Expert Analysis

• 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.

• Safe Haven For Sellers Of Trademarked Keywords?

  

  Trademark owners are not happy that companies such as Google can sell their trademarks to trigger competitors’ advertisements and they have fought court battles, both in the U.S. and abroad, to stop such practices. A recent opinion issued by the European Court of Justice’s Advocate General may help shed some light on the future direction of similar cases in the U.S., say Rami S. Yanni of Greenberg Glusker Fields Claman & Machtinger LLP and Jerod Partin of Litt Branch LLC.

• The European Model Of Customs Detention

  

  It is perhaps surprising that rights holders in various sectors are not making greater use of European Union customs detention, especially in relation to potentially dangerous counterfeits, as well as where technical standards make patent enforcement relatively easy, says Jeremy Morton of Fasken Martineau.

• Germany: Forum Of Choice For Patent Litigation?

  

  Used properly, German patent litigation can provide an efficient and effective counterpunch to pending U.S. patent litigation, says Alexander Harguth of Fish & Richardson PC.

• Ariad V. Eli Lilly And Written Description Requirement

  

  Although it will be several months before the Federal Circuit’s en banc decision in Ariad Pharmaceuticals Inc. v. Eli Lilly, some practical considerations can be extracted from the case that should be applied today to increase your chances of surviving any lack of written description attack in the future, say David L. De Bruin and Angela J. Kujak of Michael Best & Friedrich LLP.

• Reconsidering Re-Examination — 10 Years Of Data

  

  Recent changes in U.S. law, new commitments from the U.S. Patent and Trademark Office, and a growing amount of statistical data suggest that a viable system of patent re-examination is emerging. Under this system, an administrative challenge to a questionable patent may be an effective defense strategy — even after federal court litigation has commenced, says Thomas J. Engellenner of Nutter McClennen & Fish LLP.

• Patent Reform And The Future Of Pharma Patents

  

  The patent reform act would create a post-grant review proceeding and an “enhanced” inter partes re-examination proceeding. Both are viewed by proponents as vehicles for weeding out “bad” patents. But are these new weapons likely to be used primarily against pharma patents? ask Herbert D. Hart III of McAndrews Held & Malloy Ltd. and Malaika Durham Tyson, Ph.D.

• Analyzing The EC's Drug Sector Inquiry Report

  

  Disappointingly, the European Commission's final report on its inquiry into the pharmaceutical sector does not offer detailed guidance on the circumstances in which EC competition law may limit the ability of pharmaceutical companies to exercise their patent rights and when conduct before the regulatory authorities may be considered unlawful, say Suzanne Rab, Jean-Michel Coumes and David Cardwell of Hogan & Hartson LLP.

• The Risks Of Online Auctions, Counterfeit Goods

  

  Considering recent lawsuits against eBay, failure to have a take-down program, or failure to respond appropriately to take-down notifications, will strengthen a manufacturer’s argument that the operator knowingly allowed the sale of infringing items or willfully turned a blind eye to the infringement, say Benjamin R. Mulcahy and Lauren Grubb of Sheppard Mullin Richter & Hampton LLP.

• New Roads To Patent Allowance

  

  In light of backlogs and a significant decrease in allowance rates, the U.S. Patent and Trademark Office has implemented several programs aimed to speed up prosecution while improving patent quality. Two new programs in particular represent a real shift in USPTO policy, say Jonathan W. Dudas, Stephen B. Maebius and Shine S. Tu of Foley & Lardner LLP.