Expert Analysis

• Aftershocks From The AIA: A Seismic Shift In Patent Law?

  

  The America Invents Act's new joinder provisions are already affecting the behavior of patent litigants. And while the AIA's most important changes have not yet taken effect, intellectual property attorneys are already strategically analyzing some of the potential future effects, say Sasha Rao and Daniel Keese of Ropes & Gray LLP.

• The Global Reach Of Stem Cell Research Patents

  

  Under current law, human embryonic stem cells, parthenogenetic stem cells, and methods of making or using such cells are patentable in the U.S., but not in the European Union. This difference may require research institutions and companies to re-examine their regulatory and commercial strategies for intellectual property on a jurisdictional basis, say attorneys with DLA Piper.

• 2 PCT Written Opinions For The Price Of 1

  

  The European Patent Office's new procedures provide certainty relating to additional examination opportunities that are available when the EPO is the International Preliminary Examining Authority, which raises several strategy questions for Patent Cooperation Treaty applicants, says Stuart Schanbacher of Condo Roccia LLP.

• Global Harmonization Of Patent Laws: A Turning Point

  

  Full international harmonization of the patent system will be the great challenge of the 21st century, but the groundwork is slowly coming together — and in the future, the year 2011 may be recognized as a key turning point, says David Makman of the Law Offices of David A. Makman.

• Life In The Fast Lane Of The Patent Prosecution Highway

  

  Prosecuting patents abroad can be an extremely expensive process, entailing the aid of a foreign patent attorney and often a translator. But the Patent Prosecution Highway is a relatively inexpensive and direct way to expedite the prosecution of foreign patent applications based on an issued corresponding U.S. patent, and vice versa, say Ralph Selitto Jr. and Eric Bleich of Greenberg Traurig LLP.

• Is Inequitable Conduct Still A Viable Defense?

  

  After the Federal Circuit's Therasense decision, the number of challenges seeking to invalidate patents based on inequitable conduct will likely decrease, as well as the amount of prior art that must be disclosed to the U.S. Patent and Trademark Office. But Therasense does not change the amount of prior art that practitioners will need to evaluate, say Angie Hankins and Iuliana Tanase of Stroock & Stroock & Lavan LLP, and Reiko Manabe of Fujifilm Corp.

• Post-Grant Review V. EPO Oppositions

  

  On the surface, post-grant review under the America Invents Act appears nearly identical to European Patent Office opposition practice, but critical differences in their conduct and effect warrant careful review of applicable law and practice, say Anthony Tridico, Wesley Derrick and Martin Hyden of Finnegan Henderson Farabow Garrett & Dunner LLP.

• The America Invents Act: Tips For The Small Inventor

  

  While there are provisions in the America Invents Act set out to benefit the small patent applicant, others are likely to cause financial strain. There are a few tips that inventors and small companies should keep in mind in order to cost-effectively maximize their patent protection, says Jeffrey Shieh of inovia.

• Navigating Between German And US Discovery Provisions

  

  By understanding German discovery provisions as well as the 28 USC 1782 case law, sophisticated litigants can efficiently maximize their discovery opportunities while taking advantage of the speedy and low-cost resolution of patent disputes provided by the German courts, say Alexander Harguth and Tamara Fraizer of Fish & Richardson PC.

• Implications Of Fed. Circ.'s Therasense Opinion

  

  The Federal Circuit’s May 25 en banc opinion in Therasense Inc. v. Becton, Dickinson and Co. has dramatically changed the judge-made law of inequitable conduct to tighten the elements of materiality and intent necessary for proving the defense, say Bruce Wexler and Jason Christiansen of Paul Hastings Janofsky & Walker LLP.

• False Patent Marking — UK Vs. US

  

  As the patent reform bill recently passed by the U.S. Senate attempts to restrain false patent marking cases by requiring claimants to show a competitive injury, it seems highly unlikely that the U.K. government will go in the opposite direction, says Rachel Mumby of Bristows.

• Approaching A Unified Patent System In The EU

  

  In early March, two decisive steps were made with regard to the European patent system. At first glance, one seems to be a step backward, while the other a step forward. At second glance, both turn out to be good news for patent holders, says Wolfgang Leip of Kaye Scholer LLP.

• Mexico Gets On The Patent Prosecution Highway

  

  The implementation of a Patent Prosecution Highway pilot program in Mexico is a positive step in the direction of accelerated international patent prosecution, though some kinks must still be worked out, say Rebecca McNeill and Nicole Kattah of Finnegan.

• 2010 In Review: Canadian Competition And Marketing

  

  Although 2010 lacked the drama of 2009 — which, among other things, witnessed major changes to Canada’s competition legislation — there were a number of highly significant developments in Canadian competition law during the year, particularly on the enforcement front, say attorneys with Fasken Martineau DuMoulin LLP.

• Microsoft, Therasense And Burdens Of Proof

  

  The "absolute plague" of inequitable conduct allegations is a by-product of the Federal Circuit’s inflexible application of the clear and convincing evidence standard to overcome the statutory presumption of patent validity. Alteration of this inflexible requirement may provide a vaccine and prove highly beneficial to the patent system, say D. Christopher Ohly and Sailesh K. Patel of Schiff Hardin LLP.