-01 Oct15 cover_01 MIP cov 9/24/15 8:10 AM Page 1 MANAGING INTELLECTUAL PROPERTY SPECIAL FOCUS AUSTRALIA INCORPORATING IP ASIA THE OEM WWW.MANAGINGIP.COM OCTOBER 2015 CHALLENGE OCTOBER 2015 • ISSUE 253 IN CHINA ARE BRAZIL’S LAWS READY FOR 3D PRINTING? THE INSIDE STORY OF A MOCK UPC TRIAL US CIVIL PROCEDURE CHANGES EXPLAINED CIRCUITHOW THE COURT OF APPEALS TEST FOR THE FEDERAL CIRCUIT IS CHANGING PLUS: WHY GUIDANCE IS NEEDED ON PATENT ELIGIBILITY ISSUE 253 TOP SURVEY: PCT FILERS 2015 -02 Goodrich_Oct15_IFC_Layout 1 9/23/15 10:22 PM Page 1 01-08 Contents Oct15_Layout 1 9/23/15 4:42 PM Page 1 OCTOBER 2015 WWW.MANAGINGIP.COM 9 16 24 44 FEATURES REGULARS 9 | How changes to civil procedure rules will affect patent litigation 2 | THIS MONTH ONLINE 16 | The legal aspects of 3D printing in Brazil 4 | BLOG 20 | Navigating OEM-related IP challenges 6 | NEWS ROUNDUP 24 | COVER STORY PART 1 Circuit overload 8 | MOVES 31 | COVER STORY PART 2 The Section 101 uncertainty 100 | INTERNATIONAL BRIEFINGS 37 | Demanding security from your supply chain 116 | UTYNAM’S HEIRS 40 | What constitutes a covered business method under the AIA? 44 | EPO oppositions are affordable, powerful and increasingly important 50 | SURVEY The 2015 PCT survey INBOUND 77 | AUSTRALIA 71 | Spain cracks down on IP crime IPASIA 73 | The view from inside the UPC courtroom INTERNATIONAL WOMEN’S REGISTER NOW AT LEADERSHIP MANAGINGIP.COM F O R U M 2 0 1 5 WWW.MANAGINGIP.COM OCTOBER2015 ISSUE 253 INCORPORATING MANAGINGIP.COM OCTOBER 2015 1 01-08 Contents Oct15_Layout 1 9/23/15 4:42 PM Page 2 THE MONTH ONLINE What’s hot on Twitter this month Follow @managingip on Twitter for all the latest IP news and comment. Here’s a selection of what readers have been saying over the past few weeks. WEBINARS Tangible IP UK at No 2 is a hoot. We have a great innovation ecosystem but it does not mean we are great at Listen again to our latest webinars using it. 1/2 Lee Curtis Indeed decision All Managing IP’s webinars are available to listen and view again online, including two held in the past month: much more nuanced than • Mad about Madrid: How to leverage Madrid Protocol to your best advantage painted in article. Still think • IP Stars research – your questions answered registration will be rejected. We will see. All our webinars are free to listen to once you are registered and last about an hour. You can also view the slides and the results of audience polls. Rosa Wilkinson How are we getting on with China? Find out more: managingip.com/Web-Seminars @The_IPO’s Adam Williams spills the beans in this interview with @ManagingIP http://bit.ly/1OgIO41 Brooks Kushman @BrooksKushman senior attorney Hope Shovein will present during the @ManagingIP Luxury Brand & Retail Forum on September 23 in London swaraj barooah Congrats to Shamnad Basheer on being chosen as one of @ManagingIP’s top 50 STORIFY influential people in IP! Scott McKeown While motion for sanctions pending, takes up bad mouthing the Board. Silly All the analysis of the Kit Kat judgment man #PTAB. #patent. in one place Carpmaels Pharma Agreed, lots of interesting points, There was a lot of reaction on Twitter to the Court of Justice of the EU’s judgment in the case between including a plea for a better Nestlé and Cadbury over the shape of the Kit Kat chocolate bar. system at the end of Arnold’s judgement (722ff) We have collected some of the tweets mentioning the decision, and linking to further analysis, in a page on Storify. Jim Boff So research into IP The tweets include news reports in various media, commentary from law firms and individuals and pre- might promote innovation? I dictions about the likely outcome when the case returns to the High Court in London. see intensive navel-gazing at applicant expense. Read here: storify.com/ManagingIP JOIN THE CONVERSATION ON TWITTER, LINKEDIN, FACEBOOK AND THE MANAGING IP BLOG facebook.com/managingip @managingip managingip.com/blog 2 MANAGINGIP.COM OCTOBER 2015 01-08 Contents Oct15_Layout 1 9/23/15 4:42 PM Page 3 03-03 NEW Contents Oct15.qxp_Layout 1 24/09/2015 15:25 Page 4 MANAGINGIP.COM/BLOG Among the topics addressed on Managing IP’s online blog in the past INCORPORATING IP ASIA few weeks are: Kyle Bass and the PTAB, evidence in IP policy making and last month’s cover story on the seven factors disrupting Euromoney Trading Limited 6-8 Bouverie Street IP practice London, EC4Y 8AX Tel: +44 20 7779 8682 Fax: +44 20 7779 8500 Email: [email protected] Kyle Bass to return to “kangaroo court” SUBSCRIPTIONS Email: [email protected] If Kyle Bass has been put off by the PTAB denying three of his IPR petitions, he’s UK Hotline Tel: +44 (0) 20 7779 8999 not showing it. He has filed a further nine petitions since the Coalition for Afford- Fax: +44 (0) 20 7779 8300 able Drugs’ first setback and has labelled the PTAB a kangaroo court US Hotline Tel: +1 212 224 3570 It has been a bad couple of weeks for hedge fund manager Kyle Bass’s efforts to get Fax: +1 212 224 3671 pharmaceutical companies’ patents invalidated. The Patent Trial and Appeal CUSTOMER SERVICES Michael Loney Board has denied three of the Coalition for Affordable Drugs’ petitions – two Tel: +44 (0) 20 7779 8610 Americas editor challenging patents covering Acorda’s Ampyra drug and one covering Biogen’s EDITORIAL Tecfidera treatment. Managing editor James Nurton Americas editor Michael Loney Bass is not taking it lying down – he has slammed the Board and USPTO director Washington DC editor Peter Leung Michelle Lee while continuing to file inter partes review petitions. MIP Chinese edition Stephy Tang PRODUCTION READ MORE: managingip.com/PTAB Production editor Luca Ercolani Web production editor Josh Pasanisi ADVERTISING Group publisher Tom St Denis Publisher Alissa Rozen EMEA manager Nick Heath Show us the evidence! North Asia manager Matthew Siu South Asia manager Daniel Boland Increasingly, and rightly, policy-makers demand evidence about the impact Marketing Leanne Fitzpatrick proposed changes will have. Why is it so rarely forthcoming? Divisional director Greg Kilminster The EU Digital Single Market (DSM) was the topic of a seminar held by the FOR MORE DETAILS GO TO Westminster Media Forum. As readers who have been following European is- www.managingip.com/Contact-Us.html sues will know, the DSM is a set of proposals by the EU Commission designed James Nurton to promote the development and spread of digital technology across national Managing editor borders in Europe. Managing director Christopher Fordham Chairman Andrew Rashbass The Commission’s initial thoughts were aired in a communication in May, and Directors Sir Patrick Sergeant, since then we have been in what one lawyer described to me as “a phoney war”, The Viscount Rothermere, Christopher before concrete legislative proposals are published, probably by the end of this year. Fordham (managing director), Neil Osborn, Dan Cohen, John Botts, Colin Jones, Diane Alfano, Jane Wilkinson, Martin Morgan, READ MORE: managingip.com/evidence David Pritchard, Bashar AL-Rehany, Andrew Ballingal, Tristan Hillgarth © Euromoney Trading Limited 2015 The copyright of all editorial matter appearing in this magazine is reserved by the publisher. No matter contained herein How IP practice is changing may be reproduced, duplicated or copied by any means without the prior consent of the How might your work change in the next 10 years? Or 20 years? With daily dead- holder of the copyright, requests for which lines and clamorous clients, most IP practitioners probably don’t have the luxury should be addressed to the publisher. to predict the future. But maybe that’s exactly what you should be doing No legal responsibility can be accepted by Euromoney Trading Limited or Managing Intellectual Property for the articles which In an article just posted online (and printed as the cover story in the September appear in this publication. issue), Emma Barraclough discusses seven trends that are disrupting the IP market Printed in the UK by Buxton Press, Emma Barraclough – from technology to globalisation via cost pressures, the changing demands on Buxton, UK Group editor in-house counsel and the emergence of new competitors. ISSN 0960-5002 Managing Intellectual Property is published READ MORE: managingip.com/disruptors 10 times a year for $2,800 per year by Euromoney Trading Limited. 4 MANAGINGIP.COM OCTOBER 2015 01-08 Contents Oct15_Layout 1 9/23/15 4:43 PM Page 5 01-08 Contents Oct15_Layout 1 9/23/15 4:43 PM Page 6 NEWS ROUNDUP EU Court of Justice provides guidance on shape marks in Kit Kat case An applicant for a trade mark based on acquired distinctiveness must prove that that mark alone (as opposed to any other mark present on the product) identifies the origin of the goods or services, according to the CJEU. In its judgment in the dispute between Nestlé and Cadbury over the shape of the Kit Kat bar, the Court answered three questions referred from the England and Wales High Court, arising from an appeal from an opposition against Nestlé’s UK trade mark application. READ MORE: managingip.com/KitKat US Business method applications fall 52.4% post-Alice Managing IP analysed figures for USPTO applications in patent class 705, the class covering “data processing” in which most business method patents are placed. Patent applications in class 705 not only plummeted after the Alice decision in June 2014, but have kept tumbling. Some 8,620 class 705 patent applications were filed in the 12 months between July 1 2013 and June 30 2014.