DAY 1 - November 8 (Tue)
AM: 9:00– 12:45 (JST)Focus High Tech/ ハイテク技術
9:00 – 9:05 Greeting
9:05 – 10:00
Patent Eligibility and inventive step in software and non-software inventions
(Dr. Dominik Scheible / Ed Walsh)
Eligibility and technicality continue to cause quite a headache for patent practitioners. More and more innovations originate from the virtual world and form the basis for valuable business products like apps, services and content delivery. Naturally, interest remains high in protecting such concepts that are outside the greasy hands-on world. Prosecution issues are best addressed at the very beginning of a patent - namely, at the time of drafting. We provide guidance of what thoughts to make and what disclosure to add. These same headaches are creeping into inventions for even the greasiest of hands in the U.S. We will update on this trend and provide guidance on how to position applications for the best chance for avoiding these headaches.
10:00 – 10:40
Challenges and guidelines for patenting quantum computing technologies
(Dr. Sarah Schlotter / Dr. Axel T. Esser)
The EPO and USPTO have identified Quantum Technologies and Space - ESPI as an important emerging technology with an increasing number of patent applications being filed globally. This presentation will focus on official guidance and remaining challenges in patent prosecution, such as subject matter eligibility, in this growing area of technology.
10:40 – 11:00 Coffee Break
11:00 – 11:45
Patenting AI-based inventions and when AI makes the invention
(Michele Baccelli / Ed Walsh)
Computing power permeates the invention process: whether the invention is in how computer is constructed or programmed or the invention is amazing insights unlocked by AI or simulations executing on the computer. We’ll provide an update on patenting of AI and computer simulations at the EPO one year after G1/19: What you should know when drafting patent applications to be later filed at the EPO. From the U.S. side, we will provide an update on recent caselaw concerning the role of AI in the invention process and discuss issues yet to come.
11:45 – 12:30
Case Studies on Infringements by Cross-Border Activities
(Dr. Clemens Tobias Steins / Hunter Keeton)
Based on fact patterns such as those underlying decisions by Japanese courts, e.g. the IP High Court’s decision in Dwango vs. FC2 (internet streaming by a server abroad) and the Osaka DC’s decision in Murata vs. OPPC (supply of disassembled product to abroad), as well as the supplying of data as potentially a product directly obtained by a patented process, we will analyze how courts in the U.S. and Germany, as well as the UPC, would likely decide.
12:30 – 12:45 Q&A
12:45 - 14:00 Lunch (Roppongi Hills Club)
DAY 1 - November 8 (Tue)
PM: 14:00 – 17:00 (JST)General Prosecution and Litigation / 権利化と権利行使
14:00 – 15:10
U.S. and EPO Case Law Update
(Gerald Hrycyszyn / Dr. Mark A G Jones / Christpher Furlong)
This discussion provides an update on significant U.S. intellectual property decisions. The US law update will cover issues the Federal Circuit has recently weighed in on, including the recapture doctrine, obviousness-type double patenting, the written description requirement, and use of written description challenges in IPRs. We will also discuss the recent Patent and Trial Appeal Board’s guidance on the standard for discretionary denials in post-grant proceedings. On the European side, we will look into recent trends in EPO case law, with a focus on functional claiming where there have been recent board decisions shedding light on the intersection of clarity, sufficient disclosure and inventive step.
15:10 – 15:45
Contractual issues that impact jurisdiction and the ability to bring IPRs
(Aya Cieslak-Tochigi / Dr. Clemens Tobias Steins)
There has been a line of cases in the past few years and earlier this year (Nippon Shinyaku Co., Ltd. v. Serepta Therapeutics, Inc.) on the impact of CDAs, forum selection clauses and no challenge clauses on the ability to bring IPRs in the US. From a comparative viewpoint, we will look into the relevance of such kind of contract clauses for litigation in Europe.
15:45 – 16:00 Coffee Break
16:00 – 16:45
Recent trends in US and German patent litigation
(Gerald Hrycyszyn / Dr. Michael Pfeifer )
In Germany, in 2021 a disproportionality defense against the grant of an injunction for infringement has been introduced in German patent law. How has the practice changed in view of the new law? How has the newly introduced system for protection of confidential information in patent litigation changed the practice, and how does it help patentees to enforce their patents effectively? We will also present an update on the German separation system, and how the courts try to strike a balance between both sides’ interest. --- In the US there have been big changes to litigation in the U.S. District Court for the Western District of Texas. This discussion will address the new procedures for assignment of judges to patent cases filed in the Western District of Texas, and how these changes have impacted the venues where patent cases are being filed.
