Newsletter


01

Jul 2020

Personal Jurisdiction Uncertain Based on Stream of Commerce: Part I

By Suzanne Lecocke 繁體中文 Standards to establish specific jurisdiction over a non-resident or foreign defendant have been around for decades.  Yet today, what tests may be applied to support those standards are uncertain.  How should a court determine whether a defendant’s activities in or related to the forum are sufficiently related to the plaintiff’s claim to permit the exercise of specific jurisdiction?  The answer to...

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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

May 2020

“Willfulness” No Longer a Prerequisite for Recovery of Trademark Infringer’s Profits

By Keelin Hargadon 简体中文 In April, the U.S. Supreme Court ruled that a trademark owner in a lawsuit for infringement may recover the infringer’s profits as an element of money damages, without needing to prove that the infringement was willful.  In Romag Fasteners, Inc. v. Fossil, Inc., the Court eliminated a rule that had served for decades to limit the categories of remedies available under...

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27

May 2020

U.S. Supreme Court 2020 Update – What’s Still Undecided?

By Peter Schechter 繁體中文 So far in 2020, the U.S Supreme Court has decided that states cannot be sued for copyright infringement,[1] that PTAB IPR institution decisions regarding time bar issues are not appealable,[2] that the published version of Georgia state law code along with its annotations cannot be protected by copyright,[3] and that proof of “willful” infringement is not a statutory prerequisite to a...

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06

May 2020

COVID-19 Update | WIPO Launches New Tool

WIPO today launched a new tool that tracks COVID-19 related intellectual property (IP) policy changes or other measures being implemented by WIPO member states in their response to the global pandemic. This is the latest in a series of measures taken by the Organization in relation to the COVID-19 pandemic. READ MORE [Courtesy of WIPO Pressroom]


06

May 2020

COVID-19 Update | EPO Announces Deadline Extension

By Francesca Giovannini On May 1, 2020, the EPO announced that periods expiring on or after March 15, 2020 are now extended for all parties and their representatives to June 2, 2020. The new notice of May 1, 2020, replaces the previous notice dated April 16, 2020 and, with the exception of the extended date, reproduces its content.  READ MORE


27

Apr 2020

To Institute or Not To Institute – That is the Question: Recent PTAB Precedential Decisions on § 325 Denials

By Tammy J. Dunn 繁體中文 The Patent Trial and Appeal Board recently designated two decisions as precedential and a third as informative on the issue of when the Board will and will not exercise its discretion to reject America Invents Act post-grant proceedings petitions that rely upon invalidity arguments similar to those used during the original patent prosecution.  Accordingly, precisely how the Board will exercise...

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27

Apr 2020

PTAB Decisions Regarding Applicability of IPR Petition Time Bar Are Not Appealable

By Peter C. Schechter 繁體中文 The U.S. Supreme Court decided in Thryv, Inc. v. Click-to-Call Techs., LP that decisions by the USPTO’s Patent Trial and Appeal Board (“PTAB”) regarding applicability of the America Invent Act’s 1-year time bar to filing a petition for Inter Partes Review are not appealable.  While the patent owner in Thryv was thus held to be unable to challenge a PTAB...

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27

Apr 2020

Update on EPO Measures Due to the COVID-19 Pandemic

By Francesca Giovannini 繁體中文 The March notice of the European Patent Office (EPO) announced measures to safeguard applicants’ rights and opposition and appeal parties’ rights due to the COVID-19 pandemic, establishing that all “time limits” before the EPO expiring on or after 15 March 2020 were extended until 17 April 2020 (see March issue of our Newsletter).  The EPO has subsequently announced that all “time...

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27

Apr 2020

USPTO Issues Report by Chief Economist on Statutory Subject Matter Rejections and Impact of the Revised Guidance of January, 2019

By Jonathan P. Osha 繁體中文 It is widely recognized that rejections of applications at the USPTO due to lack of statutory subject matter (35 U.S.C. § 101) increased significantly following the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International in June of 2014.  In addition to this increase in overall rejections, many of us practicing in this area noticed a wide variability...

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27

Apr 2020

Lay Witness Opinion Testimony on Ultimate Question of Obviousness Is Inadmissible at Trial

By Payal Majumdar, Ph.D., and Peter Schechter 简体中文 In HVLPO2, LLC v. Oxygen Frog, LLC,[1] the U.S. Court of Appeals for the Federal Circuit (“CAFC”) held that a trial court abused its discretion by admitting lay (i.e., non-expert) witness opinion testimony regarding the ultimate question of obviousness during a jury trial.  Such lay witness opinion testimony is unduly prejudicial and circumvents extensive discovery rules and...

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27

Apr 2020

Allen v. Cooper – The Supreme Court Blesses Copyright Infringement by States

By Louis K. Bonham 繁體中文 In a near unanimous decision, the Supreme Court held in Allen v. Cooper that the Copyright Remedy Clarification Act of 1990 (the “CRCA”) – which abrogated state immunity for acts of copyright infringement – was unconstitutional under the Eleventh Amendment of the United States Constitution.  As a result, individual states and state agencies (such as state universities) are free to...

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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

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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