News Room


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

AIPLA 2017 Mid-Winter Institute Sponsors

Osha Liang is sponsoring the 2017 American Intellectual Property Association (AIPLA) Mid-Winter Institute – IP Practice in Japan Pre-Meeting.  The annual meeting will be held at the Fort Lauderdale Marriott Harbor Beach Resort & Spa in Fort Lauderdale, Florida from February 1-4, 2017.   The IP Practice in Japan Pre-Meeting begins with breakfast on Tuesday, January 31 at 8:30 am and ends on Wednesday, February 1 at 12:00...

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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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04

Jan 2017

2017 American Intellectual Property Law Forum (2017美国知识产权法律论坛)

主办单位: 美国欧夏梁律师事务所 (Host: Osha Liang LLP) 协办单位: 浙江英普律师事务所 (Strategic Partner: Zhejiang Inpro Law Firm) 论坛时间:2017年1月12日(週四) 上午 (Meeting Time: January 12, 2017 (Thursday) Morning) 论坛地点:杭州黄龙饭店 (杭州曙光路120号) (Venue:  Yellow Dragon Hotel, Hangzhou, China) SCHEDULE OF EVENTS 入场报到 (Registration):8:50-9:20 开幕致词 (Opening Speech):9:20-9:30 场次(Session One) 一 9:30-10:45 题目: 高端技术知识产权的战略管理 (Strategic Management of Intellectual Properties for High-End Technologies) 软件知识产权保护和运营的国际视野 (Software IP Protection and Monetization) 主讲人:罗伯特•洛德 (Speaker: Robert Lord) 美国欧夏梁律师事务所合伙律师 (Partner...

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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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28

Dec 2016

Cambodia joins the the Hague System

By: Jonathan Osha Cambodia has joined the Geneva (1999) Act of the Hague System Concerning the International Registration of Industrial Designs by depositing its instrument of Accession on November 25, 2016.   The 1999 Act will enter to force with respect to Cambodia on February 25, 2017.  The accession of Cambodia to the 1999 Act brings the number of Contracting Parties to this Act to 52 and...

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28

Dec 2016

Recent USPTO Roundtables Explore Patent Subject Matter Eligibility

By: David Rosenblitt and David Forman Patent law in the US has been shaken in recent years by Supreme Court decisions holding that several kinds of inventions are not eligible for patents[1], relying on the judicially created concept that laws of nature, natural phenomena, and abstract ideas cannot receive patents. The result of these decisions is that it very difficult or impossible to patent computer...

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28

Dec 2016

Potential Game Changer On The Horizon: U.S. Supreme Court to Review Patent Venue

By: Califf Cooper The U.S. Supreme Court agreed to review the patent venue laws that govern where patent holders may file claims for patent infringement.  The Supreme Court’s ruling could put an end to patent owners seeking out and filing cases in certain districts that are perceived to be strategically advantageous, including most notably the Eastern District of Texas (where more than 40% of all...

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28

Dec 2016

IPO Board Suggests Amendment to Rule 4 of FRCP

By: Monica Katthage On December 6, 2016, the Board of the Intellectual Property Owners Association (“IPO”) adopted a resolution supporting, in principle, that Rule 4 of the Federal Rules of Civil Procedure (FRCP) be amended to allow for service of process by e-mail, without a court order, in cases involving commercial activity conducted using a domain name that is registered to a fictitious party. Without such...

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12

Dec 2016

Osha Liang Silicon Valley Office Continues Growth with Arrival of IP Attorney David Pitinga

SILICON VALLEY  – Dec. 12, 2016 – Intellectual property law firm, Osha Liang LLP, adds further strength to its Silicon Valley roster with the addition of patent attorney, David Pitinga.  David has extensive experience handling patent prosecution matters for various technical areas including computer software and hardware, more specifically, artificial intelligence, search engines, recommender systems, massively multiplayer gaming, and blockchain applications. David is a patent attorney...

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30

Nov 2016

Addressing Patentable Subject Matter Rejections in an Ever-Changing Legal Landscape

By: Aly Dossa Over the last several months there has been a steady stream of decisions from the Court of Appeal for the Federal Circuit (CAFC) related to 35 USC § 101.  The notable decisions include BASCOM Global Internet Services v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir....

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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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23

Nov 2016

Ready For Your Next Trade Show? The TRO Trend Continues.

By: Tammy Dunn and Jeffery Langer Earlier this year Osha Liang partners Tammy Dunn and Jeffery Langer, Ph.D. wrote a Law360 Expert Analysis article (March 2016) noting an apparent developing trend in the U.S. District Court for the District of Nevada: granting temporary restraining orders against non-U.S. companies accused of patent infringement on the eve or at the beginning of trade shows where they planned to exhibit....

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11

Nov 2016

Texas Bar College Welcomes Partner Robert Lord

The Texas Bar College FOR IMMEDIATE RELEASE AUSTIN – The Texas Bar College congratulates Robert P. Lord on his membership in the College. With over 17 years of IP legal experience under his belt, Mr. Lord relies on a wealth of sound legal and business-savvy approaches to solving client’s IP issues.  Mr. Lord manages over 3,000 active matters for numerous medium-to-large companies, while still being intimately involved...

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04

Nov 2016

Osha Liang sponsors OPEN Houston Annual Business Pitch Competition

Osha Liang announced today the firm is a proud sponsor of OPEN Houston’s 7th Annual Business Pitch Competition on November 5, 2016 in Houston, Texas.  Details of the event can be found here: http://www.openhouston.org/annual-conference-2016/. The annual event is organized by OPEN Houston’s Charter Membership and Executive Committee.  The theme of this year’s event is “Opportunity of Adversity.”  OPEN Houston’s Annual Business Pitch Competition brings together...

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01

Nov 2016

Osha Liang receives 2017 U.S. News “Best Law Firms” Ranking

Osha Liang is proud to announce the firm has been ranked in the 2017 edition of “U.S. News and World Report – Best Lawyers®” list of Best Law Firms.  Osha Liang holds a tier one ranking in patent law in Houston. In addition to the firm`s inclusion, Managing Partner Jonathan Osha was recognized as 2017 “Best Lawyers in America” in patent law. The “Best Law Firms”...

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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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