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The article focuses on the decision of the U.S. Supreme Court in the case Return Mail v. United States Postal Service on need to neglected to apply the U.S. Patent & Trademark Office (PTO)'s administrative interpretations of reexamination to America Invents Act (AIAP) review proceedings. It mentions AIA review proceedings share the same purposes to increase patent quality and create an alternative to patent litigation.

The article examines how patent exhaustion applies to self-replicating technologies and how the U.S. Supreme Court case Bowman v. Monsanto explicitly left open whether and how exhaustion applies to self-replicating technologies more broadly. It mentions decision of the U.S. Supreme Court in the case Impression Products v. Lexmark International to create an exhaustion framework for self-replicating technology.

We study an infinite-horizon cumulative innovation model, in which patents are characterized by their length and the likelihood of being ruled valid in a patent infringement litigation. Strengthening patent protection via a greater validity or length has two opposing effects on innovation: 1) a negative litigation effect due to increasing the litigation threat for future innovators; and 2) a positive competition effect due to reducing profit-eroding imitation by competitive firms without innovation capacity. The optimal innovation-maximizing patent policy balances these two opposing effects. For moderate patent validity, longer remaining lifetime increases innovation due to the competition effect. The opposite is true for higher validity, for which the litigation effect dominates. Moderate validity and infinite patent length maximizes innovation when future profits are subject to greater discounting and R&D costs are low, while strong validity and finite length stimulates more innovation under lower discounting and higher R&D costs. [ABSTRACT FROM AUTHOR]

With a series of policies to stimulate innovation and patent activities, China has become a world leader in both patent applications and patent litigation. These major developments, together with the escalated US-China trade tensions, have made China an integral but controversial venue for international patent protection. The Chinese patent system, especially its detailed practice and cases, is in need of a comprehensive empirical study. This article analyzed 8766 Chinese patent invalidity cases decided between 2014 and 2016, which, together with my prior work on patent infringement lawsuits, offers a comprehensive picture on how the bifurcated patent system in China works. First, it found that only a small number, about 2.0 percent, of Chinese patents are ever subject to infringement or invalidity disputes, shedding light on the patent office's rational ignorance of a patent's validity at first place. Second, it found that the invalidity rate for invention patents in China (54.6%) was lower than in many other countries, such as the US (83.9%) and Germany (73%), indicating that the Chinese patent system is more pro-patentee than once believed. Third, it raised the question of Chinese patents' quality based on various characteristics of these cases, including patent types and petitioners' entity status. [ABSTRACT FROM AUTHOR]

During patent litigation, pay‐for‐delay (P4D) deals involve a payment from a patent holder of a branded drug to a generic drug manufacturer to delay entry and withdraw the patent challenge. In return for staying out of the market, the generic firm receives a payment, and/or an authorized licensed entry at a later date, but before the patent expiration. We examine why such deals are stable when there are multiple potential entrants. We combine the first‐mover advantage for the first generic with the ability of the branded manufacturer to launch an authorized generic (AG) to show when P4D deals are an equilibrium outcome. We further show that limiting a branded firm's ability to launch an AG before entry by a successful challenger will deter such deals. However, removing exclusivity period for the first generic challenger will not. [ABSTRACT FROM AUTHOR]

The article focuses on need of solving legal uncertainty in extraterritorial patent infringement suits. It mentions how the U.S. has historically treated international infringement and then analyzes the U.S. Supreme Court ruling in WesternGeco LLC v. ION Geophysical Corp. It also mentions how Germany and Great Britain's treat international infringement and provide greater international harmony and increase legal certainty.

Robert Warington (1807-1867) was a central figure in the mid-nineteenth century chemical community, notably through his role in the foundation of the Chemical Society of London in 1841. As demand for chemical services grew, Warington constructed an ultimately lucrative career in chemistry in which consulting played a major part. His formative years laid ideal foundations for establishing himself as a consultant, whilst his appointment as chemical operator to the Society of Apothecaries' pharmaceutical trade provided the status and infrastructure to sustain this activity. Here I explore the nature of the chemical services he performed for a range of customers through a survey of his experimental notes. At a time when professional boundaries in the subject were being delineated, this case study provides an example of how chemistry could be commercialised outside the academic environment and how consulting merged into a broader scientific career. [ABSTRACT FROM AUTHOR]

