Biotech companies consider trade secrets as alternative to patents Biotech IP practitioners at the BIO International Convention warned companies will increasingly look to trade secrets as a result of the courts’ and USPTO’s interpretation of Section 101, while David Kappos, Phil John... By Michael Loney June 30 2015
California Northern District: ITC ruling does not preclude lawsuit A judge in the Northern District of California ruled on Wednesday that an ITC finding of non-infringement does not block litigation on the same patents By Peter Leung June 26 2015
Arnold and Birss reversed, Swiss polyglots and Kozinski’s lecture – the week in IP In this week’s roundup of IP developments, we focus on judges. The England & Wales Court of Appeal reversed decisions in Actavis v Lilly and Smith & Nephew v ConvaTec, there was a landmark in Switzerland’s Federal Pat... By James Nurton June 25 2015
Sponsored statement: Prepare for post-AIA filings this fall This fall, there will be a 93% increase in PCT deadlines due to the America Invents Act (AIA). Before the final changes of the AIA came into effect on March 16, 2013, there was an influx of patent applications, as the... By Managing IP Correspondent June 25 2015
An obscure rule gets time in spotlight The US Supreme Court’s ruling this week in Kimble v Marvel has brought attention to a little-known patent licensing rule that even some sophisticated parties did not know about By Peter Leung June 25 2015
Unitary Patent renewal fees agreed Unitary Patent renewal fees will be based on those of the top four participating member states, an EPO Select Committee has decided By Kingsley Egbuonu June 25 2015
Uncertainty over PTAB remand after first Federal Circuit reversal It took 19 tries, but the PTAB has been overturned in a Federal Circuit appeal for the first time in Microsoft v Proxyconn. Patent holders take comfort that the Federal Circuit is not merely rubber stamping decisions ... By Michael Loney June 23 2015
Supreme Court: Want post-expiration royalties? Go to Congress The US Supreme Court has upheld the ban on royalty payments for sales made after a patent’s expiration By Peter Leung June 22 2015
Data: One year of Section 101 decisions since Alice The figures in the year since the Supreme Court’s Alice ruling reveal that the district courts, Federal Circuit and PTAB are invalidating patents on 101 grounds at very high rates By Michael Loney June 22 2015
How to get a patent in China Are you are blacksmith, a knight or a metallurgist? Why Dyson's Andy Booth demarcates the patent process from invention to litigation By Emma Barraclough June 22 2015
Should Congress amend Section 101? A year on the from the Alice decision, many IP practitioners feel that Section 101 is in a state of ruin. Speakers at the BIO International Convention put forward proposals for Congress to overhaul the much-maligned s... By Michael Loney June 21 2015
Concurrence in disappointing Federal Circuit Ariosa decision gives biotech hope Speakers at the BIO International Convention were dismayed by the Federal Circuit’s decision that a Sequenom patent was invalid. But they were hopeful that Judge Linn's concurring opinion criticising the Mayo framewor... By Michael Loney June 19 2015
How to make open innovation work No fewer than four reports addressing open innovation have landed in my Inbox in the past couple of weeks. Is this just a coincidence, or is there a trend? By James Nurton June 18 2015
PTAB allows Celgene to file for sanctions against Coalition for Affordable Drugs The Patent Trial and Appeal Board has authorised Celgene to file motions for sanctions in response to four inter partes review petitions filed by the Coalition for Affordable Drugs, the entity Kyle Bass and Erich Span... By Michael Loney June 18 2015
Vringo receives six-month delisting reprieve The patent assertion entity announced today that it has received a six-month grace period to raise its share price to the $1 minimum By Peter Leung June 18 2015
Bio/pharma IPRs by the numbers Figures discussed at the BIO International Convention reveal that bio/pharma IPRs at the Patent Trial and Appeal Board have a lower institution rate and lower claim-cancellation rate than for all IPRs By Michael Loney June 17 2015
In-house patent counsel: we want your views on the UPC! The past few months have seen important developments regarding the fees, procedures and rules for the new Unitary Patent and UPC system in Europe. In the light of these, we are inviting in-house counsel to complete a ... By James Nurton June 17 2015
