiffs to do exactly that — "bet the farm" by risking substantial investments in the manufacture or sale of a potentially accused product, say Chris Ryan and Syed Fareed of Vinson & Elkins LLP.