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06

Sep 2019

An Office Action without Examination: Brazil has Ambitious Plan to Tackle Patent Application Backlog

By Carlyn Burton  AIPLA’s IP Practice in Latin America Committee recently sent a delegation to Rio de Janerio, which included committee member and Osha Liang partner, Ms. Carlyn Burton.  During this trip, the delegation met Mr. Claudio Vilar Furtado, President of Brazil’s Instituto Nacional da Propriedade Industrial (INPI) on August 22, 2019.  In particular, Mr. Furtado spoke to the delegation about two new resolutions issued...

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06

Sep 2019

USPTO Updates: Proposed New Fees and Fee Increases

By James Carlson  繁體中文 On July 31, 2019, the USPTO published a federal register notice[1] regarding changes to various USPTO fees.   In particular, the USPTO proposes three new fees: (1) a surcharge fee of $400 for filing a nonprovisional application in a non-DOCX format; (2) pro hac vice admission fees of $250; and (3) an annual patent practitioner fee ranging from $70 to $340. For...

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06

Sep 2019

AIA Inter Partes Review Is Not Unconstitutional to Pre-AIA Patents under the Fifth Amendment’s Takings Clause

By Peter Schechter 繁體中文 Since the Supreme Court’s decision in Oil States Energy Servs., LLC, v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365 (2018), various constitutional challenges have continued to be raised by patent owners whose pre-AIA patents have been cancelled in AIA Inter Partes Review (IPR) proceedings.  The U.S. Court of Appeals for the Federal Circuit (CAFC) has finally addressed one such challenge. ...

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06

Sep 2019

The Wisdom of Athena: Justices Criticize Current State of Patent Eligibility for Diagnostic Methods

By David Forman and James Carlson 繁體中文 Some of the most difficult problems in patent law today concern what can be patented.  Patent-eligible subject matter is defined in 35 USC § 101, but the Supreme Court has added some exceptions for abstract ideas, laws of nature, and natural phenomena.  These have led to controversy and uncertainty about what inventions can be protected by patents.  This...

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05

Aug 2019

U.S. Supreme Court Decision in Mission Product Resolves Issues Surrounding Trademark Agreements Rejected in Bankruptcy

By Califf Cooper and Keelin Hargadon 繁體中文 In Mission Product Holdings, Inc. v. Tempnology, LLC, No. 17-1657 (S.Ct. May 20, 2019), the U.S. Supreme Court issued a ruling that will have broad implications for licenses and other agreements in bankruptcy.  The Court held that agreements rejected by a debtor in bankruptcy are not terminated.  Instead, the non-debtor party retains whatever rights it would have under...

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05

Aug 2019

Supreme Court Curtails Judicial Deference to Agency Interpretations of Their Own Regulations

By David Forman 繁體中文 Regulations promulgated by administrative agencies sometimes have more than one reasonable interpretation. For example, a regulation may be ambiguous due to circumstances that were not anticipated when the regulation was originally written.  When confronted with an ambiguous regulation, Federal courts accept (“defer to”) an agency’s interpretation of its own regulations as long as the interpretation is based on a permissible construction...

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05

Aug 2019

Major Amendments to China’s Trademark Law regarding Malicious Registration and Trademark Misuse

By Han-Mei Tso 繁體中文 Malicious trademark squatting and trademark misuse have been significant problems for foreign companies doing business in China. Likewise, even local Chinese companies are being forced into unnecessary litigation or licensing negotiation due to the threats from trademark squatters. However, the recent amendments to the Trademark Law of the People’s Republic of China (“the Amendments”) made by the Standing Committee of the...

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05

Aug 2019

Iancu v. Brunetti: U.S. Supreme Court Holds the Lanham Act’s Ban on Registration of “Immoral or Scandalous” Trademarks Violates the First Amendment

By Tammy Dunn and Keelin Hargadon 繁體中文 In Iancu v. Brunetti, 588 U.S. __ (2019), the Supreme Court affirmed the Federal Circuit’s decision invalidating the statutory bar on registration for marks considered “immoral or scandalous.”  The Supreme Court’s reasoning was similar to its analysis in Matal v. Tam, 582 U.S. ___ (2017), in which the Supreme Court declared unconstitutional the Lanham Act’s ban on registering...

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05

Aug 2019

New Graphical User Interface (GUI) Protection in Japan

By Mutsumi Fukuoka 繁體中文 With the rapid spread of portable devices such as smartphones and tablet terminals in recent years, new protections are needed in Japan for user interface designs and functionality. In 2016, the Japan Patent Office (JPO) revised the Design Examination Guidelines to clarify that the Design Act protects displayed images necessary for performing functions of articles (corresponding to “manufactured articles” set forth...

