Search Results for: Patent


11

Jun 2020

Osha Liang LLP Ranked on IAM Patent 1000 List of “The World’s Leading Patent Professionals 2020′

Osha Liang LLP was recognized on the IAM Patent 1000 list of “The World’s Leading Patent Professionals 2020.’ Osha Liang’s Global Chair Jonathan Osha, and Managing Partner Jeffrey Bergman were among the individuals ranked on the list of highly recommended professionals in the field of patent prosecution. According to IAM Patent 1000: “the IAM Patent 1000 is commonly regarded as the definitive ‘go-to’ resource for those seeking…

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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…

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27

May 2020

European Patent Office Declares Plants and Animals Exclusively Obtained by Essentially Biological Processes Are Not Patentable

By Yann Gloaguen, Ph.D.  简体中文 On May 14th, 2020, the Enlarged Board of Appeal of the European Patent Office (EPO) might have ended a legal saga involving a string of G-decisions, by issuing opinion G 3/19 (“Pepper”) and concluding that plants and animals exclusively obtained by essentially biological processes are not patentable. Article 53(b) of the European Patent Convention (EPC) is the main legal basis…

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27

Apr 2020

PTAB May Assert New Grounds of Unpatentability of Amended Claims in IPR Proceedings, but Must Give Patent Owner Notice and Opportunity to Respond

By Kevin M. Szymczak and Peter C. Schechter 繁體中文 The U.S. Court of Appeals for the Federal Circuit has ruled that in the context of Inter Partes Review proceedings, the Patent Trial and Appeal Board may raise new grounds of unpatentability with respect to a patent owner’s proposed amended claims.  However, any new grounds must be limited to prior art already of record in the…

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24

Mar 2020

Patent Venue Statute Requires Presence of Defendant’s Employee or Agent in Judicial District

By Peter Schechter 繁體中文 The US Court of Appeals for the Federal Circuit (CAFC) has ruled that a company might have a place of business in a judicial district for patent infringement litigation venue purposes even when it does not have any “place” in the district that has any characteristics of real property or a leasehold interest.  However, the Court also held that the company…

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20

Mar 2020

Unified Patent Court and European Patents with Unitary Effect: the German Federal Constitutional Court, more than Brexit, creates a stalemate situation

By Francesca Giovannini 繁體中文 The German Federal Constitutional Court (Bundesverfassungsgericht) issued the long-awaited decision on the complaint filed against the Unified Patent Court (UPC) bills for infringement of the German Constitution. According to the decision, the Act of approval to the agreement on the UPC to confer sovereign powers on the UPC is void. The main reason underlying the decision resides in the fact that…

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28

Feb 2020

U.S. Patent Will Expire 44 Years After Earliest Effective Filing Date Due to U.S. Army Secrecy Order

By Nelson Monterrosa 繁體中文 The U.S. Government uses secrecy orders to protect national security by preventing certain patent applications from being published, granted, or otherwise available to the public.  However, at least 21 companies have been sued for alleged infringement of a pre-TRIPs U.S. patent for which grant was delayed by 27 years due to a secrecy order.  In what one hopes is an extraordinarily…

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28

Feb 2020

Outbreak of Coronavirus: Impact on proceedings before the European Patent Office and the EPC member states

By Francesca Giovannini 繁體中文 As of today, February 28, no specific information relating to the worldwide outbreak of the Coronavirus has been issued by the European Patent Office (EPO). Nevertheless and because of this, while expressing solidarity with all people involved and wishing all our readers health, we would like to remind applicants, proprietors and opponents of European patents that some law provisions on time…

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28

Feb 2020

Enforcing Patents The Amazon Way

By Tammy Dunn and Lisa Margonis 繁體中文 For years, patent owners have struggled with what to do about infringers on Amazon and other online marketplaces.  The traditional answer has been to get an order from a court or other tribunal that has determined infringement and to present a copy of that order to the online marketplace.  For many, however, engaging in expensive protracted litigation in…

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28

Feb 2020

The Impact of Brexit on Patents in Europe

By Dr. Bertrand Clair 繁體中文 Shortly after the historic Brexit referendum on June 26, 2016, Theresa May, the Prime Minister at the time, said “Brexit means Brexit”. As of January 31, 2020, at midnight, the United Kingdom left the European Union (EU). What does Brexit mean for Patents in Europe? A withdrawal agreement has been concluded between the UK and the EU, setting a transition…

