Newsletter


29

Nov 2016

Covered Business Method (CBM) Update

By: Jeff Guinn A recent U.S. Court of Appeals for the Federal Circuit decision has attempted to clarify what is, and what is not, a Covered Business Method (“CBM”) under the America Invent Act’s (“AIA”) transitional review program for CBM patents.  See Unwired Planet, LLC v. Google Inc., Case No. 15-1966, (Fed. Cir. 2016).  Section 18 of the AIA establishes a program for reviewing the...

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29

Nov 2016

SAS Institute v. ComplementSoft LLC – Partial IPR Institution Is a Mixed Bag for Both Patent Owners and Patent Challengers

By: Tammy Dunn and Peter Schechter The Patent Trial and Appeal Board (PTAB) currently decides whether to review validity of patent claims challenged in petitions for inter partes review (IPR) on a claim-by-claim basis, often resulting in “partial institution” of the IPR trial proceedings.  While this practice has been criticized, it was most recently approved by the U.S. Court of Appeals for the Federal Circuit...

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29

Nov 2016

AWCPA Case Heading to the U.S. Supreme Court

By: Louis Bonham Over twenty five years ago, the U.S. Congress passed the Architectural Works Copyright Protection Act (the “AWCPA”), which extended copyright protection to building designs (“architectural works”).  The AWCPA was passed to bring U.S. law into compliance with its treaty obligations under the Berne Convention, which the United States joined in 1988.  (The Berne Convention requires member states to provide copyright protections for a...

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29

Nov 2016

U.S. Supreme Court Considers Copyright Protection for Designs Applied to Cheerleader Uniforms

By: John Montgomery Are Copyrights for Designs Applied to Cheerleader Uniforms Enforceable? Will the Fashion Industry Obtain Copyright Tools Effective to “Kill” the Knockoff Apparel Industry? Will The Supreme Court Establish or Endorse a Test for Determining Separability of Protectable Copyright Design from Otherwise Unprotectable Useful Articles? On November 1, 2016, the Supreme Court of the U.S. heard oral arguments in a case disputing the availability...

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31

Oct 2016

Errors in Citation of Prior Art by USPTO Examiners

By: Jonathan P. Osha At the U.S. offices of Osha Liang, we have noted a significant increase in instances of USPTO Examiners rejecting claims on the basis of prior art that is not actually prior art as defined by 35 U.S.C. §102.  If not noticed by the applicant and pointed out to the Examiner in the next response, this error can lead to the introduction...

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31

Oct 2016

Trademarks: Madrid Update

By: Jonathan P. Osha Algeria, the last country that was a member of only the Madrid Agreement, acceded to the Madrid Protocol in October of 2015.  Thus, during the 50th session of the Madrid Union Assembly earlier this month, the decision was taken to bar any country in the future from acceding to the Agreement only.  Accordingly, from this time forward, a single set of...

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31

Oct 2016

China IPR Judgments and Decisions

By: Jude Yi and Jeffery P. Langer As China attaches more importance to Intellectual Property Rights (IPR) and IPR disputes continue to rise in frequency, the Chinese government hopes to enhance its judicial openness in the IPR respect.  In order to do so, in addition to the existing website China Judgments Online (http://wenshu.court.gov.cn/), the Supreme Court later added an IPR-focused website under its governance, China...

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28

Oct 2016

U.S. Supreme Court to Decide Whether Laches Applies in Patent Cases

By: David S. Forman A key principle of our U.S. legal system is that it is unfair to defendants for a plaintiff to launch a suit after too much time has passed, when evidence may be lost, memories have faded, and witnesses may have disappeared.  One mechanism to promote fairness is a statute of limitations, a rule that a defendant will not be held liable...

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27

Oct 2016

How Is The Newest USPTO Hybrid Pilot Program Any Different From The Other After-Final Options?