This paper examines the relationship between Imperial Chemical Industries (ICI), the company that discovered tamoxifen, and Dr Craig Jordan, who played a major part in its success as a breast cancer drug, and who worked as a consultant for the company, but without ever being paid a consultancy fee. Instead, ICI funded junior staff working in his laboratory on topics of his choice. They later paid his expenses as an expert witness in patent-litigation cases, as a result of which the US became a major lucrative market for tamoxifen, and ICI's other anti-cancer drugs. This case study illustrates that, like consultants, drugs play an important part at the boundary between the academic and industrial spheres. However, even if it is blurred, the boundary remains. Owing to the secrecy that often surrounds industrial research, this boundary may lead to a different understanding of what constitutes innovation, and to different narratives with regard to respective contributions. [ABSTRACT FROM AUTHOR]

This study proposes a divergent expectation model for patent infringement disputes, where both litigation and settlement are driven by patent quality. Under the model, patent quality depends on both broadness and definiteness of the patent. The model predicts that technologies where the definiteness attribute can be estimated with high accuracy will have higher settlement rates. At trial, it is rather the assessment of the patent quality by the judge which decides the outcome. In its empirical section, the paper evaluates over a thousand hand-collected and hand-coded patent infringement and counterclaim decisions rendered by courts in the three largest patent granting European countries—Germany, France and the United Kingdom. The paper utilizes empirical methods to investigate whether the characteristics of the patents or the country of litigation predict the outcome of litigation. Examination of the patent characteristics is guided by the factors of our model, in that the patent quality, and underlying technology and industry are tested. The findings provide evidence of the continuing heterogeneity of the patent systems in Europe, despite the harmonization efforts. Demonstrated was the lack of importance of the characteristics of the litigated patent; rather, it was the forum to which the case was brought that was decisive. At the dawn of the Unified Patent Court, our study provides for a window into the extent of heterogeneity still prevailing and a starting point for monitoring the further development of European patent harmonization. [ABSTRACT FROM AUTHOR]

The massive adoption of wireless technologies over the past decades has also brought about disputes regarding the interpretation of FRAND in the context of actual commercial relations. Courts in several jurisdictions worldwide -- in the EU, the US, China, India and Korea, among others -- have been called upon to flesh out FRAND terms or to assess conformity with FRAND principles. This body of case law provides rich insights into the workings of the markets for standards, but also practical guidance for parties as well as policymakers seeking a better understanding of the situation -- business and legal -- on the ground. The present article outlines some of the emerging patterns in SEP litigation worldwide, focusing on the judicial determination of FRAND rates. The common thread across jurisdictions regarding FRAND-rate determination is reliance on evidence and data in comparable licensing agreements. It is argued that comparable licensing agreements, i.e. licensing agreements signed with similarly situated parties, provide for the most reliable evidence on how markets price standardised technologies and SEPs. [ABSTRACT FROM AUTHOR]

We inform the policy debate arising from the dramatic shift in US firms' balance sheets towards intangible assets that has created a challenge for market participants to estimate firm value. While accounting guidelines have failed to keep pace with this change, the auditors' perspective on this issue remains unknown. Our study reveals that auditors also find it relatively more challenging to audit firms with higher intangible assets. Specifically, we document a strong positive relation between audit fee and the proportion of intangible assets, after controlling for standard audit fee determinants. Further, we show that firms with higher proportion of intangible assets are associated with higher auditor effort and higher litigation risk for auditors, manifesting in higher audit fee. Ex post proxies of innovation success, such as patents, citation-weighted patents and ex ante R&D expense, indicate that firms with greater likelihood of innovation success are also charged higher audit fees. We find that high intangible asset firms in concentrated patent-generating industries (i.e. with lower expected patent litigation) are charged lower audit fees than similar firms in patent-competitive industries. [ABSTRACT FROM AUTHOR]

Compiled and written by SCP Herald Herald Avocats is a French law firm involved in intellectual property law, pharmaceutical law and European Union law that provides services to healthcare, biotech and pharmaceutical companies. According to the Advocate General, the disputes which generated the settlements agreement at issue are, as preparations for the market entry of the generics, themselves capable of demonstrating that potential competition exists between the parties to those agreements. The Court concluded that it is for the national court to assess, with respect to each agreement under examination, whether the demonstrated pro-competitive effects are sufficient to permit a reasonable doubt as to whether it causes a sufficient degree of harm to competition. [Extracted from the article]