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31

Jan 2020

The New Year Gift from CNIPA: Amendments to Patent Examination Guidelines

By Han-Mei Tso 繁體中文 The China National Intellectual Property Administration (CNIPA) on the very last day of 2019 sent out to the IP community its new year gift – an official announcement of amendments to the Patent Examination Guidelines (hereinafter the “Guidelines”) to be effective as of February 1, 2020.  The amendments were announced only a few months after the CNIPA previously published extensive amendments…

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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…

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27

Jan 2020

From Petroleum to Patents

By David Madio, Ph.D. 繁體中文 One unanticipated thing I’ve learned is that careers often go in directions one would have never imagined.  I’m glad to report, however, that the unexpected path has been filled with more enjoyment than I ever could have dreamed.  And none of the steps have ultimately been wasted, each one making a subsequent one possible. Briefly, my career path began with…

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07

Jan 2020

In AIA Validity Challenges, Patents Are Better Prior Art Than Printed Publications

By Peter Schechter Anyone other than the Patent Owner may request cancellation as unpatentable one or more claims of a U.S. patent in an Inter Partes Review proceeding.  The America Invents Act, in 35 U.S.C. Section 311(b), provides that an IPR Petitioner may challenge patentability “only on a ground that could be raised under section [35 U.S.C Section] 102 (anticipation) or 103 (obviousness) and only…

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10

Dec 2019

USPTO’s Administrative Patent Judges Not Constitutionally Appointed

By David Forman The Appointments Clause of the U.S. Constitution governs the appointment of “Officers of the United States.”  U.S. Const. art. II, §2, cl. 2 provides: [The President] shall nominate, and by and with the Advice and Consent of the Senate, shall appoint Ambassadors, other public Ministers and Consuls, Judges of the supreme Court, and all other Officers of the United States, whose Appointments…

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11

Nov 2019

CNIPA Announced Amendments to Patent Examination Guidelines

By Han-Mei Tso and Jude Yi 繁體中文 The China National Intellectual Property Administration (“CNIPA”) recently announced the amendments to the Patent Examination Guidelines (“Guidelines”). The amendments took effect on November 1, 2019, which were the official amendments to the Guidelines after the CNIPA published its Draft Amendments to the Patent Examination Guidelines (Draft for Comment) (“Proposed Amendments”) in April this year. The official amendments are…

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08

Nov 2019

New Rules of Procedure of the Boards of Appeal of the European Patent Office

By Francesca Giovannini 繁體中文 The New Rules of Procedure of the Boards of Appeal (RPBA) of the European Patent Office (EPO), which will enter into force on January 1, 2020, will apply to all pending appeals – with a few exceptions – and to all new appeals filed after that day.  Among the exceptions, the new provisions relating to the admissibility of amendments of a…

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08

Nov 2019

Claim Language Can Limit Scope of Design Patent When No Specific Article of Manufacture is Shown in Figures

By Keelin Hargadon 繁體中文 In Curver Luxembourg, SARL v. Home Expressions Inc., No. 2018-2214 (Fed. Cir. Sep. 12, 2019), the United States Court of Appeals for the Federal Circuit (hereinafter “Federal Circuit”) held claim language can limit the scope of a design patent to a specific article of manufacture when the claim supplies the only mention of the actual article of manufacture and no article…

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17

Oct 2019

American Axle: The Latest Twist on Patent Eligibility

By Jonathan P. Osha Last month during the AIPPI Congress in London I had the privilege of interviewing USPTO Director Andrei Iancu for a full hour during one of the lunch sessions.  As always, Director Iancu’s comments were thoughtful, candid, and delivered with entertaining flair.  We spent a good part of our time discussing the issues around patent eligibility in the United States under 35…

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04

Oct 2019

Patent Term Adjustment (PTA) Update: Federal Circuit Clarifies PTA Calculations in After-Final Practice

