Newsletter


04

Feb 2020

Changes in the Guidelines for Examination

The European Patent Office (EPO) has recently published the annual update of its Guidelines of Examination (hereinafter “EPO update”), which will come into force on November 1st, 2018.  In particular, the EPO update includes changes to unity of invention requirements and the patentability of mathematical methods. Changes to Unity of invention Requirements: Under the European Patent Convention (EPC), a European patent application must relate to...

Read More


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...

Read More


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


31

Jan 2020

Software Specially Designed To Automate the Analysis of Geospatial Imagery Added to U.S. Export Control List

By Anna C. Domask, Ph.D. 繁體中文 On January 6, 2020, the U.S. Department of Commerce announced an interim final rule pertaining to “software specially designed to automate the analysis of geospatial imagery.”  Software falls under this regulation when it: 1) “provides a graphical user interface” where a user indicates “positive and negative samples of an object of interest, 2) uses “scale, color, and rotational normalization...

Read More


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...

Read More


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...

Read More


03

Jan 2020

Are State Legal Texts with Annotations Copyrightable? The U.S. Supreme Court to Decide in Georgia v. Public.Resource.Org

By Califf Cooper 繁體中文 The Supreme Court recently heard oral arguments to decide whether Georgia’s annotated version of the Georgia legal code is protected by copyright.  The case stems from Public.Resource.Org publishing the full annotated version of the code online and Georgia’s subsequent case for copyright infringement. The State of Georgia contracted with LexisNexis to produce and publish the annotated version of the state’s legal...

Read More


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...

Read More


10

Dec 2019

Trademark Infringement Findings in ITC Investigations Without Actual Confusion or Consumer Survey Evidence

By Tammy Dunn 繁體中文 Over the past few years, Segway, Inc., the maker of two-wheeled motorized personal vehicles (as seen in U.S. Patent No. 8,830,048) has successfully litigated against competitors that were infringing its patents. In March 2016, Segway won the rare remedy of a General Exclusion Order (GEO), issued by the International Trade Commission after an investigation concluded in findings that several companies were...

Read More


10

Dec 2019

With Billions of Dollars On the Line, The Supreme Court Will Weigh in On Oracle v. Google Copyright Java Case

By Califf Cooper 繁體中文 The Supreme Court recently granted a writ of certiorari to rule on the nearly decade long fight between Google and Oracle regarding the copyright infringement lawsuit centered on Google’s Android operating system being built on stolen code from the Java software platform.  Google calls the case, “the copyright case of the decade.”  The dispute revolves around Google’s verbatim copying of 11,500...

Read More


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...

Read More


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...

Read More


08

Nov 2019

The Marrakesh Treaty Aims to Reduce the “Global Book Famine”

By Peter Schechter 繁體中文 The Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled, simply known as the Marrakesh Treaty, makes the production and international transfer of specially-adapted books for people with blindness or visual impairments easier.  The purpose of the Treaty is to address and reduce a “global book famine.”  Countries that join the...

Read More


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...

Read More


08

Nov 2019

USPTO Updates: Changes to Examination Procedures for Subject Matter Eligibility

By James Carlson 繁體中文 On October 17, 2019, the USPTO issued an update regarding the 2019 Revised Patent Subject Matter Eligibility Guidance published this past January.  In particular, the USPTO considered feedback in response to the January guidance and prepared a follow-up that clarifies the USPTO’s examination procedures accordingly.  In particular, this new update consists of the following: (1) an October 2019 Patent Eligibility Guidance...

Read More


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...

Read More


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...

Read More


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...

Read More


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...

Read More


06

Sep 2019

USPTO Updates: Proposed New Fees and Fee Increases

By James Carlson  繁體中文 On July 31, 2019, the USPTO published a federal register notice[1] regarding changes to various USPTO fees.   In particular, the USPTO proposes three new fees: (1) a surcharge fee of $400 for filing a nonprovisional application in a non-DOCX format; (2) pro hac vice admission fees of $250; and (3) an annual patent practitioner fee ranging from $70 to $340. For...

Read More


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. ...

Read More


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...

Read More


05

Aug 2019

U.S. Supreme Court Decision in Mission Product Resolves Issues Surrounding Trademark Agreements Rejected in Bankruptcy

By Califf Cooper and Keelin Hargadon 繁體中文 In Mission Product Holdings, Inc. v. Tempnology, LLC, No. 17-1657 (S.Ct. May 20, 2019), the U.S. Supreme Court issued a ruling that will have broad implications for licenses and other agreements in bankruptcy.  The Court held that agreements rejected by a debtor in bankruptcy are not terminated.  Instead, the non-debtor party retains whatever rights it would have under...

Read More


05

Aug 2019

Supreme Court Curtails Judicial Deference to Agency Interpretations of Their Own Regulations

By David Forman 繁體中文 Regulations promulgated by administrative agencies sometimes have more than one reasonable interpretation. For example, a regulation may be ambiguous due to circumstances that were not anticipated when the regulation was originally written.  When confronted with an ambiguous regulation, Federal courts accept (“defer to”) an agency’s interpretation of its own regulations as long as the interpretation is based on a permissible construction...

Read More


05

Aug 2019

Major Amendments to China’s Trademark Law regarding Malicious Registration and Trademark Misuse

By Han-Mei Tso 繁體中文 Malicious trademark squatting and trademark misuse have been significant problems for foreign companies doing business in China. Likewise, even local Chinese companies are being forced into unnecessary litigation or licensing negotiation due to the threats from trademark squatters. However, the recent amendments to the Trademark Law of the People’s Republic of China (“the Amendments”) made by the Standing Committee of the...

Read More


05

Aug 2019

Iancu v. Brunetti: U.S. Supreme Court Holds the Lanham Act’s Ban on Registration of “Immoral or Scandalous” Trademarks Violates the First Amendment

By Tammy Dunn and Keelin Hargadon 繁體中文 In Iancu v. Brunetti, 588 U.S. __ (2019), the Supreme Court affirmed the Federal Circuit’s decision invalidating the statutory bar on registration for marks considered “immoral or scandalous.”  The Supreme Court’s reasoning was similar to its analysis in Matal v. Tam, 582 U.S. ___ (2017), in which the Supreme Court declared unconstitutional the Lanham Act’s ban on registering...

Read More


05

Aug 2019

New Graphical User Interface (GUI) Protection in Japan

By Mutsumi Fukuoka 繁體中文 With the rapid spread of portable devices such as smartphones and tablet terminals in recent years, new protections are needed in Japan for user interface designs and functionality. In 2016, the Japan Patent Office (JPO) revised the Design Examination Guidelines to clarify that the Design Act protects displayed images necessary for performing functions of articles (corresponding to “manufactured articles” set forth...

Read More


01

Jul 2019

Copyright before Contract: The Role of Copyright Preemption in Software Licensing

By James Carlson 繁體中文 In Universal Instruments Corp. v. Micro Systems Engineering, Inc., No. 17-2748 (2d Cir. May 8, 2019), an opinion from the U.S. Court of Appeals for the Second Circuit illustrates the fine line where contract terms may conflict with the U.S. Copyright Act.  Unlike with patents and trademarks, the Copyright Act provides an explicit preemption clause governing when a legal claim under...

Read More



Page 1 of 912345...Last »