Newsletter


30

Dec 2017

Practice Pointer: When is “When”?

By: Jonathan P. Osha It is common to see the word “when” used in U.S. patent claims.  However, it is also common to see a disconnect between the meaning intended by the applicant and the meaning given by the examiner at the USPTO (and perhaps by a court during litigation).  This Practice Pointer will attempt to clarify the meaning and proper usage of this common...

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29

Dec 2017

Do You Own What You Think You Own? Part I: Patent Assets, Sales, and Good Faith Purchaser

By: Aron T. Griffith One aspect of managing a global patent portfolio is understanding what patents you have.  Likewise, when acquiring a patent portfolio, it is important to understand what patents you are buying. Asset purchase agreements often simply refer to an attached schedule of patents, and may or may not list all family members.  Oversimplified, “Company A conveys to Company B all of the...

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23

Dec 2017

Pleading Standards Revisited

By: Califf Cooper The U.S. Federal Circuit provided some additional insight into the pleading standard for direct and indirect patent infringement claims in a recent decision, Lifetime Industries, Inc. v. Trim-Lok, Inc., 2017-1096, (Fed. Cir. Sept 7, 2017). Lifetime sued Trim-Lok in the Northern District of Indiana for direct and indirect patent infringement of U.S. Pat. No. 6,966,590 (the ’590 patent).  The ’590 patent relates...

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15

Dec 2017

Brazilian Government Considers Adopting Simplified Procedure for Granting Patents Without Substantive Examination

By: Guest Authors Saulo Calazans and Ivan Ahlert, partners of Dannemann Siemsen The Brazilian Ministry of Industry, Foreign Trade and Services (MDIC) and the National Institute of Industrial Property (INPI) announced the imminent entry into force of regulations for a simplified procedure for the allowance of patent applications. This initiative aims at addressing the considerable existing patent examination backlog. The proposal as submitted to public...

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02

Dec 2017

Applicants May Save Money By Paying Fees to the EPO By Credit Card

By: Francesca Giovannini As a part of its ongoing drive to fully digitize all patent processes, the European Patent Office (EPO) has decided to no longer accept written instructions for payment of patent fees starting December 1, 2017. Debit orders are now accepted and only processed electronically using Online Filing (EPOLINE), new online filing (CMS), Online Fee Payment, or ePCT. The payment option via bank transfers remains unaffected.  More notably, the EPO has newly introduced a web-based method of payment by credit card. Users of the new...

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30

Nov 2017

Certifying Priority Electronically: Updates to the USPTO’s PDX Program

By: Kevin Kuelbs The Priority Document Exchange (“PDX”) streamlines the process for transmitting priority documents among participating patent offices worldwide by providing electronic access.  Utilizing the PDX allows applicants to avoid fees for obtaining certified copies of priority documents and the incidental costs associated with transmitting and filing priority documents with the appropriate patent office. Agreements to transmit documents via the electronic PDX exist between...

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30

Nov 2017

Improvements in Wearable Optics Lead to Stretchy Optical Fiber Sensors

By: Nelson Monterrosa Wearable sensor research has increased in the last years. The expansion of wearable technologies encourages the development of more efficient sensors for collecting and processing data from the real world. Small wearable sensors allow researchers to track body motion more efficiently. Wearable sensors applications range from allowing physicians to monitor life-threatening conditions to improving the quality of animations in video games. Efficient...

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30

Nov 2017

EPO Standard for Proof of Recording Patent Assignments

By: Catherine Caspar A European patent application may be transferred for one or more of the designated contracting states. Article 72 of the European Patent Convention (EPC) is an autonomous provision which exclusively governs the formal requirements of such transfers and defines a high standard of proof for the recordal of assignments. According to Article 72, “An assignment of a European patent application shall be...

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30

Nov 2017

China’s Guiding Cases in IP Law, Part III: Infringement of Design Patents

By: Han-Mei Tso and Ken J. Yu In March 2017, the Supreme People’s Court of China (the “Supreme Court”) published its 16th set of guiding cases, including ten intellectual property (“IP”) cases.  Among the ten IP guiding cases, three of them relate to patent infringement. In recent editions of the Osha Liang Newsletter, we discussed the patent infringement guiding case in connection with the liability...

