News Room


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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12

Sep 2016

Osha Liang Ranks on HBJ’s Largest Houston-Area IP Law Firms List

Osha Liang was ranked as the third largest intellectual property law firm in Houston by the Houston Business Journal.  Firms are ranked by the number of intellectual property lawyers in the Houston area.  Rankings were determined by the number of Houston-area lawyers who concentrate their practice in intellectual property law.  In order to qualify for the list, a lawyer must spend at least 75 percent of their...

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08

Sep 2016

Osha Liang Attorneys Named 2016 Texas Super Lawyers

HOUSTON, Sept. 8, 2016 /PRNewswire/ — International intellectual property law firm Osha Liang LLP is pleased to announce that two attorneys at the firm have been selected as 2016 Thomson Reuters Texas Super Lawyers©. The firm’s honorees are partners Jonathan P. Osha and Jeffrey S. Bergman. Both were recognized in the Intellectual Property and Intellectual Property Litigation categories. This is the tenth consecutive year that Mr....

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31

Aug 2016

Willful Infringement and Opinions Of Counsel in the U.S.: The Latest Swing of the Pendulum

By: Jonathan P. Osha Since the very early days of patent law in the United States, enhanced damages have been available as a punishment for willful patent infringement.  U.S. patent law has taken the view that willful infringement should be treated as a culpable act, and thus should be punished more harshly than unknowing or “innocent” infringement.  This general concept has continued through to the...

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30

Aug 2016

Human-Robot Cooperation in Extreme Environments – from Subsea Technology to Space Exploration

Despite progress in robotics, human intervention in hostile environments is a necessity, for example in space exploration.  In the foreseeable future, the International Space Station (ISS) will reach the end of its useful life, but at the same time, space agencies such as National Aeronautics and Space Administration (NASA) and European Space Agency (ESA) are looking toward new targets for human space exploration, including a...

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23

Aug 2016

Post Grant Review Considerations: Subject Matter Eligibility and Estoppel

By: Jeff Guinn Patent owners and potential patent infringers should be aware of a new process for reviewing the validity of granted patents.  Post Grant Review (“PGR”), which was established by provisions of the Smith-Leahy America Invents Act (“AIA”), allows for the validity of a patent to be challenged within nine months of the patent being granted.  Unlike the more common Inter Partes Review (“IPR”), which...

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23

Aug 2016

US/JP Collaborative Search Pilot Program To Be More User-Friendly

By: Masayuki Takaoka Elimination of publication requirement in the Collaborative Search Pilot Program Between the Japan Patent Office and the United States Patent and Trademark Office The Japan Patent Office (JPO) and the United States Patent and Trademark Office (USPTO) implemented a Collaborative Search Pilot Program (US/JP-CSP) on August 1, 2015, to study whether the exchange of search results between offices for corresponding counterpart applications improves...

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23

Aug 2016

Kuwait has joined the Patent Cooperation Treaty

By: Francesca Giovannini Kuwait has joined the Patent Cooperation Treaty (PCT) by depositing its Instrument of Accession to the PCT on 9 June 2016, thus becoming the 149th Contracting State of the PCT. Since the PCT will officially come into effect in Kuwait on 9 September 2016, a first consequence is that any PCT application filed on or after 9 September 2016 will automatically include the...

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23

Aug 2016

Partner Peter Schechter Quoted in Law360 on Texas Roils Recently Stilled Waters of Patent Agent Privilege

Partner Peter Schechter was quoted in the Law360 article “Texas Roils Recently Stilled Waters of Patent Agent Privilege.” Texas appellate ruling that an inventor’s emails with a nonlawyer patent agent aren’t privileged is causing consternation for patent lawyers who had hoped a Federal Circuit decision in March recognizing the privilege would be the final word on the issue and maintain continuity among different venues. The ruling,...

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18

Aug 2016

Europe’s Unified Patent Court and Patents with Unitary Effect: Status, Perspective and Impact of Brexit

Osha Liang attorneys Jeffery P. Langer, Ph.D. (U.S. patent attorney) and Francesca Giovannini (Italian and European Patent Attorney) will be presenting a webinar on “Europe’s Unified Patent Court and Patents with Unitary Effect: Status, Perspective and Impact of Brexit” and will: Provide a status of the process for the ratification of the Agreement on the Unified Patent Court; Provide an overview and discuss the pros...

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17

Aug 2016

32nd Annual Institute on Intellectual Property Law

Osha Liang is sponsoring the 32nd Annual Institute on Intellectual Property Law presented by the Houston Intellectual Property Law Association and the University of Houston Law Center’s Institute for Intellectual Property & Information Law.  The meeting will be held at the Moody Gardens Hotel in Galveston, TX from October 6-8, 2016.  Osha Liang Partner Carlyn Burton is the Chair of this year’s Program. For more...

