Market Insight

Updates from an international team of correspondents who report on recent developments in IP law and practice in their home jurisdictions, as well as strategic issues and those relating to finance, dealmaking and valuation.

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USA

20 APRIL 2022

How to reduce the number of Alice-based rejections

Tightening up the Step 2A, Prong One analysis under Alice promises to create enhanced clarity and decreased uncertainty in the category of economic practices and principles. Parallels can be drawn with the increased certainty in patent examination achieved by the Berkheimer decision and its associated memorandum.

30 MARCH 2022

The long reach of Alice and a potential solution to abstract idea rejections

Patent claims related to economic practice continue to be rejected under the Alice sub-category. However, a simple three-part test could help to introduce fairness and stability.

15 DECEMBER 2021

Trademark Modernisation Act rules usher in big changes for brand owners

US trademark owners will have fresh options for expunging, re-examining and cancelling trademarks once key provisions of the Trademark Modernisation Act come into effect later this week. While the changes are designed to encourage a more efficient registration process, they are a significant shake up to the existing regime.

18 AUGUST 2021

China may be a guiding light for small claims IP courts in the United States

Several key senators have asked the USPTO to carry out a study on small claims courts to ascertain whether these would be a suitable venue for patent rights. The study raises the question of whether China’s new internet courts could be a useful model.

14 JULY 2021

US Supreme Court limits Patent Law’s assignor estoppel doctrine

In a significant ruling, the Supreme Court has handed down its decision in Minerva Surgical v Hologic Inc, signalling a change for invalidity claims.

23 JUNE 2021

The pros and cons of non-publication requests

Non-publication requests are common when filing a patent application before the USPTO. However, applicants often make these requests without understanding the potential pitfalls of doing so, which can have severe consequences.

05 MAY 2021

Federal Circuit highlights limitations to claim construction when essential structure is only found in preamble

The Federal Circuit has handed down its decision in Simo Holdings Inc v Hong Kong Ucloudlink Network Technology Ltd, which clarifies a crucial issue with regard to constructing the preamble in a patent claim.

21 APRIL 2021

The Trademark Modernisation Act 2020 – all you need to know

The new Trademark Modernisation Act signals a complete overhaul of the trademark system. It is crucial that brand owners and IP professionals get to grips with these changes, as they will significantly strengthen trademark rights.

07 APRIL 2021

Federal circuit finds oral presentations constitute printed publications in post-grant reviews

The US District Court of Appeals for the Federal Circuit has issued a precedential decision addressing what kinds of documents are considered to be publicly accessible and why the PTAB cannot hold that a claim is unpatentable based on a theory of unpatentability that was not presented by the challenger.

31 MARCH 2021

IP due diligence considerations in view of recent US case law

Recent Federal Circuit precedent has highlighted issues surrounding inventorship and the factors that IP holders should consider during the due diligence process.

03 MARCH 2021

Federal Circuit raises the enablement bar for antibody patents

The Federal Circuit has issued new guidance in light of Amgen v Sanofi, stating that patentees should take particular care to describe and claim various structural antibody features without relying solely on functional properties of those antibodies.

17 FEBRUARY 2021

Growing complexity of ITC product redesign disputes could threaten rights holders

While the International Trade Commission has procedures to determine whether a new or redesigned product infringes the IP rights at issue and come under an exclusion order, determining this is a contested area, so rights holders should be well versed in the process.

10 FEBRUARY 2021

The road less travelled for dispute resolution – the benefits of ENE in patent litigation

A dive into the merits of early neutral evaluation presents compelling reasons for why patent litigants should consider it as an early, cost-effective alternative in future cases.

27 JANUARY 2021

Biden administration promises hard stance against Chinese IP abuses

US IP experts discuss what the Biden administration has in store for the IP world, including a more multilateral approach to US-China trade practices.

06 JANUARY 2021

Fintiv and the increased need to be expeditious

Companies looking to leverage post-grant proceedings before the PTAB should file a petition as soon as practicable. US IP experts provide crucial information on how to do so.

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