Expert Analysis

• 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.

• Patentability Of Business Methods — A Global Comparison

  

  Attempts to push for business methods to be covered by patent protection have met with varying degrees of success worldwide. A comparative analysis of the leading cases in the U.S., U.K., EU, China and Hong Kong brings clarification to this complicated and evolving area of law, say Michael Geoffrey, Steven Birt and Ian Buckley of Reed Smith LLP.

• 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.