Newsletter


01

Aug 2018

Inherent Disclosures in Prior Art in the United States

By: Emily Marie Boggs A patent claim may be rejected under 35 USC § 102 as being anticipated by a prior art reference if each and every element of the claim is disclosed by the prior art reference, either expressly or inherently.  According to the inherency doctrine, a prior art reference inherently discloses a claim limitation when “the limitation at issue necessarily must be present,...

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01

Aug 2018

Incorporated by Reference, But to What Extent?

By: Ko Nakamura Incorporation by reference is a useful mechanism by which an application can incorporate disclosure from other documents as if the disclosure was explicitly contained therein without having to repeat the disclosure in the application.  “To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the...

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02

Jul 2018

PCT Working Group in Geneva on June 19

In his role as Deputy Reporter General of AIPPI, partner Jonathan Osha addressed the PCT Working Group at WIPO in Geneva on the issue of incomplete and erroneously filed parts of applications on June 19, 2018. Pictures from the event:


29

Jun 2018

The Significance of “Could” vs. “Would” When Assessing Obviousness Rejections

By: Zachary Schaefer, Francesca Giovannini, Han-Mei Tso, and Mutsumi Fukuoka USPTO PERSPECTIVE United States patent law does not allow the patenting of an invention if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the...

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29

Jun 2018

USPTO’s PTAB Issues “Frequently Asked Questions” Regarding Impact of Supreme Court’s SAS Institute v. Iancu Decision, But Provides Few Truly Useful Answers

By: Peter Schechter Earlier this year, the U.S. Supreme Court ruled that the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office was required to either institute Inter Partes Review (IPR) of all challenged claims on all grounds raised, or not, in response to a petition challenging claims of a US patent on grounds of unpatentability.  The PTAB’s practice of “partial...

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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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29

Jun 2018

JPO Published Guidance of Examination of IoT Technology

By: Mutsumi Fukuoka On June 15, 2018, the Japanese Patent Office (JPO) published Guidance of Examination of IoT (Internet of Things) technology on their website. Although patent applications related to IoT technology have been examined according to the existing Examination guidelines without issues, the Guidance was prepared because development and practical implementation of IoT technology has been rapidly increasing in Japan in recent years. The...

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29

Jun 2018

IP5 Pilot Project on Collaborative Search and Examination Under the PCT

By: Yann Gloaguen On July 1st 2018, the IP5 Offices launched the second phase of a pilot project aimed at testing and further developing the concept of Collaborative Search Examination (CS&E), a collaboration effort amongst the five “IP5 Offices”, i.e. the United States Patent and Trademark Office (USPTO), the State Intellectual Property Office the People’s Republic of China (SIPO), the Japan Patent Office (JPO), the...

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29

Jun 2018

SIPO Announced Termination and Adjustment of Certain Patent Fees

By: Han-Mei Tso The State Intellectual Property Office of the People’s Republic of China (“SIPO”) issued No. 272 Announcement on June 15, 2018.  In order to further reduce the burden on society and promote the protection of patent rights, SIPO will terminate and adjust certain patent fees starting August 1, 2018.  The detail of the announcement is as follows: The patent registration fee, the publication...

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29

Jun 2018

The New Trend of Utility Model Applications in China

By: Han-Mei Tso In the February edition of Osha Liang’s newsletter, we published an article that discussed the main characteristics of utility model protection in China, Japan and European countries where most utility model patents are filed.  In that article, we discussed in detail about the eligible subject-matter, term of protection, and the examination procedure of utility model patents in China.  We mentioned that a...

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27

Jun 2018

Industry Trilateral, Industry IP5, and IP5 Patent Office Heads Meetings in New Orleans, Louisiana

The Industry Trilateral, Industry IP5, and IP5 Patent Office Heads in New Orleans, Louisiana from June 11-14, 2018.  The series of meetings relating to international harmonization of patent law, developments in inter-Office cooperation, and improvements to the overall user experience.  Osha Liang partner Jonathan Osha participated in the meetings as part of the AIPLA delegation. Click here for the detailed summary on AIPLA’s website. The...

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01

Jun 2018

Japanese Grace Period Will Be Extended to 12 Months

By: Jonathan Osha and Shinya Kimura The Japan Diet on May 23, 2018 enacted legislation to extend the novelty grace period for patents in Japan from 6 to 12 months.  The revised patent law will be applied to patent applications filed on or after June 9, 2018. While this is an improvement for those who may wish to rely on the grace period, it is important...

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31

May 2018

The Written Description Requirement in the United States

By: Jonathan Osha The “written description” prong of 35 USC §112(a) requires that the written description be sufficient to demonstrate that the inventor had possession of the invention being claimed at the time the patent application was filed.  In a recent case from the U.S. Court of Appeals for the Federal Circuit, the Court found the written description requirement was not met by a provisional...

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31

May 2018

Thoughts on Printed Matter

By: Jonathan Osha Does printed matter need to be printed?  A panel of the United States Court of Appeals for the Federal Circuit doesn’t think so.  The Federal Circuit has applied the “printed matter doctrine” – a doctrine that excludes patents on printed matter unless the printed matter is related to the functionality of what is being claimed – to “information” as such, on the...

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31

May 2018

Claim Interpretation Urged by Patent Owner in District Court Infringement Litigation May Be Relied on by Petitioner in IPR Challenge

By: Tammy Dunn In Western Digital Corporation v. SPEX Technologies, Inc. (“Western Digital IPR”), the Patent Trial and Appeal Board (“PTAB”) recently allowed a petitioner to use a patent owner’s claim construction positions taken in district court infringement litigation in an IPR petition, even though the petitioner explicitly disagreed with those positions in district court. At the time the petitioner filed its IPR petition, the...

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31

May 2018

The UK ratified the UPC Agreement: One Step Closer to the Completion of the Ratification Process for the UPC to Operate

By: Francesca Giovannini On April 26, 2018, the United Kingdom (UK) ratified the Unified Patent Court (UPC) Agreement, confirming that the declared intention to ratify the Agreement was genuine and sincere despite all uncertainties about the retaining role of the Court of Justice of the European Union (EU), to which, according to the Agreement, questions can be submitted regarding the interpretation of EU law. Indeed,...

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31

May 2018

SIPO Issues Statistics of Design Patents

By: Han-Mei Tso In April 2018, the State Intellectual Property Office (SIPO) of the People’s Republic of China issued the Brief Statistics of Design Patent 2017 (the “Report”). The Report summarizes China’s design patent statistics in 2017, covering the numbers of applications, grants, patents-in-force, country distribution, industry distribution, and other data. Overall, the total number of design patent applications in 2017 was 629,000, which represents...

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30

May 2018

Virtual Reality Technology Applied for the First Time in a China Court Trial

By: Han-Mei Tso On March 1, 2018, the Beijing First Intermediate People’s Court (the “Beijing First Intermediate Court”) publicly heard a murder case prosecuted by the First Branch of the Beijing People’s Procuratorate (the “First Branch of Beijing Procuratorate”). In this case, the criminal suspect was accused of killing his girlfriend. Because the prosecutor presented evidence using virtual reality technology (“VR”) for the first time...

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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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