The patent lottery

A recent study by Boston academic economists James Bessen andMichael Muerer has argued that many patents are simply not worthhaving. Their case is based on the analysis of a large bodyof data. As James Bessen says, in a comment posted in responseto criticism on the IPKat weblog,

"We derived our estimatesof patent rents after reviewing 16 different papers publishedover 25 years, involving 17 different authors and several differentmethodologies.     

The software patent debate

Legal context. This article has practical application for thoseworking in the patent field, particularly with regards to thefiling of software patent applications. Key points. The article provides a detailed explanation of thestate of the art with regards to the legal protection of software,and describes the latest legal developments in the area, includingthe failed Directive on Computer Implemented Inventions andsome recent cases that may shed more light on some of the technicalissues involved in the area of software. The paper also exploressome of the arguments put forward by those in favour and opposedto software patents, in order to ascertain their validity. Practical significance. Existing case law may provide help tosolve the problem of patentability, but it might also be a goodidea to resurrect the idea that there should be a sui-generissoftware right.     

Deploying pre-grant patent opposition mechanisms in Africa to monitor abuse of the patent system

This article examines the extent to which African countries could deploy pre-grant patent opposition provisions in their domestic patent regimes to mitigate the abuse of the patent system. The author argues that the public has the right to participate in the patent system in order to oppose the grant of bad patents. Therefore, if African countries were to strengthen legislative provisions on pre-grant opposition civil society and non-governmental organisations that represent the interests and will of citizens would be able to invoke key provisions to challenge any abuse in the patent system in order to protect the public interest.     

Negative declarations in patent cases

The Patents Court has ruled that it has discretion to awarda claimant a negative declaration that its own product was obviousat the priority date of certain divisional applications. Thegrant of the declaration sought would assure the claimant thatit was not accruing ongoing liability.     

专利权质押贷款风险之化解——兼评相关地方新出台的专利权质押贷款管理办法

专利权质押贷款存在着专利权被宣告无效、专利权评估不准确、专利权实现、丧失专利权、被宣告破产等诸多风险。去年以来,我国一些地方政府出台的有关专利权质押贷款管理的相关规定,试图通过立法化解风险,但对借款人、专利权人所面临风险普遍关注不够,使得借款人和专利权人在现有专利权质押贷款制度下面临的风险增大。有必要通过“接管”借款企业、建立化解专利权质押贷款风险的风险补偿金制度以及重新确定政府在专利权质押贷款中的职责等措施,真正化解专利权质押贷款风险。     

Failure to register exclusive patent licence

In professional negligence proceedings a patent agent's causationdefence was summarily dismissed under CPR 24 on the basis thatthe defendants had no real prospect of success and there wasno other compelling reason why the issue should have to be disposedof at trial.     

Using patent filings to measure innovation

Ever since Bennett Woodcroft compiled his seminal index to theearly English patents, it has been recognized that the emanationsfrom Patent Offices contain a wealth of information. Battelle,in their work on patent trends analysis, revealed that approximately50 per cent of patents are used during their lifetime and that80 per cent of the information obtainable from patents is notavailable from any     

Injunctive relief in US patent practice

Legal context. Injunctive relief is available in civil actionsin the United States. Patent litigation is no exception andthe US patent statute explicitly permits it. Because it is aneffective remedy, injunctive relief is commonly sought togetherwith the monetary (legal) remedies which are available to patentowners when enforcing patent rights. Key points. On 15 May 2006 the US Supreme Court in eBay, Incet al v MercExchange, LLC altered the prevailing practice sayingthat ‘the decision whether to grant or deny injunctiverelief rests within the equitable discretion of the districtcourts, and that such discretion must be exercised consistentwith traditional principles of equity, in patent disputes noless than in other cases governed by such standards’. Practical significance. This article will focus on the availabilityof permanent injunctions in patent infringement actions in lightof the Supreme Court's recent ruling in eBay, Inc et al v MercExchange,LLC.     

修改专利文件的合法性审查

在专利申请审查和无效宣告审查程序中，专利权人可能需要对专利文件进行修改。但这种修改必须符合法律规定，否则可能影响专利权的效力或者不会被接受。修改的基本原则是不能超出原申请文件记载的信息，且在无效宣告审查程序中不得增加未包含在授权的权利要求书中的技术特征，仅能以删除或合并的方式修改权利要求。司法案例对上述原则进行了具体诠释。     

The wonderful world of patent drafting

To anyone involved in patent litigation, it is clear that thetask of drafting is not for the faint-hearted. Those who draftpatents are acutely aware of the pitfalls which await theirclients following even a mere slip of the pen. This commentator,who is daily involved in the pre-filing review and prosecutionof patents and, alongside clients, assisting lawyers in manycountries with patent litigation,     

Oxaliplatin: a 'basic' patent problem

In an application for a declaration of non-infringement withrespect to a patent claiming a method of preparation for a drug,a claim specifying that the pH is adjusted to be between 3.0and 6.0 by adding an alkali solution required a distinct additionof alkali and was not infringed by use of a reagent that yieldeda pH within the specified range without the need for separateaddition of alkali.     

