Patent Enforcement in the UK and Trans-Pacific Countries
This book will provide readers with a structured account of the relevant enforcement procedures and substantive patent law in each country, enabling a quick compare and contrast to be made between countries and the identification of relevant issues.
Where there is close trade between countries regulated by a free trade agreement, there is also the need for rigorous intellectual property, in particular patent protection, especially in the pharmaceutical, biotech and telecoms sectors.
Companies need to know:
• that their technology will be protected;
• the scope of that protection; and
• how it can be enforced.
In particular, this book will provide readers with a structured account of the relevant enforcement procedures and substantive patent law in each country, enabling a quick compare and contrast to be made between countries and the identification of relevant issues. In-depth country chapters featured include: US, Japan, South Korea, UK, Canada, Australia, Singapore and New Zealand.
Patent Enforcement in the UK and Trans-Pacific Countries is an essential guide for private practitioners, in-house lawyers and other professionals with responsibility for intellectual property who are interested in the Trans-Pacific region.
Table of Contents
|About the authors||451|
|About Globe Law and Business||459|
Partner and member of Executive Committee; head of Litigation Group, Goodmans LLP
The litigation group that Andrew heads has been described as “the Bay Street gold standard” (Benchmark Canada).
Andrew’s practice focuses on intellectual property litigation, including patent, trademark and copyright disputes and the complex assessments of damages flowing from the infringement of such rights. He appears weekly before the Federal Court of Canada, Federal Court of Appeal, the Ontario Superior Court of Justice or the Ontario Court of Appeal. He has appeared before the Supreme Court of Canada on multiple occasions.
Andrew provides comprehensive strategic guidance to his clients regarding the development, acquisition, sale and protection of intellectual property and technology assets, including patents, trademarks, trade dress, copyright, industrial designs, rights of personality, confidential information and trade secrets. He has developed a specialty in integrating the roles of external and in-house counsel by creating clear partnerships with the ultimate goal of generating efficiencies and producing the highest-quality work product. Andrew also advises pharmaceutical clients regarding pricing regulation issues, including those relating to the Patented Medicines Prices Review Board (‘PMPRB’).
Partner, Litigation Group, Goodmans LLP
Daniel Cappe’s broad-based practice focuses on intellectual property, technology, healthcare and corporate/commercial litigation.
Daniel is a seasoned litigator with significant experience in prosecuting and defending patent, trademark and copyright infringement actions, proceedings under the Patented Medicines (Notice of Compliance) Regulations, trademark opposition proceedings, shareholder disputes, contractual disputes, tort claims, defamation actions and oppression actions. Daniel also frequently advises on and prepares contracts and agreements, particularly in the healthcare and technology industry context. Daniel represents public and private companies, venture capitalists and other investors. Daniel has appeared before the Ontario Superior Court of Justice, the Court of Appeal for Ontario, the Federal Court and the Federal Court of Appeal.
Daniel has an active pro bono practice, including acting as duty counsel at Law Help Ontario since its inception in 2008. He has lectured in patent law at the Queen’s University Faculty of Law and writes frequently on current topics in intellectual property law. Before becoming a lawyer, Daniel worked as a software designer in the high-tech industry for several years.
Partner, Kim & Chang
Hyun-Jin Chang is an attorney at Kim & Chang. Ms Chang’s practice primarily consists of litigating in the field of intellectual property law. Before joining Kim & Chang, Ms Chang was a wellrespected judge for 15 years. During her time on the bench, she served several years as a patent court judge. During her tenure as a judge, Ms Chang decided numerous IP cases, including patent, trademark, copyright and trade secret cases.
Partner, Haug Partners LLP
Laura Chubb is an intellectual property partner in Haug Partners’ New York office whose practice mainly focuses on patent litigation. Ms Chubb has litigated in Federal District Courts across the United States and has advised clients in a wide range of industries, including pharmaceuticals, software, luxury goods, medical devices, dietary supplements and consumer goods. Ms Chubb is registered to practise before the USPTO. Ms Chubb serves as a co-chair of the New York Intellectual Property Law Association’s Trade Secret Committee. Ms Chubb was a 2017–2018 Global Fellow and actively participates in the Federal Circuit Bar Association. Ms Chubb is also an active member of ChIPs and WIN.
