November 12 (Tue)
Evolving Challenges in Patent Prosecution
8:30 Registration
8:55 Welcome
9:00
U.S. double patenting: Update on case law (from In Re Cellect to Allergan) and the new rule on terminal disclaimers proposed by the USPTO
(Jonathan B. Roses)
The U.S. doctrine of obviousness-type double patenting ("OTDP") -- a validity challenge to patents listing a common inventor or owner that do not otherwise qualify as prior art to one another -- is a rapidly developing area of law. The Federal Circuit has recently provided some clarity on the scope of the doctrine, but many unanswered questions remain. Meanwhile, the U.S. Patent & Trademark Office in May proposed a rule on terminal disclaimers (a mechanism to address OTDP) that, if enacted, would significantly impact long-standing patent prosecution strategies, and utlimately the ability for patentees to secure claims to subject matter in continuing applications after obtaining an initial patent. These developments, and what might come next, will be discussed.
9:45
Patentable subject matter (Sec. 101) in the U.S. and the expected impact of the Patent Eligibility Restoration Act (PERA)
(Scott A. McKeown )
After November elections the U.S. Congress will conduct a "lame duck" session in which previously unpopular legislation is more likely to pass into law. With significant effort to improve PERA & the Prevail Act, the current state of this legislation will be discussed, along with any expected changes to U.S. law.
10:15
Recent change to obviousness analysis in U.S. design patent law - LKQ Corp., Keystone Automotive Industries, Inc. v. GM Global Tech. Operations LLC (CAFC 2024)
(Scott A. McKeown )
The Federal Circuit recently issued an en banc decision in LKQ Corp. et al. v. GM Global Technology Operations LLC, overturning the long-standing obviousness test for design patents. This presents a potentially significant shift for design patent law.
10:45 Coffee break / 休憩
11:15
Claim interpretation at the EPO and the UPC / The U.S. perspective on claim interpretation
(Lasse Christian Weinmann / Sebastian Giese / Jonathan B. Roses)
Recent case law of the UPC and several pending EPO Board of Appeal cases have put the principles of claim interpretation in Europe under scrutiny. We will discuss the developments at the EPO, including the G 1/24 referral and related appeal cases, and the approach taken by the UPC with a particular view on the impact of the description on claim interpretation. Our presentation will also report on practical experience gained from exemplary UPC cases and contrast with the approach to claim interpretation taken in US courts and at the US Patent and Trademark Office.
12:00
EPO case law on data requirements in various technologies after the Enlarged Board of Appeal’s decision on plausibility in G2/21
(Daniel Grohs / Axel T. Esser)
The Enlarged Board of Appeal in G2/21 defined new criteria for admitting post-published data to support inventive step discussions. As the previous plausibility case law no longer applies, the Technical Boards of Appeal have issued several decisions over the last months that discuss the “encompassed and embodied” requirements that are developed in G2/21. We will take a detailed look at the new standard and explain how the Technical Boards of Appeal interpret the new concept in the field of life science and how it expands into other technologies.
12:30 Lunch break (3F „SHINJU”) / 昼食 (3階「真珠」)
13:45
EU reforms on data protection and SPCs
(Jan Carl Zillies / Jonathan B. Roses)
The presentation relates to the reform of the EU pharmaceutical legislation with respect to regulatory data exclusivity and supplementary protection certificates (SPCs).
In the EU, originator companies currently are entitled to 8 years of so-called regulatory data protection (RDP). After this term generic or biosimilar manufacturers may request marketing authorization by referring to the originator’s data, followed by 2 (and possibly 3) years of marketing protection before they can launch, known as the 8+2+1 regime. This regime is currently under reconsideration.
Supplementary protection certificates (SPCs) are an intellectual property right that serve as an extension to a patent right for pharmaceutical products that have been authorized by European regulatory authorities. The EU is currently planning a reform that aims at a harmonization of EU IP law as well as cost benefits for applicants and that will replace the existing SPC regulation by new ones including the current national procedure as well as a new centralized procedure for the granting of national SPCs and unitary SPCs, where the basic patent is a European patent that has unitary effect.
14:15
European filing strategies in view of the new Unitary patent and unified patent court
(Clemens Tobias Steins / Michele Baccelli)
With the Unified Patent Court (UPC) delivering fair decisions and increasing its attractiveness as a litigation forum, the unitary patent (European patent with unitary effect) offers an efficient and effective way to protect inventions over a large territory. More than one third of patents originating from applicants in EPO member states are registered as unitary patents, while the international adoption rate lags far behind. However, patent owners have also developed filing strategies to maximize the effectiveness and security of their most valuable inventions.
14:45
Assessment of patent validity before the UPC - how does it compare to the EPO and national courts?
(Klemens Stratmann )
The UPC's first decisions on revocation actions and the UPC's assessment of validity in provisional injunction proceedings indicate the UPC's approach to assessment of validity, and how it differs from the practice of the EPO and national courts.
15:15 Coffee break / 休憩
15:30
Comparative EP/US treatment of inventions to AI or other digital technology
(Axel T. Esser / Edward J. Russavage)
As AI-related patent office treatment is evolving quickly, a review of the comprative treatment of AI-related cases by EP/US is discussed.
16:15
Expanding horizons – mastering interdisciplinary innovation
(Dominik Scheible / Edward J. Russavage / Axel T. Esser / Mark A.G. Jones )
Technologies evolve – perhaps faster than ever before. In addition, scientists and engineers look at and talk to each other also beyond their classical disciplines, which further boosts innovation. As a result, inventions more and more find their roots in different technologies. What are the effects on prosecuting and enforcing such applications and patents? Can the examiners (and your attorneys) keep pace?