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30

Nov 2017

Who Says the PTAB Never Allows Amendments? The Question is: Can an Amendment Survive Appeal?

By: Tammy J. Dunn One of the most common criticisms of inter partes review (IPR) proceedings, a specialized proceeding in which third parties can challenge the validity of a patent in front of the Patent Trial and Appeal Board of the US Patent & Trademark Office (“the PTAB” or “the Board”) on certain grounds based on prior art printed publications, is that there is no...

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29

Nov 2017

New Rule Extends US Attorney-Client Privilege in Proceedings before the PTAB

By: Tammy J. Dunn A new rule will take effect on December 7, 2017.  The new rule applies to the scope of attorney-client privilege in proceedings before the PTAB.  According to the Rule: [A]ny communication between a client and a USPTO patent practitioner or a foreign jurisdiction patent practitioner that is reasonably necessary and incident to the scope of the practitioner’s authority shall receive the...

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25

Nov 2017

Why Intellectual Property Matters in Sports Technology

By: Tammy J. Dunn Imagine spending millions of dollars in research and development to develop some of the best and most innovative sports technology products available.  Imagine spending as much, if not more, on top marketing and advertising to develop a brand name synonymous with success in the industry.  Imagine that feeling of having “arrived” after years of hard work, sleepless nights, and making sacrifices...

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24

Nov 2017

Written Description a Problem for Biological Drugs

By: David S. Forman, Ph.D. Half of the ten biggest selling pharmaceuticals are biological drugs based on monoclonal antibodies.  Monoclonal antibodies are made by growing clones of a large number of single antibody-producing cells, and then screening the clones to find cells making antibodies that specifically bind to a desired target molecule, called an “antigen.”  Typically, this screening yields several monoclonal antibodies that have the...

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30

Oct 2017

Trick or Treat!…or Troll or Tribe? Questions in Need of Answers

By: Suzanne Lecocke The latest approach to try to save a patent from an inter partes (IPR) proceeding is to transfer the patent to a Native American tribe.  Patent owners hope to thwart America Invents Act (“AIA”) validity challenges based on the doctrine of sovereign immunity.  This comes at a time when the entire AIA IPR proceedings are in a state of flux.  Depending upon...

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30

Oct 2017

2016 Patent Statistics Annual Report by SIPO

By: Han-Mei Tso and Jude Yi In September 2017, the State Intellectual Property Office of China (SIPO) published the 2016 Patent Statistics Annual Report. This annual publication includes comprehensive statistical data accumulated through the daily work of the SIPO, reflecting various aspects of China’s current patent landscape in the areas of patent procurement, maintenance, and administrative enforcement. The Report, which contains more than 200 pages,...

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30

Oct 2017

Oktoberfeisty: An Emerging Row over Patenting GMO 2-row

By: A. Rusty Rogers Following the issuance of a number of patents over genetically modified barley to Carlsberg and Heineken, controversy has erupted regarding unfair monopolies over European beer markets and fears of accidental infringement.  With similar patents in the U.S. and a number of other jurisdictions, it may be a matter of time before patents over living organisms are once again brought into the...

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27

Oct 2017

2017 AIPPI Congress in Sydney, Australia

Osha Liang Partners Jonathan Osha and Peter Schechter attended the AIPPI 2017 World Congress from October 13-17, 2017 in Sydney, Australia, one of the world’s most beautiful and vibrant cities.  In John’s role as AIPPI’s Deputy Reporter General and Peter’s as Chair of one of the 2017 Study Questions, they actively took part in AIPPI’s comprehensive Educational Program, featuring all areas of IP law and all...

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27

Oct 2017

New EU Practice Regarding Summons to Attend Oral Proceedings as First Action in Examination

By: Francesca Giovannini Whenever objections are raised in the search opinion accompanying the European search report, the applicant of a European patent application must respond to the search opinion by filing amendments to the description, claims or drawings, and/or filing observations on the objections. In the absence of objections in the search opinion, amendments to the description, claims or drawings, and/or observations may be voluntarily...