Driven by increasing instances of successful 'at-risk' launch of patented drugs in America and Europe, the strategy of using 'proactive infringement' as a legal tool is now getting-in, in developing countries. The rationale behind launch-at-risk is to counterbalance the innovator companies' strategies of getting the patented product life extended through protecting improvement innovations and maintain market exclusivity even after the expiration of the compound patent. The battle for market and drive for higher profits between generics and innovator drug companies has extended the application of at-risk launch of the generic drugs even when compound patent is still running. Sitagliptin (Januvia) may be ranked at top of the drugs that have been fiercely litigated in the developing countries during their patent term. This article reviews the outcome of sitagliptin patent litigation and impact on the market exclusivity in some developing countries. This takes the position that the existing conflict between the innovators and generics can be resolved by diluting the misconception that patents on improvement innovations are misuse of patent system or inappropriate extension of patented product life on the part of innovator companies. Whether trivial, simplified or complex, if novel and non-obvious, further improvements in the precursor drugs are patentable within the legal framework of the patent system. The real issue is the scope of monopoly granted to the secondary or follow-on patents. Once the compound patent has expired, follow-on patents on improvements relating to the same compound should not be allowed to use as legal-barrier for the generic medicines entry to the market. [ABSTRACT FROM AUTHOR]

The Federal Circuit concluded that the post-URAA patent was not a proper OTDP invalidating reference against the pre-URAA patent because the URAA had not extended the term of the earlier-filed '772 patent, but actually truncated the term of the later-filed '990 patent. [12] Further, Ezra argued that the '229 patent is invalid for statutory-type double patenting and OTDP because Novartis's '229 patent claims are not patentably distinct from the '565 patent. [Extracted from the article]

In a patent infringement suit, the alleged infringer wins with a ruling of either invalidity or non-infringement, and may strictly prefer either outcome. Invalidity may increase current-period competition, but removes constraints to future innovation. We adapt the Segal and Whinston (Am Econ Rev 97(5):1703–1730, 2007) model, and show that a legal regime that considers infringement before validity maximizes the entrant patentee's innovation incentives. But the incumbent alleged infringer may prefer litigating validity first if the future blocking effect of validity is strong. This litigation strategy effect may reduce innovation levels. Antitrust policy should seek to attenuate this effect by reducing the advantage to incumbency. [ABSTRACT FROM AUTHOR]

Venture-backed startups play a crucial role in innovation and advancing our technology. However, the development of secondary markets for patents and the proliferation of patent assertion entities starting in the early twenty-first century has made the patent ecosystem a difficult environment for startups to navigate. Startups face challenges that their more established counterparts do not. First, startups must rely heavily on external sources of funding and, as a result, many decide to file for patents early in their lifecycle to signal their value to potential investors. Second, patent assertion entities threaten startups with patent infringement suits at a disproportionately high rate, which disrupts startups' productivity and diverts their limited resources. This Note explores the "vicious patent cycle." The cycle begins when startups file patents to signal worth. Then, when 90% of these startups fail, they leave behind patents that grow the "patent thicket" as well as opportunities for patent assertion entities to stifle innovation. Together, these negative externalities exacerbate the challenge of building a new company. Unfortunately, the United States patent system is not well suited to put an end to the cycle. Thus, this Note introduces a solution for startups: the small business commercialization patent. The small business commercialization patent is a modified form of the commercialization patent introduced by Ted Sichelman but is tailored to meet the unique needs of venture-backed startups. [ABSTRACT FROM AUTHOR]

The article examines the competitive nature of common institutional ownership based on a sample of patent infringement lawsuits filed by brand-name drug manufacturers against generic manufacturers in the U.S. Topics discussed include filing of the Paragraph IV patent challenges by generic manufacturers with the Food and Drug Administration, observation of anticompetitive practices, and the effect of shareholdings on the likelihood of settlement.

The article discusses the rules for venue in patent infringement lawsuits and the interpretation by the U.S. Supreme Court on the patent-specific venue statute. Also cited are the 1988 amendment by Congress of the general venue statute, the 2017 Supreme Court ruling in the case TC Heartland LLC v. Kraft Foods Group Brands, and the legislative history of the statute.

