News Room


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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04

Feb 2019

Joined Parties to an Inter-Partes Review Have Right to Appeal

By Jonathan Osha Research Corporation Technologies, Inc. (“RCT”) owns U.S. patent Re 38,551 (“the ’551 patent”) that has 13 claims drawn to certain enantiomeric compounds and pharmaceutical compositions useful for treatment of epilepsy.  Argentum Pharmaceuticals LLC (“Argentum”) petitioned for inter partes review of the ’551 patent on 8 grounds.  The Board instituted review on two grounds: obviousness of claims 1-9 over Kohn 1991[2] and Silverman[3],...

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04

Feb 2019

Supreme Court Turns Back the Clock on Prior Art in the U.S.

By Jonathan Osha  On January 22, 2019, the U.S. Supreme Court issued a unanimous decision in Helsinn v. Teva,[1] holding that non-public or confidential sales of inventions that are “ready to be patented” continue to qualify as prior art despite the changes that were made to §102 by the Leahy-Smith America Invents Act (AIA). Prior to the AIA, 35 U.S.C. §102 defined the “on sale...

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01

Feb 2019

China to Increase Damages for Patent Infringement

By Han-Mei Tso 简体中文 繁體中文 Following the third revision of the Patent Law of the People’s Republic of China (hereinafter “Patent Law”) in 2008, China is expected to proceed with a fourth revision of the Patent Law this year.  The Chinese government is now soliciting opinions from the public for a Proposed Amendment to the Patent Law of the People’s Republic of China (hereinafter “Proposed...

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01

Feb 2019

Obviousness-Type Double Patenting Does Not Invalidate Patent Term Extensions

By Payal Majumdar 日本語 简体中文 繁體中文 In Novartis AG v. EZRA Ventures LLC, No. 2017-2284 (Fed. Cir. Dec. 7, 2018), the U.S. Court of Appeals for the Federal Circuit affirms the Delaware district court’s final judgment concerning patent term extensions and the interplay with the obviousness-type double patenting doctrine.  In this court decision, the Federal Circuit found that in accordance with statutory construction principles and...

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01

Feb 2019

Beating the Odds in IPRs

By Tammy J. Dunn 日本語 简体中文 繁體中文 Osha Liang is pleased to announce a recent series of victories on behalf of a firm client and patent owner in three inter partes review proceedings (“IPRs”) pending before the United States Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”).  Earlier this month, the PTAB issued Final Written Decisions in all three IPRs, finding that out...

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10

Jan 2019

The USPTO Issues Revised Guidance on Finding Claims Directed to a Judicial Exception

By James Carlson On January 7, 2019, the USPTO published a Federal Register notice (hereinafter “Revised Guidance”)[1] revising various patent examination procedures relating to subject matter eligibility.  In particular, the Revised Guidance changes how examiners must analyze claims to determine if they are “directed to” a judicial exception under Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014).  Specifically, the Revised Guidance introduces a...

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04

Jan 2019

Osha Liang and Shaanxi OEIC Successfully Hosted Salon Event “Strategy for International Patent Portfolio”

By Han-Mei Tso 简体中文 繁體中文   On December 6, 2018, the salon event “2018 Strategy for International Patent Portfolio” was held at the Shaanxi Institute of Advanced Optoelectronics Integrated Circuit Technology (“Shaanxi OEIC”). The event, co-hosted by Osha Liang and Shaanxi OEIC, was supported by Chiptronic Future Platform, Beijing Innotrack IP Law Firm, and Shaanxi Optoelectronic Integrated Industry and Technology Innovation Strategic Alliance.  In attendance...

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04

Jan 2019

Osha Liang Hangzhou Representative Office Joined the Hangzhou High-tech Zone (Binjiang) Intellectual Property Service Industry Alliance

By Han-Mei Tso   The inaugural meeting of the Hangzhou High-tech Zone (Binjiang) Intellectual Property Service Industry Alliance (the “Alliance”) was held on November 21, 2018, and chaired by Ms. Tang Yin, the director of the Science and Technology Bureau of Hangzhou High-tech Zone (Binjiang). Osha Liang’s Hangzhou Representative Office, was the only representative office of a U.S. intellectual property law firm in Zhejiang Province,...

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04

Jan 2019

Introduction to Prioritized and Expedited Patent Examination Procedures (Part One) Chapter of China

By Han-Mei Tso 简体中文 繁體中文   In today’s business world, companies often have to face fierce commercial competition with rapidly developing technologies.  Thus, the ability to obtain patents quickly provides a clear advantage over the competition. Moreover, patents can enhance corporate value by contributing to a comprehensive patent portfolio, while also generating interest from potential investors.  In this context, this issue of Osha Liang Insights...

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