Dow obtains largest ever Canadian patent infringement award

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Source: Smart & Biggar/Fetherstonhaugh via International Law Office 31 July 2017

“The Federal Court has issued its further judgment and reasons (2017 FC 637) concerning the amount of financial compensation to be paid to Dow Chemical Company as a result of earlier patent infringement and validity proceedings against NOVA Chemicals Corporation (for further details please see “Dow succeeds on major issues in patent infringement profits case“).

The final award totals over C$645 million (including pre-judgment interest), which is the largest reported award in a Canadian patent infringement case.”

Source article here



“UK Supreme Court Overturns Existing Case Law To Broaden The Scope Of Patent Protection”

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Source: Arnold & Porter Kaye Scholer LLP, via Mondaq, 19 July 2017

“The UK Supreme Court has overturned existing case law to, for the first time, formally recognise a “doctrine of equivalents”, resulting in a broader scope of patent protection under UK law. This new approach is more patentee-friendly and brings the UK into closer alignment with courts elsewhere in Europe and in the US.

Historically the English courts have held that the wording of the claim is decisive when determining whether a patent is infringed, resulting in a relatively narrow scope of protection. The Supreme Court held that this approach placed too much weight on the words of the claim and did not provide fair protection for patent holders. Fair protection requires a broader scope of protection, extending beyond the wording of the patent claims to also cover products which are technically equivalent. In the case at hand, the Supreme Court held that Eli Lilly’s patent claims covering “pemetrexed disodium” would be infringed by Actavis’ products containing various alternative forms of pemetrexed, which did not fall within the wording of the claims, properly interpreted, but were nonetheless technically equivalent.” Read the rest of this entry »

Great Technology! Pity About the Value.

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Two interesting & informative articles from Australian IP Specialists Griffith Hack.

“In a corporate environment preoccupied with the risks and opportunities of disruptive technology, the inadequacies in investment appraisal are alarming. Many early stage tech companies starve through lack of funds. Others feast on funding before fading to irrelevance. Some thrive.”

In an attempt to pick winners, some investors use a simple formula, which incorporates an assessment of the target’s IP.

The first article below asks how the quality of IP protection can be assessed, considering a range of legal rights.

The second is a case study involving a mining equipment company with a patent portfolio protecting novel technology, the benefits of which had been assessed through engineering studies. In order to articulate and quantify its economic potential, the company commissioned an independent valuation of its core asset: its patent portfolio.

The two articles are here:

Great Technology! Pity About the Value.

IP valuation & capital raising

Canada: IP law and practice: 2016 highlights

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Source: February 06 2017 Contributed by Smart & Biggar/Fetherstonhaugh via International Law Office

  • Patent and trademark agent privilege recognised
  • Comprehensive Economic and Trade Agreement signed
  • Geographically descriptive trademarks law and office practice clarified
  • Test for obviousness-type double patenting clarified
  • Injunctions for retailers of television set-top boxes
  • Norwich order in reverse class action for copyright infringement
  • Issue payment underpayment does not render patent invalid
  • Public display of non-French trademarks in Quebec
  • Competition Bureau releases revised IP enforcement guidelines

Source article here


US Supreme Court considers potential patent infringement liability for US exporters

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Source: Fitzpatrick, Cella, Harper & Scinto via, 09.01.2017

On December 6 2016 the Supreme Court heard oral argument on the interpretation and application of 35 USC Section 271(f)(1) in Life Technologies Corporation v Promega Corporation.

At issue is whether the export from the United States of a single component of a patented multi-component invention, which is later assembled outside the United States, qualifies as an infringing act under 35 USC Section 271(f)(1).

US manufacturers and exporters are closely following this case, seeking clarity on how the courts will assess what constitutes a ‘substantial portion’ of an invention, what factors will be considered in this analysis and how the Supreme Court decision may affect their global business practices.

Source article here