Philip Brooks' Patent Infringement Updates

Intellectual Property Law and Litigation: Practical and Irreverent Insights

The above-titled book edited by Edward F. O'Connor is available from the American Bar Association

This irreverent but amusing and informative book is a combination of actual courtroom experiences as well as discussion of intellectual property law and litigation principles. The book is written for intellectual property practitioners, including prosecutors and litigators, and also in-house corporate counsel and people in business who may not actually practice intellectual property litigation but who employ intellectual property litigators. In short, anyone who needs to be conversant with the fundamental principles and language of intellectual property law will benefit from--and enjoy--this book.

Sections in the book include:

• Antitrust and Other Anti-competitive Litigation
• Patents
• Trademarks
• Copyrights
• International Trade Commission

Learn more here.

China's Guidebook for Pharmaceutical Patent Protection

Research and Markets announced today, June 22, 2009, in a Business Wire press release:

The addition of the "China's Guidebook for Pharmaceutical Patent Protection" report to their offering.

China is expected to become the fifth largest drug market in the world by 2010 with a growth rate of 20-25 percent per annum in next three years. As China joins the World Trade Organization (WTO) and integrates more completely into the global economy, it will further open the door to a lucrative drug market for overseas pharmaceutical companies, which attracts more and more overseas pharmaceutical manufacturers and producers to enter such drug market and seize a larger part of such drug market. However, the Chinese social environment for the protection of intellectual property right is complex. The locally produced generics and copy products dominate the Chinese drug market. It is estimated that about 97 percent of the drugs produced by local companies are generics or counterfeits.

Facing such complex social environment and market, most overseas and multinational pharmaceutical companies fear that their imported drugs and pharmaceuticals produced in China will be imitated or copied, in turn, their intellectual property will be infringed and benefit will be violated. What reason incurred such fear of overseas and multinational pharmaceutical companies? Why did Eli Lilly & Company fail in its litigation of patent infringement dispute case in China? Why can Pfizer win in an administrative proceeding against the Patent Reexamination Board of the China State Intellectual Property Office (SIPO) for its Viagra patent? Lack of knowledge of the Chinese intellectual property right system and legislation institution, the cultural difference between China and Western countries as well as the language barriers incurred such result.

Guidebook Highlights

China's Guidebook for Pharmaceutical Patent Protection provides a comprehensive and thorough knowledge of the Chinese patent system relating to pharmaceuticals, the detailed administrative, civil and criminal judicial pathways for protections of patent right, and the design for composition of optimized protection strategies.

• The organization structure of patent authorities and judicial system;

• A comprehensive and thorough knowledge of the Chinese patent system and the relevant laws and administrative regulations relating to pharmaceuticals;
• The patentable subject matter relating to pharmaceuticals in China;
• Administrative protection for patent right;
• Civil judicial procedures and remedies for patent right;
• Criminal punitions for infringement of patent right;
• Design for compositions of optimized protection strategies;
• Case studies and comparative analyses of patent infringement disputes.

See the full press release here.

A Litigator's Guide to Expert Witnesses

An American Bar Association bookstore best seller by Cecil C. Kuhne III:

Whether you are an experienced litigator or just starting your practice, you won't want to head to court or to a deposition without this book.

The admission of expert witness testimony remains one of the most contentious, critical, and interesting aspects of the modern-day litigation process. This book examines the role of the expert witness, focusing on taking depositions, expert qualifications, admissibility of testimony, attorney-client privilege, Daubert, rules of discovery and evidence, selecting and presenting experts, and direct examination of experts. It covers:

    * An overview of expert testimony
    * The legal framework
    * Supreme Court Decisions
    * Rules of discovery
    * Rules of evidence
    * Selecting experts
    * Presenting experts
    * Objecting to experts
    * Deposition of experts
    * Direct examination of experts
    * Cross-examination of experts
    * And more!

Purchase the book here.

Patent Law And Theory - A Handbook of Contemporary Research

The above-titled book edited by Toshiko Takenaka, Professor of Law and Director, Center for Advanced Study and Research on Intellectual Property, University of Washington School of Law, US and Visiting Professor of Law, Waseda Law School, Japan was published by Edward Elgar Publishing this month, May 2009.

This major new Handbook provides a comprehensive research source for patent protection in three major jurisdictions: the United States, Europe and Japan. Leading patent scholars and practitioners join together to give an innovative comparative analysis both of fundamental issues such as patentability, examination procedure and the scope of patent protection, and current issues such as patent protection for industry standards, computer software and business methods. Keeping in mind the important goal of world harmonization, the contributing authors challenge current systems and propose necessary changes for promoting innovation.

