Newsletter


25

Apr 2017

UPC: Factors to be Considered in Making the Decision of Opting Out

By: Francesca Giovannini Despite the ongoing uncertainties in the ratification process of the Unified Patent Court (UPC) Agreement, the so called “sunrise period” giving the possibility of opting out of European patents/applications from the exclusive jurisdiction of the UPC before the UPC becomes operational could nevertheless start soon, i.e., in September 2017 at the earliest. In addition to the uncertainties generated by the Brexit vote,...

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31

Mar 2017

Medgraph v. Medtronic: Divided Infringement in the Limelight

By: A. Rusty Rogers In the wake of the Akamai Techs. Inc. v. Limelight Networks, Inc. family of decisions, the standard for finding divided infringement has become somewhat more favorable for patent holders in certain cases.  However, after protracted litigation amidst the shifting sands of divided infringement jurisprudence, Medgraph learned the hard way that establishing direct infringement between multiple actors first begins with the bedrock principle that a...

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31

Mar 2017

UPC: Confirmation that Opting Out is Planned to Start Sept. 2017

By: Francesca Giovannini The Unified Patent Court (UPC) Preparatory Committee met in The Hague on 15 March 2017 and confirmed that, as previously announced, opting out European patents and applications before the UPC becomes operational is scheduled to begin in September 2017. The UPC Preparatory Committee also confirmed that the planned entry into force of the UPC Agreement and operation of the Unified Patent Court...

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31

Mar 2017

U.S. Design Patents: the Under Utilized and Overlooked Patent

By: Connie Pielech U.S. design patents cover the ornamental design for an article of manufacture, namely, the way something looks.  Some examples include smartphones, shoewear, electronics, tires, and consumer goods.  The top organizations granted design patents in the last 10+ years include Samsung Electronics Co., Ltd., Nike, Inc., Sony Corporation, Microsoft Corporation, LG Electronics Inc., Proctor + Gamble Company, and Goodyear Tire + Rubber Company....

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31

Mar 2017

Why Does the U.S. Supreme Court Keep Reversing the Federal Circuit?

By: David Forman The ultimate court of appeal in U.S. patent law is the Supreme Court, but throughout most of its history the Court decided relatively few patent cases, none at all in some years.  That pattern continued after 1982, when all patent appeals were moved to a single appellate court, the United States Court of Appeals for the Federal Circuit.  But then, in 2005, the...

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31

Mar 2017

U.S. Supreme Court Rules Copyright Protection is Available for Designs Applied to Cheerleader Uniforms

By: John Montgomery On March 22, 2017, the Supreme Court ruled in a 6 to 2 decision that surface decorations incorporated into cheerleader uniforms could be protected by copyright.* The opinion of the Court provides a two-part test for determining whether protectable design features are separable from a useful article to which they are applied, so that they are protectable under the Copyright Act, §101. ...

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31

Mar 2017

SIPO Approved the Amendments of the Guidelines for Chinese Patent Examination

By: Han-Mei Tso and Jude Yi The patent office of China, the State Intellectual Property Office (“SIPO”), has approved the Amendments of the Guidelines for Patent Examination (“Guidelines”) on March 1, 2017. The Amendments cover subject matter relating to protection of business models and computer programs, supplementary experimental data, claim amendments in invalidation proceedings, patent examination information disclosure, as well as suspension procedure which will...

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31

Mar 2017

More Ammunition Against an Examiner’s Improper Anticipation Rejection

By: Seema Mehta The U.S. Federal Circuit recently issued an opinion (Nidec Motor Corp. v. Zhongshan Broad Ocean Motor) on a straight-forward anticipation issue, with some good quotes for use in prosecution practice.  In this case, appealed from a Patent Trials and Appeals Board (PTAB) decision in an Inter Partes review (IPR) proceeding, the Federal Circuit reversed the Board’s finding of anticipation of claim 21...

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30

Mar 2017

Beijing IP Court Issued Decision Based on SEP Infringement

By: Ken Yu and Han-Mei Tso On March 22, 2017, the Beijing IP Court (the “Court”) issued its first instance judgment on Xi’an China IWNcomm Co., Ltd. (IWNcomm) v. Sony Mobile Communications (China) Co. Ltd. (Sony).  The Court held that Sony has infringed IWNComm’s Utility Patent No. ZL02139508.X which involves a Standard Essential Patent (SEP) in connection with WLAN Authentication and Privacy Infrastructure (WAPI).  The...

