Patents - Features©2017 Managing Intellectual Property60Patents - FeaturesGuidance on determining who is an inventorPatent inventorship has been disputed in several recent cases in China. Wenhui Zhang reviews four court decisions that provide lessons for inventors, 03 Jan 2017 11:30:00 GMTHow to use the PCT strategicallyFor many patent applicants, the primary value of the PCT is as a delaying tactic. But, say David Grant, Thomas Prock and Ed Round, it can also be used strategically, 03 Jan 2017 11:30:00 GMTPTAB: estoppel and subsequent district court litigationJim Brogan, Brian Eutermoser and Janna Fischer discuss the ways that the unsuccessful IPR petitioner at the Patent Trial and Appeal Board still can challenge validity in subsequent district court litigation, 21 Dec 2016 11:00:00 GMTPatent agent privilege? Yes, but be careful!A recent decision from the Federal Circuit recognises a privilege between non-attorneys patent-agents and their clients under certain conditions. Philippe Signore reviews the limits of this patent agent privilege, as well as those of the attorney-client privilege, within the context of the discovery phase of a US litigation, 19 Dec 2016 10:00:00 GMTThe importance of expert evidence in GermanyThe use of expert witnesses is less common in German patent litigation compared with the UK or US and in practice experts are only used in approximately 5% to 10% of cases. However, argues Georg Rauh, greater complexity and technical difficulty of cases mean experts may become more important, 21 Nov 2016 10:00:00 GMTJapan’s unique combination of experts and advisersAs well as having party-appointed experts in litigation, Japanese courts can employ judicial research officials and technical advisers to assist judges. Naho Ebata explains their role, 21 Nov 2016 10:00:00 GMTHow experts can determine patent casesCorinne Atton and William Solander explain the role of expert witnesses and how they may often be issue- or case-determinative in US patent litigation, 21 Nov 2016 10:00:00 GMTAustralia: Evidence is vitalAustralia’s patent opposition system is well established, says Wayne Condon, but it’s important to note the differences between standard patents and innovation patents, 28 Sep 2016 19:00:00 GMTHow to obtain effective evidence in ChinaChina’s litigation system has much to offer foreign patent owners, but many find the rules on evidence challenging. Erick Robinson provides some tips, 28 Sep 2016 15:00:00 GMTEPO: Inventive step the most effective patent killerEPO oppositions are well established, meaning there are many lessons for patent owners and challengers, as Arnie Clarke and Jack Shepherd explain, 27 Sep 2016 15:00:00 GMTJapan: A paper-based systemJapan’s current opposition system was introduced in April 2015, and imposes strict deadlines on parties. Yoichi Watanabe provides a guide, 27 Sep 2016 15:00:00 GMTKorea: New procedure on the wayWith the revisions to the Patent Act introduced this year, there will soon be more options to challenge patents in Korea. Leon Kim and Hyun-Sil Lee explain, 27 Sep 2016 15:00:00 GMTCJEU rules on royalties for unpatented technologyRichard Binns and Nicola Walles consider the impact of the Court of Justice of the EU’s recent ruling on the payment of royalties for unpatented technology, 27 Sep 2016 15:00:00 GMTOnline courts and the future of IP litigationAre online courts the future for IP disputes? That was the topic of the annual Collyer Bristow IP debate between Tim Bamford and Karen Fong. They reveal some snippets from their diaries in the months leading up to the big fight, 04 Jul 2016 09:00:00 GMTUPC scenario 5: Enforcing a patent inside and outside the UPCIn the latest in our series of UPC scenarios, Laura Whiting and Inmaculada Lorenzo explore the options for a pharmaceutical patent owner faced with a potential infringer manufacturing its product in Spain, 04 Jul 2016 09:00:00 GMTKey amendments to Russian patent legislationThe past two years have seen some fundamental changes to patent, utility model and design law in Russia. Eugene Arievich