Expert Analysis

• 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.

• The UK's Fast Lane For IP Enforcement

  

  At what point will the cost, burden and intrusiveness of broad discovery, the unpredictability of a jury trial, the length and cost of U.S. litigation, and the narrowing of available relief in U.S. patent cases result in more patent lawsuits filed in Germany or the U.K., or both countries — in lieu of U.S. enforcement, rather than in addition to U.S. enforcement? If the Intellectual Property County Court in London fulfills its promise, then streamlined, predictable forums in the two most significant European markets may push patentees “across the pond” sooner than you think, says David Healey of Fish & Richardson PC.

• Stopping Improper Patenting Of Traditional Knowledge

  

  Databases like India's Traditional Knowledge Digital Library, to which the U.S. Patent and Trademark Office was recently granted access, will provide examiners with a powerful new tool for referencing traditional knowledge as prior art under Sections 102(a)-(b). Such databases may also provide new grounds for patent rejections under Section 102(f), but the evidentiary requirements seem to favor the U.S. patent applicant over the Amazonian tribesman, say Scott A. Herbst and Jeremy S. Forest of Finnegan Henderson Farabow Garrett & Dunner LLP.

• 2 Things To Learn From English Patents Court

  

  The judgment of the U.K. Court of Appeal in Schlumberger Holdings Ltd. v. Electromagnetic Geoservices AS is likely to be cited frequently for many years, at least for the clear guidance and shift in emphasis that it provides in two key areas of patent law: the identity of the skilled addressee and the importance of so-called secondary evidence of obviousness, says Brian Cordery of Bristows.

• Opening The Door For Software Patents In Europe

  

  In a recent landmark decision, the German Federal Supreme Court greatly expanded the ability of inventors to claim software inventions under German patent law. The importance of the decision cannot be overestimated: More than 60 percent of all European patent litigation takes place in Germany, says Wolfgang Leip of Kaye Scholer LLP.

• Will Inequitable Conduct Finally Be Reformed?

  

  Congress was considering inequitable conduct legislation again this year in connection with the Patent Law Reform Act of 2010, but that effort failed when Congress enacted the Patient Protection and Affordable Care Act. The Federal Circuit may instead judicially reform inequitable conduct through its en banc rehearing in Therasense Inc. v. Becton Dickinson & Co., say Bruce M. Wexler, Preston K. Ratliff II and Jason T. Christiansen of Paul Hastings Janofsky & Walker LLP.