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01

Jul 2019

Copyright before Contract: The Role of Copyright Preemption in Software Licensing

By James Carlson 繁體中文 In Universal Instruments Corp. v. Micro Systems Engineering, Inc., No. 17-2748 (2d Cir. May 8, 2019), an opinion from the U.S. Court of Appeals for the Second Circuit illustrates the fine line where contract terms may conflict with the U.S. Copyright Act.  Unlike with patents and trademarks, the Copyright Act provides an explicit preemption clause governing when a legal claim under...

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26

Jun 2019

New Graphical User Interface (GUI) Protection in Japan

By Mutsumi Fukuoka 繁體中文 Under Japanese law, graphical user interfaces (GUIs) are traditionally protected by the Patent Act in the same manner as other technologies.  For example, published Japanese Patent Application No. 2019-050004, assigned to Apple, Inc., discloses an electronic device that displays a special user interface.  In thisapplication, the special user interface displays different interface layers depending on different touch inputs to a touchscreen....

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26

Jun 2019

Major Updates to Canadian Trademark Law: Canada Joins the Madrid Protocol and More

By Keelin Hargadon 繁體中文 The Canadian trademark system underwent major changes on June 17, 2019.  The revisions to established trademark law bring the Canadian system closer to most other jurisdictions internationally by eliminating the use requirement for registration. Furthermore, Canada joined three key WIPO treaties: the Madrid System for the International Registration of Marks, the Nice Agreement, and the Singapore Treaty on the Law of...

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26

Jun 2019

Supreme Court Update: Government Agencies Is Not a “Person” That May Initiate Post-Grant Proceedings

By Kevin Kuelbs 繁體中文 In Return Mail, Inc. v. United States Postal Service, No. 17-1594 (June 10, 2019), the Supreme Court of the United States issued a 6-3 decision holding that a government agency is not a “person” eligible to challenge patents under the USPTO’s various post-grant trial proceedings. Prior to the passage of the Leahy-Smith American Invents Act (AIA), there were two administrative options...

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04

Jun 2019

Senior Officers of AIPPI Visit China to Further International Cooperation of Intellectual Property Protection

By Han-Mei Tso 繁體中文 Senior officers of the International Association for the Protection of Intellectual Property (AIPPI) visited China to further communication and cooperation between China and AIPPI in the field of intellectual property protection. Visiting delegates included Ms. Renata Righetti, AIPPI President, and Osha Liang’s Managing Partner, Mr. Jonathan Osha, Reporter General of AIPPI. On May 29, 2019, senior officers of AIPPI visited the...

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04

Jun 2019

Introduction to Prioritized and Expedited Patent Examination Procedures (Part Three) – Chapter of the United States –

By Ran Wang and Han-Mei Tso 繁體中文 Previously, Osha Liang Insights provided an overview of the prioritized patent examination procedures in China and Japan.  For the third part of this series, we will focus on the expedited patent examination procedures in the United States. The United States Patent and Trademark Office (USPTO) currently offers three programs that allow a patent applicant to petition for expedited...

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03

Jun 2019

Lack of Constitutional Standing to Appeal Makes Section 315(e) Estoppel Questionable

By Suzanne Lecocke 繁體中文 Does 35 U.S.C. § 315(e) estoppel apply when a party has no constitutional standing to appeal, even though it has a right to appeal under 35 U.S.C. § 319?  In AVX Corp. v. Presidio Components, Inc., Appeal No. 18-1106 (Fed. Cir. 2019), the Federal Circuit dismissed an appeal by AVX of a Final Written Decision ofthe U.S. Patent Trial and Appeal...

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03

Jun 2019

Consumers Have Standing under Illinois Brick to Sue Apple for Antitrust-Violating App Store Practices

By Mark Westwood and James Carlson  繁體中文 Consumers Have Standing under Illinois Brick to Sue Apple for Antitrust-Violating App Store Practices In Apple Inc. v. Pepper et al., No. 17–204, 587 U.S. ___ (2019), the Supreme Court of the United States affirms that consumers have legal standing under Illinois Brick Co. v Illinois, 431 U.S. 720 (1977), to sue Apple for alleged antitrust practices regarding...

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03

Jun 2019

Challenging Deference: An Analysis of Kisor v. Wilkie before the Supreme Court

By David Forman 繁體中文 An obscure veteran’s appeal that has reached the Supreme Court of the United States may have a profound affect on administrative law.  Kisor v. Wilkie, on appeal from the United States Court of Appeals Federal Circuit, challenges the way courts treat a federal agency’s interpretations of its own rules. Although Congress makes the laws, there are always gaps in administering the...

