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Patent Infringement Damages in the United States of America

Beginning in 1982, appeals from all patent infringement cases at the trial level were sent to the newly created Federal Court of Appeals for the Federal Circuit ("CAFC"), sitting in Washington, D.C. Previously, appeals had been heard by the regional Courts of Appeals throughout the United States of America. The creation of the new CAFC resulted in two factors which have increased patent litigation in the U.S. First, there was a significant increase in sustaining the validity of patents by the CAFC, compared to the regional Courts of Appeals. Secondly, and the focus of this article, new and expanded damage theories were approved by the CAFC. This has greatly increased potential monetary recovery and in turn, increased the incentive to file and prosecute patent infringement cases in the U.S. The discussion that follows is intended to summarize some of the basic novel and expanded damage theories approved by the CAFC.

Regan J. Fay, Esq., & Thomas R. Goots, Esq.

Breadth of Claims for Biotech' Inventions at the EPO

The extent of breadth of biotech' patent claims at the European Patent Office (EPO) is far from clear cut, especially if the claims are drafted to cover very broad concepts. This article summarizes the position taken by the EPO in dealing with broad patent claims and suggests how recent case law might be applied in securing effective protection for biotech' inventions.

Charles Harding, Esq., Ph.D., Antonio Maschio, Esq., Ph.D. and
Claire Power, Esq., Ph.D.

Protein Variants in Europe and the United States

One of the most challenging aspects of a modern patent practice is building a working knowledge of the myriad differences between the major patent systems of the world. While the majority of these differences are procedural in nature, there are a number of substantive legal differences that a patent practitioner must deal with. In some cases these differences create patents of vastly different scope depending on the patent office granting the patent. This article addresses one such difference in the field of recombinant biotechnology, the differences in the treatment that 'protein variant' claims receive in Europe and the United States.

Patrea L. Pabst, Esq. and David E. Huizenga, Esq., Ph.D.

Trilateral Disharmony: Enablement Standards for Pharmaceutical Inventions in the U.S., Europe and Japan

Japan takes a vastly different course as compared to Europe and the U.S. in considering whether or not it is enabling. While it is not the explicit purpose of the current trilateral talks between the patent offices of Europe, the U.S. and Japan to harmonize their laws and practices, clearly these talks reflect a desire to provide consistency for patent applicants from all three jurisdictions. Probably no one in Japan or the two other jurisdictions would disagree that achieving such harmonization is a worthy goal.

Kate H. Murashige, Esq., Ph.D.,

Patentability of Software-Related Inventions Under the European Patent Convention (EPC)

Under the EPC, there is the rather well established principle that every technical invention and only a technical invention is patentable. However, included in the EPC is the specific legal provision, namely Article 52 (2) and (3), which stipulates that schemes, rules and methods for performing mental acts, playing games or doing business as well as mathematical methods and representations of information are not patentable as long as claimed “as such”.

Wolfgang Wess, Esq. and Maximilian Engelhard, Esq., Ph.D.

Guide to Patenting in the 21st Century

Judging from trends over the past several years, the patent system and its participants will face two major challenges in the 21st century. The challenge for the patent system will be to find an acceptable standard of nonobviousness that applies to machine-assisted inventing as well as to more traditional inventing based on human ingenuity alone. The challenge to inventors will be to mine the information contained in their inventions in more efficient ways. The need to expand and support an invention efficiently is driven by the speed of knowledge dissemination and rate of knowledge connections in an increasingly "wired" world. In other words, there will be more pressure on inventors to perfect their inventions before others do. This paper discusses three hypothetical inventions that illustrate these challenges, and ways of meeting them.

Peter Dehlinger, Esq., Ph.D.

Minimizing The Risk of WILLFULNESS In U.S. Patent Infringement Litigation

Reported trial court decisions in the U.S. Patent Quarterly for a recent six year period include forty three cases in which patent infringement was found and the question of willful patent infringement ("willfulness") was discussed. In thirty one of these cases (72%), the infringement was found to have been willful. With this background, it is apparent that minimizing the risk of patent infringement is important but minimizing the risk of being found "willful" in that infringement is equally important.

Paul Prestia, Esq.

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