In law school, Ms Chubb graduated cum laude and was the executive production editor of the Indiana International and Comparative Law Review. Ms Chubb graduated from Vanderbilt University with a degree in molecular biology.
Partner, Haug Partners LLP
Robert Colletti is a partner in the New York office of Haug Partners. He is an electrical engineer with extensive experience in all aspects of patent counselling and litigation. Mr Colletti represents individual inventors, financial institutions and companies that range from start-ups to international corporations regarding the procurement and enforcement of their intellectual property. He litigates patent infringement actions in federal district courts, the Court of Appeals for the Federal Circuit, as well as at the International Trade Commission. In addition, as a registered patent attorney, Mr Colletti handles review proceedings before the Patent Trial and Appeal Board of the US Patent Office. Throughout his career, Mr Colletti has represented clients in a wide variety of technologies including pharmaceuticals, semiconductor manufacturing, electronics, automotive technologies and consumer products.
Barrister, Emmerson Chambers, Victorian Bar
Clare Cunliffe has expertise in intellectual property litigation, with experience in patent revocation and patent infringement proceedings (including pharmaceutical patent injunctions), patent oppositions, trademark proceedings, nonuse applications and oppositions and copyright litigation, as well as litigation concerning confidential information and consumer and competition law. Clare is listed in Doyle’s Guide to Leading Victorian Intellectual Property Barristers (2021) as a pre-eminent junior counsel and in Doyle’s Leading Intellectual Property Junior Counsel – Australia (2021) as a pre-eminent junior counsel. She is listed in Chambers Intellectual Property: The Bar (2020) as a Band 1 practitioner and in the Legal 500 Asia-Pacific (2020) as a Leading Junior.
Partner, Taylor Wessing
Amanda is a patent litigation partner with expertise in the life sciences, healthcare and technology sectors. She has over 10 years’ experience representing companies in business critical patent disputes in the UK. She also has experience coordinating multi-jurisdictional patent litigation both for clients and from the perspective of in-house counsel. Amanda has a BSc and LLB from the University of Queensland and a Postgraduate Diploma in intellectual property law from the University of Oxford. Amanda is also admitted as a solicitor in New South Wales, Australia.
Senior knowledge lawyer, UK Patents Group, Taylor Wessing
Dr Paul Alexander England is the senior knowledge lawyer in the UK Patents Group, specialising in advisory work for clients and the Patents Group on contentious patent matters and related exclusivity rights.
Paul has a particular interest in the life sciences sector, having begun his career as a scientist and taken a doctorate in biochemistry and molecular biology at the University of Oxford. Paul speaks regularly on patent law, including talks and discussions for Pfizer, Takeda, Roche, Viatris and others. He is also published widely and is the editor and lead author of the critically acclaimed A Practitioner’s Guide to European Patent Law (Hart-Bloomsbury) and joint author of A User’s Guide to Intellectual Property in the Life Sciences (Bloomsbury Professional). He is also a reviewer for the Journal of Intellectual Property Law and Practice (Oxford University Press) and a correspondent for BioScience Law Review.
Paul is also Secretary of the Academy of Experts, a professional body for expert witnesses, founded in 1987, which establishes and promotes high objective standards.
Partner, James and Wells
Ian Finch is recognised as one of New Zealand’s most influential leaders in intellectual property. He acts for local and multinational companies, helping them to obtain and enforce their intellectual property rights in Australasia. Ian has extensive litigation experience across a range of industries, particularly in construction, manufacturing, electrical engineering and medical devices.
Ian has been recognised as an IP leader by many influential publications and has received accolades for expertise in enforcement and litigation including: IAM Global Leaders 2021, IAM world’s top 1000 Patent Attorneys (Gold), World Intellectual Property 2020, and Managing IP Stars 2020 – Patent and Trade Mark. He is a board member of the Trans-Tasman Intellectual Property Attorneys Board and is also the general editor of New Zealand’s leading text on intellectual property law, James and Wells Intellectual Property Law in New Zealand. Ian is an avid collector of both single malt and classic cars.
