By order issued on June 18, 2017, in summary proceedings brought by Teva against Mylan and Synthon for the alleged infringement of EP 2 361 924 (covering a manufacturing process for the active ingredient glatiramer acetate), the Court of Milan revoked the interim measure granted inaudita altera parte (i.e. without the defendants have been previously heard), which initially ordered Synthon and Mylan to refrain from carrying out further regulatory steps intended to obtain the pricing and reimbursement of the defendants’ Copemyl.
Findings of the Court
The Court of Milan held that, in principle, the patent owner may seek an immediate injunction against the generic manufacturer to the effect that no other regulatory activities are performed to the purpose of the pricing and reimbursement of a generic product. In the case at issue, the Court noted that the order was not addressed against the competent authority (AIFA) but was restricted to the defendants. Therefore the defendants’ objection of lack of jurisdiction of the civil court was dismissed.
The Court stated that
“the ordinary protection contemplated by the law (the appeal before the competent administrative court against the marketing authorisation allegedly granted in breach of the law), this being a measure granted only ex post, may not effectively satisfy the need of protection of the patent owner (due to the immediate impact of the decision in terms of market alteration and of the prices that are associated to the grant of the marketing authorisation, which cannot be easily determined and compensated on a later stage)”.
Operating in the online stratosphere can create additional risks for your business, and protecting your identity, and the identity of your customers, is of paramount importance. Join us on Wednesday, 5 July for the second instalment of our Asia IP webinar series to learn about the latest developments and emerging trends in cybersecurity and data protection regulation in Asia. Whether you currently have operations in Asia or are planning to enter the market, this webinar will guide you through the potential risks to your online businesses and how to tackle them. Topics covered during this webinar will include:
- The Big Picture – an overview of the data privacy landscape in Asia
- Protecting your data in Japan – what’s new?
- What’s in a name? – domain name enforcement and recovery in Asia
- Shopping for real – tackling IP infringement on e-commerce platforms in China
Date: Wednesday, 5 July 2017
We hope you will be able to join us. For more information, please contact Kelsey Lau
Upcoming topics in our webinar series:
- Patents – Everything to know from 2016 and what to look out for in 2017
- Anti-counterfeiting – Developing and implementing effective and efficient strategies
- Trade Secrets – Have you heard ….
- Trademark litigation – Winning by paying attention to the details
DSM Watch has been tracking this, the first legislative proposal published by the Commission under the Digital Single Market strategy banner, since back in December 2015. The Commission’s aim was to allow consumers who pay for online content services in their home country to access them when visiting another country within the EU.
In our 10 February 2017 blog we looked at the Commission’s approach to the tricky question of what being “temporarily” in another EU Member State would mean, and how that could be verified. Since then, that and other knotty issues around the proposal have been hashed out between the Commission, the EU Parliament and the EU Council of Ministers (Council), with negotiations culminating a few days ago with the adoption by the Council of a draft proposed by the Parliament on 18 May.
Continue Reading on our Global Media & Communications Watch blog
To learn more about the EU Digital Single Market (DSM), please visit our microsite dsmwatch.com
On June 12, 2017, the Supreme Court granted certiorari to decide the constitutionality of inter partes review, a proceeding before the Patent Trial and Appeals Board (PTAB) that allows third parties, typically alleged infringers, to challenge the validity of issued patents. The question presented in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC is “[w]hether inter partes review, an adversarial process used by the Patent and Trademark Office to analyze the validity of existing patents, violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.”
Oil States’ petition contends that Supreme Court precedent historically treats issued patents as the patentee’s private property, which was adjudicated in common-law courts guaranteeing the right to a jury. In Oil States’ view, the Supreme Court’s decision in Granfinanciera, S. A. v. Nordberg, 492 U.S. 33 (1989) requires patent validity to be tried in Article III courts because actions to enforce statutory rights (such as patent infringement and validity) that are analogous to common-law causes of action are protected by the Seventh Amendment. Oil States also argues that the “public rights” exception to Article III, which allows Congress to delegate adjudicatory authority over public rights to non-Article III courts, does not apply to private rights such as patents. IPRs allowing patent challengers to sidestep a jury trial are, according to Oil States, an unlawful delegation of power to expropriate private property rights. Continue Reading
We are excited to announce that Miriam Gundt received the Rising star: IP award during this month’s award ceremony in London. Alongside this award, Cecile Derycke was awarded Best in Product Liability. In addition to these categories, the LMG Europe Women in Business Law Awards recognize the best lawyer in each practice area as well as firm awards celebrating the best initiatives for gender diversity, innovation, minority women, mentoring, work-life balance, pro bono and talent management. We are delighted that our firm and many of our lawyers were shortlisted for these awards.
Miriam Gundt is an ideal “go-to” lawyer for the coordination of international patent disputes and the enforcement of intellectual property rights in various European jurisdictions. Her strategic advice comprises questions regarding the new Unified Patent Court (UPC) and the European Patent with Unitary Effect. Miriam focuses on the pharma and biotech industry, life science and medical devices and possesses outstanding knowledge in the area of Supplementary Protection Certificates (SPCs). She has broad experience in patent litigation in the areas of telecommunication, chemistry and mechanics. Miriam’s experience also embraces the area of interim legal protection, including evidence seizures and has successfully obtained and enforced preliminary injunctions for various clients.
In the Dusseldorf office, Miriam is also the partner in charge for diversity matters. Miriam studied law and economics in Osnabrück, Milan and Aberdeen. She is a member of various associations in the field of intellectual property (GRUR, EPLAW, AIPLA, VPP) and regularly speaks at national and international conferences and seminars on patent law related topics.
