Newsletter


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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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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