Expert Analysis

• 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.

• Chinese Patent Litigation: Tips For US Companies

  

  The old saying is “when in Rome do as the Romans do.” Likewise, when U.S. companies conduct business in China, they must follow Chinese culture and rules. The changing landscape in China’s patent litigation can benefit both Chinese and U.S. companies. To capitalize on potential opportunities, U.S. companies must be prepared! says Lei Mei of Mei & Mark LLP.

• Prioritizing Patents For Stem Cell Inventions

  

  Even if the funding limitations are removed or lessened, the opportunities afforded by stem cell research may still not be fully realized if industries and research institutions participating in stem cell research cannot receive patent protection for their innovations, say Tina S. Patel and Jordan J. Altman of Shearman & Sterling LLP.

• Food Fight At The World IP Congress

  

  Recently, at the 41st World Congress of the Association Internationale pour la Protection de la Propriété Intellectuelle, mock trials of a single patent case — pitting pancakes against hamburgers — were held using the rules of five countries. The differing results drive home the message that selecting the right forum is critical, says Alan D. Smith of Fish & Richardson PC.

• On-The-Job Harmonization Of European Patent Law

  

  There is a growing tendency among patent judges to refer to and adopt principles of European patent law in their judgments. This gradual harmonization has increased considerably the significance of the European Patent Convention, European Patent Office rules and EPO decisions within national patent litigation, say Rutger Kleemans and András Kupecz of Freshfields Bruckhaus Deringer LLP.