Our New York-based partner Arlene Chow talks about the emergence of 3-D bioprinting and the ability of innovators in this space to patent organ and tissue printing technology.
“There is a tension between phenomenal innovation and the ability for scientists to adequately protect their innovations,” Chow explained. “The whole point of patents is to encourage people to innovate. After investing time and money and then disclosing details of their invention to the world in a patent — as opposed to maintaining it as a trade secret — the payback is an exclusive term such that others can be prevented from doing the same activities unless they pay a royalty. And yet, under the current patent regime, such innovation, even if associated with an issued patent, may be vulnerable to a later unpatentability challenge” in the courts.
Why is 3-D printing considered to be a disruptive technology?
Continue Reading on Hoganlovells.com
Hogan Lovells hosted events for the “Women in IP Law” series of AIPLA, the American Intellectual Property Law Association, in Frankfurt, Hamburg, Düsseldorf and Moscow. The events provided women of the Intellectual Property community with an opportunity to exchange experiences of legal and social issues; to make new contacts and maintain already existing ones.
Frankfurt – Lessons from football with Birgit Prinz
In our Frankfurt office, we discussed the question “Mental fitness – what can we learn from football” with the former professional football player Birgit Prinz. Birgit won many World and European Championships with the German Women’s National Football team and held the Women’s World Player of the Year award three times. She studied psychology at the University of Frankfurt during her active years of play and is today a sports psychologist with football club TSG 1899 Hoffenheim. During her talk with our Dr. Friederike Schubert and Anne Schmitt, Birgit shared with our guests her experiences in both worlds -professional football and mental coaching. Continue Reading
Most energy companies implement Intellectual Property (“IP”) strategies to protect and exploit company IP (offense) and navigate third-party rights (defense). Traditionally, these policies emphasize patents. But today’s IP-savvy energy companies strategically manage both patent and trade secret portfolios throughout a company’s particular energy sector focus.
The ascendance of trade secrets reflects recent strengthening of U.S. trade secret law, particularly on a national level. In the Defend Trade Secrets Act (“DTSA”) of 2016 (encoded at 18 U.S.C. § 1836, et seq.), Congress created a federal civil cause of action for trade secret misappropriation. Prior to the DTSA, civil trade secret causes of action were governed by a patchwork of various state laws, which increasingly but not exclusively meant the Uniform Trade Secrets Act (“UTSA”).
The ascendance of trade secrets also reflects recent changes in patent law. Through the Leahy-Smith America Invents Act of 2011 (“AIA”), Congress reformed third-party challenges to issued patents (now called Inter Partes Reviews, or IPRs) and created other post-grant proceedings, including a transitional program for evaluating the validity of covered business method (CBM) patents. In Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014), the United States Supreme Court revised the test for invalidating a patent as an abstract idea. Collectively, these changes have resulted in numerous issued patents being invalidated. In addition, the AIA created a limited defense to patent infringement based on prior commercial use (at 35 U.S.C. § 273). Thus, the maintenance of trade secrets, at least for certain subject matter, may be more attractive than the pursuit of patents. Continue Reading
Yesterday, on 14 June 2017, two sets of amendments to Hong Kong’s arbitration law were passed to clarify that:
- third party funding of arbitration, mediation and related proceedings is permitted under Hong Kong law, and
- disputes over intellectual property rights (“IPRs“) can be resolved through confidential arbitration and that it is not contrary to the public policy of Hong Kong to enforce arbitral awards involving IPRs.
The relevant bills were the Arbitration and Mediation Legislation (Third Party Funding) (Amendment) Bill 2016 (“Third Party Funding Bill“) and the Arbitration (Amendment) Bill 2016 (“IPR Arbitration Bill“).
Third party funding
The Third Party Funding Bill amends the Arbitration Ordinance and the Mediation Ordinance to make clear that third party funding of arbitration, mediation and related proceedings is permitted under Hong Kong law.
It is now clear that the centuries-old doctrines of maintenance and champerty, which still prohibit third party funding for litigation, do not apply to funding of arbitration and mediation.
The Third Party Funding Bill also provides measures and safeguards aimed at preserving integrity if third party funding is used, including providing for a code of practice for funders (which is still to be developed after completion of a consultation process, which is already underway).
The amendments are expected come into effect later this year, to allow time for the code of practice to be drawn up.
The Third Party Funding Bill closely follows the recommendations made by the Law Reform Commission in the Report on Third Party Funding for Arbitration dated 12 October 2016, save for an amendment that allows third party funding by lawyers and law firms so long as they do not act for any party in the relevant proceedings. (See our earlier note setting out the key points of the Bill here.)
The availability of third party funding is a welcome development for arbitrations seated in Hong Kong, bringing it in line with international developments. It will allow greater access to justice and provide another option for companies to manage financial risk.
Arbitration of disputes involving IPRs Continue Reading
What is Blockchain? What are the practical uses and legal implications resulting from it?
Hogan Lovells invites you to participate in its sixth TMT seminar dedicated to blockchain on:
Thursday 22nd of June, from 5:30PM – Hogan Lovells Paris Office
Join us for a discussion on the following topic: “Blockchain: views of an IT specialist and a lawyer on a disruptive technology“.
Using concrete examples, the speakers will lead a two hour discussion on how Blockchain is becoming part of the legal environment.
Speakers: Christine Gateau (Partner – LAE), Winston Maxwell (Partner – Coroprate), Mikael Salmela (Partner – Corporate), Patrice Navarro (Counsel – Corporate), Vincent Denoyelle (Senior Associate- IPMT), Alya Bloum (Associate- IPMT)
Contact: Eberlyn Joseph Events Coordinator email@example.com