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On November 29 2000, a majority of the United States Court of Appeals for the Federal Circuit, sitting en banc, rendered an opinion in Festo Corp v Shoketsu Kogyo Kabushiki Co, published at 56 USPQ 2d 1865, which effectively extinguishes the application of the doctrine of equivalents to any term of a patent claim that was narrowed by amendment during its prosecution before the US Patent and Trademark Office (USPTO). While the majority opinion does purportedly limit the prosecution estoppel created by amendments that narrow a claim in any respect to those amendments made for reasons "related to patentability" , that opinion is also unequivocally clear in holding that any narrowing amendment to a claim term made for "any reason affecting the issuance of a patent" (56 USPQ 2d at 1870-1871) is "related to patentability" whether made voluntarily or in response to a rejection. Specific mention is made of amendments made for reasons based on 35 USC § § 101 and 112, as well as for prior art reasons based on 35 USC § § 102 and 103 as giving rise to prosecution estoppels and thus foreclosing application of the doctrine of equivalents to amended terms or expressions in claims. The majority opinion leaves an apparent escape hatch from estoppel for narrowing claim amendments made for reasons other than patentability, provided each such reason is stated in the prosecution record at the time of the narrowing amendment but this is of very little practical effect because reasons for narrowing amendments to claims that do not somehow implicate patentability are extremely hard to conceive of, much less substantiate. The majority opinion is explicit in holding that: "When a claim amendment creates prosecution history estoppel with regard to a claim element, there is no range of equivalents available for the amended claim element. Application of the doctrine of equivalents to the claim element is completely barred" (56USPQ2d at 1872).

The landmark decision of Genelabs Diagnostics Pte Ltd and Nagase Singapore (Pte) Ltd v Institut Pasteur and Pasteur Sanofi Diagnostics (Civil Appeal No 14 of 2000) was the first patent infringement case involving a biotechnology patent to be heard and litigated in Singapore. In a judgment delivered by Justice of Appeal Chao Hick Tin, the Court of Appeal dealt with the validity and infringement of a patent on the HIV-2 virus. Facts of the case

Asia has turned the corner in addressing IP deficiencies. But problems remain – from the political wranglings in Indonesia to the booming Korean market. Tabitha Parker investigates

On May 10 2000, there entered into force a new Act No 116/2000, amending some IP laws, including the Patents Act No 527/1990. The only exception concerns Section 3 of the Patents Act, regulating European patent applications and the European patent. This Section will enter into force on July 1 2002, ie on the day of the supposed accession of the Czech Republic to the EPC. The most important part of the said amendments concerns the grant of supplementary protection certificates for medicinal products and plant protection products. Commercial exploitation of inventions protecting such products is shortened by the registration proceeding carried out by the respective state authorities before such products can be put on the market. In justified cases, supplemental protection certificates extend the life of protection by the time of registration proceeding. Reasons for the introduction of supplementary protection certificates are just the same as those which led the European Union to adopt Regulations of the Council No 1768/92 and 1610/96 ie to keep up the level of research, and to safeguard a competition ability and free circulation of medicinal products and plant protection products.

A series of innovative yet controversial television commercials in New Zealand promoting Roche's weight management product XENICAL have won the 2000 prestigious Television New Zealand/Marketing Magazine Supreme Award.

CHINA: Intcera High Tech Group is adding a new plant in mainland China to expand its manufacture of fibre-optics components. CHINA: The Ministry of Information Industry and National Copyright Administration prepared a draft amendment to the Regulations for the Protection of Computer Software. Changes include an extension of the period of protection for software from 25 years to 50 years. EUROPE: From January 1 2001, new Block Exemptions and Guidelines, which affect trade between the member states of the European Union, became effective. The aim of the Guidelines is to provide a simplified framework for assessing whether a horizontal agreement comes within the Article 81 (1) prohibition and, if it does, whether it is exempt from it. UK: Protocol Solutions, which specialized in NT and desktop systems, has been forced into receivership following legal action taken by the police over counterfeit software. US: Brobeck Phleger & Harrison raised its first-year associate pay by $10,000 to $135,000. A first-year associate can now expect to receive $170,000. US: In the first case of its kind, federal prosecutors in Los Angeles have claimed a website selling counterfeit software on the internet as part of a criminal case. Maria Yolanda and Sola Lirola, who made $900,000 in profit, sold software billed as retail products from companies such as Adobe and Microsoft.

John P Fry and Christopher B Roblyer examine how to defend against charges of wilful infringement and the risk of waiving the attorney-client privilege in US patent and trade mark disputes

In the second of three articles on IP value issues, Tony Samuel and Graeme Berry query why organizations do not insure their most valuable asset, intellectual property.

In preparation for joining the WTO, China has amended its patent law. Jiwen Chen says the changes will enhance protection and simplify application procedures and enforcement

As the UDRP approaches its first birthday, Jane Mutimear asks: should we wish it many happy returns?