Barrister, Emmerson Chambers, Victorian Bar
Marcus Fleming practises in commercial litigation, with a particular focus on intellectual property law. He has experience in intellectual property litigation in relation to patent revocation and infringement proceedings, patent oppositions, copyright infringement proceedings, trademark infringement proceedings (including related consumer protection law claims and passing off), trademark non-use applications and oppositions, and proceedings concerning allegations of misuse of confidential information and related breaches of employment duties. Marcus also has extensive experience in proceedings concerning claims for compensation on undertakings as to damages in the Federal Court of Australia in the context of pharmaceutical patent revocation proceedings.
Senior associate, Taylor Wessing
Tom is a technology and life sciences patent litigator. Tom has represented clients in many of the leading cases in the UK courts in recent years, particularly in the telecommunications sector, and has also represented clients at the European Patent Office. Tom has a BSc in natural sciences from the University of Durham, a Postgraduate Diploma in intellectual property law from the University of Oxford, and has spent time working in Seoul, South Korea as well as his home town, London, UK.
Solicitor, James and Wells
George’s practice includes dispute and enforcement of a range of intellectual property rights, with a particular focus on trademark and Fair Trading Act 1986 matters.
In addition to his legal degree, George has a Bachelor of Science in computer science and is particularly interested in artificial intelligence and the regulation of new and emerging technologies. He was previously a judges’ clerk, giving him a unique insight into the court processes and a particular affinity for researching. He is a contributor to James and Wells Intellectual Property Law in New Zealand.
John J Kim
Foreign Legal Consultant, Kim & Chang
John J Kim is a foreign legal consultant at Kim & Chang who is a member of the California State Bar and registered to practise before the United States Patent and Trademark Office. Mr Kim has been a member of the California State Bar since 2000 and has extensive experience in litigating and counselling in the areas of intellectual property law. Mr Kim has extensive experience in all aspects of procuring and protecting intellectual property rights, including patents, trademarks, copyrights and trade secrets. In particular, Mr Kim has worked on patents in a wide variety of technical areas, including semiconductor devices and equipment, telecommunication devices, pharmaceuticals, medical devices, chemicals, and consumer goods. Prior to joining Kim & Chang, he focused his practice on patent and trademark counselling, prosecution and litigation at a respected IP boutique firm, Lyon & Lyon (2000–2002) and then at the international law firm of Jones Day (2002–2008).
Senior partner, Kim & Chang
Young Kim practises all aspects of intellectual property law, specialising in patent law. Ms Kim has handled numerous landmark patent cases, including Supreme Court cases involving issues of indirect infringement, doctrine of equivalents, description requirements for a pharmaceutical invention and patentability of a selection invention. She has also handled many patent infringement cases involving pharmaceuticals, biotech, polymers, optical products, glasses and various electronic materials and structures. Ms Kim is the author of WIPO’s publication for Korean patent law and Bloomberg’s International Patent Litigation, the Korean chapter. She has also published numerous articles in BNA’s World Intellectual Property Report and Patent World. Ms Kim has been a guest speaker at various intellectual property conferences including IPO, AIPLA and AIPPI, and a lecturer for various programmes at the International Intellectual Property Training Institute in Seoul, Korea.
Partner, Haug Partners LLP
Richard Kurz is a partner in Haug Partners LLP’s New York office. His practice primarily focuses on intellectual property counselling, prosecution and litigation. This includes experience in trials and appeals concerning patent infringement, false advertising, breach of contract and business tort litigation. He also assists clients with due diligence and licensing matters concerning intellectual property rights. In addition, he represents clients for patent and trademark matters in the US Patent and Trademark Office. He has worked with clients in diverse industries that include pharmaceuticals, biopharmaceuticals, nutritional supplements, medical devices, software, computer systems and materials processing.
Mr Kurz has degrees in law and engineering. Specifically, he holds a Juris Doctor degree from the Franklin Pierce Law Center, now known as the University of New Hampshire Franklin Pierce School of Law, and a Bachelor of Science in Electrical Engineering degree from Purdue University.
Sandra Kuzmich, PhD
Partner, Haug Partners LLP
Dr Sandra Kuzmich is managing partner of Haug Partners LLP. Her practice focuses on patent litigation and intellectual property counselling in the life sciences.