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28

Mar 2017

WIPO Reports Record High Number of Cybersquatting Cases in 2016

By: Keelin Hargadon According to a recent WIPO press release, the number of UDRP (Uniform Domain Name Dispute Resolution Policy) cases filed in 2016 was higher than any other year.   Successful UDRP proceedings help rightful trademark owners resolve cybersquatting issues.  WIPO cites the release of over 1,200 new generic Top-Level Domains (gTLDs) as a driving cause for the uptick in filings, with .xyz, .top and .club...

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27

Feb 2017

Silence Not Golden with Provisional Application, CAFC says

By: John Montgomery and David Madio Introduction The United States Court of Appeals for the Federal Circuit (CAFC) provides guidance on when a provisional application can be used in patent claim construction.  The split decision highlights the importance of the specification and the relevance of a provisional application in claim construction and subsequent determination of the validity of the claims.  The different views might be beneficially...

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27

Feb 2017

Petty Patents Around the World

By: Francesca Giovannini, Shinya Kimura, Han-Mei Tso and Jude Yi Utility models are intellectual property (IP) rights also known in some countries as utility innovations, utility certificates, short-term patents or petty patents. Independently from the specific wording used, a utility model is an exclusive IP right granted in some countries for a technical innovation, generally relating to a product or a device, for a limited period...

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27

Feb 2017

Influential U.S. Federal Court Revises Patent Local Rules

By: Monica Katthage An influential U.S. federal court has revised its Patent Local Rules.  The revised rules in the Northern District of California (covering courts in San Francisco, San Jose, Oakland, and Eureka) require early disclosure of financial information and contentions relating to damages by both the patent owner and the accused infringer.  The revised rules apply to all currently pending patent cases.  Both parties, and...

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27

Feb 2017

Use of “consisting of” Creates a Strong Presumption that is Difficult to Overcome

By: Anthony Amert In an appeal of a district court ruling on a patent infringement suit, the U.S. Federal Circuit in Shire v. Watson reminded patentees that claim language can create presumptions regarding claim scope that impact the boundaries of the claimed subject matter that are difficult to overcome and may preclude a finding of infringement. In the litigation, Shire Development, LLC sued Watson Pharmaceuticals,...

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26

Feb 2017

Case C-395/16, DOCERAM – When are Designs “Solely Dictated” by Function?

By: Pascale Brochard Design(s) behind the product are known as a very efficient way for a company to stop a competitor from selling a similar product, even in high tech products (remember Apple’s tablet designs?). Registered Community designs are unitary rights that have equal effect across the European Union; they are ruled by EU’s designs Regulation (EC) No 6/2002.  According to the Regulation, designs that...

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25

Feb 2017

New Validation Agreement Between European Patent Organisation and Cambodia

By: Francesca Giovannini After the validation agreements signed with Morocco, the Republic of Moldova and Tunisia, on January 23, 2017 the European Patent Organisation, the intergovernmental organisation of which the European Patent Office (EPO) is the executive body, has signed its fourth validation agreement with a non-member state, Cambodia. This is the first validation agreement recognising European patents on the territory of an Asian country. According...

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24

Feb 2017

Can a Research Plan Invoke Derivation Under 35 U.S.C. § 102(f)?

By: Yuichi Watanabe and Xue “Sherrie” Holdman On January 26, 2017, the Court of Appeals for the Federal Circuit rendered a decision on the uncommon issue of derivation in Cumberland Pharms. Inc. v. Mylan Institutional LLC.[1]  Derivation is a legal concept that ensures that a patent is not issued to someone who is not the true inventor. Prior to the America Invents Act (AIA), derivation...

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30

Jan 2017

UPC: Opting Out Might Be Possible Starting From September 2017

By: Francesca Giovannini Following the UK’s decision to leave the European Union (EU) and months of uncertainty concerning what measures the UK government would take to implement that decision, the IP community was generally quite surprised by the announcement made by the UK Minister for IP at the EU Competitiveness Council in Brussels last November. On that occasion, the Minister announced that the Agreement on...

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30

Jan 2017

Broad Standard of Infringement for Method Claims Upheld in Lilly v. Teva

By: David Forman Patented methods often include steps that can be performed by more than one party.  Until recently, if more than one party performed at least one of the method steps (divided infringement), it precluded establishing infringement, since the well-established rule has been that for direct infringement under 35 U.S.C. § 271(a), all steps of the patented method had to be performed by the same...

