Recent developments on the admissibility of patent term extension in Japan

Drugs are not allowed to be marketed without a marketing authorization. Taking into account the investment on R&D for a new drug and the necessity to recoup such investment, the patent term may be extended by a period not exceeding 5 years if there is a period during which the patented invention cannot be worked. Later in this post, I will discuss the judgment of the Japanese Supreme Court in 2015, which caused the guidelines on patent term extension to be significantly amended.

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Does IEEE’s IP policy comply with competition law?

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There is a large body of legal and economic literature on standard-essential patents (SEPs) and competition law that focuses on the availability of injunctive relief and strategic behaviour of SEPs’ holders. There is much less literature on the role of standard-setting organisations (SSOs) and their IP policies (I dealt with this topic here).

The IP policies of SSOs became a hot topic in 2015, when the Institute of Electrical and Electronics Engineers (“IEEE”), one of the most relevant SSOs active in the information and communication technology (“ICT”) sector, modified its IP policy with an effort to better clarify the “reasonable and non-discriminatory” (“RAND”) commitments that SEPs’ owners are supposed to accept through the submission of a letter of assurance (“LOA”). Continue reading “Does IEEE’s IP policy comply with competition law?”

The Crispr Cas9 battle reaches oral arguments before the United States Patent Trial and Appeal Board (PTAB) and the stakes are favoring the Broad Institute

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Guest post by Lucia Tamayo Del Portillo*

In early 2012, a group of scientists from the University of California Berkeley (“UC”) led by Dr. Jennifer Doudna, in collaboration with the University of Vienna and fellow researcher Emmanuel Charpentier, filed the first patent application for a revolutionary gene-editing tool called Crispr Cas9.  The Crispr and its associated protein Cas9 is a natural existing response to immunological hazard that can be found in bacteria. By a combination of complex biochemical interactions, bacteria is able to identify foreign DNA, cleave to it, and then induce a break on the DNA strand, causing its instant deactivation. UC’s first patent application was broad and mainly tested in rather simple living organisms such as bacteria. Few months after this application, the Broad Institute (“Broad”) along with the MIT and the Harvard College, filed another patent application over the Crispr Cas9. Dr. Feng Zhang commanded the main research team behind this invention. This subsequent application was limited to the use of the Crispr Cas9 method in eukaryotic organisms for example, plants and animals. Continue reading “The Crispr Cas9 battle reaches oral arguments before the United States Patent Trial and Appeal Board (PTAB) and the stakes are favoring the Broad Institute”

China’s Patent Boom

This post was originally published on The IPKat on 10 January 2017.

World Intellectual Property Organization recently published its annual World Intellectual Property Indicators report. This report states that, amid rising worldwide demand for intellectual property rights, a new record was set. Namely, with around 1.1 million new patent applications in 2015, the State Intellectual Property Office of China (SIPO) became the first patent office to receive more than a million applications in a single year. This was almost as many applications as the next three offices in the ranking combined (the patent offices of the U.S., Japan and South Korea). Some people are astonished and also confused about China’s patent boom in recent years: What drives such a strong growth in patent applications? How good is the quality of the massive applications? What impacts does the boom have on patent protection in China? This article briefly discusses some aspects of these questions. Continue reading “China’s Patent Boom”

Is the product-by-process claim “dead” in Japan?

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After the Supreme Court in Japan handed down a very important judgment in 2015 on the scope of the Product-by-Process (“PBP”) claim, and its doubtful validity concerning the clarity requirement (Pravastatin sodium case, a drug lowering the cholesterol in blood), the authorities commented that the PBP claim is “dead” because almost all PBP claims would be fairly likely to be invalidated according to the Supreme Court’s strict judgment on its patentability. However, very recently, the IP High Court handed down a relevant judgment on this issue, wherein it basically followed the Supreme Court judgment but limited the application of the Supreme Court’s judgment to the “true” PBP claim.

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Chinese Patent Office proposed revisions to its Examination Guidelines

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On 27 October 2016, the State Intellectual Property Office of China (SIPO) released proposed revisions to its Guidelines for Patent Examination for public consultation. According to SIPO’s explanatory note, the proposed revisions are aimed to strengthen the IP protection for innovation in emerging fields such as Internet, e-commerce, big data etc., to improve the IP protection system for business models, to improve the post-grant patent documents amendment system and timely disclosure of procedural information on patent examination.

Mainly, the following revisions are proposed: Continue reading “Chinese Patent Office proposed revisions to its Examination Guidelines”

The strategies for patent litigation under the double track system in Japan

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In my previous posting (here), I described advantages and problems in the two systems, i.e., the double track system and the bifurcation system in patent litigation. In this posting, I, as a Japanese patent litigator, would like to introduce several practical strategies for patent litigations under the double track system in Japan in the form of Q&A.

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A recent case in China concerning the Patent Office’s burden to prove common knowledge in patent examination

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To determine whether an invention involves an inventive step, the Chinese Patent Office’s Guidelines for Patent Examination (the “Guidelines”) require the patent examiner, inter alia, to make a judgment, starting from the closest prior art and the technical problem actually solved by the invention, as to whether or not the claimed technical solution is obvious to a person skilled in the art in the light of relevant reference documents and common knowledge. As the Guidelines do not give a strict definition of “common knowledge” and, in practice, the examiner is not required to prove common knowledge when he/she first introduces it, what should be qualified as common knowledge in a particular case often becomes a subject of dispute.

Recently, the Beijing IP Court handed down a decision (No. 3495 [2015]) resolving such a dispute. In its decision, the Court reaffirmed the Patent Reexamination Board (PRB)’s burden to state reasons or provide corresponding evidence for proof, if the interested party has objections to the common knowledge introduced by it. The Court further clarified the relationship between the 3GPP (a telecommunications industry collaboration that organizes several important standards from GSM through UMTS and LTE to 5G) standards documents and common knowledge, considering the increasing frequency of these documents being cited as prior art in telecommunications area. Continue reading “A recent case in China concerning the Patent Office’s burden to prove common knowledge in patent examination”

Patent litigation – Double track system vs. bifurcation system

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Double track system 

If you are sued by a patentee for patent infringement, one of the options you often have would be to attempt to invalidate the patent on the ground that the patent lacks patentability. The issue here is whether you can assert invalidity of the patent at issue to an infringement court, or you need to initiate a separate proceeding at a national patent office or a specialized patent court in order to argue patent invalidity. As for Japan, in addition to an invalidation proceeding at the Japanese Patent Office (Track 1), Japanese patent law allows a defendant in an infringement court to assert patent invalidity within the same proceeding (invalidity defense), and the court can judge the validity on its own (Track 2). This legal system can be referred to as a “double track system”.  Examples of jurisdictions with this system besides Japan are the U.S., the U.K., France and Korea.

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Measures for preserving evidence – different requirements in UK/Germany/France/UPC and their implications

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In some patent infringement cases, relevant evidence lies in the control of the alleged infringer or a third party.  It may be that the patent holder cannot get access to the evidence or that the evidence may be conveniently manipulated before it is disclosed. In these kind of situations, the patent holder can potentially rely on a court to order measures for preserving evidence, which may include compulsorily entering premises, inspecting the allegedly infringing goods or process, making detailed description or even physical seizure of relevant objects or documents. To achieve a surprise effect, the court order should usually be issued ex parte.

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