With extensive experience in pharmaceutical patent litigation, Dr Kuzmich offers a distinctive approach to maximising the value of intellectual property assets. She develops, manages and protects diverse patent portfolios while considering a client’s immediate and long-term business objectives. Dr Kuzmich specialises in counselling clients on how to create strong and diverse patent protection for pharmaceuticals and biological products during early research, and how to expand that protection throughout development, product launch and beyond. Having been involved in the pharmaceutical industry supporting preclinical research and clinical drug development, Dr Kuzmich brings a uniquely informed perspective that bridges legal and technical challenges involved in litigating intellectual property assets in the life sciences. Dr Kuzmich earned a PhD in pharmacology from Yale University and a JD from Fordham School of Law.
Partner, Litigation Group, Goodmans LLP
For more than 25 years, Richard’s practice has primarily been focused on intellectual property law and litigation. Richard has very extensive experience in patent, trademark, copyright and industrial design litigation across a wide variety of industries, including pharmaceuticals, medical devices, cannabis, computing and software, power systems, mining, financial services, music publishing, television and film production, magazine publishing, apparel marketing, beer and wine, restaurants and packaged goods. Richard has been counsel on many landmark intellectual property cases, particularly before CIPO, in the Federal Court (including the Federal Court of Appeal) and on multiple occasions in the Supreme Court of Canada.
Since the early 2000s, Richard has been regularly recommended for his expertise in intellectual property litigation by domestic and international legal surveys, including The Canadian Legal Lexpert Directory, Best Lawyers in Canada and Euromoney’s Guide to the World’s Leading Patent Law Practitioners. Who’s Who Legal describes Richard as a “brilliant legal mind” with “impressive knowledge” and IAM Patent 1000 states that Richard “really knows his strategy when it comes to highly technical cases”, is “valued for his intellectual approach to complex assignments”, “works behind the scenes to create watertight cases” and is a “drug industry maven”. Richard is a frequent speaker at industry conferences and the author of various articles on intellectual property law and advocacy. Richard has lectured at the Rotman School of Business and is a co-organiser and lecturer of Intellectual Property in Health Law – a course featured in Osgoode Hall Law School’s Professional LLM programme (2008–2010). Richard is also the coauthor of a chapter entitled “PMNOC Proceeding” in Canadian Patent Law Benchbook, a resource for Canadian judges (2006–present).
Satoshi Namba graduated with a Juris Doctor from Waseda University and was admitted to practise before the Supreme Court of Japan in 2014. He is skilled in drafting and negotiating technology transfer and licence agreements, and other commercial contracts. He successfully represented clients before the Intellectual Property High Court in appeal disputes against the Japanese Patent Office and has successfully secured settlement agreements for clients in civil cases. He demonstrated expertise in providing advice on food labelling information rules as well as matters involving infringement and unfair competition negotiations and litigation representing famous or well-known companies both in Japan and abroad. He has handled various transactional, patent, trademark and design matters for both prosecution and enforcement.
Satoshi has conducted training for Japanese customs on how to identify a particularly famous mark. He is currently a member of the Osaka Bar Association.
Head of Intellectual Property Group and counsel, Goodmans LLP
Harry Radomski serves as counsel at Goodmans LLP. Harry heads the Intellectual Property Group, which has been described as “the best in this field in Canada” (Chambers Canada). Harry’s practice focuses on intellectual property litigation, including patent, trademark and copyright disputes and the complex assessments of damages flowing from the infringement of such rights. Harry is a seasoned trial lawyer, who regularly appears before all levels of court in Ontario and in the Federal Court. He has appeared before the Supreme Court of Canada on a number of occasions to address the country’s leading patent, trademark and damages issues. Beyond his intellectual property practice, Harry has extensive experience in litigation involving provincial and federal governments, including judicial reviews of regulatory decisions in the pharmaceutical context, as well as a variety of commercial litigation matters. Outside of his litigation practice, Harry is also involved in contract negotiations and collective bargaining agreements for several hockey coaches, management personnel and hockey officials in the National Hockey League.
Associate, James and Wells
James’s practice, while extending across a range of intellectual property rights, is centred predominantly on the obtaining and enforcement of patent rights. James has been extensively involved in multinational patent litigation across a range of industries.
