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Patent Archive


  • Microsoft to pay VirnetX $23m and dismiss IPR proceedings

    December 20, 2014

    VirnetX and Microsoft have signed an amended settlement and license agreement that amends and restates certain terms of their original settlement and settles their pending patent disputes

  • Battistelli and Kongstad respond to EPO criticisms

    December 19, 2014

    Following the recent unrest at the EPO and last week’s meeting of the Administrative Council, Managing IP asked a series of questions to the EPO President Benoît Battistelli and Chair of the Administrative Council Jesper Kongstad

  • The background to the EPO dispute

    December 19, 2014

    Staff at the EPO have been staging a series of strikes over the past month, and there have also been protests and demonstrations. Managing IP looks behind the rhetoric at what’s going on

  • China’s Guangzhou IP court is open for business

    December 19, 2014

    The Guangzhou IP court opened its doors on Tuesday and will be ready to accept cases this Sunday.

  • CJEU clarifies law on stem cells and patents

    December 18, 2014

    Europe’s highest court has clarified the law on the patenting of stem cells, confirming that an organism that cannot develop into a human being does not constitute a human embryo

  • Australia seeks public submissions on proposed IP amendments

    December 18, 2014

    IP Australia is seeking comments on the implementation of proposed changes that will bring the New Zealand and Australia patent regimes closer together

  • Kilpatrick urges USPTO to release SAWS programme statistics

    December 17, 2014

    Kilpatrick Townsend wants the USPTO to release more information about its secretive Sensitive Application Warning System programme, lawyers from the firm tell Managing IP

  • A judge’s tips for winning in court

    December 17, 2014

    Having power and strength in the courtroom is not the same as being loud and forceful, the chief magistrate judge of the Northern District of California told a group of women lawyers last week

  • Goodwin Procter hires litigator in San Francisco

    December 16, 2014

    Brett Schuman has joined Goodwin Procter as a partner in its IP litigation group in San Francisco

  • Gowlings adds a partner to Waterloo office

    December 16, 2014

    Canadian law firm Gowlings has hired Neil Henderson as partner in the intellectual property group in its Waterloo Region office

  • The future of forum shopping in Europe

    December 16, 2014

    Litigants in Europe are familiar with the concept of forum shopping in patent disputes. But, as Mark Ridgway and Annsley Merelle Ward argue, the UPC promises to offer a whole new set of possibilities

  • Five cases that shaped IP protection in 2014

    December 16, 2014

    Our five cases of the year come from Australia, Germany, India, South Africa and the United States and span patent, trade mark, copyright and design law. In the following pages, we speak to those close to the action of each case and assess their impact so far

  • In-house counsel on the need for more patent reform

    December 15, 2014

    In-house lawyers disagreed last week about the need for more reform of patent laws to tackle litigation from so-called patent trolls

  • India’s Supreme Court declines to hear compulsory licence appeal

    December 15, 2014

    India’s first compulsory licence has survived its latest and likely final court challenge

  • Big win for brand-name pharma companies in PTAB final decision

    December 13, 2014

    In a PTAB decision that brand-name pharmaceutical companies will celebrate, generic drug company Amneal has failed in its attempt to have three patents owned by Galderma cancelled – the first final written decision to involve an Orange Book-listed patent

  • What motivates universities in tech transfer deals?

    December 12, 2014

    As companies and policy makers increasingly tout the importance of technology transfer and cooperation between industry and academia, one university technology transfer officer reminds would-be partners to be mindful of some of the unique considerations of universities

  • India court hands down another SEP-based injunction

    December 12, 2014

    Ericsson has secured another injunction in the Delhi High Court based on its standards essential patents

  • LG and Apple have a busy day at the PTAB

    December 11, 2014

    Electronics companies LG and Apple went on the offensive at the PTAB on December 10, filing 22 IPR petitions between them

  • EFF’s Defensive Patent License launches with 23 patents

    December 11, 2014

    The Electronic Frontier Foundation has officially launched its alternative licensing scheme, which it hopes will allow patent owners and developers to benefit from openly sharing their portfolios