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01

May 2019

Introduction to Prioritized and Expedited Patent Examination Procedures (Part Two) Chapter of Japan

By Han-Mei Tso 简体中文 繁體中文 Previously, Osha Liang Insights provided an overview of the prioritized patent examination procedures in China (article link).  For the second part of this series, we will focus on the expedited patent examination procedures in Japan. Japan provides three types of expedited examination programs: Accelerated Examination, Preferential Examination, and Super Accelerated Examination.  Patent applications eligible for Accelerated Examination may include the...

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01

May 2019

CNIPA Publishes Proposed Amendments to Patent Examination Guidelines

By Han-Mei Tso 简体中文 繁體中文 On April 4, 2019, the China National Intellectual Property Administration (the “CNIPA”) published its Draft Amendments to the Patent Examination Guidelines (Draft for Comment) (the “Proposed Amendments”) to solicit public comments.[1] This amendment follows the previously amended Patent Examination Guidelines (the “Guidelines”) that took effect on April 1, 2017. The Proposed Amendments aim to improve efficiency and quality of patent...

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01

May 2019

Update on French Intellectual Property Law: French Parliament Passes “Action Plan for Business Growth and Transformation”

By Francesca Giovannini and Bertrand Clair On April 11, 2019, the French parliament passed a new bill titled “Action Plan for Business Growth and Transformation” (hereinafter “PACTE bill” based on French title of the legislation), which includes new legislative provisions affecting French intellectual property (IP) rights. Provisions of the PACTE bill are expected to enter into force on April 26, 2019 at the latest, and...

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02

Apr 2019

Over an Apple Barrel: Copyright Lawsuits Must Satisfy Registration Approach

By James Carlson In Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No. 17-571 (2019) (hereinafter “Fourth Estate decision”), the Supreme Court of the United States ended a split between the regional circuits over whether a copyright holder must first obtain a copyright registration from the United States Copyright Office (hereinafter “Copyright Office”), or if the act of filing an application for copyright registration was...

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02

Apr 2019

Important e-Commerce Venue Question Left Open – For Now

By Peter Schechter and Suzanne Lecocke 日本語 简体中文 繁體中文 Companies accused of patent infringement remain in limbo after the CAFC’s decision in In re: Google LLC, in which the CAFC declined to decide whether a company’s data servers located at independent Internet Service Provider facilities in a judicial district constitute that company’s “regular and established place of business” in that venue for patent infringement venue purposes....

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05

Mar 2019

Patent Reexamination Board Eliminated Amid CNIPA Reorganization

By Han-Mei Tso  简体中文 繁體中文 According to a notice issued by the China National Intellectual Property Administration (CNIPA) on February 14, 2019, the Patent Reexamination Board will be merged into the Patent Office of the CNIPA.  The Patent Reexamination Board was formerly a subordinate organization under the CNIPA.  However, after the merger, the Patent Office will be responsible for all duties formerly handled by the...

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05

Mar 2019

To Petition or Not to Petition: The Role of Statutory Estoppel on Later Patent Challenges

By Phillip Chambers & Peter Schechter When the America Invents Act (AIA) implemented post-grant proceedings for challenging patents in the United States in 2012, petitioners faced the risk that the AIA’s estoppel provisions could preclude subsequent validity challenges and defenses after unsuccessful proceedings.  For several years now, trial courts have been analyzing and defining the scope and extent that the AIA estoppel provisions limit or...

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05

Mar 2019

Supreme Court Requires Actual Copyright Registration To Sue

By Louis Bonham Resolving a circuit split, the Supreme Court on March 4, 2019, unanimously held that the Copyright Office must have issued a registration on a work for the copyright owner to sue for its infringement. The question before the Court in Fourth Estate Public Benefits Corp. v. Wall Street.com was whether a copyright owner may file suit as long as it has submitted...

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04

Feb 2019

Report on January meetings of the Global Dossier Task Force and the Industry Consultation Group

By Jonathan Osha On January 15 and 16, 2019, AIPLA participated in meetings of the IP5 Industry, the Global Dossier Task Force (GDTF), and the Industry Consultation Group (ICG) hosted by the European Patent Office in The Hague.  AIPLA was represented by Jonathan Osha, board liaison to the AIPLA Harmonization Committee. IP5 Industry met on January 15 to continue discussions on cooperation and work-sharing, and also...

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