Newsletter


30

Apr 2018

Meetings with WIPO, WTO and EPO

In his role as first deputy reporter general of The International Association for the Protection of Intellectual Property (AIPPI), Jonathan Osha joined the bureau delegation that recently visited the WIPO and the WTO in Geneva and the EPO in Munich. World Intellectual Property Organization (WIPO) The AIPPI delegation met with WIPO in Geneva on Monday, March 26, 2018.  After introductory remarks by Director General Francis...

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30

Apr 2018

New guidance from the USPTO on patent-eligible subject matter

By: Jonathan Osha Continuing its efforts to ensure the examining practices of the United States Patent and Trademark Office (“USPTO”) keep pace with the rapidly changing US law in the area of patent-eligible subject matter, the USPTO on April 19, 2018, issued new guidance to examiners on how to determine when claim elements are directed to “well-understood, routine, conventional activities.”  Consistent with the recent Berkheimer...

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30

Apr 2018

Update on Tribal Sovereignty at the PTAB

By: Suzanne Lecocke In October 2017, we published an article entitled “TRICK or TREAT!  … or TROLL or TRIBE?” raising possible ramifications if a patent owner was allowed to avoid an inter partes (IPR) proceeding by transferring its patent rights to a Native American tribe and then relying on the tribe’s right of sovereign immunity.[1] Would the sovereignty of American Indian tribes become an available...

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30

Apr 2018

U.S. Supreme Court Validates Inter Partes Review, Eliminates PTAB’s “Partial” Institution Practice

***Please click here to be directed to the newsletter article titled, “New Guidance from the USPTO on Patent-Eligible Subject Matter”.*** By: Peter Schechter The Supreme Court issued two decisions on April 24, 2018 that significantly affect litigation strategies for both patent owners and accused infringers in the United States. In Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, the Court approved constitutionality of...

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30

Apr 2018

Osha Liang Attended the Hangzhou High-Tech District Intellectual Property Service Symposium

By: Han-Mei Tso On April 18, 2018, Ms. Nan Bi, Director of the Department of Planning and Development of the State Intellectual Property Office of the P.R.C., visited Hangzhou High-Tech District (Binjiang) with her group who conducted a survey on the intellectual property (“IP”) service industry in the area. Accompanied by officials from Zhejiang Provincial Intellectual Property Office and Hangzhou High-Tech District (Binjiang) Government, Ms....

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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...

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30

Mar 2018

EPO objections of added subject-matter due to an Unallowable Intermediate Generalization

By: Francesca Giovannini, Yann Gloaguen, Elsa Benveniste According to Art. 123(2) EPC, a European patent application or a European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. The idea underlying Art. 123(2) EPC is that an Applicant should not be allowed to improve their position by adding subject-matter not disclosed in the application as...

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28

Mar 2018

Plaintiff’s failure to reevaluate case post Alice results in fee award to opposing side

By: Seema Mehta Patent-owner Inventor Holdings, LLC, sued American retailer Bed Bath & Beyond (BBB) for infringement of US Pat. No. 6,381,582, directed to a method of purchasing goods at a local point-of-sale system from a remote seller.  The suit was filed in April 2014, a mere two months before the U.S. Supreme Court issued its decision in Alice Corp. v. CLS Bank International in...

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20

Mar 2018

SIPO Announced Changing of Composition of Patent Certificates and the Duplicates thereof

By: Han-Mei Tso, Ken Yu In order to better meet the needs of parties involved in economic and legal activities, the State Intellectual Property Office of the P.R.C. (“SIPO”) provides real-time, convenient and transparent information channels to patent right holders and the public through an internet platform.  Based on this foundation, SIPO has now further optimized the composition of patent certificates and duplicates thereof.  According...