  • Digging deeper into NPE patent litigation trends

    December 11, 2014

    It is clear that patent litigation has fallen recently. Managing IP conducted in-depth data analysis to look beyond the headline figures to assess how non-practicing entities are being affected, and which companies have reduced their activity the most

  • Analysis: Software patent lawsuits plummet after Alice

    December 11, 2014

    The number of software patent lawsuits filed was down 42% in the period from July 1 to October 31 compared with the same period in 2013. This contrasts with a 28% drop in all patent lawsuits during that period

  • How to properly value your intellectual property

    December 11, 2014

    Michael Nixon, Cheah Yew Kuin and Chew Kherk Ying explain the IP valuation process and how governments in Southeast Asia are looking to provide IP owners opportunities to use their intellectual property to finance growth

  • Compensation for IP infringement in Ukraine

    December 11, 2014

    Under current Ukrainian IP legislation the mechanism of compensation applies only in cases of copyright infringement. Is this remedy also appropriate for other IP rights?

  • Sandoz decision will encourage biosimilar PTAB proceedings

    December 10, 2014

    The Federal Circuit’s decision in Sandoz v Amgen will lead to biosimilar companies looking to use PTAB proceedings more to invalidate drug patents, because it is now harder for them to bring district court actions before filing biosimilar applications

  • Alice six months on: Patent prosecution caught in two minds

    December 10, 2014

    With new USPTO guidance on Alice v CLS impending, companies applying for patents have been caught between waiting to file to take the guidance into account and making sure they are first to file. Alan Wright assesses how prosecution has been affected since Alice

  • Lee will not be confirmed before next Congress

    December 10, 2014

    Michelle Lee provided details on the USPTO’s guidance on eligible subject matter in light of Alice at a Senate confirmation hearing, but Senator Grassley indicated that members of the next Congress should be given the chance to ask questions before she can be confirmed

  • Is the EPO in crisis?

    December 09, 2014

    The EPO’s Administrative Council meets in Munich this week against a backdrop of strikes, protests and public letters criticising the Office

  • Biosimilars – Blood on the patent dance floor

    December 09, 2014

    With the Federal Circuit last week issuing an important decision involving biosimilars in Sandoz v Amgen, Marion Webb reports on the issues at play in the coming patent war between biosimilar and innovative companies

  • Chinese companies may not have home-court advantage

    December 09, 2014

    A new report suggests that foreign plaintiffs in IP cases are winning at higher rates in Chinese courts than Chinese rights holders, notwithstanding long-standing concerns about bias in favour of domestic enterprises

  • Jones Day hires IP partner in Japan

    December 09, 2014

    Shogo Asaji has joined Jones Day’s Tokyo office as a partner

  • PTAB petitions down in November, but third PGR filed

    December 08, 2014

    The number of petitions for inter partes review and covered business method review at the Patent Trial and Appeal Board both fell in November compared with October, but the third petition for post-grant review was filed by a cattle breeders association

  • Managing IP’s milestone Asia-Pacific cases of the year

    December 08, 2014

    Managing IP, in collaboration with the Hong Kong Trade Development Council, presented its awards for the Milestone Cases of the Year at the BIP Asia conference last Thursday

  • USPTO responds to reports of secret programme to delay approvals

    December 05, 2014

    The USPTO has responded to accusations that it uses the Sensitive Application Warning System programme to delay controversial patents. The Office denies the programme is designed to stall applications and notes it is only used for “a relatively small number” of them

  • Don’t be afraid of bifurcation

    December 05, 2014

    Many patent specialists fear the prospect of bifurcation of cases in the Unified Patent Court. But Gottfried Schüll and Arwed Burrichter argue that the German-style system should be embraced

  • Andean Court can rule on questions from IP offices

    December 05, 2014

    In a landmark decision, the Andean Community Court of Justice has ruled that administrative bodies, as well as courts, can request “preliminary judicial interpretations”

  • Sony’s Toshimoto Mitomo: IP monetisation as marketing - interview

    December 05, 2014

    Toshimoto Mitomo, executive vice president for intellectual property for Sony America, says that the main goal of building an IP portfolio isn’t monetisation and gives his thoughts on the America Invents Act