16:45 – 17:00 Q&A
17:00 End of conference
17:30 - 20:00 Reception (Roppongi Hills Club)
DAY 2 - November 9 (Wed)
AM： 9:00 – 12:45 (JST)Focus Life Science /ライフサイエンス
8:55 – 9:00 Greeting
9:00 – 9:45
Case study on inventive step at the EPO vs. national courts in Europe and non-obviousness in the US
(Dr. Daniel Grohs / Dr. John Van Amsterdam )
In Europe, the outcomes in national courts and the EPO in cases presenting identical questions can be quite different, despite identical prior art, identical relevant claim elements, and identical definition of the skilled person. The presentation will examine a particular case having these parameters, and will examine the likely outcome of a case with such facts in the United States. The comparison of the outcomes will illustrate the strategies needed to achieve optimal outcomes in different jurisdictions.
9:45 – 10:30
Clinical Trials as Prior Art
(Dr. Jan Carl Zillies / Dr. Jeffrey D. Hsi )
Pharmaceutical drug development involves several stages of clinical testing. The respective study design and results once having been published become prior art for further developments. The presentation focuses on the implications of the published information on clinical studies for the discussion of novelty and inventive step of later patent applications relating to further results and observations.
10:30 – 10:45 Coffee Break
10:45 – 11:50
Plausibility/Enablement and written description requirements
(Dr. Daniel Grohs / Dr. Jeffrey D. Hsi )
Post-filing and post-published evidence plays a significant role in establishing sufficiency of disclosure and/or inventive step (EP) and non-obviousness (US). In referral G2/21 (“Plausiblity”), the Enlarged Board of Appeal of the EPO is asked to decide on the question whether relying on post-published evidence should be possible in any case or whether the respective technical teaching has to be made plausible in the application as filed. Similarly, appropriate support at filing of an application and the use of subsequent post-filing data to establish enablement under US requirements for patentability will be discussed. Additionally, recent decisions by the US Court of Appeals for the Federal Circuit have directed focus on the US requirement for written description with conflicting results giving rise to questions on the appropriate standard to be applied.
11:50 – 12:30
Recent developments in SPC matters and allowed pre-expiry activities under the SPC manufacturing waiver in Europe and in the US
(Dr. Jan Carl Zillies / Dr. John Van Amsterdam )
The presentation will give a brief overview of the latest developments in the field of the European mechanism of pharmaceutical patent term extensions (Supplementary Protection Certificate - SPC). These involve further referrals to the European Court of Justice, the SPC manufacturing waiver including Brexit related implications and SPCs under the Unified Patent Court Agreement (UPCA). The analogous patent term extension provisions in the United States will also be discussed, as will the opportunities provided under US law for competitor activities prior to patent expiration.
12:30 – 12:45 Q&A
12:45 - 14:00 Lunch (Roppongi Hills Club)
DAY 2 - November 9 (Wed)
PM: 14:00 – 17:00 (JST)Focus UPC and Unitary Patent/ 統一特許裁判所と統一効特許
14:00 – 14:30
Overview, time lines and how to prepare for the UPC and EP-UE
(Dr. Michael Pfeifer )
Europe is now about to undergo a long-awaited and fundamental change of its patent system: The establishment of a Unified Patent Court (UPC) and the introduction of a European patent with unitary effect (EP-UE). What needs to be done, and when, to be well-prepared for the new system? We will highlight the impact of the new system, focusing on pitfalls and misunderstandings about how the new system will work in practice.
14:30 – 15:30
Opt-out strategies and practicalities
(Dr. Dirk Schüssler-Langeheine / Dr. Clemens Tobias Steins)
Which patents and patent applications should be opted out before the start of the new system? All, some or none? Opting out everything bears risks and disadvantages many do not fully appreciate. Finding a balanced strategy in an effective way is key for getting in a good position for the new system. --- For the patents and applications to be opted out it is key that the opt-out is legally effective and survives potential legal challenges before the UPC. We inform you about pitfalls in the UPC Rules of Procedure and how to avoid being trapped in UPC litigation through an ineffective opt-out declaration.
15:30 – 15:45 Coffee Break
15:45 – 16:15
How to make best use of the new system I: Prosecution Strategies
(Michele Baccelli)
We will share main considerations speaking for or against choosing European patent with Unitary Effect for selected future patents. The option of double protection by two overlapping European patent or a national patent in addition to a German patent will also be considered.
16:15 – 16:45
How to make best use of the new system II: Litigation Strategies
(Dr. Dirk Schüssler-Langeheine )
By way of opting out, you can avoid the UPC’s jurisdiction over some or all of your patents. But actively using the new system provides for effective enforcement strategies in Europe that have not been known in the past and result and may result in exposure of your competitors. If you do not use the UPC, your competitors may (and some will) do so, and it is important to have equally effective tools in your patent portfolio!