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15

Mar 2018

UNIQLO Wins Trademark Infringement Litigation in China

By:  Han-Mei Tso, Ken Yu Recently, the Guangzhou Intellectual Property Court issued the second-instance decision on Guangzhou Compass Exhibition Service Co., Ltd. and Guangzhou Zhongwei Enterprise Management Consulting Service Co., Ltd. (collectively “Compass/Zhongwei Company”) v. Fast Retailing (China) Trading Co., Ltd. (The famous brand UNIQLO’s retailer in China) and Fast Retailing (China) Trading Co., Ltd. Guangzhou Baixin Plaza Store (collectively “Fast Retailing Company”) regarding a...

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27

Feb 2018

New EPC Provisions: Payment of Renewal and Search Fees for Supplementary EU Search

By: Yann Gloaguen Two provisions of the European Patent Convention (EPC) will come into effect on April 1st 2018. The first provision affects payment of the 3rd year renewal fee, the second provision affects the fee for the supplementary European search with some PCT applications. 1.1. European patent application renewal fees  must be paid annually to the European Patent Office (EPO) starting from the second...

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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...

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25

Feb 2018

IPR Motions to Amend – Basic Rules & Guidelines

By: Tammy Dunn A few short years ago, the AIA created inter partes review (IPR) proceedings.  Since their creation, IPRs have become an ever-popular way in which almost anyone can challenge the validity of a patent on certain grounds on the basis of printed publications.  Unlike district court litigation, where judges and juries decide questions of patent invalidity, in IPRs technically trained administrative patent judges...

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22

Feb 2018

Teaching Away and Motivation to Combine

By: Seema Mehta Late last year, the Federal Circuit issued an opinion in ARCTIC CAT INC., Plaintiff–Appellee v. BOMBARDIER RECREATIONAL (“BRP”), providing a noteworthy discussion of requirements to show motivation and teaching away in the 103 context.  U.S. Patent Nos. 6,568,969 (“’969 patent”) and 6,793,545 (“’545 patent”) owned by Arctic Cat Inc. relate to a thrust steering system for personal watercrafts propelled by jet stream....

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15

Feb 2018

Subject Matter Patent Eligibility Update to Manual of Patent Examining Procedure (MPEP)

By: James Carlson The United States Patent and Trademark Office (USPTO) published an update to the Manual of Patent Examining Procedure (MPEP) this past January 2018.  In particular, the update includes changes to various MPEP sections focused on substantive and procedural implementation of the Supreme Court patent eligibility test put forth in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)...

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03

Feb 2018

Prosecution Disclaimer Extends to Inter Partes Reviews

By: Califf Cooper In Aylus Networks, Inc. v. Apple Inc., (Fed. Cir. May 11, 2017), the Federal Circuit confirmed that a patent owner’s statements made during an inter partes review (“IPR”) can be used to argue prosecution disclaimer.  This means that patent owners enforcing their patents must be even more aware of how their statements during an IPR can affect the scope of their claims...

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30

Jan 2018

New Decision from EPO Enlarged Board of Appeal G1/16 Regarding Disclaimers

By: Francesca Giovannini A disclaimer is a “negative” feature, i.e., a feature describing elements and characteristics that the claimed subject-matter does not have. An amendment based on a disclaimer, as any amendment made to a European patent application or patent, has to comply with the requirements of Art. 123(2) EPC (added subject-matter). For example, when a claim referencing a composition which comprises a metal element...

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30

Jan 2018

Intellectual Property Policy Promotion & Intellectual Property Service Introduction Conference of Hi-tech District (Binjiang), Hangzhou

By: Han-Mei Tso The Intellectual Property Policy Promotion and Intellectual Property Service Introduction Conference of the Hi-tech District (Binjiang), Hangzhou (the “Conference”) was held on January 5, 2018 at “Intelligent e-Valley” in Binjiang District. More than 200 people from enterprises, as well as intellectual property service institutions and agencies in the Hi-tech District, attended the Conference. Mr. Chunmin Yang, the Associate Counsel of Science and...