By Thomas Scherer 繁體中文 In mid-September 2019, the Court of Appeals for the Federal Circuit (CAFC) decided an appeal related to the calculation of Patent Term Adjustment (PTA) in a case involving after-final practice.  After-final practice governs a patent applicant’s options for continued prosecution upon receipt of a final Office Action.  Before a final Office Action issues, a patent applicant has wide freedom to argue…

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04

Oct 2019

Eastern District of Texas Implements New Local Rules for Challenging Patent Eligibility

By James Carlson  繁體中文 District courts use local rules as a means to manage their case docket.  In particular, local rules are a series of case management orders based on a court’s inherent power to enforce its rules, orders, and procedures. Accordingly, courts may impose appropriate sanctions on parties who fail to comply with their local rules.[1]  While a court’s local rules generally apply to…

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06

Sep 2019

An Office Action without Examination: Brazil has Ambitious Plan to Tackle Patent Application Backlog

By Carlyn Burton  AIPLA’s IP Practice in Latin America Committee recently sent a delegation to Rio de Janerio, which included committee member and Osha Liang partner, Ms. Carlyn Burton.  During this trip, the delegation met Mr. Claudio Vilar Furtado, President of Brazil’s Instituto Nacional da Propriedade Industrial (INPI) on August 22, 2019.  In particular, Mr. Furtado spoke to the delegation about two new resolutions issued…

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06

Sep 2019

AIA Inter Partes Review Is Not Unconstitutional to Pre-AIA Patents under the Fifth Amendment’s Takings Clause

By Peter Schechter 繁體中文 Since the Supreme Court’s decision in Oil States Energy Servs., LLC, v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365 (2018), various constitutional challenges have continued to be raised by patent owners whose pre-AIA patents have been cancelled in AIA Inter Partes Review (IPR) proceedings.  The U.S. Court of Appeals for the Federal Circuit (CAFC) has finally addressed one such challenge. …

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06

Sep 2019

The Wisdom of Athena: Justices Criticize Current State of Patent Eligibility for Diagnostic Methods

By David Forman and James Carlson 繁體中文 Some of the most difficult problems in patent law today concern what can be patented.  Patent-eligible subject matter is defined in 35 USC § 101, but the Supreme Court has added some exceptions for abstract ideas, laws of nature, and natural phenomena.  These have led to controversy and uncertainty about what inventions can be protected by patents.  This…

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04

Jun 2019

Introduction to Prioritized and Expedited Patent Examination Procedures (Part Three) – Chapter of the United States –

By Ran Wang and Han-Mei Tso 繁體中文 Previously, Osha Liang Insights provided an overview of the prioritized patent examination procedures in China and Japan.  For the third part of this series, we will focus on the expedited patent examination procedures in the United States. The United States Patent and Trademark Office (USPTO) currently offers three programs that allow a patent applicant to petition for expedited…

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01

May 2019

Introduction to Prioritized and Expedited Patent Examination Procedures (Part Two) Chapter of Japan

By Han-Mei Tso 简体中文 繁體中文 Previously, Osha Liang Insights provided an overview of the prioritized patent examination procedures in China (article link).  For the second part of this series, we will focus on the expedited patent examination procedures in Japan. Japan provides three types of expedited examination programs: Accelerated Examination, Preferential Examination, and Super Accelerated Examination.  Patent applications eligible for Accelerated Examination may include the…

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01

May 2019

CNIPA Publishes Proposed Amendments to Patent Examination Guidelines

By Han-Mei Tso 简体中文 繁體中文 On April 4, 2019, the China National Intellectual Property Administration (the “CNIPA”) published its Draft Amendments to the Patent Examination Guidelines (Draft for Comment) (the “Proposed Amendments”) to solicit public comments.[1] This amendment follows the previously amended Patent Examination Guidelines (the “Guidelines”) that took effect on April 1, 2017. The Proposed Amendments aim to improve efficiency and quality of patent…

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05

Mar 2019

Patent Reexamination Board Eliminated Amid CNIPA Reorganization

By Han-Mei Tso  简体中文 繁體中文 According to a notice issued by the China National Intellectual Property Administration (CNIPA) on February 14, 2019, the Patent Reexamination Board will be merged into the Patent Office of the CNIPA.  The Patent Reexamination Board was formerly a subordinate organization under the CNIPA.  However, after the merger, the Patent Office will be responsible for all duties formerly handled by the…

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