and Yuri Pylnev review how they are working in practice, 22 Jun 2016 10:00:00 GMTSequencing the future of IP in genomicsGenomic technology has rapidly created a multi-billion dollar growth industry. With life sciences companies scrambling in US and European courts for a share of the lucrative market, in-house IP counsel should start preparing for the next wave of IP litigation, explain Dominic Adair and Annsley Merelle Ward, 22 Jun 2016 10:00:00 GMTHow Europe’s SPC regime works in practiceAs the European Commission aspires to introduce a Unitary SPC, Tony Rollins examines the evidence on how effective the existing regime for patent extension in Europe has been, 22 Jun 2016 10:00:00 GMTAvoid pitfalls when limiting claims in Europe (sponsored)For many years there has been debate about EPO practice relating to amendments under Article 123(2) EPC in examination and opposition proceedings. Charlotta Vink and Louise Tottie of Valea examine the latest cases, 22 Jun 2016 10:00:00 GMTWhat in-house practitioners really wantA new IP STARS report analyses the concerns and priorities of in-house IP practitioners, and is based on responses from more than 1,100 questionnaires. Peter Ollier introduces the themes of the research, 07 Jun 2016 14:00:00 GMTUPC scenario 4: Challenging a non-opted out European patentHow might a clearing-the-way case proceed once the UPC is in force? In the latest article in our series, David Rose, Nina O’Sullivan and Axel Walz consider the options for a patent challenger who wishes to launch a competing product, 27 Apr 2016 11:00:00 GMTMilan prepares for 2016 AIPPI World CongressThe AIPPI returns to Italy this year, for the first time since 1969. Once again, Managing IP will be providing coverage in the AIPPI Daily Report and here we provide a preview of what to expect, 25 Apr 2016 14:00:00 GMTUPC scenario 3: A standards case from the defendant’s perspectiveOur latest UPC scenario looks at a case involving a standard-essential patent. Michael Carter, Nick Cunningham and David Barron consider a defendant’s options in the new court system, 29 Mar 2016 12:30:00 GMTPatent issues reviewed by Court of AppealIn a rare decision, Hong Kong’s Court of Appeal has addressed sufficiency, novelty and inventive step as well as other issues. Nina Fitzgerald and Jeffrey McLean explain, 29 Mar 2016 12:30:00 GMTUPC scenario 2: a blockbuster drug patent with an SPCIn our second discussion of a hypothetical UPC scenario, Duncan Ribbons and Rebecca Lawrence address some of the complications that arise with SPCs, licences, opt outs and injunctions, 25 Feb 2016 15:00:00 GMTConfusion reigns over patenting of computer programsIndia has long debated the patentability of computer programs, but are we any closer to having clear guidance? Kanchan Vadehra and Sharad Vadehra review the latest developments, 25 Feb 2016 14:30:00 GMTHot debate over patent jurisdictionJudges in China have expressed different views regarding whether a court in the place of receipt of goods has jurisdiction in patent infringement cases. Xiaolin Wang and Harlem Lu explain the issues, 24 Feb 2016 10:00:00 GMTDon’t fret over threats of proceedings for IP infringementCorrespondents in Australia, Canada, Germany, the UK and the US review the law and recent developments on threats of proceedings for IP infringement that are groundless or may interfere with business activity, 28 Jan 2016 11:00:00 GMTBiotechnology and patentability: navigating unchartered waters in Australia and the USThe debate over the patentability of isolated DNA has raged around the world. Tania Obranovich compares the two Myriad decisions from the highest courts in Australia and the US and explains how the Australian decision has called into question what had long been thought of as a fundamental pillar of Australian patent law, 26 Jan 2016 11:00:00 GMTHow to prove it to the PTABThe role of prior art has become important in many PTAB proceedings. Scott D Marty and Jonathon A Talcott discuss evidentiary challenges for petitioners and patent owners, 26 Jan 2016 11:00:00 GMT