News Room


30

Jul 2020

European Patent Office Postpones Oral Proceedings in Opposition Through 2020

By Francesca Giovannini On 29 July 2020, the European Patent Office (EPO) announced the postponement until further notice of all oral proceedings in opposition scheduled until 31 December 2020 which have not either (1) already been confirmed to take place by videoconference or (2) will be held by videoconference with the parties’ consent. As to oral proceedings in examination, these will continue to be held...

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28

Jul 2020

Personal Jurisdiction Uncertain Based on Stream of Commerce: Part II

By Suzanne Lecocke 繁體中文 This article is Part II of a 3-part article discussing whether the stream of commerce theory may still be used to establish personal jurisdiction over a non-resident defendant.  Part II provides the backdrop for Part I and generally addresses personal jurisdiction, due process, the origin of the stream-of-commerce theory as it relates to personal jurisdiction, and how the interaction of these...

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28

Jul 2020

The Dwindling Usefulness of AIA Post Grant Review

By Peter Schechter 繁體中文 Recent changes to procedures of the Patent Trial and Appeal Board of the USPTO, coupled with decisions of both the United States Supreme Court and the Court of Appeals for the Federal Circuit, have diminished both the usefulness and desirability of challenging patent validity in a Post Grant Review (PGR) proceeding.  PGR’s usefulness has dwindled due to: (1) increased legal fees,...

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28

Jul 2020

U.S. Supreme Court Rules That GENERIC.COM Trademark Format is not Registrable Only if the Term Has That Generic Meaning to Consumers

By Michael J. Adams Ph.D. & Keelin Hargadon 繁體中文 Under U.S. trademark law, generic terms are not eligible for federal registration because registration gives a mark owner the right to exclude others from use of the term.  By way of example, a generic term is the name of a class of goods or services, for example, “bleach” or, in the case at hand, “online hotel...

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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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01

Jul 2020

China’s Supreme People’s Court Limits the Application of “Functional Features” Patent Claim Interpretation

By Hailong Sun 繁體中文 China’s IP Tribunal of Supreme People’s Court limited application of the “functional features” method of claim interpretation in an appeal of a case filed in Shanghai IP Court by foreign company Valeo Systemes D’Essuyage relating to vehicle windscreen wiper technology.  The appeal decision brings patent claim interpretation in China closer to the way that claims are construed in Europe and the...

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01

Jul 2020

Impact of Shifting Burden of Proof Provision for Trade Secret Civil Proceedings in the US-China Economic and Trade Agreement and China’s Most Recent Response

  By Han-Mei Tso 繁體中文 After more than two years of negotiations, China and the United States in January 2020 signed the Economic and Trade Agreement.  As a result of “phase 1,” the Trade Agreement sets forth the provisions relating to intellectual property in Chapter 1, indicating a fundamental consensus between the countries on strengthening the protection of intellectual property.  Following the general obligations set...

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01

Jul 2020

EPO Continues Suspension of Late Fees to Help Applicants in the COVID-19 Pandemic

By Francesca Giovannini 繁體中文 The European Patent Office issued a notice dated 29 May 2020 concerning the temporary suspension of the application of the additional fee for belated payment of a renewal fee for a European patent application. The European Patent Office (EPO) issued a notice dated 29 May 2020 concerning the temporary suspension of the application of the additional fee for belated payment of...

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11

Jun 2020

Osha Liang LLP Ranked on IAM Patent 1000 List of “The World’s Leading Patent Professionals 2020′

Osha Liang LLP was recognized on the IAM Patent 1000 list of “The World’s Leading Patent Professionals 2020.’ Osha Liang’s Global Chair Jonathan Osha, and Managing Partner Jeffrey Bergman were among the individuals ranked on the list of highly recommended professionals in the field of patent prosecution. According to IAM Patent 1000: “the IAM Patent 1000 is commonly regarded as the definitive ‘go-to’ resource for those seeking...

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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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20

Apr 2020

Master Class | Copyright Training Series

The American Institute of Building Design partners with Louis K. Bonham, Of Counsel at Osha Liang, to present a series of lectures which focus on addressing copyright issues. Mr. Bonham has extensive experience in advising architects, designers, builders, and developers in architectural copyright matters and in litigating architectural copyright cases. He frequently speaks on copyright and intellectual property law to industry groups such as the National...

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16

Apr 2020

WIPO-AIPPI Joint Webinar

On April 16, 2020, WIPO and AIPPI held a joint webinar featuring presentations by five senior WIPO members. Topics covered included: latest developments in trademarks, designs and GIs on the PCT, Madrid and Hague systems, as well as on intellectual property enforcement. The session was moderated by Osha Liang’s Global Chair and current AIPPI Reporter General, Jonathan Osha.


14

Apr 2020

Well played, Russell Westbrook!

During a press conference held on April 13, 2020, Houston Mayor Sylvester Turner announced that Russell Westbrook (point guard for the Houston Rockets) was collaborating with local nonprofit Compudopt in making an immediate donation of 650 computers to distribute to underprivileged kids. Compudopt was founded in 2007 by Jonathan Osha; he and Osha Liang partner Carlyn Burton currently serve on the nonprofit’s board of directors....

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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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