James has both a Bachelor and Master of Laws, with the latter focused on international trade law. He also worked as a judges’ clerk, which has honed his skill for research and preparing written material. He is a contributor to James and Wells Intellectual Property Law in New Zealand and writes offbeat fiction in his spare time.
Laarni Victoria Quidoles Vinas
Legal director, SHUSAKU·YAMAMOTO
Laarni Victoria Quidoles Vinas (Lani) is a triplequalified (Attorney-at-Law Philippines and New York and Solicitor of the Supreme Court in England and Wales) managing associate at SHUSAKU·YAMAMOTO. She has extensive experience in intellectual property practice focusing on litigation, post-grant challenges/proceedings and enforcement for clients from different fields, including telecommunications, pharmaceuticals and food industries. She has a demonstrated history of working on food, pharmaceutical and healthcare matters, providing IP-contentious, transactional and regulatory advice to various multinational companies.
Lani speaks at various conferences in Asia. She is currently one of the Executive Committee members of Women in Law Japan and is a member of the Integrated Bar of the Philippines, New York Bar and the Law Society (England and Wales).
Lani is one of the youngest recipients of the Leon SA Aureus Award (Legal Category) and was one of the top five finalists for the Young Lawyer of the Year and one of the finalists in the Asia Legal Business awards.
Owner and managing partner, SHUSAKU·YAMAMOTO
Kensaku Yamamoto (Ken) is the owner of SHUSAKU·YAMAMOTO. After joining the firm in 2011, he has since become the managing partner of the firm. He advises clients on all types of commercial contract – contentious and noncontentious matters, including complex cross-jurisdictional disputes, licensing, merchandising and transactional, patent, trademark, design and other commercial and intellectual property litigation, and research and technology collaboration.
As the managing partner, Ken has demonstrated legal, technical and practical expertise and industrial know-how in international corporate transactions, civil rehabilitation, internal investigations, litigation, venture capital, project finance, product liability and safety, trade regulation and government approvals.
Ken regularly publishes articles in intellectual property and life science journals in Japanese and English, including Dai-ichi Hoki and Managing Intellectual Property.
He is a member of the Osaka Bar Association, Japan Patent Attorneys Association and International Association for the Protection of Intellectual Property.
Recently, Ken was named by Chambers and Partners as one of the Recognised Practitioners for Intellectual Property. He was also one of the finalists for Managing Partner of the Year in the Asia Legal Business awards.
Senior associate, Intellectual Property and Dispute Resolution, Drew & Napier LLC
Javier specialises in the IP disputes practice, specifically in patent litigation. He has acted for many clients across different industries such as the pharmaceutical, chemical and mechanical engineering as well as semiconductor industries. Javier has also practised in a wide array of commercial matters including company law, contract law, defamation and employment law. He has authored a chapter in Contemporary Issues in Mediation: Volume 1, published by the Singapore International Mediation Institute.
A senior counsel whom Javier assisted in a high-stakes patent litigation has described him as a “superb lawye[r] whose work in this complex case has been nothing short of amazing” and was also commended for “acquir[ing] an in-depth knowledge and understanding of the very challenging technical aspects of the disputes and of the volumes of evidence”.
Managing director, Intellectual Property, Drew & Napier LLC
Tony Yeo is the managing director of Drew & Napier’s IP practice, and a director in its dispute resolution department. He also heads the firm’s healthcare and life sciences practice. Tony is a litigator with an active court practice as an advocate. He has acted as lead counsel in many complex matters, including numerous patent infringement proceedings. Tony’s expertise lies in litigation, in particular, IP litigation and enforcement comprising patent, trademark and copyright. Tony has represented various leading biotech and pharmaceutical companies, government statutory boards and listed companies. He was appointed by the Intellectual Property Office of Singapore (IPOS) as an IP adjudicator to hear disputes at IPOS for a two-year term. Tony is also the president of the International Association for the Protection of Intellectual Property (AIPPI) – Singapore Group. He has contributed to numerous publications in the domains of IP and life sciences.
Prestigious legal publications have consistently recognised Tony as a leading practitioner in IP, dispute resolution and life sciences. He is commended for being a “gifted and tenacious litigator” and is the “number one go-to counsel in Singapore”. Tony impresses clients with his ability to “value-add by strategising approaches for the best outcomes”.