Search Results for: Enforcement


29

May 2020

Signs of Increasing Lost Profits Damages Awards In Japan May Signal Increased Value of Patent Ownership and Enforcement

By Ikuya Kameyama, Ph.D. 简体中文 A recent Japanese appellate court decision resulted in a four-fold increase over the lost profits damages awarded by the trial court.  Whether the result of a 2019 revision to Japan’s patent law or not, there are signs that obtaining and enforcing patents in Japan may be becoming more valuable than believed in the past. MTG Co., Ltd. owns patents relating…

Read More


15

May 2017

China Is Formulating Guidelines for Anti-Monopoly Enforcement against Abuse of IPRs

By: Han-Mei Tso and Jude Yi Recently, the Anti-Monopoly Commission of the State Council of the People’s Republic of China released to the public “Anti-Monopoly Enforcement Guidelines on Abuse of Intellectual Property Rights” (hereafter, “Guidelines”), welcoming comments from March 23, 2017, to April 21, 2017. These Guidelines, drafted by the Anti-Monopoly Commission, are based on a prior proposal jointly contributed by the National Development and Reform…

Read More


01

Jul 2020

Impact of Shifting Burden of Proof Provision for Trade Secret Civil Proceedings in the US-China Economic and Trade Agreement and China’s Most Recent Response

  By Han-Mei Tso 繁體中文 After more than two years of negotiations, China and the United States in January 2020 signed the Economic and Trade Agreement.  As a result of “phase 1,” the Trade Agreement sets forth the provisions relating to intellectual property in Chapter 1, indicating a fundamental consensus between the countries on strengthening the protection of intellectual property.  Following the general obligations set…

Read More


16

Apr 2020

WIPO-AIPPI Joint Webinar

On April 16, 2020, WIPO and AIPPI held a joint webinar featuring presentations by five senior WIPO members. Topics covered included: latest developments in trademarks, designs and GIs on the PCT, Madrid and Hague systems, as well as on intellectual property enforcement. The session was moderated by Osha Liang’s Global Chair and current AIPPI Reporter General, Jonathan Osha.


31

Jan 2020

Petition Denied: The United States Supreme Court Refuses to Reconsider Patent Eligibility Jurisprudence

By James Carlson On January 13, 2020, the Supreme Court of the United States denied certiorari in three pending cases:  Athena Diagnostics, Inc. v. Mayo Collaborative (19-430) (hereinafter “Athena”), HP Inc. v. Berkheimer (18-415) (hereinafter “Berkheimer”), and Hikma Pharmaceuticals USA Inc. v. Vanda Pharmaceuticals Inc. (18-817) (hereinafter “Hikma Pharmas”).  Afterwards, the Supreme Court again denied similar petitions on January 27, 2020, in Trading Technologies Int’l. v. IBG…

Read More


01

Nov 2018

The Effect and Application of China’s Guiding Cases

By Han-Mei Tso In 2017, Osha Liang Newsletter published three articles discussing patent-related guiding cases issued by the Supreme People’s Court of China (hereinafter “SPC”), i.e., Guiding Case No. 83[1], Guiding Case No. 84[2], and Guiding Case No. 85[3].  This article will further discuss the nature and effect of guiding cases within China’s legal system and explain how to implement IP-related guiding cases into Chinese…

Read More


01

Oct 2018

Not Simply Renamed – “SIPO” becomes “CNIPA”

By: Han-Mei Tso On September 3, 2018, the State Intellectual Property Office of China announced on its website[1] that the English name of the Chinese governmental body has changed from the “State Intellectual Property Office” (“SIPO”) to the “China National Intellectual Property Administration” (“CNIPA”).  Accordingly, the agency’s English abbreviation of the bureau has changed from “SIPO” to “CNIPA” as well.  The website domain has also…

Read More


30

Apr 2018

China to Restructure SIPO – A Step Toward Better IP Protection

By: Han-Mei Tso On March 13, 2018, after deliberation at the First Meeting of the 13th National People’s Congress of China, the “State Council Institutional Reform Plan” (hereinafter referred to as the “Reform Plan”) was passed. This drastic Reform Plan involves the cancellation, formation, or restructure of a number of State Council departments and subordinate agencies under the State Council, including the State Intellectual Property…

