Technology Spotlight - Patenting Blockchain Technology -
Blockchain is a booming technology, causing a dramatic increase in patent filings at the U.S Patent and Trademark Office. The November 2018 issue of Sterne Kessler’s...more
Artificial Intelligence (AI) has become one of the most important technologies of the 21st century. AI generally refers to a branch of computer science that simulates “intelligent” behavior in computers and has the potential...more
As evidenced recently in the United States, it may be difficult to tell what categories of inventions are eligible for patent protection in foreign jurisdictions. To further complicate issues, standards of eligible subject...more
10/16/2018
/ Abstract Ideas ,
Animal Patents ,
Australia ,
Brazil ,
Canada ,
China ,
Covered Business Method Patents ,
Diagnostic Method ,
EU ,
Foreign Jurisdictions ,
Gulf Cooperation Council (GCC) ,
India ,
Japan ,
Mexico ,
Patent-Eligible Subject Matter ,
Patents ,
Plant Patents ,
Popular ,
Product of Nature Doctrine ,
Russia ,
Sharia Law ,
Software Patents ,
South Korea ,
Treatment Method Patents
In the wake of the Supreme Court’s Mayo and Alice decisions, uncertainty has surrounded what inventions are patent eligible in the United States. In Mayo and Alice, the Supreme Court developed a two-step test to determine...more
10/12/2018
/ Abstract Ideas ,
Animal Patents ,
Clones ,
CLS Bank v Alice Corp ,
Computer-Related Inventions ,
Covered Business Method Patents ,
Diagnostic Method ,
DNA ,
Mayo v. Prometheus ,
Patent-Eligible Subject Matter ,
Patents ,
Plant Patents ,
Product of Nature Doctrine ,
Section 101 ,
Software Patents ,
Treatment Method Patents ,
USPTO ,
Utility Patents
A Survey on Subject Matter Eligibility
Few areas of patent law are as unsettled as subject matter eligibility. What is considered patentable varies greatly across jurisdictions and nuances in claim language can make...more
Both the European Patent Office (EPO) and the Japanese Patent Office (JPO) accept a third party observation regarding validity of a patent application. In February 2012, it was announced that third party observations could be...more
9/17/2018
/ Administrative Procedure ,
China ,
EU ,
European Patent Office ,
Foreign Patent Applications ,
Japan ,
Japan Patent Office ,
JPO ,
Patent Cooperation Treaty ,
Patent Examinations ,
Patent Invalidity ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art ,
SIPO ,
Third-Party
The America Invents Act provides an expanded process for a third party to submit prior art to the examiner concerning any U.S. patent application. The new process is aimed to encourage the public to submit relevant art as a...more
9/14/2018
/ Administrative Procedure ,
America Invents Act ,
Design Patent ,
Foreign Patent Applications ,
Foreign Trademark ,
Inter Partes Review (IPR) Proceeding ,
International Litigation ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents ,
Plant Patents ,
Prior Art ,
Third-Party ,
Trademark Infringement ,
Trademark Trial and Appeal Board ,
Utility Patents
A Survey of Third Party Observation Systems -
Third party observations can be a cost-effective way of introducing prior art or arguments related to patentability of a published patent application. The September 2018 issue...more
9/13/2018
/ America Invents Act ,
China ,
EU ,
European Patent Office ,
Foreign Patent Applications ,
Japan ,
Japan Patent Office ,
Patent Cooperation Treaty ,
Patent Prosecution ,
Patentability Search ,
Patents ,
Prior Art ,
Third-Party
In December 2017, the Taiwan Pharmaceutical Affairs Act has been amended to harmonize generic approval process with prevailing international norms. The amended Act is expected to come into effect in late 2018 or early 2019....more
4/16/2018
/ Biobased Chemicals ,
Biologics ,
Food and Drug Administration (FDA) ,
Foreign Patent Applications ,
Generic Drugs ,
Hatch-Waxman ,
Marketing Exclusivity Periods ,
Patent Applications ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Prescription Drugs ,
Taiwan
Patents and a New Patent Linkage System in Taiwan -
