Newsletter


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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25

Jun 2017

Efforts continue toward substantive patent law harmonization; Significant achievements in IP office cooperation are celebrated

Osha Liang managing partner, Jonathan Osha, participated as a member of AIPLA’s Harmonization Task Force in a series of recent meetings relating to international harmonization of patent law, developments in inter-Office cooperation, and improvements to the overall user experience.  On May 29 and May 30, the Industry Trilateral group, including representatives from AIPLA, IPO, Business Europe, and JIPA, met in Valletta, Malta.  Issues discussed included harmonization...

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23

Jun 2017

The SLANTS Win Epic Trademark Battle – Supreme Court Rules the “Disparagement Clause” of Trademark Act is Unconstitutional

By: John Montgomery The Supreme Court of the United States has affirmed the judgment of the Court of Appeals for the Federal Circuit, finding the longstanding “disparagement clause” of the Trademark Act of 1946 (the Lanham Act, 15 U.S.C. § 1052(a)) unconstitutional, in violation of the Free Speech Clause of the First Amendment to the Constitution. In an earlier Osha Liang Newsletter article (click here...

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19

Jun 2017

Requirements to Validly Prove An Entitlement to Claim Priority Before the EPO

By: Elsa Benveniste In the recent decision T577/11, a Technical Board of Appeal of the European Patent Office (EPO) considered the issue of an entitlement to claim priority before the EPO, particularly when a transfer of a first patent application occurs before the filing date of a subsequent European application claiming priority on the first application. As in previous decisions, the Board confirmed once again...

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15

Jun 2017

UPC Update (June 2017)

By: Francesca Giovannini As mentioned in Osha Liang’s previous newsletters, the ratification process of the Unified Patent Court (UPC) Agreement has not been completed yet because two of the mandatory participating states—namely the UK and Germany—have yet to conclude their ratification process for the UPC to operate. In addition to the uncertainties generated by the Brexit vote, further doubts have been cast upon imminent operation...

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12

Jun 2017

Upheaval in the Patent World? Potential Impact of U.S. Supreme Court Consideration of Inter Partes Review

By: Suzanne Lecocke and Peter Schechter Expected within the next twelve months are two United States Supreme Court rulings that could, once again, significantly alter litigation strategies for both a patentee and an accused infringer in the United States. On May 22, 2017, the U.S. Supreme Court granted certiorari in the case of SAS Inst. Inc. v. Lee, 2017 U.S. LEXIS 3236 (U.S. May 22,...

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10

Jun 2017

Jordan Joins the Patent Cooperation Treaty (PCT)

As of June 9, 2017, Jordan has become the 152nd member state of the Patent Cooperation Treaty (PCT). Any PCT application filed on or after this date will automatically include Jordan. Jordanian nationals and residents will be able to submit patent applications through the Jordanian Patent Office. The accession of Jordan to the PCT benefits both local and foreign applicants, which will contribute to the...

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05

Jun 2017

U.S. Patent Rights End With The First Sale Anywhere

By: Peter Schechter From at least as early as the mid-19th century until the early 1990s, it was nearly uniformly understood that once a patented item was sold by or under the authority of the patentee, all patent rights as to the specific item sold were “exhausted.”  This exhaustion rule or “first sale doctrine” was a feature of English (and subsequently American) law since the...

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30

May 2017

Litigation Before The Unified Patent Court: What Will It Look Like?

By: Francesca Giovannini As is known, the UK and Germany have still to ratify the Unified Patent Court (UPC) Agreement before it can enter into force. Germany is expected to ratify after the UK has completed the ratification process. If the UK’s intention to ratify the UPC Agreement declared last November is maintained, the UK could ratify it after the elections called for June 8, presumably...

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30

May 2017

A Brewing Dispute: Coffee Pods and the Written Description Requirement

By: Annemarie Vicere On May 23, 2017, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued a decision finding claims that had been broadened during prosecution in a manner to encompass undisclosed embodiments to be invalid under the written description requirement of 35 U.S.C. § 112.  Rivera v. ITC., Case No. 2016-1841 (“Rivera”).  The patent at issue in Rivera is directed to...

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26

May 2017

Section 102 Bar Provision Unchanged…For Now

By: Carlyn Burton In the first consideration of the substantive amendments of the Leahy-Smith America Invents Act (AIA), the US Court of Appeals for the Federal Circuit in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.[i] weighed the statutory amendment of the on-sale bar provision. The on-sale bar, found within section 102 of the patent act, serves as a bar to patentability to prevent an...

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24

May 2017

PTAB Reverses Course Mid-Torrent: Use of “Inapplicable” Prior Art During IPR

By: Rusty Rogers This is a cautionary tale about the ability of the U.S. Patent Trial and Appeals Board’s (PTAB) to rely on additional prior art references in a decision on inter partes review (IPR) – even prior art initially deemed “inapplicable.”  In its recent decision in Novartis AG v. Torrent Pharmaceuticals (April 12, 2017), the Court of Appeals of The Federal Circuit (CAFC) approved the PTAB’s use of prior...

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22

May 2017

U.S. Supreme Court Ruling Changes 30 Years of Patent Venue Law

By: Califf Cooper On May 22, 2017, in the long-awaited and much-anticipated decision of TC Heartland LLC v. Kraft Foods Group Brands LLC, the U.S. Supreme Court narrowed the patent venue statute holding that “a domestic corporation ‘resides’ only in its State of incorporation.”  The ruling curbs patent forum shopping and deals a big blow to the patent litigation hotbed of the Eastern District of Texas. Kraft Foods...

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22

May 2017

Another legislative proposal from a major intellectual property organization seeking to calm the 101 waters, this time from AIPLA

By: Robert Lord and Kelly McKinney The current state of § 101 jurisprudence in the United States (“U.S.”) is shrouded in confusion and uncertainty.  Indeed, decisions made by the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit, as set forth in Alice and its progeny, have been inconsistent and lack clear guidance on how to analyze patent eligibility under 35 U.S.C....

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15

May 2017

China Is Formulating Guidelines for Anti-Monopoly Enforcement against Abuse of IPRs

By: Han-Mei Tso and Jude Yi Recently, the Anti-Monopoly Commission of the State Council of the People’s Republic of China released to the public “Anti-Monopoly Enforcement Guidelines on Abuse of Intellectual Property Rights” (hereafter, “Guidelines”), welcoming comments from March 23, 2017, to April 21, 2017. These Guidelines, drafted by the Anti-Monopoly Commission, are based on a prior proposal jointly contributed by the National Development and Reform...

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05

May 2017

Functional Claim Language: The Indefiniteness Trap

By: Seema Mehta and Jonathan Osha Functional claim limitations define an element of an invention in terms of what it does rather than in terms of its structure.  In the United States, 35 U.S.C. §112(f) (pre-A.I.A. 35 U.S.C. §112, 6th paragraph) provides that “means-plus-function” and “step-plus-function” limitations are interpreted to cover the structure or acts disclosed in the specification to perform the recited functions, and...

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