News Room


22

Mar 2017

Osha Liang Recognized in 2017 IP Stars by Managing Intellectual Property

Osha Liang is pleased to announce the firm has been recognized in the 2017 IP Stars Handbook published by Managing Intellectual Property, a leading global legal ranking directory. Osha Liang – Ranked in Texas Intellectual Property as “Highly Recommended” for 2017 Jonathan Osha – Patent Star, Trademark Star IP Stars highlights the country’s leading intellectual property firms and lawyers and is based on surveys completed by peers and in-house counsel, as well...

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20

Mar 2017

The 6th China Intellectual Property Symposium

Jonathan Osha is presenting at the 6th China Intellectual Property Symposium in Hangzhou, China on April 1, 2017.  The symposium will focus on the latest developments in Chinese intellectual property and global trends.  John’s presentation will focus on “Patents on Computer Implemented Inventions: the U.S. perspective.” For more information, please visit the event website.


15

Mar 2017

Curious about a career as a patent professional? Tired of coding or bored in a dead end hi-tech job?

Osha Liang invites computer scientists, computer engineers, and high level developers to an open house to learn how to become a patent agent, and then attorney.  Amazingly, the firm pays you for this patent agent training!  And, if you choose to do so, you could qualify to receive tuition assistance to attend law school. Mr. Robert Lord, Managing Partner of Osha Liang’s Silicon Valley office,...

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10

Mar 2017

Copyright Issues Related to Architecture and Construction

Managing Partner, Jonathan Osha, will be presenting on a panel to the Polish, German, French Groups of AIPPI on March 17, 2017 in Warsaw, Poland at the famous Hotel Bristol.  The panel topic will cover “Copyright Issues Related to Architecture and Construction”. For more information, please visit the event website.


08

Mar 2017

Osha Liang Attorneys Recognized as 2017 Texas Super Lawyers Rising Stars

Houston, TX — International intellectual property law firm Osha Liang LLP is pleased to announce that two attorneys from the Houston office were selected for inclusion in Texas Rising Stars® 2017 by Thomson Reuters. Osha Liang lawyers on the Texas Rising Stars® 2017 list include: Carlyn A. Burton – Intellectual Property Monica M. Katthage – Intellectual Property Litigation The Texas Rising Stars represent the top 2.5 percent of Texas attorneys who...

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04

Mar 2017

Engineering Intellectual Property

Partner Tammy Dunn is presenting to the American Society of Mechanical Engineers (ASME) South Texas – Houston Section on March 23, 2017.  Her presentation “Engineering Intellectual Property” will take place at the Forest Club (9950 Memorial Drive, Houston, TX) starting at 5:30 PM, followed by dinner at 7:15 PM. Brief Synopsis: Intellectual property (IP) protection is absolutely critical for protecting a company’s proprietary designs, processes,...

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02

Mar 2017

“Alice” Motion to Dismiss Complaint Denied in Credit Card Personalization Suit

March 2, 2017 —  A Colorado federal judge today rejected an attempt to invalidate Osha Liang client Gemalto SA’s patent on improved smart card personalization systems.  After Gemalto sued CPI Card Group for infringement last year, CPI sought to dismiss the case under 35 U.S.C. § 101 based on its argument that the Gemalto patent claimed only unpatentable abstract ideas and was therefore invalid under...

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27

Feb 2017

Silence Not Golden with Provisional Application, CAFC says

By: John Montgomery and David Madio Introduction The United States Court of Appeals for the Federal Circuit (CAFC) provides guidance on when a provisional application can be used in patent claim construction.  The split decision highlights the importance of the specification and the relevance of a provisional application in claim construction and subsequent determination of the validity of the claims.  The different views might be beneficially...

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27

Feb 2017

Petty Patents Around the World

By: Francesca Giovannini, Shinya Kimura, Han-Mei Tso and Jude Yi Utility models are intellectual property (IP) rights also known in some countries as utility innovations, utility certificates, short-term patents or petty patents. Independently from the specific wording used, a utility model is an exclusive IP right granted in some countries for a technical innovation, generally relating to a product or a device, for a limited period...