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16

Aug 2016

2016 IPO Annual Meeting

Osha Liang attorneys Robert Lord, Jeff Bergman, and Carlyn Burton will be attending the 2016 Intellectual Property Owners Association (IPO) Annual Meeting on September 11-13, 2016 in New York, NY. Robert Lord serves as vice chair of IPO’s Software Related Inventions Committee and will be moderating a panel on “Corporate IP Strategies After Alice and the Creation of PTAB” on September 11.  All registered attendees...

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12

Aug 2016

252nd American Chemical Society’s Fall National Meeting

Partner Carlyn Burton will be attending the 252nd American Chemical Society’s (ACS) Fall National Meeting from August 21-25, 2016 in Philadelphia, PA.  This year’s theme is “Chemistry of the people, by the people, for the people.”  The American Chemical Society National Meeting is where chemistry professionals meet to share ideas and advance scientific and technical knowledge.  Carlyn is on the ACS’s Committee for Patents and...

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10

Aug 2016

“Ask the Legal Masterminds” Happy Hour

Osha Liang is sponsoring the Business Law Seminars & Lawyer Networks (Silicon Valley) “Ask the Legal Masterminds” Happy Hour + Two Speakers Covering IP and Intro to Litigation Law Topics” on August, 23, 2016 in Santa Clara, CA.  Partner Robert Lord will be give an introduction to intellectual property law with an emphasis on new trends and recent developments. For more details about the event, click...

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10

Aug 2016

LexisNexis U.S. Patent Litigation Seminar

Osha Liang Associate Han-Mei Tso will be speaking at Lexis Nexis’ U.S. Patent Litigation and Practice Seminar on August 12, 2016 in Shanghai, China.  Her topic will focus on “Reexaminations in the U.S.: Tactics and Strategy.” For more information and to register for the event, please click here. 【Date】:August 12, 2016 【Time】:1:30-4:30 PM 【Location】:Mingde Ting, 2nd Floor, Building 31 A , 319 Yueyang Road, Shanghai,...

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04

Aug 2016

St. Joseph of Cupertino Carnival Sponsorship

Osha Liang is a proud sponsor of the St. Joseph of Cupertino 13th Annual Cupertino Carnival on September 9-11, 2016.  100% of St. Joseph Carnival profit dollars go toward continuing education in the areas of mathematical sciences, foreign language, language arts development, social sciences, and other key development staples that help the St. Joseph of Cupertino students become productive future leaders and members of our...

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26

Jul 2016

Impact of Brexit on Pan European Design and Trademark Rights

By: Jeffery P. Langer, Aly Dossa, Christophe Besnard In last month’s newsletter, we discussed the effect of Brexit on patent rights (read article here).  As discussed there, other than increased uncertainty as to when and how the Unified Patent Court (UPC) will be implemented, Brexit will not generally disturb the application process for European patent protection.  Applicants will continue to be able to seek central examination...

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25

Jul 2016

Osha Liang Files Amicus Brief for Design Basics, LLC

By: Louis K. Bonham On July 15, 2016, Osha Liang Of Counsel, Louis K. Bonham, filed an amicus curiae brief in the United States Court of Appeals for the Eleventh Circuit.  This brief is in support of the appellant’s petition for rehearing en banc in Home Design Services, Inc. v. Turner Heritage Homes, Inc., et al., and was filed on behalf of Osha Liang client Design...

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25

Jul 2016

Opposition Proceedings Before the European Patent Office: A New, Streamlined Procedure

By: Francesca Giovannini The European Patent Office (EPO) has revised the workflow of opposition proceedings with the general aim of providing early certainty from opposition. More particularly, the goal of the revised workflow, which came into effect on July 1, 2016, is to reduce the total time needed for a first-instance decision in “straightforward cases” to 15 months starting from expiry of the nine month opposition period. According...

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25

Jul 2016

USPTO Post-Prosecution Pilot Program

By: Kelly C. McKinney On July 11, 2016, the U.S. Patent and Trademark Office (USPTO) launched a Post-Prosecution Pilot Program (“P3”) in further advancement of its Enhanced Patent Quality Initiative for improving patent quality.  P3 is an addition to the after-final practice landscape, which also includes the Pre-Appeal Brief Conference Pilot Program (“Pre-Appeal program”) and the After Final Consideration Pilot Program 2.0 (“AFCP 2.0”).  Indeed, P3...

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25

Jul 2016

Recent CAFC Decision Clarifies the “On-Sale” Bar

By: David S. Forman, Ph.D. Patent applicants and owners have sometimes been surprised to find their patent endangered by prior art that is not a publication or patent.  One such type of invalidating prior art, often characterized as a “trap for the unwary,” is an “on-sale bar.”  There are actually two forms of the on-sale bar, depending whether the patent application has an effective filing date before...

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