More information on this book is available here.

Some upcoming Intellectual Property publications from Elgar include:

• Intellectual Property Enforcement (August 2009)

• Imitation to Innovation in China (November 2009)
• The Role of Intellectual Property Rights in Biotechnology Innovation (December 2009)
• Intellectual Property and the Limits of Antitrust (February 2010)

Managing the Dragon

I had the opportunity to hear Jack Perkowski of JFP Holdings speak earlier this week at a Pittsburgh Venture Capital Association luncheon.  He shared some fascinating observations about the Chinese business environment, many of which are captured in his book titled, "Managing the Dragon, How I'm Building a Billion-Dollar Business in China."

The following is an excerpt from one of his recent blog posts at Managing the Dragon:

Almost twenty years ago, I left Wall Street and moved to Hong Kong because I was convinced that Asia’s development would be the story of the twenty-first century, and I wanted to play a role. Due to the demographics and high growth rates in the region, I believed that companies in Asia would have a strong wind at their back, but that they would need access to capital, management and technology to take advantage of their inherent growth opportunities.

The formula for creating successful businesses and investment opportunities in China is to combine the best technology, know-how and management practices from around the world with the China market. My Wall Street experience and the time I have spent learning how to do business in China provide a unique knowledge base, set of experiences and network of contacts that are well suited to help close the technology and know-how gaps that still exist. That is the essence of what I will focus on in my second phase in China.

JFP Holdings was established in January to help global companies develop and implement their China strategies, provide infrastructure support and access to capital as required, and to assist Chinese companies to develop global footprints. We are just getting started, but we have already made significant progress. Our staff now includes a half-dozen dedicated professionals, with many others anxious to join as our business grows. We are already working with companies and organizations in some of the most promising areas for future development: environmental technology, high value-added manufacturing, services and health care.

Read the full post and find a link to purchase his book here.

Pharmaceutical and Biotech Patent Law

I recently received a flyer from PLI announcing the release of the above-titled book.  After reviewing the PLI website and a link to an August 29, 2009 New York Law Journal book review by F. Scott Kieff, it appears the book has been out for six months.  Nonetheless, here are some excerpts from Mr. Kieff's review:

The Practising Law Institute has recently published another strong addition to its great collection of books in intellectual property. This new offering represents a team effort by members of one of the leading patent litigation practice groups in the field of pharmaceuticals, biotechnology, and medical devices—as found at the Kaye Scholer firm.

With over 25 years’ experience, it’s no surprise they hit such a home run. The book is clear, easy to read, thorough, thoughtful, and practical.

See Mr. Kieff's (professor of law at Washington University in St. Louis) full review here.  The following are details provided by PLI about the book:

• The all-important utility requirement as it pertains to pharmaceutical patents, clarifying the types of inventions that do (and do not) pass the test for ”specific and substantial utility.”
• The pivotal issue of inventorship, with coverage of the tests used to identify the inventor and the types of priority disputes and originality contests that can arise.
• Several commercially significant categories of patentable subject matter and the recurring legal issues associated with these categories, to help practitioners consider the problems and opportunities presented by different types of patents.
• Claims construction as it applies to pharmaceutical and biotech inventions, with in-depth insight into how the courts determine the validity of claims and how to ensure their validity through sound drafting.
• Patent infringement as it relates to pharmaceutical and biotech inventions, including the tests used to prove infringement and several available defenses, with extensive coverage of the experimental use defense and related decisional law.

More details and purchase information are available here.

Annual Review of Intellectual Property Law Developments: 2006-2008

This new, annual publication from the ABA Section of Intellectual Property Law includes thoughtful and balanced treatment of the key legal developments in the courts, agencies, and legislatures' keeping you current in every area of IP law. The January 2009 debut volume reports on more than 300 of the top legal developments monitored by the Section's substantive committees from Winter 2006 to Fall 2008.

Organized into six parts (patents, trademarks, unfair competition, copyright, trade secrets, other IP), this book provides comprehensive coverage of:

• Proposed legislation and agency rules
• Recent Supreme Court patent cases, including Ebay, MedImmune, KSR, Quanta, Microsoft v. AT&T
• Recent Federal Circuit en banc decisions like In re Seagate and Egyptian Goddess
• Recent Federal Circuit decisions on business method patents including In re Bilski and In re Comiskey
• New PTO and TTAB rules
• Recent patent developments concerning standards setting organizations including Rambus and N-Data

Pre-order your copy here.