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27

Feb 2017

Influential U.S. Federal Court Revises Patent Local Rules

By: Monica Katthage An influential U.S. federal court has revised its Patent Local Rules.  The revised rules in the Northern District of California (covering courts in San Francisco, San Jose, Oakland, and Eureka) require early disclosure of financial information and contentions relating to damages by both the patent owner and the accused infringer.  The revised rules apply to all currently pending patent cases.  Both parties, and...

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27

Feb 2017

Use of “consisting of” Creates a Strong Presumption that is Difficult to Overcome

By: Anthony Amert In an appeal of a district court ruling on a patent infringement suit, the U.S. Federal Circuit in Shire v. Watson reminded patentees that claim language can create presumptions regarding claim scope that impact the boundaries of the claimed subject matter that are difficult to overcome and may preclude a finding of infringement. In the litigation, Shire Development, LLC sued Watson Pharmaceuticals,...

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26

Feb 2017

Case C-395/16, DOCERAM – When are Designs “Solely Dictated” by Function?

By: Pascale Brochard Design(s) behind the product are known as a very efficient way for a company to stop a competitor from selling a similar product, even in high tech products (remember Apple’s tablet designs?). Registered Community designs are unitary rights that have equal effect across the European Union; they are ruled by EU’s designs Regulation (EC) No 6/2002.  According to the Regulation, designs that...

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25

Feb 2017

New Validation Agreement Between European Patent Organisation and Cambodia

By: Francesca Giovannini After the validation agreements signed with Morocco, the Republic of Moldova and Tunisia, on January 23, 2017 the European Patent Organisation, the intergovernmental organisation of which the European Patent Office (EPO) is the executive body, has signed its fourth validation agreement with a non-member state, Cambodia. This is the first validation agreement recognising European patents on the territory of an Asian country. According...

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24

Feb 2017

Can a Research Plan Invoke Derivation Under 35 U.S.C. § 102(f)?

By: Yuichi Watanabe and Xue “Sherrie” Holdman On January 26, 2017, the Court of Appeals for the Federal Circuit rendered a decision on the uncommon issue of derivation in Cumberland Pharms. Inc. v. Mylan Institutional LLC.[1]  Derivation is a legal concept that ensures that a patent is not issued to someone who is not the true inventor. Prior to the America Invents Act (AIA), derivation...

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15

Feb 2017

Osha Liang Named Top Silicon Valley IP Litigation Law Firm

Osha Liang’s Sillicon Valley office has been named by JD Journal as a “Top IP Litigation Law Firm.”  As noted by the publication, Osha Liang “has international and national clients who benefit from their unique Patent Agent program which recruits attorneys fresh out of the tech industry or who have some kind of technology-focused higher education.” To read the full article, click here.


08

Feb 2017

US Supreme Court Urged to Close “Pirates’ Bay” of Architectural Copyright Infringement

By: Louis K. Bonham An assortment of industry groups, building design firms, and a major regional home builder jointly urged the Supreme Court to resolve a split among the Courts of Appeals regarding architectural copyrights. In an amici curia (“friends of the court”) filing, the American Institute of Building Design, the Texas Institute of Building Design, design firms Design Basics LLC and Frank Betz Associates,...

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07

Feb 2017

Pharmaceutical Patent Protection: the U.S. and Japan in Comparative Perspective

By: Shinya Kimura and Carlyn Burton Osha Liang attorneys Shinya Kimura and Carlyn Burton published an article in Pharmaceutical Patent Analyst in Feb. 2017 titled “Pharmaceutical patent protection: the United States and Japan in comparative perspective.”  The article discusses and compares pharmaceutical patent practices in the United States and Japan, such as patent protection of medical methods, interpretation of product-by-process claims, and patent eligibility of biotechnology...

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30

Jan 2017

UPC: Opting Out Might Be Possible Starting From September 2017

By: Francesca Giovannini Following the UK’s decision to leave the European Union (EU) and months of uncertainty concerning what measures the UK government would take to implement that decision, the IP community was generally quite surprised by the announcement made by the UK Minister for IP at the EU Competitiveness Council in Brussels last November. On that occasion, the Minister announced that the Agreement on...

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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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