Newsletter


24

Mar 2020

Impact of COVID-19 (novel coronavirus) Pandemic on EPO Operations

By Francesca Giovannini 繁體中文 Due to the COVID-19 pandemic, the European Patent Office (EPO) has announced measures to safeguard applicants’ rights and opposition and appeal parties’ rights. Among the announced measures, the EPO communicated that all “time limits” before the EPO expiring on or after 15 March 2020 are extended until 17 April 2020. If the disruption should continue after 17 April 2020, any further...

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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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24

Mar 2020

CAFC Says “Use IPR In Time Or Lose It”

By Peter Schechter 繁體中文 The US Court of Appeals for the Federal Circuit (CAFC) ended the USPTO’s procedure allowing a petitioner in an instituted inter partes review (IPR) to file another otherwise time-barred IPR petition in the Patent Trial and Appeal Board (PTAB) and to then have that later-filed petition, including new challenges to additional patent claims on different grounds than were previously raised in...

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24

Mar 2020

Impact of COVID-19 (novel coronavirus) Pandemic on USPTO Operations

By Peter Schechter 繁體中文 The United States Patent and Trademark Office (USPTO) considers the effects of coronavirus to be an “extraordinary situation” within the meaning of 37 CFR 1.183 and 37 CFR 2.146 for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners. Therefore, the USPTO is waiving petition fees in certain situations for customers impacted by the coronavirus. However, the USPTO cannot...

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24

Mar 2020

Claims may not be Cancelled for Indefiniteness in Inter Partes Review (IPR), but the Issue of Indefiniteness Will Continue to Arise

By Seema Mehta 繁體中文 In Samsung Elec. Am., Inc. v. Prisua Eng’g Corp.,[1] the CAFC held that the Patent Trial and Appeals Board (PTAB) may not cancel claims in Inter Partes Review (“IPR”) on the basis of indefiniteness under 35 § USC 112.  At first glance this seems exactly the right answer:  Section 311(b) of the statute limits the grounds on which a petitioner can request an IPR...

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24

Mar 2020

Osha Liang Announces Temporary Houston Office Closure

Early this morning, local officials announced a “stay-at-home” order to mitigate COVID-19 spread. In compliance with this directive, Osha Liang’s Houston office will temporarily close, effective March 24th at 11:59 pm. This restricted lock-down in Harris County will remain in place until April 3rd. As stated in a recent announcement (business continuity), our team is fully equipped and committed to providing uninterrupted service during this...

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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

USPTO No Longer Accepting Requests to Participate in the IP5 PCT Collaborative Search and Examination Pilot Program

By Peter Schechter On January 3, 2020, the United States Patent and Trademark Office (USPTO) announced that it has reached the total number of applications that can be accepted for the IP5 Offices’ Patent Cooperation Treaty (PCT) Collaborative Search and Examination (CS&E) pilot program.  Each IP5 Office has set a target of accepting 100 PCT applications over the course of the two-year pilot program, and...

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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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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...

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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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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...

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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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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...

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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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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...

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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...

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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

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...

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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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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...

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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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