Terrell on Patents--a patent attorney's perspective

‘A book may be good for nothing; or there may be onlyone thing in it worth knowing; are we to read it all through?’(Samuel Johnson) This section is dedicated to the review ofideas, articles, books, films and other media. It will includereplies (and rejoinders) to articles, the evaluation of newideas or proposals, and reviews of books and articles both directlyand indirectly related to intellectual property law.

Terrell on the Law of Patents By Simon Thorley, QC, RichardMiller,     

Maximizing patent term in the USA

Legal context: The standard term of a US utility patent is twenty years fromits filing date, but the term may be extended for various reasons.The statutory Patent Term Adjustment (PTA) scheme automaticallyextends the term of a patent by the number of days of delayin prosecution attributable to the United States Patent andTrademark Office (USPTO), minus the number of days of delayattributable to the applicant. By avoiding actions or inactionsthat result in delay, a US patent applicant may maximize theterm of the resulting patent. This article is intended particularlyfor practitioners outside the US who are instructing a US practitioner. Key points: Delay by the applicant chiefly results when more than threemonths elapses from the mailing of a USPTO action or requirementto receipt of the applicant's response or when a paper is filedat an inappropriate time. Such delays may be avoided or minimizedby promptly sending instructions and required documents to theUS patent attorney or agent in charge of the case. Time spentin an ultimately successful appeal of a final rejection willincrease PTA. Errors in PTA calculations by the USPTO may becorrected upon filing a request. Practical significance: PTA can be a potent source of extended US patent term, especiallywhen the applicant takes care not to introduce delay into theexamination process.     

For the health of the economy and patent system: rationale and scope of patent attorney privilege

Legal context: There exists, in some countries, a patent attorney privilege.This privilege allows an actual or potential holder of patentrights to withhold from a court communications that it has hadwith its patent attorney. The privilege is not recognized inall jurisdictions and there is variation in the extent of theprivilege in those countries where it does exist. Key points: This article explores the rationale for the privilege in orderto see if there is a sound basis upon which to found it. Througha consideration of the justifications for other legal privileges,the article finds that patent attorney privilege is a justifiableprotection for communications between clients and their patentattorneys. If there was a possibility that the communicationswould have to be revealed in court, this may impact the fulland frank nature of the communications. Such communicationsassist patent attorneys, as professionals with expertise ina specialized field, to provide clients with appropriate andeffective advice. That advice goes directly to the maintenanceand benefit of the patent system and the overall economy. Practical significance: As a result of the variation in the extent of the privilegearound the world, there are moves afoot to reform its operation.This article reveals strong public policy reasons for the recognitionof a patent attorney privilege. These grounds also reinforcethe need to ensure that privilege is not unduly limited in itsoperation in any jurisdiction.     

飞利浦专利被宣告无效之后——德国法院专利无效判决引发的思考

2005年6月,德国联邦专利法院以缺乏创造性为由认定飞利浦的一项DVD专利的全部权利要求在德国范围内无效。在专利实体法全球一体化趋势日益明显的大背景下,如果某一专利被某国法院判决无效,尤其是以缺乏新颖性或创造性为由判决专利无效,那么很可能该专利的同族专利也无效。如果专利权人在明知这些专利事实上已无效甚至法律上已被宣告无效的情况下仍然把它们作为许可的标的,那么广大被许可人可以要求许可费的返还或者拒绝支付许可费。如果专利权人以侵犯这些专利为由起诉拒绝交纳许可费的DVD生产商或销售商,则可能构成恶意诉讼。     

Adjudication of patent validity is sent home

The Court of Justice restrictively interprets the Brussels Convention,frustrating the development of transnational adjudication ofpatent infringement claims by precluding a court from consideringthe validity of a foreign patent even where the decision onlyhas effect between the parties.     

Experimental use and patent infringement in Europe

Bird & Bird's Trevor Cook has produced another thoroughand insightful analysis, this time on the important area ofdefences to patent infringement for research activities in Europeand, in particular, the UK. The work, published both as a Report of the Intellectual PropertyInstitute and, in abbreviated form, in the Intellectual PropertyQuarterly, assesses historical and international perspectiveson defences for experimental or private uses and regulatoryreview. It analyses, in turn, the consequences for failing     

Economic incongruities in the European patent system

This article suggests that the consequences of the ??fragmentation?? of the European patent system are more dramatic than the mere prohibitive costs of maintaining a patent in force in many jurisdictions. The prevalence of national jurisdictions, which are highly heterogeneous in their costs and practices, over the validity and enforcement of European patents, induces a high level of uncertainty and an intense managerial complexity which reduce both the effectiveness and the attractiveness of the European patent system in its mission to stimulate innovation.