Conversant Wireless Licensing Sari v Apple Retail UK Ltd1 concerned a patent entitled "Computing device with improved user interface for application" for an invention developed to solve the problem of user interface constraints due to the small screen size of mobile phones in the late nineties/early noughties. Following a debate over whether the invention concerned mobile phones or computers in general or somewhere in between, the Patents Court confirmed that identity of the person skilled in the art can change where a patentee applies to amend its patent so as to narrow the technical field. [ABSTRACT FROM AUTHOR]

Patent rights are recognized as a property asset with an attendant right to exclude. However, recent policy developments highlight that the right to exclude is not inviolable. This paper explores two rapidly evolving exceptions to patent exclusivity, both of which take the form of compulsory licenses. First, under the international Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS"), national governments can compel patent owners to out-license technology in service of greater good. These egalitarian compulsory licenses improve access to technology but undermine patent value. Second, compulsory licenses are increasingly relied upon as an equitable remedy in U.S. patent litigation. Typically referred to as "ongoing royalties," these court-mandated compulsory licenses are a modern alternative to injunctions against adjudged infringers. TRIPS compulsory licenses and ongoing royalties arise under independent legal frameworks, but necessarily invoke parallel economic considerations. While the wisdom of each has been discussed at length by others, this paper explores principles of royalty determination employed in each context. Considering both frameworks, an analysis of where each succeeds and fails is provided, together with an exploration of optimized royalty frameworks. [ABSTRACT FROM AUTHOR]

With its decision of 29 August 2019, the Eastern High Court of Denmark brings the Danish practice on assessing legal costs in patent and IP cases into conformity with EU law in the area. The decision is expected to substantially change the court's former conservative practice of awarding costs in patent and IP cases. [ABSTRACT FROM AUTHOR]

With the judgement rendered on 21 May 2019 in a case opposing Thales andlNPI (i.e. the French Patent Office), the Paris Court of Appeal seems to adopt the famous Hitachi approach, which is favourable to the patentability of computer-implemented inventions [ABSTRACT FROM AUTHOR]

This comment reviews the seminal judgment of the JJK Supreme Court in Shanks v Unilever, which focused on the correct legal test to adopt when assessing, pursuant to s.40 of the Patents Act 1977, whether an employee-developed invention or patent is of outstanding benefit to the employer and, if so, how to calculate what constitutes a fair share of that benefit. In overturning the decisions of the High Court and Court of Appeal, the Supreme Court's ruling emphasises the fact-sensitive nature of the assessment under s.40 and gives employers food for thought on how to pre-empt future claims for compensation. [ABSTRACT FROM AUTHOR]

Nucleation events and crystal growth can be guided by molecular recognition at interfaces through intermolecular interactions. The short‐acting antimicrobial sulfa drug sulfathiazole is known for its concomitant crystallization, which has five known polymorphs, due to conformational flexibility and hydrogen‐bond synthon variation. In its development stage of a drug the issue of concomitant crystallization needs to be addressed with respect to patent litigation, including legal actions to protect patents against infringement. A functional self‐assembled monolayer (SAM) of organic thiol on a gold surface has been employed as an efficient approach to control concomitant nucleation of such flexible drugs. The crystallization on a SAM surface is mostly kinetically driven and often leads to the nucleation of novel metastable forms. Spectroscopic, thermal analysis and X‐ray diffraction studies reveal that a previously unknown, sixth form of the drug nucleates on the designed SAM surface. [ABSTRACT FROM AUTHOR]

Mr Justice Arnold, in the UK Patents Court, has held Allergan's European (UK) patent concerning the formulation of a glaucoma treatment to be invalid. This case follows and applies the Supreme Court's latest patent decision in Actavis v ICOS, taking the stance that the existing approach to obviousness is endorsed and unchanged. The judgment illustrates how the UK Patents Court is likely to take a pragmatic approach by applying some, but not necessarily all, of the factors listed in the Supreme Court's judgment. While every case on obviousness will turn on its own facts, this case also have some interesting issues arising in respect of the importance of expert witness performance, as well as the potential perils of secondary evidence. [ABSTRACT FROM AUTHOR]