17:00 Q&A
17:30 End of Conference Day 1
18:00 Reception (3F „SHINJU”) / レセプション (3階「真珠」)
November 13 (Wed)
Patent Litigation and Enforcement Strategies
8:30 Registration
8:55 Welcome
9:00
Recent trends in IPRs in the US and revocation actions, oppositions in Europe (national, UPC, EPO)
(Klemens Stratmann / Scott A. McKeown)
Expected changes to PTAB practice will be discussed as the USPTO prepares for a new Director, and potentially new discretionary denial policies.
9:45
Update on the Sanofi/Regeneron v. Amgen revocation case after the decision of the UPC
(Lasse Christian Weinmann / Jonathan B. Roses)
The US Supreme Court’s revocation decision in the Sanofi/Regeneron v. Amgen case and the recent 1st-instance decision by the Unified Patent Court (UPC) in Europe impact on the validity of broad claims in the field of biopharmaceuticals and other fields. While the decision by the US Supreme Court was based on lack of enablement, the UPC’s counterpart decision focuses on lack of inventive step. We will discuss the differences between the approaches taken by the courts, follow-up case law on enablement and the related issue of written description issued by the US courts and the US Patent and Trademark Office, and implications for patent litigation and drafting.
10:10
First hand experience from hearings/procedures before the UPC and resulting strategies for Europe
(Mark A.G. Jones / Clemens Tobias Steins)
Will the Unified Patent Court (UPC) become the new rocket docket of international patent litigation? The UPC issues its decisions in main infringement and revocation actions in the promised 12-14 months. Provisional injunctions are decided in about three to five months. Patent right holders but also challengers are responding by steadily increasing their use of the UPC as an attractive forum for international patent litigation.
10:50 Coffee break / 休憩
11:10
Comparative panel on litigation strategies and choice of venue
Extraterritoriality in patent litigation
(Dirk Schüßler-Langeheine / Jonathan B. Roses)
The Japanese IP High Court Dwango case raises issues of liability for patent infringement in a cross-border context. Practically relevant constellations include cases where certain elements of the infringing act are carried out abroad, or where damage materializes in a country different from the country of patent protection. We will look into the pertinent case law in the U.S. and in Europe dealing with such cases.
Transparency and confidentiality in IP Litigation
(Holger Stratmann)
Finding the right balance between confidentiality and transparency is a challenge for the newly formed UPC. While decisions of the court are published (with a certain delay), third parties often wish to access pleadings filed in UPC patent cases. The UPC has handed down first decisions on the conditions under which such access is possible. And there is also initial guidance on how parties can effectively protect confidential information during the proceedings.
Attorney fees and exceptional cases in the U.S. (Delaware NPE disclosures)
(Gerald B. Hrycyszyn)
In the U.S. the usual rule is that each side pays its own attorney fees, regardless of who wins. In patent suits there are some circumstances under which the prevailing party can get their attorney fees paid.
Texas Courts – What to know
(Gerald B. Hrycyszyn)
Texas courts are still the most popular venues for plaintiffs to file patent cases. We examine recent trends and best practices in transfers out and motion to stay.
12:50 Q&A
13:00 Lunch break (3F „SHINJU”) / 昼食 (3階「真珠」)
Executive Session: Strategic Approaches to International Patent Disputes and IP Monetization
14:00
New legislation, initiatives, and trends
Litigation funding in the U.S. – the business of patent litigation
(Gerald B. Hrycyszyn)
Litigation funding - how does it work, what are the returns on investment funders are looking for, and how can defendants drive funded cases towards settlement.
The recent EU proposal on regulating SEPs
(Michele Baccelli)
The EU plans to regulate SEPs, by introducing the registration of SEP rights with European authorities, essentiality checks performed by the EUIPO IP Office, and a process for reviewing FRAND rates. The regulation aims at also limiting enforcement possibilities under certain conditions, which may be open to further discussions. The talk summarizes the upcoming changes and how parties, both SEP holders and users, may need to adapt their overall strategies if the regulation is finally adopted.
EU revision of antitrust law on technology transfer (TTBER)
(Clemens Tobias Steins)
The EU Block Exemption Regulation on Technology Transfer Agreements (BERTT) provides a framework for licensing agreements to comply with EU competition law. The BERTT is currently under review by the European Commission. A revised regulation will be announced by the end of this year. We provide a brief overview of the key elements of the BERTT and the related guidelines, as well as the likely revisions.
Impact of the EU Data Act
(Clemens Tobias Steins)
With better and new ways to process and use large amounts of data, especially with AI and IoT, data becomes not only a valuable resource, but also a lock-in factor. The EU Data Act aims to incentivize data holders to continue investing in high-quality data generation and better services. Users are given the right to access and share with third parties the data generated by their use of connected products. This creates obligations for manufacturers of connected products, but also opportunities for the invention of value-added services using such data.
14:45
Keys for success in international patent disputes
Executive summary of morning session on litigation strategies and choice of venue
(Gerald B. Hrycyszyn / Dirk Schüßler-Langeheine)
In the first part of this session we will present a digest of the most important strategic aspects to prevail in patent disputes in the US and in Europe, respectively.
Key aspects of global IP disputes
(Gerald B. Hrycyszyn / Dirk Schüßler-Langeheine)
In the second part of this session we will have a closer look into the cross-border aspects of patent disputes and their strategic implications.
15:30 Coffee break / 休憩
16:00
IP Disputes and monetization, views from industry
(Michele Baccelli / Gerald B. Hrycyszyn)
Guest Panelists:
Many companies consider IP to be a cost center useful only to defend a company’s business or a lever to use in business negotiations. It can also be a potential stream of revenues fully justified by the technical advances reached by one company. This panel presents views from the industry and discusses possible strategic approaches towards extracting value from a enhancing the value of one company’s investment in its IP assets.