Guidance on UPC opt-out published A recent update published by the UPC preparatory committee provides guidance on Article 83 of the UPC Agreement and choice of forum during the transitional period By Kingsley Egbuonu June 17 2015
Myriad - Australia edition Australia’s High Court held oral arguments today on the issue of whether an isolated gene is patentable By Peter Leung June 16 2015
Standard essential patents and FRAND: the state of play Important rulings on (F)RAND questions on both sides of the Atlantic are expected soon. Ahead of them, James Nurton rounds up other recent developments and decisions affecting standard-essential patents By James Nurton & Emma Barraclough June 16 2015
IP in Asia (1) – takeaways from London forum Specialist IP courts, underused IP rights and the benefits of alternative dispute resolution across the region were some of the issues discussed at Managing IP’s IP in Asia events in London last week By Emma Barraclough June 15 2015
PTAB allows motion to amend in IPR challenging Neste Oil patent In a final written decision, the Patent Trial and Appeal Board found 24 claims of a Neste Oil patent invalid but allowed it to substitute four claims in a rare grant of a motion to amend By Michael Loney June 15 2015
Report highlights poor patent information One quarter of patent registry records are inaccurate, incomplete or out of date, according to a new report By James Nurton June 15 2015
SPCs demystified in our next webinar Our next webinar on June 23 will discuss the latest developments regarding supplementary protection certificates (SPCs) in Europe By James Nurton June 14 2015
Fitbit, Jawbone, Kyle Bass, PTAB, iWatch – the week in IP Jawbone suing fellow fitness tracking company Fitbit, Ray Niro’s views on the effect of Octane Fitness, the positive effect Kyle Bass has had for the pharma industry, questions over how PTAB numbers are perceived and ... By Michael Loney June 13 2015
Innovation Act reports to US House of Representatives The Judiciary Committee has voted to report its patent reform bill to the full House of Representatives despite several concerns raised by Representatives By Peter Leung June 12 2015
Eight takeaways after EPO and MEPs discuss Unitary Patent How much will the Unitary Patent translation system cost? And how many UPC judges are there expected to be? Answers to these and other questions are presented in a report on a meeting between the EPO and the European ... By Kingsley Egbuonu June 12 2015
Least developed countries ask for more time for TRIPs The TRIPS Council is considering whether to exempt least developed countries from implementing certain parts of the TRIPS Agreement indefinitely By Kingsley Egbuonu June 12 2015
Patent harmonisation plans make slow progress A group of developed countries has agreed some of the principles that should underpin any future patent harmonisation deal. But differences remain on how those principles should be implemented when it comes to handlin... By Emma Barraclough June 12 2015
Data – US patent litigation jumps 55% in May, led by eDekka US patent litigation cases filed in May were the highest since the Alice decision. The most active filer was eDekka, the NPE that filed the most cases in 2014 By Michael Loney June 11 2015
IPRs and Section 101 to take centre stage at BIO convention With the BIO International Convention taking place next week, Michael Loney analyses the biggest topics that will be discussed among IP practitioners at the event By Michael Loney June 09 2015
Bass files 16th IPR petition as opposition continues to build Kyle Bass has filed another IPR petition targeting a pharma company, taking aim again at the Vimovo pain reliever, while IPO has passed a resolution opposing the use of post-grant proceedings to manipulate the market By Michael Loney June 09 2015
PTAB moves squarely into US lawmakers’ sights in rewritten PATENT Act After previously being included on the fringes of discussion around US patent reform, Patent Trial and Appeal Board proceedings are now one of legislators' main focuses. The rejigged PATENT Act has been branded “a PTA... By Michael Loney June 09 2015
12% of litigated patents since 2012 challenged at the PTAB Analysis by Unified Patents reveals the percentage of litigated patents that are challenged at the PTAB, the claim outcomes in terminated cases and final written decisions, and the extent to which Asian companies are ... By Michael Loney June 09 2015
