News Room


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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27

Nov 2017

US Bar/JPO Liaison Council Meeting

On November 9, 2017, the US Bar/JPO Liaison Council delegates met with 18 judges of the Japanese IP High Court in Tokyo, Japan.  The Liaison Council gave presentations providing updates on U.S. law.  Osha Liang Associate Ko Nakamura, representing the Houston Bar Association, gave a detailed presentation on the U.S. Supreme Court’s decision regarding patent exhaustion in Impression Products, Inc. v. Lexmark International, Inc.   Judge...

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27

Nov 2017

Foreign Excellence Webinar: The Intelligent Attorney’s Guide to Patenting in Japan

Japanese Patent Attorney, Shigeki Takeuchi, is co-presenting a webinar titled, “Foreign Excellence Webinar #02: The Intelligent Attorney’s Guide to Patenting in Japan.”  In this advanced webinar, attendees will learn how to patent in Japan, Japanese country data, patent protection scope/cost, patent enforcement, the basic on how to file, and prosecution.  The webinar will take place on November 30, 2017 at 1:00 PM CST. To register...

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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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17

Nov 2017

Giles S. Rich Inn of Court Meeting

Attorneys Jeffery P. Langer and David S. Forman led a panel discussion at the Giles S. Rich Inn Court program titled, “IP and Vice” on November 16, 2017 at the United States Court of Appeals for the Federal Circuit in Washington, D.C. The program focused on how intellectual property law has evolved to address various “vice” products including cigarettes, pornography, adult sexual products, marijuana, and alcohol.  Panelists included...

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06

Nov 2017

IIPCC HKEX Innovation Commercialization Conference

Partner Jeffery P. Langer is moderating a panel on “Best Practices for Commercialization” in Hong Kong at the International IP Commercialization Council (IIPCC) on December 11 from 2:00-5:30 PM. To support and achieve success in innovation requires an understanding both of how innovation and entrepreneurship truly operate, and why innovative companies can no longer afford to ignore Intellectual Property (IP).  This event provides an unprecedented opportunity...

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02

Nov 2017

Osha Liang Receives 2018 “U.S. News & World Report – Best Law Firm” Ranking

  For the third year in a row, Osha Liang is proud to announce the firm has been ranked in the 2018 edition of “U.S. News and World Report – Best Lawyers®” list of Best Law Firms.  Osha Liang holds Tier One ranking in patent law in Houston. In addition to the firm`s inclusion, Managing Partner Jonathan Osha was recognized as 2018 “Best Lawyers in America”...

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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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11

Oct 2017

Hangzhou Seminar: The Latest Practice and Strategy of Invalidation Procedure for Chinese and American Patents

Osha Liang co-hosted a half-day seminar titled, “The Latest Practice and Strategy of Invalidation Procedure for Chinese and American Patents” in Hangzhou with Yuyang IP on September 13, 2017.  The seminar was organized under the aegis of the Zhejiang Science and Technology Market. The opening speech was given by Mr. Wang Jinsheng, the Director of Zhejiang Science & Technology Market. Over 20 companies and IP...

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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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28

Sep 2017

New Legal Challenges in 3D Printing Technology

Attorney Han-Mei Tso is presenting at the Nangang IC Design and Development Center Business Lecture on 3D Printing Technology and new legal challenges on September 29, 2017 in Nangang District, Taipei, Taiwan.  She will be joined by the general manager of science and technology consultant, Zhu Xinrui, who is discussing the practical case analysis of patent map production, observation and analysis. For more information, visit...

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