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28

Jan 2018

U.S. Federal Circuit Announces IPR Time Bar is Reviewable on Appeal

By: Tammy Dunn Approximately one year ago, Osha Liang reported in its newsletter that the United States Court of Appeals for the Federal Circuit in Wi-Fi One LLC v. Broadcom Corp., Case No. 2015-1944, agreed to review the issue of whether patent owners in inter partes review proceedings (IPRs) can appeal decisions by the United States Patent & Trademark Office’s Patent Trial and Appeal Board...

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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...

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16

Jan 2018

USPTO Fees On the Rise – Effective 1/16/18

Effective, January 16, 2018, the United States Patent and Trademark Office (USPTO) increased certain fees relating to patent examination and post grant proceedings.  The increase in filing fees affects items such as basic filing fees in utility patents, patent search filing fees, post allowance fees, and Patent Trial and Appeal fees.  While most fees increased by around 10%, certain fees such as Information Disclosure Statements...

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30

Dec 2017

Practice Pointer: When is “When”?

By: Jonathan P. Osha It is common to see the word “when” used in U.S. patent claims.  However, it is also common to see a disconnect between the meaning intended by the applicant and the meaning given by the examiner at the USPTO (and perhaps by a court during litigation).  This Practice Pointer will attempt to clarify the meaning and proper usage of this common...

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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...

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23

Dec 2017

Pleading Standards Revisited

By: Califf Cooper The U.S. Federal Circuit provided some additional insight into the pleading standard for direct and indirect patent infringement claims in a recent decision, Lifetime Industries, Inc. v. Trim-Lok, Inc., 2017-1096, (Fed. Cir. Sept 7, 2017). Lifetime sued Trim-Lok in the Northern District of Indiana for direct and indirect patent infringement of U.S. Pat. No. 6,966,590 (the ’590 patent).  The ’590 patent relates...

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15

Dec 2017

Brazilian Government Considers Adopting Simplified Procedure for Granting Patents Without Substantive Examination

By: Guest Authors Saulo Calazans and Ivan Ahlert, partners of Dannemann Siemsen The Brazilian Ministry of Industry, Foreign Trade and Services (MDIC) and the National Institute of Industrial Property (INPI) announced the imminent entry into force of regulations for a simplified procedure for the allowance of patent applications. This initiative aims at addressing the considerable existing patent examination backlog. The proposal as submitted to public...

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02

Dec 2017

Applicants May Save Money By Paying Fees to the EPO By Credit Card

By: Francesca Giovannini As a part of its ongoing drive to fully digitize all patent processes, the European Patent Office (EPO) has decided to no longer accept written instructions for payment of patent fees starting December 1, 2017. Debit orders are now accepted and only processed electronically using Online Filing (EPOLINE), new online filing (CMS), Online Fee Payment, or ePCT. The payment option via bank transfers remains unaffected.  More notably, the EPO has newly introduced a web-based method of payment by credit card. Users of the new...

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30

Nov 2017

Certifying Priority Electronically: Updates to the USPTO’s PDX Program

By: Kevin Kuelbs The Priority Document Exchange (“PDX”) streamlines the process for transmitting priority documents among participating patent offices worldwide by providing electronic access.  Utilizing the PDX allows applicants to avoid fees for obtaining certified copies of priority documents and the incidental costs associated with transmitting and filing priority documents with the appropriate patent office. Agreements to transmit documents via the electronic PDX exist between...

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30

Nov 2017

Improvements in Wearable Optics Lead to Stretchy Optical Fiber Sensors

By: Nelson Monterrosa Wearable sensor research has increased in the last years. The expansion of wearable technologies encourages the development of more efficient sensors for collecting and processing data from the real world. Small wearable sensors allow researchers to track body motion more efficiently. Wearable sensors applications range from allowing physicians to monitor life-threatening conditions to improving the quality of animations in video games. Efficient...

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