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Roundtable: Patents 2012

The International Who’s Who of Patent Lawyers has brought together three of the leading practitioners in the world to discuss key issues facing lawyers today.

Participants

Eugene Arievich
Baker & McKenzie – CIS Ltd
Moscow

Fabrizio Jacobacci
Jacobacci Sterpi Francetti Regoli de Haas
Italy
Say Sujintaya
Baker & McKenzie Ltd
Thailand




Who’s Who Legal: Has the number of patent filings in your jurisdiction grown or reduced in recent times? Have litigation levels remained high?

Say Sujintaya: According to the published statistics of the Thai Patent Office up to 2010, the number of patents filed during had decreased, specifically for invention patents. This is a result of Thailand becoming a member of the Patent Cooperation Treaty (PCT) in September 2009 and applicants having longer to make decisions on whether to proceed with national phase applications. However, now that the minimum period of 18 months has lapsed it is likely that an increased number of national phase applications will have been filed.

For patent litigation, the records of the Central Intellectual Property and International Trade Court revealed no significant change in the number of patent-related cases, either civil or criminal, over the past few years. Among all intellectual property cases, patent case levels would be considered low.

Fabrizio Jacobacci: The number of patents filed in Italy has basically remained stable in past two years. Although there are no official published data concerning the number of patent litigations filed every year, it appears from a rough and not wholly accurate examination of the number of cases filed with the Intellectual Property Chambers in the main Italian cities (Turin, Milan, Bologna, Venice and Rome), that the number of IP disputes (including, but not restricted to, patent matters) has slightly increased.

Eugene Arievich: Like in Thailand, Rospatent – the Russian Patent and Trademark Office – has so far published patent statistics up to 2010 inclusive. It shows a clear growth trend, as regards invention, albeit with a dip in 2009 which is a reflection of global economic crisis.

patents applications filing:

2006 2007 2008 2009 2010

37,691 39,439 41,849 38,564 42,500

At the same time the number of applications for utility model patents grew without any interim decline:

2006 2007 2008 2009 2010

9,699 10,075 10,995 11,153 12,262

The court statistics also demonstrates growth although the overall number of patent cases is still small as compared to trademark ones.

Who’s Who Legal: Which industries have been the source of the greatest amount of patent work for your firm in the last year?

Say Sujintaya: Patent prosecution and patent equivalency searches were our main work in 2011. Most of the applications filed by our office and the subject matter of our searches over the past year were for the pharmaceutical and automobile industries. The work for these two industries is likely to continue to increase during 2012. With respect to patent infringement matters, our main work is related to the optical disc industry.

Eugene Arievich: It is difficult to trace a definite trend as the patent filing work was distributed across different industries, but we carried out some major FTO searches and analysis in the food industry. On the patent litigation front, pharmaceutical industry clearly leads the pack. I believe that’s not just our experience, but that it reflects the general picture in this country. As originator companies are desperate to keep generic manufacturers off the market, patent litigation is the best tool to achieve it.

Fabrizio Jacobacci: Although the firm has traditionally been very active in patent litigations relating to mechanical patents, over the past few years, including 2011, the main litigations in which the firm has been involved were in the pharmaceutical, telecommunications and consumer electronics industries. These three industries accounted for over 80 per cent of the total work generated by patent litigation and related patent matters. At present, the level of litigation in telecoms is likely to increase further, even if Italy is not the main jurisdiction for telecoms patent matters.

Who’s Who Legal: Have there been any recent regulatory changes or court decisions affecting the practice of patent law in your jurisdiction? Are any predicted for the near future?

Fabrizio Jacobacci: There have been no major developments in the statutes or in the court practice affecting patent litigation and, more generally, patent law. Although there are a number of topics currently pending and which may be shortly subject to review by Italian Courts, most of them relates to very marginal, “niche” issues (even though extremely important for the parties involved) and unlikely to change the global picture of patent litigation in the country.

Say Sujintaya: In early 2012, the Department of Intellectual Property, Ministry of Commerce (DIP) issued a new Regulation to allow a submission of patent search and examination results, in support of Thai patent applications, from ASEAN countries participating in the Patent Search and Examination Cooperation (ASPEC) programme. This will help hasten the patent prosecution process and reduce costs incurred in prior-art searching. In addition, the DIP has been working on a Draft Amendment of the Thai Patent Act. The main issues in the Draft Amendment include, but are not limited to, protection of partial design, amendment to hasten the patent prosecution process, and amendment of compulsory licensing provisions to be more consistent with TRIPs. The completed Draft Amendment will be submitted to the cabinet and the parliament respectively for their approval before enactment as a new Patent Act.

Eugene Arievich: The main major development is the passing of the law setting up the Court for Intellectual Property Rights, also popularly known as the Patent Court. The Court is scheduled to start its work in February 2013. It will be a part of the system of Russia’s commercial courts. It will consider firstly, cases involving disputes over the establishment and validity of IP rights and challenges to regulatory and non-regulatory acts in the intellectual property field (as the court of first instance), and also secondly, IP infringement cases (as the court of cassation instance).

Within the first category of cases, the Court has the right to consider cases concerning challenges to regulatory and non-regulatory acts in the intellectual property field. Most such non-legislative acts are decisions of Rospatent associated with refusal of trademark registration or issuance of a patent for invention, utility model, or industrial design, as well as invalidation of a trademark registration or patent.

The new Court, planned as the final destination of all IP litigation in Russia (with the exception of copyright-related cases), is supposed to be staffed by judges who specialise in various IP areas, supported by staff and off-site independent specialists. Its purpose is not only to improve the quality of decisions in IP cases, but also to bring a much greater degree of uniformity to Russian court practice in that area, thus making the Russian IP environment more stable and attractive.

Who’s Who Legal: Have you seen any change in the local patent legal market in recent times? Has there been a move towards new boutiques, or have full-service firms been adding greater IP capacity?

Eugene Arievich: Generally, local boutiques still dominate the patent filing market. However, general practice law firms, both Russian and international, actively explore the lucrative patent litigation and often rather than relying on outside patent specific expertise prefer to add patent lawyers or agents to their ranks.

Fabrizio Jacobacci: The patent lawyers market seems to remain quite volatile without, however, showing a precise and definitive trend. Although most major firms and, in particular, international firms having a presence in Italy, have attempted – some of them successfully, such as DLA Piper and Simmons & Simmons – to establish a patent practice, IP boutiques are still very much the first choice for many clients. On balance however, it seems that the number of large firms adding an IP practice prevails on that of new boutiques.

Say Sujintaya: There have been no significant changes to the Thai patent legal market in the past few years.

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