  • Ulmer & Berne hires patent attorney in Cleveland

    December 04, 2014

    John Garred has joined Ulmer & Berne in its intellectual property and technology practice, which has added seven new members since January this year

  • Novak Druce adds three litigators in California

    December 04, 2014

    Novak Druce Connolly Bove + Quigg has hired three IP litigators in its Northern California offices

  • ASIPI in Mexico City: day 3 report

    December 03, 2014

    In his third and final update from the ASIPI Congress in Mexico City, James Nurton reports on national brands, Customs seizures, the Myriad case and Mexican inventions

  • UK clarifies Patent Box changes

    December 03, 2014

    The UK government has clarified that it will begin work next year to change the rules on its Patent Box regime, after it submitted a joint proposal with Germany to the OECD-G20 members at the Forum on Harmful Tax Practices last month

  • PTAB appeals at Federal Circuit to test boundaries of institution

    December 03, 2014

    The Federal Circuit this week will hear the second appeal of a PTAB decision. Patent owners and petitioners are anxious to see how the court will shape issues such as what parts of institution decisions can be appealed and what the correct claims construction standard should be

  • Shook Hardy & Bacon adds two from Microsoft

    December 03, 2014

    Shook Hardy & Bacon has added partners Bill Harmon and John Mulgrew to its Seattle office

  • ASIPI in Mexico City: day 2 report

    December 02, 2014

    In his second bulletin from the ASIPI Congress in Mexico City, James Nurton selects five topics spanning TPP, traditional knowledge, litigation, trade marks and the 1980s

  • ASIPI in Mexico City: day 1 report

    December 01, 2014

    The pan-American IP association ASIPI is celebrating its 50th birthday at its annual conference, being held this year in Mexico City. James Nurton picks out five highlights from the first day

  • UK IPO looks to further China cooperation

    November 28, 2014

    A team led by UK IPO CEO John Alty visited China this week to build on both the IPO’s working relationship with the government and also with Chinese businesses

  • Injunctions and discretion raised at UPC Rules hearing

    November 27, 2014

    The Rules of Procedure for the Unified Patent Court are likely to be modified further following a public hearing attended by many industry and professional groups, as well as judges and academics

  • Will China’s IP courts be a boon for multinationals?

    November 27, 2014

    China’s specialised intellectual property courts are finally taking shape and early signs are that the system may bring some much-welcomed reforms

  • What China’s new IP courts will look like

    November 27, 2014

    These flow charts, courtesy of Rouse, provide a helpful summary of the jurisdictional boundaries of China’s new IP courts

  • Interview: the view from France Brevets

    November 25, 2014

    In an interview with Managing IP, Pascal Asselot of France Brevets discusses trends in US patent litigation, responds to critics of its business model, and defends the role that governments can play in helping companies monetise IP rights. By James Nurton

  • PTAB gives guidance on motions to amend

    November 24, 2014

    The Patent Trial and Appeal Board has provided additional guidance on the requirements for motions to amend and allowed substitute claims to be placed in an appendix, in a move that may make it easier for patent owners to amend claims in inter partes review or covered business method review

  • Steptoe hires partner from Fitzpatrick in New York

    November 24, 2014

    Patent litigator Vishal Gupta has joined Steptoe & Johnson’s New York office as a partner

  • Federal Circuit reverses another denial of a stay pending CBM review

    November 21, 2014

    The Federal Circuit has overturned a Delaware district court denial of a stay pending a covered business method review at the PTAB. The Versata Software v Callidus Software decision is the second reversal of a district court denial of a stay pending a CBM review

  • Revealed: the defendants winning from patent litigation drop

    November 21, 2014

    Managing IP conducted in-depth data analysis to look beyond the headline figures to assess which defendants are benefiting from the recent decline in patent litigation and also which law firms are up and down

  • South African firm expands to Namibia

    November 21, 2014

    Von Seidels has established an associated firm, Roland Intellectual Property Consultants, in Windhoek, Namibia