Read More


26

Feb 2018

The First Court Decision on GUI Design Patent Infringement in China

By: Han-Mei Tso and Jude Yi In the modern world, electronic devices such as computers, tablets, and smartphones, have become indispensable in our lives.  Graphical User Interface (GUI) plays a significant role in promoting ease of use and visual attraction to users of the products, particularly electronic and software products.  GUI often provides iconic features that cause consumers to immediately associate the GUI with a…

Read More


25

Jan 2018

EU Approach to Standard Essential Patents

By: Catherine Caspar and Elsa Benveniste Our technological era is founded on multiple standards. For example, each and every mobile phone and computer depends on telecommunication standards to communicate with other devices. Standardized technology can—and often does—incorporate proprietary technologies covered by patent rights. Such patent rights are often designated as “Standard Essential Patents” (or “SEPs”) since implementation of the patented invention is essential to comply…

Read More


29

Dec 2017

Do You Own What You Think You Own? Part I: Patent Assets, Sales, and Good Faith Purchaser

By: Aron T. Griffith One aspect of managing a global patent portfolio is understanding what patents you have.  Likewise, when acquiring a patent portfolio, it is important to understand what patents you are buying. Asset purchase agreements often simply refer to an attached schedule of patents, and may or may not list all family members.  Oversimplified, “Company A conveys to Company B all of the…

Read More


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…

Read More


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,…

Read More


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…

Read More


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…

Read More


25

Aug 2017

Some Practical Considerations Before Litigating in China

By: Jeffrey Bergman and Jeffery Langer Since the creation in 2014 of three IP-only courts, located in Beijing, Shanghai and Guangzhou, there has been a dramatic increase in the number of foreign companies bringing suits (against both foreign and domestic defendants) in China.  Increased damage awards and the awarding of attorney fees by these courts are also attracting attention from China intellectual property rights holders. …

Read More


01

May 2017

China’s Supreme Court Published New Guiding Cases in IP – Part I: Liability of E-Commerce Platform in Patent Infringement

By: Han-Mei Tso and Jude Yi In March 2017, the Supreme People’s Court of China (the Supreme Court) published its 16th set of guiding cases, including 10 intellectual property (IP) cases. It is worth noting that since the first set of guiding cases published in 2012, there were only five IP guiding cases until March 2017. This time, the Supreme Court published 10 IP related cases…

Read More


31

Mar 2017

U.S. Design Patents: the Under Utilized and Overlooked Patent

By: Connie Pielech U.S. design patents cover the ornamental design for an article of manufacture, namely, the way something looks.  Some examples include smartphones, shoewear, electronics, tires, and consumer goods.  The top organizations granted design patents in the last 10+ years include Samsung Electronics Co., Ltd., Nike, Inc., Sony Corporation, Microsoft Corporation, LG Electronics Inc., Proctor + Gamble Company, and Goodyear Tire + Rubber Company….

Read More


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…

Read More


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…

Read More


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…

Read More


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…

Read More


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…

Read More


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….

Read More


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…

Read More


29

Jun 2016

Brexit: Consequences on Patent Prosecution in Europe

By: Francesca Giovannini The UK’s decision of leaving the European Union has shocked global markets and unleashed uncertainty. Although this decision is likely to impact the date at which Europe’s Unified Patent Court (UPC) can begin operations, the current routes available to applicants for obtaining patent protection in Europe are unchanged. Multinational patent protection in Europe may still be obtained by filing European patent applications and…

Read More


20

May 2016

News Flash: New Federal Trade Secrets Act in the United States

By: Jonathan P. Osha President Obama signed the Defend Trade Secrets Act (“DTSA”) into law on May 11, 2016.  The DTSA for the first time provides a private cause of action for trade secret misappropriation at the federal level.  Previously, prosecution of trade secret theft at the federal level was limited to criminal actions brought by the federal government.  Private actions for trade secret theft were…

Read More


20

May 2016

Intellectual Property Protection of 3D Printed Medical Implants

By: David S. Forman Senior Counsel, David S. Forman, Ph.D., discusses how 3D printing is revolutionizing manufacturing in ways that will change our economy and lives.  For example, few realize that almost all in-ear hearing aids are now made by 3-D printing, with more than 10,000,000 pairs sold.  3D printing raises unique intellectual property issues.  For example, 3D printers eliminate barriers to entry in manufacturing because they enable…

Read More