By: Seema Mehta and Robert Lord Introduction The Post-Prosecution Pilot (P3) Program is a recently announced pilot program at the USPTO that became effective on July 11, 2016, and was developed as part of the USPTO’s ongoing quality enhancement efforts during the period subsequent to final rejection and prior to the filing of a notice of appeal.   While the new program can most easily be described as...

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27

Oct 2016

European Litigation Series – Part 1: French Seizure of Evidence (saisie-contrefaçon)

By: Francesca Giovannini The most effective tool offered by the French IP litigation system to gather evidence of infringement of an IP right in force in France is the possibility of lodging a petition for search and seizure of evidence (saisie-contrefaçon). This procedure is extensively used before patent infringement actions and is authorized by the Presiding Judge of the Paris Court (Tribunal de Grande Instance, TGI)...

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27

Oct 2016

Brexit: An Update on Planned Legislative Reforms Affecting IP Rights

By: Francesca Giovannini British Prime Minister Theresa May stated on October 2, 2016 that the notification under Article 50 of the Lisbon Treaty, the formal mechanism for leaving the European Union (EU), will be sent by the end of March 2017 and announced a so-called Great Repeal Bill repealing the 1972 European Communities Act giving direct effect to all EU law. The Great Repeal Bill will...

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30

Sep 2016

The Patent-Agent Privilege: Progress Meets Continued Uncertainty

By: James Carlson Recently, a federal court in the United States recognized a patent-agent privilege in regard to communications between a non-attorney patent agent and the patent agent’s client.  While the ramifications of the patent-agent privilege are being felt by U.S. federal courts, a state court in Texas refused to extend the patent-agent privilege to emails in a contract dispute.  These contrasting outcomes illustrate the...

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30

Sep 2016

The Pitfalls of a Narrow Disclosure

By: Ko Nakamura How broad a claim will the disclosure support? Different jurisdictions apply different standards, but in general, answering this question will involve an analysis, in one way or another, of whether the disclosure is sufficient to disclose the invention to a person skilled in the art.  In the United States, this question comes in two flavors: whether the disclosure is sufficient to enable a...

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29

Sep 2016

Reform of the EPO Boards of Appeal and Potential Impacts on Applicants

By: Francesca Giovannini At the meeting of the Administrative Council last June, the European Patent Office (EPO)’s Member States adopted a proposal from the Office for reform of the Boards of Appeal. As a consequence, the reform came into effect on July 1, 2016. One of the declared aims of the reform is that of decreasing the backlog of cases, thus ensuring a timely delivery...

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29

Sep 2016

AIPPI 2016 World Congress takes place in Milan, Italy

By: Jonathan Osha, Peter Schechter, and Francesca Giovannini The AIPPI 2016 World Congress took place last week in Milan, Italy.  More than 2000 IP professionals from around the world were in attendance.  Osha Liang’s Jonathan Osha, Peter Schechter, and Francesca Giovannini provide this report on the event. The Congress commenced on Saturday with Study Committee Meetings on IP harmonization topics in Patents, Designs, Copyright, and Security...

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29

Sep 2016

The Analogous Art Test: A Natural Alternative to the Slippery Slope of Hindsight Bias

By: A. Rusty Rogers When cobbling together references to establish a prima facie case of obviousness, the Patent and Trademark Office (PTO) is under the burden to establish that the prior art selected also satisfies what is reasonable to assume that a skilled artisan would consult during the inventive process, also known as the “analogous art test.”  In a case involving use of molasses for de-icing...

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29

Sep 2016

Federal Circuit set to Review PTAB’s Amendment Process

By: Tammy Dunn and Monica Katthage Historically, the Patent Trial and Appeal Board (PTAB) has issued near blanket refusals to allow amendments to claims despite the fact that the inter partes review (IPR) statute of 35 U.S.C. § 316(d) expressly allows patent owners to move to do so.  This historical difficulty in amending claims during an IPR is a source of great frustration in post-grant practice...

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