  • Rockstar and Google settle patent dispute

    November 21, 2014

    Google and Rockstar – the consortium owned by Apple, BlackBerry, Ericsson, Microsoft and Sony – have reached an agreement to settle all matters in their high-profile patent dispute

  • CJEU AG opinion sets high bar for SEP owners

    November 20, 2014

    An owner of a standard-essential patent (SEP) who has committed to license on FRAND terms abuses its dominant position by seeking an injunction when the alleged infringer is willing to take a licence

  • India court sets FRAND rates

    November 20, 2014

    The Delhi High Court has ordered Indian handset manufacturer Micromax to pay royalties to Ericsson in the run-up to India’s first FRAND dispute

  • Quarles & Brady hires partner in DC

    November 19, 2014

    Jay Coulby has joined Quarles & Brady’s Washington, DC office as a partner in the intellectual property practice group

  • Federal Circuit sends strong signal in Ultramercial decision

    November 19, 2014

    The claims in the patent at issue in the closely-watched Ultramercial v Hulu case have been invalidated by the Federal Circuit in light of Alice v CLS Bank, after what it describes as an “up and down journey”

  • Traditional knowledge may receive indefinite protection in the Philippines

    November 19, 2014

    The IP Office of the Philippines (IPOPHL) has expressed support for a bill that would create a new category of protection for the traditional knowledge of indigenous groups

  • Unitary Patent and UPC clear another hurdle

    November 18, 2014

    Advocate General Yves Bot has argued strongly that Spain’s two challenges to the European Unitary Patent and Unified Patent Court should be dismissed

  • Where will the UPC be based?

    November 14, 2014

    Following recent announcements, we have updated our map showing the locations of the UPC courts and divisions

  • Australian court looks to Alice

    November 14, 2014

    Practitioners say that this week's Full Federal Court decision in Research Affiliates draws on logic from the US Supreme Court's decision in Alice as well as from the EPO

  • What do the Patent Box changes mean for business?

    November 14, 2014

    Earlier this week the UK and Germany agreed to propose to the OECD’s Forum on Harmful Tax Practices that countries limit the scope of schemes that offer tax breaks for patent-related profits. Here’s what happens next

  • Finnegan’s Kara Stoll nominated to Federal Circuit

    November 13, 2014

    President Barack Obama has nominated Kara Stoll to serve on the Federal Circuit – taking the spot vacated by Randall Rader – and Judge Luis Restrepo to serve on the Court of Appeals for the Third Circuit

  • Euromoney Legal Media Group Asia Women in Business Law Awards 2014: Winners announced

    November 13, 2014

    The best female lawyers from across the region, gathered at the JW Marriott in Hong Kong on November 13 to celebrate the advancement of women in the legal profession at the fourth Euromoney Legal Media Group Asia Women in Business Law Awards

  • Kappos defines the “age of IP”

    November 13, 2014

    IP rights are the only “bulwark” against “the great global labour arbitrage” said former USPTO Director and head of IP at IBM David Kappos, in a speech on the IP Age last week

  • ArrivalStar files its first four lawsuits of 2014

    November 12, 2014

    The third-biggest NPE lawsuit filer of 2013 has returned to filing litigation, with four lawsuits claiming infringement of patents covering vehicle monitoring, reporting and notification systems

  • RPX launches patent insurance for small companies

    November 12, 2014

    RPX has announced insurance for emerging growth companies designed to reduce the risks and costs created by patent infringement lawsuits filed by non-practicing entities

  • Sidley Austin hires Baik from Reed Smith

    November 12, 2014

    Steven Baik has joined Sidley Austin as a partner in Palo Alto as a member of the intellectual property litigation practice

  • BakerHostetler adds patent litigator in DC

    November 12, 2014

    Jason Hoffman has joined BakerHostetler as partner in the Washington, DC office

  • K&L Gates adds partners in Seattle and New York

    November 12, 2014

    K&L Gates has added intellectual property litigation partners Michael Freno and Peter Giunta to its Seattle and New York offices, respectively

  • BT infringes two ADSL patents – Court of Appeal

    November 12, 2014

    Californian company Adaptive Spectrum and Signal Alignment (ASSIA) has won a patent battle against UK telecoms provider BT