May PTAB Data – Three PGRs filed in a busy month The total number of post-grant review petitions filed with the Patent Trial and Appeal Board jumped to eight in May. The month also included 145 inter partes review petitions and an important ruling on estoppel by the... By Michael Loney June 08 2015
Intellectual Ventures II files third and fourth lawsuits of 2015 Intellectual Ventures II has sued Canon for infringing digital imaging patents, the first lawsuits from the fund since it sued two insurers in January By Michael Loney June 08 2015
In-house counsel share patent practice tips In-house counsel speakers at Managing IP’s Women in IP network Forum in New York last week shared tops on litigating technology, dealing with NPEs and preparing for European patent reform By Emma Barraclough June 08 2015
Sponsored post: June 11 New York event taps top creative minds to explore the secret to... In a sponsored post, Michael MacKay, Vice President of Marketing Services, Bloomberg BNA, previews an upcoming conference on innovation strategy By Managing IP Correspondent June 07 2015
Making sense of the UPC fee proposals The consultation on the court fees, SME support and recoverable costs for the Unified Patent Court runs until July 31 and provides an opportunity for anyone to help shape this important aspect of the proposed new pate... By James Nurton June 07 2015
Is the biosimilar dance party mandatory? The Federal Circuit heard oral arguments this week in Amgen v Sandoz, and the dispute centres on a seemingly simple question that goes to a key part of the Biologics Price Competition and Innovation Act: what does “sh... By Peter Leung June 05 2015
Is it time to revise the EPC? The body representing European patent lawyers has raised the possibility of revising the European Patent Convention, in a letter to EPO President Benoît Battistelli By James Nurton June 05 2015
Patent litigation, .sucks, Vice Media, TTAB, Blackberry, Typo – the week in IP The sunrise period for .sucks being extended, the latest patent litigation statistics, a trade mark case featuring Vice versus Virtue, the TTAB cancelling a colour mark, and Blackberry settling with Typo were in the I... By Michael Loney June 04 2015
Is there life in Ultramercial yet? The long-running Ultramercial patent case may have some life left in it yet, with the filing this week of a Supreme Court petition By Michael Loney June 04 2015
US PATENT Act moves out of Senate Judiciary Committee The Judiciary Committee has voted to report the PATENT Act to the Senate By Peter Leung June 04 2015
Unitary Patent and UPC: a progress report The next six months will be key to the success of the Unitary Patent and UPC project. Managing IP provides an update on the latest developments By Kingsley Egbuonu June 03 2015
PTAB data: Apple regains top spot for filing in May Managing IP’s analysis of Docket Navigator data on May’s PTAB petitioners, patent owners, law firms and attorneys reveals Apple regained the top spot for filing that it lost in April, while a corrections technology co... By Michael Loney June 03 2015
Confidential information and cybersecurity Businesses that rely on confidential information for a competitive advantage need to take practical steps on cybersecurity, and prepare for the long-term ramifications of the proposed EU trade secrets directive By Kingsley Egbuonu June 02 2015
Australian study calls into doubt benefits of second-tier patents A report from IP Australia found that there is little proof that Australia’s innovation patent system helps to encourage R&D or participation in the IP system By Peter Leung June 02 2015
Reed Smith adds six attorneys in three US offices Reed Smith has added six attorneys to its global intellectual property practice in three US markets, joining from Winston & Strawn, Novak Druce and the USPTO By Michael Loney June 02 2015
UK appellate court weighs in on Swiss-type claims The Court of Appeal of England and Wales has provided guidance on the construction of a second medical use patent with Swiss-type claims for the purposes of establishing infringement, and followed Dutch and German cas... By Kingsley Egbuonu June 02 2015
Share your views on the Unitary Patent and UPC What do you think about the Unitary Patent and Unified Patent Court? Law firm Wragge Lawrence Graham & Co is seeking the views of companies and professional advisers. By James Nurton & Emma Barraclough June 01 2015
European IP boutiques merge Two IP boutiques are to merge this year, forming a 36-partner practice with offices in Amsterdam, Brussels, Düsseldorf, Madrid, Mannheim and Paris By Emma Barraclough June 01 2015