Over the past two decades, a few dozen lawyers have come to dominate practice before the U.S. Supreme Court. By many accounts, these elite lawyers--whose clients are often among the largest corporations in the world--have spurred the Court to hear more cases that businesses care about and to decide those cases in favor of their clients. The Supreme Court's recent caselaw on antitrust, arbitration, punitive damages, class actions, and more provides copious examples. Though it is often overlooked in discussions of the emergent Supreme Court bar, patent law is another area in which the Court's agenda has changed significantly in the past twenty years. After rarely hearing patent cases for several decades, the Court now decides three or more patent cases nearly every Term. This Article presents an empirical analysis linking the Supreme Court's increasing interest in patent law to the elite bar's growing involvement in patent litigation. Though correlation does not prove causation, the Article relies on a novel dataset of cert petitions in Federal Circuit patent cases to suggest that the elite bar has, in fact, contributed to the growth of the Supreme Court's patent docket. Among this Article's key findings is that, in patent cases, a cert petition filed by an elite lawyer is three times more likely to be granted than a petition filed by a lawyer outside that group. And although elite lawyers account for only 16% of cert petitions filed in patent cases, their petitions account for a remarkable 40% of the petitions granted. Because patent appeals are centralized in the Federal Circuit, patent law lacks the circuit splits that the law clerks who sift through cert petitions would normally look for in recommending that the Court grant review. But the presence of elite lawyers may not be an ideal proxy for certworthiness. In fact, the increasing participation of those lawyers in patent litigation could help explain why the Court's recent patent cases, though substantial in number, mainly involve issues of jurisdiction, procedure, and statutory interpretation--not the core areas of patent law where the Court's input would be most useful. [ABSTRACT FROM AUTHOR]

Much has been written about various remedies in litigation involving intellectual property ("IP") infringements, some economic and other non-economic. A common remedy across different types of IP is lost profits. This paper explores similarities and differences among different types of IP infringement: patent, copyright, trademark, and trade secrets. Common elements needed in any lost profits claim, especially causality, are presented and along with damages implications for plaintiff and infringer by type of IP. These are a few of issues considered along with brief discussion of key statutes, cases, and the alternative of damages based on reasonable royalty rates. [ABSTRACT FROM AUTHOR]

Based on conflicting Federal Circuit case law, many academics have written, and many practitioners likely believe, that claim meanings or their applications may expand over time for purposes of literal infringement. But this common wisdom is wrong. Under existing Federal Circuit rules, the first precedent controls in the event of a conflict over doctrine, unless and until reversed en banc. The first precedent on the issue, the 2000 Schering Corp. v. Amgen, Inc. case, held that claim scope does not reach after-arising technologies for literal infringement and suggested that if it did, then such claims would lack written description support. Under existing validity precedents, temporally expanding claim scope would violate both § 112(a)'s enablement and written description requirements, as explicitly held in the 1977 In re Hogan decision and as implied by the more recent 2010 Ariad Pharmaceuticals v. Eli Lilly & Co. en banc decision. Further, were claims able to expand over time for literal infringement, they would violate the axiomatic equivalency of claim scope for validity and infringement. Once it is recognized that claim scope for literal infringement does not protect against after-arising technologies, further resort will be made to seek such protection under the doctrine of equivalents. This not only highlights the importance of the Ariad Pharmaceuticals decision but also will cause a big change to current practices and will lead to increased uncertainty regarding the scope of patent protection. This Article explains why academics and practitioners may be confused regarding the U.S. law of literal infringement's temporal scope. It describes the conflicting cases that have led to that confusion. And it explains why § 112(f)'s rule of construction for functional claiming language may be understood to limit all claim scope to temporally fixed, known-to-be equivalent technologies. This Article concludes by noting potential conflict with the pioneering invention doctrine and concerns should the law be changed to permit claiming the future. [ABSTRACT FROM AUTHOR]

The Court reasoned that the claims are directed to the ineligible natural law that blood MPO levels correlate with atherosclerotic cardiovascular disease. In I Ariosa i , the Court held a claim directed to a method for detecting a paternally inherited nucleic acid of fetal origin was patent ineligible because the amplification and detection techniques were admittedly known in the art. Lastly, it is important for generic companies to remember that the courts are not bound by the USPTO's subject matter eligibility guidance for determining patent subject matter eligibility, which are often relied upon by Applicants during prosecution to overcome a rejection under 35 U.S.C. § 101. [Extracted from the article]

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