  • Patent box regimes set for reform after UK-Germany deal

    November 12, 2014

    The scope of the UK Patent Box regime is to be restricted after Germany and the UK agreed to reduce the competitive advantages the scheme provides. The restrictions are likely to be extended to other European IP tax regimes

  • “Embrace IPRs”, says IP Nav’s Erich Spangenberg

    November 11, 2014

    Erich Spangenberg, owner and founder of IP Navigation Group, said patent owners should not complain about inter partes reviews and that he hoped people do file them, on a panel at the IP Dealmakers Forum in New York on November 6

  • Litigation drop may bring new ideas into patent reform debate

    November 11, 2014

    The drop in US patent litigation in the past few months will not halt effort to pass patent reform, but it may influence some of its provisions

  • Patent licensing conversations slowing down

    November 11, 2014

    The patent licensing business is changing in a profound way, with companies less willing to take a licence without the threat of litigation and the US falling behind European jurisdictions, said licensing executives on a panel at the IP Dealmakers Forum in New York

  • Duane Morris adds IP partner in Chicago

    November 11, 2014

    Duane Morris has appointed Andrea Augustine as a partner in Chicago, joining from AlbertDhand

  • IPRs break 2,000 mark in October, as Google targets Rockstar patents

    November 10, 2014

    October was the second-busiest month so far for IPR petitions at the Patent Trial and Appeal Board. Google was responsible for some of the more interesting petitions as it began taking aim at the patents at issue in its dispute with Rockstar

  • Australia weighs in on software patents

    November 10, 2014

    Australia’s Full Federal Court rules that the computer implementation of an otherwise unpatentable business scheme does not make the claimed invention patentable

  • MPHJ reaches settlement with FTC

    November 07, 2014

    Patent troll MPHJ has settled Federal Trade Commission charges that it used deceptive sales claims and phony legal threats in letters accusing thousands of small businesses of patent infringement

  • 18% of post-Octane motions for fee awards granted

    November 06, 2014

    Six months on from the US Supreme Court’s Octane decision, about 18% of motions for fee awards have been granted according to an analysis by Glaser Weil

  • Federal Circuit publicly reprimands Edward Reines over Rader email

    November 05, 2014

    The Federal Circuit has reprimanded Edward Reines for sending clients and prospects a complimentary email he received from then-Chief Judge Randall Rader. It also referred to the California bar authorities a matter concerning Reines providing concert tickets to Rader

  • ANDA litigation set for record year – report

    November 05, 2014

    A new Lex Machina report on ANDA litigation reveals that 2014 is already a record year for cases filed and that Oxycontin is the trade name with the largest number of cases since 2009

  • Revised UPC Rules provide bifurcation safeguards

    November 05, 2014

    The possibility of bifurcation in the proposed Unified Patent Court has been effectively killed off in the revised version of the Court’s Rules of Procedure

  • Plavix case settled before Supreme Court of Canada hearing

    November 04, 2014

    A case that was expected to provide guidance on Canada's "promise" doctrine of utility and the test for sound prediction of utility has been settled a day before it was due to be argued at a Supreme Court hearing

  • NPEs not faring worse at PTAB than other companies – study

    November 04, 2014

    A new study of inter partes review data reveals that petitions challenging NPE-owned patents are more likely to be instituted but have claims invalidated at a lower rate

  • Vinson & Elkins hires IP litigator from Fenwick & West

    November 04, 2014

    Intellectual property litigator Darryl Woo has joined Vinson & Elkins in San Francisco

  • Maynard Cooper hires IP attorney in San Francisco

    November 04, 2014

    Maynard Cooper & Gale has hired attorney Sasha Rao, who will join the firm’s intellectual property litigation and technology practices in San Francisco

  • They tried to make me go to PTAB…

    October 31, 2014

    Should you ever say no, no, no when deciding whether to try invalidating a rival’s patent at the Patent Trial and Appeal Board? Michael Loney looks at the considerations involved, including the falling institution rate and uncertain chances of being granted a stay

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