Expert Analysis

• 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.

• Kim Dotcom May Be Shooting Himself In The Foot

  

  Internet tycoon Kim Dotcom has claimed that he is the patent holder of a two-step authentication method employed by social media sites such as Facebook and Google and has threatened to sue these companies if they do not agree to help alleviate his mounting legal fees resulting from his impending criminal case on unrelated grounds. Ironically, if the companies take his threats seriously, they may find that they have a strong invalidity challenge to his patent, say attorneys with Haynes and Boone LLP.

• 13 FAQs About The EU Unified Patent Court Proposal

  

  After 40 years of debate, the EU has approved a package of proposals that will create a single patent court system for most of the EU. Twenty-five of the 27 EU states have signed the unified patent court agreement, however extensive preparations are required before the UPC opens for business, say Frank Peterreins and John Pegram of Fish & Richardson PC.

• Takeaways From UK's Vestergaard Trade Secrets Case

  

  The U.K. Supreme Court's recent decision in Vestergaard Frandsen A/S v. Bestnet Europe Ltd. demonstrates a clear appreciation of the significance of intellectual property rights to the promotion of commercial enterprise and the need to balance this with the right of former employees to compete honestly with their former employers, say Akash Sachdeva and Ben Hitchens of Edwards Wildman Palmer LLP.

• Myriad Ruling Vs. Biotech Patent Eligibility In Europe

  

  After the U.S. Supreme Court's decision in Association for Molecular Pathology v. Myriad Genetics Inc., practitioners need to ensure that clients’ patent applications are drafted and prosecuted in a way that valuable claims are still obtained in the U.S. while also taking into account the nuances of European biotechnology patent law, say Thomas Haag and Christian Kilger of Fanelli Haag & Kilger PLLC.

• PPH 2.0 Offers Ways To Reduce Prosecution Time And Costs

  

  Recent changes in the Patent Prosecution Highway open up new filing strategies for U.S. inventors who want expedited examination without the costs of Track 1 prioritized examination or who want greater flexibility and lower costs when building international patent portfolios, say attorneys with Foley & Lardner LLP.

• The Patent Box — Unlocking The Potential In UK R&D

  

  The recent introduction of the U.K.'s “patent box” — an initiative to drive down corporation tax for innovative and high-tech companies in the U.K. — should be of interest to companies and multinationals with, or considering acquiring, significant U.K. research and development and other technology-focused development operations, say Arun Birla and Ross McNaughton of Paul Hastings LLP.

• Should You Use A Patent Practitioner Or Litigator For IPR?

  

  Conflicting opinions have been expressed as to whether an experienced “litigator” or an experienced “patent practitioner” is more suited to handling an inter partes review trial before the Patent Trial and Appeal Board. A patent practitioner, particularly one with considerable inter partes experience within the U.S. Patent and Trademark Office, will usually be the best choice, says Gerald M. Murphy of Birch Stewart Kolasch & Birch LLP.

• Italian Court's Google Decision: A Significant Precedent

  

  The appellate court in Milan recently published its decision overturning the conviction of three Google Inc. executives for allowing video depicting the bullying of an autistic teenager to be uploaded to the Italian Google Video website. The opinion reduces the potential burdens facing content-hosting providers and other similar Internet companies, say attorneys with Jones Day.

• How The EU Patent Court Will Protect Against Trolls

  

  Many commentators in Europe have worried that the Unified Patent Court will support campaigns of meritless patent litigation comparable to those high-tech companies have seen in the U.S. However, a closer look at the proposed UPC agreement reveals that significant procedural and structural safeguards have been built into the court system to prevent this type of abuse, say attorneys with Ropes & Gray LLP.

• Advantages Of Registering A Unitary European Patent

  

  Any inventor can now introduce an application for a unitary European patent that guarantees a uniform protection and produces identical effects in the 25 states concerned. Since this new unitary patent system establishes a unique annual tax and does not require translations of the application into each national language, the cost of the patent will be drastically reduced, say Paul Van den Bulck and Evelina Roegiers of McGuireWoods LLP.

• Inequitable Conduct: Rethinking 'Egregious Misconduct'

  

  The Federal Circuit's decision in Outside the Box Innovations LLC v. Travel Caddy Inc., alone and collectively with the Federal Circuit's decision in Powell v. The Home Depot Inc., offers some much-needed insight as to the utility and applicability of per se material conduct. But with neither case yielding an affirmative finding of inequitable conduct, the egregious misconduct argument is the pinch hitter who has struck out twice in the batter’s box, say attorneys with Orrick Herrington & Sutcliffe LLP.

• How The EU's New Unitary Patent System Will Work

  

  After debating the single patent issue on and off for 40 years, the European Union is on track to complete approval of a package of proposals on Dec. 21, 2012, to create unitary patents for most of the EU and a unified patent court system. As a result, potentially lower cost patent protection and enforcement could be available throughout most of the EU as soon as April 2014, say Frank Peterreins and John Pegram of Fish & Richardson PC.

• A European Patent Office Tool That Deserves Another Look

  

  Well-crafted European Patent Office third-party observations can be highly valuable weapons in the battle for freedom-to-operate. In some circumstances, they can also be readily coordinated with U.S. Patent and Trademark Office submissions to challenge patent claims in both jurisdictions, say Martin Hyden and Elizabeth Doherty of Finnegan Henderson Farabow Garrett & Dunner LLP.

• A Therapy For European Patent Term Extensions

  

  In its recent ruling in Neurim Pharmaceuticals Ltd v. Comptroller-General of Patents, the European Court of Justice significantly liberalized the current practice for granting supplementary protection certificates, reducing the limitations imposed on the grant or duration of SPCs by earlier marketing authorizations for the same active pharmaceutical ingredient, say attorneys with Jones Day.