By Kenneth R Adamo and Eugene Goryunov, Kirkland & Ellis
The America Invents Act, enacted in 2011, has significantly changed the patent litigation landscape in the US. It created the Patent Trial and Appeal Board (PTAB) and three new principal post-grant review mechanisms: post-grant review (PGR), inter partes review (IPR) and covered business method review (CBMR) (collectively, PTAB trials).
By Luiz Leonardos, Gustavo Leonardos and Ana Paula Jardim, Luiz Leonardos & Advogados
There is no doubt that the competitiveness of a company is directly dependent on access to the most modern technologies; and, in turn, the development of such innovative technologies is itself directly dependent on a strong and efficient patent rights protection system.
Patricia A Martone, Law Office of Patricia A Martone PC
Much has been written about the America Invents Act (AIA) enacted in 2011. This article focuses on the Inter Partes Review (IPR) procedures of the AIA. These procedures, which take place in the United States Patent and Trademark Office (USPTO), are designed to provide a speedy substitute for district court determinations of prior art validity challenges.
By Nicola Dagg, Allen & Overy, and Astrid Arnold, Peerpoint
There can be no doubt that business confidence in the European unitary patent project is growing as the new Unified Patent Court moves towards go-live in early 2017. Recent surveys suggest that a majority of patent-heavy companies expect the new European unitary patents to make up all or most of their future filings, and many companies are expressing an intention to use the new court system from the outset – at least in relation to some of their European patents.
By Rachel Mumby and Alan Johnson, Bristows
On the day that the Agreement on a Unified Patent Court (UPCA) comes into force, all designations of existing European patents validated in countries that have ratified the UPCA will, by default, become subject to the jurisdiction of the new court. Absent any last-minute glitches – notably a possible vote for Brexit – this is expected to happen in spring 2017. However, during the few months leading up to this happening (the “sunrise period”), it will be possible for patentees to request that any of their existing European patents be opted out of the new system. We look at the process for deciding and implementing an opt-out strategy, and encourage our readers to start the process immediately in order to be ready for the sunrise period and ultimately for the new court.
In this edition, we select 851 patent lawyers across 63 jurisdictions. The vast majority of listed lawyers are based in Europe or North America, although this year saw growth in the number of listings from Asia-Pacific and South America. Below we highlight some of the most highly regarded law firms and individuals from these regions.
In this third edition of Who’s Who Legal: Patents, we are pleased to present our comprehensive analysis of the world’s leading patent agents who regularly advise and assist clients with the preparation and filing of patent applications, portfolio management and handle prosecution before the relevant patent offices. We recognise 305 agents from 174 firms across 32 countries. Marks & Clerk once again leads the way in terms of total number of nominations. Gowling WLG stands out in North America, with Smart & Biggar/Fetherstonhaugh, Kilburn & Strode and Bird & Bird continuing to impress.
Among the many trends currently influencing the practice of patent law, the growing commercial and economic appreciation of IP rights is particularly influential. A highly competitive knowledge-based global economy has led to an increasingly sophisticated attitude towards the importance of securing and protecting inventions, which is driving positive governmental policymaking and patent activity, particularly among multinational companies. In the last few years, China, the world’s second-largest economy, has been championing IP rights, which is beginning to change the face of the global patent market.
The latest edition of Who’s Who Legal: Patents is a comprehensive guide to the world’s leading patent lawyers, comprising 880 practitioners from 418 firms across 66 countries.
We are pleased to feature, for the second time, a list of the world’s leading patent agents. We recognise 319 agents from 145 firms across 30 countries who handle the preparation and filing of patent applications, in addition to prosecuting patents with the relevant patent offices. Gowling WLG, Marks & Clerk, Smart & Biggar/Fetherstonhaugh, D Young & Co and Bird & Bird are among the most highly rated firms in our research.