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30

Jan 2017

MUST It Be There? An Update on the Inherency Doctrine

By: Ko Nakamura Anticipation under 35 U.S.C. §102 requires each limitation of a claim to be disclosed by a single prior art reference.  Such a disclosure may be explicit or inherent in the prior art.[1]  For a limitation to be inherently disclosed in the prior art, the limitation, while not explicitly disclosed, must necessarily be present in view of the explicit disclosure of the prior...

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30

Jan 2017

Validation of English Language European Patents in Belgium: Translation of Specification No Longer Required

By: Francesca Giovannini Until recently, in order to validate a granted, English language European patent in Belgium, it has been necessary to file a translation of the specification in French, Dutch, or German.  In anticipation of accession of Belgium to the London Agreement, Belgium has revised its patent legislation with effect from January 1, 2017, to remove this requirement. Under the revised patent legislation, proprietors...

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20

Jan 2017

Strategies Used By Chinese Trademark Squatters and How to Prevent Them

By: Keelin Hargadon International companies have long encountered problems navigating China’s trademark system due to lack of knowledge about China’s first to file system, trademark squatting, and lax enforcement in cases of trademark infringement.  Wresting a trademark from a bad actor is expensive, difficult and sometimes ultimately unsuccessful. Chinese administrative bodies and courts have historically been unwilling to consider bad faith as a factor in clear...

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19

Jan 2017

Osha Liang Once Again Named to Top 10 List for TC 3600 Allowance Rates

Osha Liang has once again achieved a top-10 ranking by Juristat in patent examination allowance by the U.S. Patent and Trademark Office’s (USPTO) Technology Center (TC) 3600. The USPTO’s TC 3600 provides examination for a wide range of technologies, including software, business methods, and the oil and gas industry. With an allowance rate of 80.7 percent, Osha Liang was recognized as one of the most...

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17

Jan 2017

Federal Circuit to Review the Reviewability of the IPR Time Bar

By: Tammy Dunn Inter partes review proceedings (IPRs) have become an increasingly popular avenue for those who seek to invalidate claims in a patent.  Created by Congress through the America Invents Act, IPRs offer a more streamlined and relatively cost-effective way to invalidate patents than historically has been available in United States district court proceedings.  Unlike district court, where judges and juries make decisions regarding...

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12

Jan 2017

USPTO No Longer Accepting Submissions for P3 Program

The United States Patent and Trademark Office (USPTO) gave notice on January 12, 2017 that the submissions for the Post-Prosecution Pilot (P3) program would no longer be accepted after that date.  The UPSTO indicates that it intends to review the results of the pilot, and will publish a report at a later date on the P3 website. 日本語 米国特許庁 (USPTO)は、2017年1月12日以降、Post-Prosecution Pilot (P3)プログラムの申請を受け付けないことを告知しました。米国特許庁は、この試行プログラムの結果を検証し、P3プログラムのウェブサイトで後日レポートを公開する予定です。 简体中文 美国专利商标局(USPTO)于2017年1月12日发表申明,在该日期之后将不再接收审查后试点(Post-Prosecution Pilot...

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10

Jan 2017

CAFC Clarifies Definiteness of Subjective Claim Terminology

By: Zachary Schaefer In Sonix Technology Co., Ltd. v. Publications International, Ltd., No. 16-1449 (Fed. Cir. Jan. 5, 2017), the Court of Appeals for the Federal Circuit reversed a district court’s decision that the inclusion of a subjective claim term rendered the claims indefinite under 35 U.S.C. § 112, second paragraph. 35 U.S.C. § 112, second paragraph, states, in part, that the claims of a patent...

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28

Dec 2016

China’s Supreme Court Ruled On “乔丹” (Jordan) Trademark Dispute

By: Han-Mei Tso and Ken J. Yu On December 8, 2016, China’s Supreme Court (“the Supreme Court” hereinafter) ruled on the dispute between the retrial petitioner (the plaintiff in the first instance, the appellant in the second instance), Michael Jeffery Jordan (“Jordan” hereinafter), and the respondent (the defendant in the first instance, the appellee in the second instance), China Trademark Review and Adjudication Board (“the Board”...

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28

Dec 2016

U.S. Supreme Court to Examine Patent Exhaustion Doctrine

By: Califf Cooper The U.S. Supreme Court has recently chosen to weigh in on the patent exhaustion doctrine.  In the United States, the patent exhaustion doctrine, also known as the first sale doctrine, prevents a patent holder from recovering for infringement after an authorized sale of the patented article.  In other words, the patent holder’s exclusive rights to control the use and sale of the patented...

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