Newsletter


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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30

Aug 2017

Photos from Hurricane Harvey

Over the last week, Hurricane Harvey swept the southeast coast of Texas. Our thoughts and prayers are with our clients, employees and their families who were impacted by this unprecedented storm.  These are challenging times and we want to be of as much assistance and support as we can.  Osha Liang would like to thank all of our clients, colleagues and friends around the world...

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28

Aug 2017

Important Case of Inadmissibility of Experimental Evidence Filed After Filing to Support Inventive Step Before the EPO

By: Elsa Benveniste This year, the Board of Appeal of the European Patent Office (EPO) issued decision T488/16 regarding the revocation of Bristol-Myers Squibb’s (BMS) European Patent EP1 169 038. In this case, the Board considered that the anti-cancer drug dasatinib (Sprycel®) claimed by the European patent lacked inventive step, despite the proprietor’s efforts to prove the contrary based on experimental evidence submitted to the...

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25

Aug 2017

Some Practical Considerations Before Litigating in China

By: Jeffrey Bergman and Jeffery Langer Since the creation in 2014 of three IP-only courts, located in Beijing, Shanghai and Guangzhou, there has been a dramatic increase in the number of foreign companies bringing suits (against both foreign and domestic defendants) in China.  Increased damage awards and the awarding of attorney fees by these courts are also attracting attention from China intellectual property rights holders. ...

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21

Aug 2017

Great American Solar Eclipse Photos

John and Talina Osha and Louis and Patti Bonham of Osha Liang, Alan and Susan Kasper of Sughrue, family and friends hosted members of the Cornell Friends of Astronomy club at the Oshas’ River Junction Ranch in Idaho to view the Great American Solar Eclipse on August 21, 2017.  The eclipse photos were taken by John using a 600mm prime lens and a 2x teleconverter. ...

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15

Aug 2017

How to Handle Business Software Alliance Audit Demand Letters

By: Keelin Hargadon Businesses sometimes find themselves the recipients of a letter from the Business Software Alliance (BSA) demanding an audit and accounting of software installed on company computers.  The requested audit is meant to uncover unauthorized installations of copyrighted software with the intent of recovering damages on behalf of the BSA/copyright owner.  Unfortunately for the recipients, these audit demand letters start a process that...

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01

Aug 2017

China’s Guiding Cases in IP Law, Part II: Infringement of Patent for Pharmaceutical Preparation Process

By: Han-Mei Tso In March 2017, the Supreme People’s Court of China (“Supreme Court”) published its 16th set of guiding cases, including 10 intellectual property (“IP”) cases.  Among the 10 IP guiding cases, three of them relate to patent infringement. In the June 2017 Osha Liang Newsletter, we discussed the first patent infringement guiding case in connection with liability of the e-commerce platform.  In this...

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31

Jul 2017

Cybersquatting Can Be Painful for Businesses of All Sizes

By: Keelin Hargadon and Robert Lord Cybersquatting is one of the biggest problems plaguing legitimate, customer-facing businesses in the U.S. today. While many forms of cybersquatting exist, the end goal is always the same– stealing money or valuable personal information from unwitting consumers.  Many times, cybersquatters take advantage of a hastily-typed, misspelled domain name and will use the legitimate company’s trademarks and color schemes to...

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25

Jul 2017

Proposed Changes to China’s Inventor Reward and Remuneration System

By: Jeffery P. Langer China requires the reward and remuneration of inventors.  Reward is a one-time payment to employees for the invention or creation of intellectual property.  Remuneration, on the other hand, is required if the employer exploits the intellectual property by using it in commerce by, for example, incorporating the intellectual property into a product or licensing the intellectual property to another entity.  Amendments...

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15

Jul 2017

Update on Patentable Biotechnological Inventions at the EPO

By: Alexandre Picot The European Patent Office made the decision to exclude from patentability plants and animals exclusively obtained by an essentially biological breeding process. The new provisions come into effect immediately, starting July 1, 2017. The European Patent Office (EPO) has decided to take account of the Notice of the European Commission from November 2016 on certain articles of Directive 98/44/EC of the European...

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10

Jul 2017

Fame, Wine, and Cigars: The Finer Points of the DuPont Factors

By: A. Rusty Rogers In a case involving a petition for cancellation of a cigar trademark on the basis of likelihood of confusion with a celebrated wine, the Federal Circuit reminds the Trademark Trial and Appeal Board (TTAB) that the fame prong of the multifactor DuPont balancing test requires considering all evidence when presented. Trademarks provide protection for holders where there is a “likelihood of...

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05

Jul 2017

2017 Annual Statistics Report by Japan Patent Office

By: Shinya Kimura On June 29, 2017, the Japan Patent Office (JPO) released the JPO Annual Report 2017.[1]  The JPO Annual Report provides a comprehensive compilation of statistics on Japanese intellectual property (IP) and detailed explanations of the JPO’s recent developments on the IP system in Japan.  In our newsletter of July 2016, we reported on trends of the IP5 patent filings with statistical data...

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29

Jun 2017

Claim Construction at the Patent Office: What is Reasonable?

By: Lisa Margonis During examination of patent applications, the U.S. Patent & Trademark Office (USPTO) applies the “broadest reasonable interpretation” (“BRI”) standard to determine the meaning of claim terms.  See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005).  This same standard is applied to patents reviewed by the Patent Trial and Appeal Board (“PTAB”) during post-grant review.  37 C.F.R. §42.100(b).  More specifically,...

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