Search Results for: Patent


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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05

Mar 2019

To Petition or Not to Petition: The Role of Statutory Estoppel on Later Patent Challenges

By Phillip Chambers & Peter Schechter When the America Invents Act (AIA) implemented post-grant proceedings for challenging patents in the United States in 2012, petitioners faced the risk that the AIA’s estoppel provisions could preclude subsequent validity challenges and defenses after unsuccessful proceedings.  For several years now, trial courts have been analyzing and defining the scope and extent that the AIA estoppel provisions limit or…

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01

Feb 2019

China to Increase Damages for Patent Infringement

By Han-Mei Tso 简体中文 繁體中文 Following the third revision of the Patent Law of the People’s Republic of China (hereinafter “Patent Law”) in 2008, China is expected to proceed with a fourth revision of the Patent Law this year.  The Chinese government is now soliciting opinions from the public for a Proposed Amendment to the Patent Law of the People’s Republic of China (hereinafter “Proposed…

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01

Feb 2019

Obviousness-Type Double Patenting Does Not Invalidate Patent Term Extensions

By Payal Majumdar 日本語 简体中文 繁體中文 In Novartis AG v. EZRA Ventures LLC, No. 2017-2284 (Fed. Cir. Dec. 7, 2018), the U.S. Court of Appeals for the Federal Circuit affirms the Delaware district court’s final judgment concerning patent term extensions and the interplay with the obviousness-type double patenting doctrine.  In this court decision, the Federal Circuit found that in accordance with statutory construction principles and…

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04

Jan 2019

Introduction to Prioritized and Expedited Patent Examination Procedures (Part One) Chapter of China

By Han-Mei Tso 简体中文 繁體中文   In today’s business world, companies often have to face fierce commercial competition with rapidly developing technologies.  Thus, the ability to obtain patents quickly provides a clear advantage over the competition. Moreover, patents can enhance corporate value by contributing to a comprehensive patent portfolio, while also generating interest from potential investors.  In this context, this issue of Osha Liang Insights…

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30

Nov 2018

18 Months Gone: TC Heartland’s Evolving Impact on Patent Litigation in the Eastern District of Texas

By  Anna Domask  and James Carlson   The United States Supreme Court decision in TC Heartland, LLC v. Kraft Foods Group Brands, LLC, 137 S. Ct. 1514 (2017) (8-0 decision) (hereinafter “TC Heartland”) upended 30 years of patent venue law[1].  Specifically, Justice Thomas authored the opinion finding that “a domestic corporation ‘resides’ only in its State of incorporation for purposes of the patent venue statute.”[2]  At…

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30

Nov 2018

The Technological Problem: The Elusive Key to Patent-Eligible Subject Matter

By James Carlson Over thirty-five years ago in Diamond v. Diehr, 450 U.S. 175 (1981) (hereinafter “Diehr”), the United States Supreme Court struck a compromise for patenting software inventions.  In Diehr, the Supreme Court recognized that not every discovery warranted patent protection.  In particular, the Supreme Court viewed laws of nature, natural phenomena, and abstract ideas as being such fundamental truths that no one deserved…

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30

Nov 2018

Inventors and Others In Privity With Them May Challenge Validity of Their Own Previously Assigned Patents in PTAB Proceedings

By Peter Schechter “Assignor estoppel prevents a party who assigns a patent to another from later challenging the validity of the assigned patent.”   This equitable doctrine has been applied by U.S. district courts and the U.S. International Trade Commission (“ITC”) for over a hundred years to protect companies from the basic unfairness that would result if inventors could challenge validity of the patents that they…

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31

Aug 2018

Patent Subject Matter Eligibility Six Months after Berkheimer v. HP Inc.

By: James Carlson In February 2018, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (hereinafter “Berkheimer decision”).  The Berkheimer decision may prove to be the most important U.S. court case regarding patent subject matter eligibility since the Supreme Court’s opinion in Alice Corp. v. CLS Bank Int’l., 134 S.Ct. 2347…

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31

Aug 2018

2018 Annual Statistics Report by the Japan Patent Office

By: Mutsumi Fukuoka On July 30, 2018, the Japan Patent Office (JPO) released its “2018 Annual Report” (in Japanese only). The 2018 Annual Report provides a comprehensive compilation of statistics on intellectual property (IP).  In this article, we will update our newsletter of July 2017 by highlighting some of the important features of patent statistics from the JPO Annual Report 2018. PCT International Applications Continue…

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29

Jun 2018

Patent Damages Award May Include Foreign Lost Profits Under Certain Limited Circumstances

By: Peter Schechter A damages award under 35 U.S.C. § 284 for infringement under § 271(f)(2) may include foreign lost profits, regardless of the presumption against extraterritorial reach of federal statutes, the U.S. Supreme Court held in a 7-2 decision on June 22, 2018. WesternGeco LLC  v. Ion Geophysical Corp., ___ U.S. ___, No. 16-1011 (June 22, 2018).  The Court noted that the relevant conduct,…

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