Patent protection in Taiwan is becoming of everincreasing importance as the country’s economic influence grows worldwide. The April 2018 issue of Sterne Kessler’s Global...more
Dividing a single patent application into multiple patents is often essential for deriving maximum economic benefit from the disclosed inventions. When an applicant wants to protect multiple inventions disclosed in a single...more
1/24/2018
/ Biopharmaceutical ,
Divisional Applications ,
Double Patent ,
Exclusive Licenses ,
Foreign Patent Applications ,
IP License ,
Parent Patents ,
Paris Convention ,
Patent Applications ,
Patent Filings ,
Patent Portfolios ,
Patents
The Federal Circuit’s decision in Gilead Sciences, Inc. v. Natco Pharma Ltd. introduced even more confusion in an already confusing area of the law – namely obviousness-type double patenting. Obviousness-type double patenting...more
Double Patenting and Divisional Applications -
Many countries allow an applicant to protect multiple inventions disclosed in a single application in one or more continuing applications. In most countries divisional...more
Please see full chart for Bolar Excemption rules in foreign countries regarding Clinical Trials, New Drugs, Biosimilars and Foreign Jurisdiction issues. ...more
12/22/2017
/ Biopharmaceutical ,
Biosimilars ,
Bolar Exemption ,
Clinical Trials ,
Foreign Jurisdictions ,
Generic Drugs ,
International Litigation ,
Patent Infringement ,
Patent Prosecution ,
Patents ,
Prescription Drugs ,
Safe Harbors
Bolar exemption in Europe -
The Bolar exemption is governed by European Directive 2001/83/EC on the Community Code relating to medicinal products for human use. Article 10(6) excludes from infringement of patent rights or...more
Bolar Exemptions in the U.S.
Because approval by the U.S. Food and Drug Administration (FDA) is a long, sometimes arduous process, U.S. law provides a research or experimental use exemption with respect to regulated...more
12/20/2017
/ Biopharmaceutical ,
Bolar Exemption ,
Canada ,
FDA Approval ,
Generic Drugs ,
Hatch-Waxman ,
Mexico ,
Patent Infringement ,
Patent Prosecution ,
Patents ,
Prescription Drugs ,
Safe Harbors
Worldwide Bolar Exemptions -
Many countries have exemptions for patent infringement for a product and/or process that is not being used for direct commercialization and profit. For biopharmaceuticals, this exemption,...more
An Update on Brazilian Patent Law – Emergency Backlog/Fast-Track Options and Enforcement Issues -
We are delighted to have as contributors to the November Global Patent Prosecution newsletter, Ricardo Nunes and Andre...more
Very few topics in international intellectual property have been as controversial as compulsory licenses. While the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) sets minimum standards for...more
March-in rights in the US were created in 1980, as part of the Bayh-Dole Act. Simply stated, when the US government funds research that results in patents, it obtains rights to those patents. These rights are retained even...more
March-in Rights and Compulsory Licensing of Biopharmaceutical Inventions -
Very few topics in international intellectual property have been as controversial as compulsory licensing. In the US, consumer groups have...more
Please see full Doctrine of Equivalents Chart for Countries around the World. ...more
In a decision that appears to have introduced a doctrine of equivalents for the first time, the UK Supreme Court has shifted the laws on patent infringement in Actavis v. Eli Lilly UK [2017] UKSC 48. While this case...more
Worldwide Doctrine of Equivalents and Prosecution History Estoppel -
The doctrine of equivalents (DOE) arises in the context of a patent infringement action where the accused product or process does not literally infringe...more
9/19/2017
/ Biotechnology ,
Doctrine of Equivalents ,
Estoppel ,
Global Standards ,
International Litigation ,
Patent Infringement ,
Patent Prosecution ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
UK ,
UK Supreme Court
Please see list of Countries and their rules regarding offering Patent Term Extensions and Supplementary Protection Certificates. ...more