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25

Oct 2017

In the Wake of Impression Products, Take a Look at Your Business Agreements

By: Suzanne Lecocke and Peter Schechter In its recent Impression Products[1] decision, the United States Supreme Court made abundantly clear that once a patent owner sells or authorizes the sale (by a licensee) of a patented product – anywhere in the world – it cannot use its patent to prevent the lawful purchaser from doing anything it pleases with that product.  This ruling has potentially...

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23

Oct 2017

European Trade Secrets Policy Moving Forward

By: Christophe Besnard With the goal of providing the European Union (EU) with a common, clear and balanced legal framework against unfair competition, the European legislator adopted the EU Trade Secrets Directive (here) on 8 June 2016. The Directive harmonizes the definition of trade secrets, in accordance with existing international standards. Trade secrets are thus defined, in a nutshell, as valuable information for a company...

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15

Oct 2017

How Enablement is Determined

By: David S. Forman For a patent to be valid, the description of the invention in the patent must describe “the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.”  35...

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10

Oct 2017

JPO Entrusted AI Business For Trademark Applications to FRONTEO

By: Mutsumi Fukuoka Since 2016, the Japanese Patent Office (JPO) has been considering using Artificial Intelligence (AI) in the examination of patent, design, and trademark applications.  In April of 2017, the JPO announced “Action Plan for Utilization of AI Technology” (available in Japanese here) in April 2017. As part of this Plan, the JPO will perform the following tasks: (1) make a list of the...

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29

Sep 2017

Under Armour Won Trademark Battle Against Uncle Martian in China

By: Han-Mei Tso and Ken Yu In August 2017, the People’s Higher Court of Fujian Province (the “Fujian Higher Court”) issued the first instance judgment on UNDER ARMOUR Inc. (“UNDER ARMOUR”) v. Fujian Tingfeilong, Inc. (“Tingfeilong”). The Fujian Higher Court held that the defendant’s act has infringed the plaintiff’s trademark rights and also constituted unfair competition. The Fujian Higher Court awarded 2 million RMB for...

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29

Sep 2017

Is It Really There? Inherency in Obviousness and Functional Claiming

By: A. Rusty Rogers In a recent decision, the Federal Circuit upholds an invalidation of a patent directed to manufacturing electric cables during inter partes review, despite acknowledging the Patent and Trial and Appeal Board’s (PTAB) misapplication of inherency principles in the obviousness context. When formulating a rejection, examiners must consider what prior art references teach and whether every limitation of a claim under examination...

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29

Sep 2017

European Litigation Series, Part II: Search Order and Seizure in Italy

By: Francesca Giovannini Italy is the Eurozone’s third-largest economy after Germany and France and, due to the size of its market and reduced litigation costs, should be taken into consideration when Intellectual Property (IP) rights need to be enforced in Europe. Since exclusive jurisdiction over IP cases has been conferred on select Italian courts, the duration of patent litigation proceedings has been shortened: a first-instance...

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29

Sep 2017

Hangzhou Internet Court: On the Fly

By: Han-Mei Tso and Jude Yi Hangzhou, the capital of China’s Zhejiang Province, is indicating its potential and appeal for internet innovation by being the hottest city for thousands of internet companies to call home, including the most notable industry bellwether, Alibaba. Adding more buzz to this city’s internet atmosphere, a pioneer judicial innovation – the one and only Internet Court in China – has...

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29

Sep 2017

AFCP 2.0 and QPIDS Pilot Programs Extended Until Sept. 30, 2018

By: Thomas Scherer The After-Final Consideration Pilot 2.0 (AFCP 2.0) and Quick Path IDS (QPIDS) pilot programs have been extended to Sept. 30, 2018.  These programs facilitate efficient and expedited examination. The AFCP 2.0 program allocates additional time to Examiners for the consideration of non-broadening amendments made after the issuance of a final office action.  If the Examiner is able to confirm allowability of an...

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25

Sep 2017

USPTO Business Methods Customer Partnership Meeting – Yes, Business Method Patents Still Exist in the United States

By: Robert Lord and David Rosenblitt The Customer Partnership Meeting was held on September 20, 2017, and was hosted by the United States Patent and Trademark Office (“USPTO”) at the Madison Auditorium in Alexandria, VA.  Osha Liang LLP attended the event at the San Jose, California regional office of the USPTO, via video conference.  The Osha Liang LLP attendees made up more than fifty percent...

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