It was reported that patent applications rose by 4.8 per cent to 160,022 in 2015, with the total number of filings increasing 1.6 per cent to 278,867. Patent lawyers described a high level of activity, particularly across the pharmaceutical, technology and life sciences industries, including an increase in disputes.
Yet due to the confidential nature of much of the information involved in disputes across these industries, there has also been a corresponding, self-perpetuating rise in the use of alternative dispute resolution and a tendency for claims to settle rather than face the publicity of litigation. More widely, the sector is facing significant changes. European practitioners are gearing up for the long-awaited launch of the Unified Patent Court next year, yet it still faces significant uncertainties over its future due to the current economic and political pressures bearing down on Europe.
Further afield, the Russian Intellectual Property Court is providing a promising model for national intellectual property courts, and it is now in its third successful year of operation. In America, the legislation intended to curb the grip of patent trolls on the market has been effective, though practitioners spoke of significant changes resultant in the legal landscape. As such patents lawyers are finding themselves in a period of waiting, before many of the effects of these changes come to fruition.
We are pleased to introduce our 12th Patents edition, an exhaustive guide to the world’s top patent lawyers, featuring 695 practitioners from 378 firms across 63 countries.
The top of the legal market is an interesting mix of global firms and boutiques. Bird & Bird and Hogan Lovells are among the most established names in international patent law, and they both offer expansive coverage across Europe and Asia. Hoyng Monegier is a stand out choice for patent litigation across Europe. In the US, Kirkland & Ellis and Sidley Austin are among the most widely respected for their expertise in the patents market.
Boutique IP practices offer some of the finest names in patent law. Finnegan Henderson Farabow Garrett & Dunner, Fish & Richardson and Fitzpatrick Cella Harper & Scinto are three of the very best in the US. Two London-based boutique IP firms, Bristows and Powell Gilbert, place highly in our research, as does Germany’s Reimann Osterrieth Köhler Haft. International litigation boutique Quinn Emanuel Urquhart & Sullivan also impresses.
The top chambers for IP litigation is 8 New Square, while 3 New Square and 11 South Square also feature a number of outstanding barristers.
We have also identified the 10 stand out individuals from countries across Europe, as well as the 10 best names from outside the European market.
For the first time this year we list 164 patent agents from 72 firms across 16 countries. Patent agents assist in the preparation and filing of new patent applications, as well as prosecuting patents with the relevant patent offices.
Marks & Clerk, Gowling Lafleur Henderson, Kilpatrick Townsend & Stockton and Carpmaels & Ransford are some of the best-known firms in the field.
Patent practitioners around the world have had another busy year, with patent trolls in the US and the proposed Unified Patent Court in Europe two of the biggest topics over the past 12 months. With the aforementioned court expected to begin in 2017, practitioners across Europe are preparing themselves and clients for the new system, although uncertainty as to how the courts will work remains. Patent trolls continue to be big news politically in the US, where Congress is introducing new legislation to help curb their grip on the market and try to ensure only valid cases are brought before courts. Telecoms and technology cases continue to be a hugely active field, while the continuing trend of mergers within the pharmaceutical sector has meant that levels of competition, and therefore patent disputes, have dropped.
This year, we identify 670 practitioners from 356 firms who are considered leading lawyers in this field, following votes from clients, in-house counsel and fellow private practitioners.
Several firms stand out in our research due to the high number of inclusions they receive with Bird & Bird leading the way. The firm has 29 practitioners recognised across nine offices throughout Europe and Asia. Hogan Lovells performs impressively with 15 listings and Finnegan Henderson Farabow Garrett & Dunner is our leading IP boutique with 11 individuals singled out. The firm is also home to our most highly regarded individual: Donald Dunner. He is one of 15 experts who stand out worldwide due to the number of nominations they received.
Click on the name of an expert below to view their profile. Experts shaded in blue have professional biographies in one or more practice areas.
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Nominees have been selected based upon comprehensive, independent survey work with both general counsel and private practice lawyers worldwide. Only specialists who have met independent international research criteria are listed.