News Room


24

Mar 2020

Impact of COVID-19 (novel coronavirus) Pandemic on EPO Operations

By Francesca Giovannini 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 extensions...

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24

Mar 2020

Patent Venue Statute Requires Presence of Defendant’s Employee or Agent in Judicial District

By Peter Schechter 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 must...

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24

Mar 2020

CAFC Says “Use IPR In Time Or Lose It”

By Peter Schechter 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 the...

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24

Mar 2020

Impact of COVID-19 (novel coronavirus) Pandemic on USPTO Operations

By Peter Schechter The United States Patent and Trademark Office (USPTO) considers the effects of coronavirus to be an “extraordinary situation” within the meaning of 37 CFR 1.183 and 37 CFR 2.146 for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners. Therefore, the USPTO is waiving petition fees in certain situations for customers impacted by the coronavirus. However, the USPTO cannot grant...

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24

Mar 2020

Claims may not be Cancelled for Indefiniteness in Inter Partes Review (IPR), but the Issue of Indefiniteness Will Continue to Arise

By Seema Mehta In Samsung Elec. Am., Inc. v. Prisua Eng’g Corp.,[1] the CAFC held that the Patent Trial and Appeals Board (PTAB) may not cancel claims in Inter Partes Review (“IPR”) on the basis of indefiniteness under 35 § USC 112.  At first glance this seems exactly the right answer:  Section 311(b) of the statute limits the grounds on which a petitioner can request an IPR to...

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24

Mar 2020

Osha Liang Announces Temporary Houston Office Closure

Early this morning, local officials announced a “stay-at-home” order to mitigate COVID-19 spread. In compliance with this directive, Osha Liang’s Houston office will temporarily close, effective March 24th at 11:59 pm. This restricted lock-down in Harris County will remain in place until April 3rd. As stated in a recent announcement (business continuity), our team is fully equipped and committed to providing uninterrupted service during this...

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20

Mar 2020

Unified Patent Court and European Patents with Unitary Effect: the German Federal Constitutional Court, more than Brexit, creates a stalemate situation

By Francesca Giovannini The German Federal Constitutional Court (Bundesverfassungsgericht) has today issued the long-awaited decision on the complaint filed against the Unified Patent Court (UPC) bills for infringement of the German Constitution. According to the decision, the Act of approval to the agreement on the UPC to confer sovereign powers on the UPC is void. The main reason underlying the decision resides in the fact...

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18

Mar 2020

Our Commitment to Providing Uninterrupted Service

We would like to inform you that all of our offices remain open and are actively working. In response to developments with COVID-19, Osha Liang has taken proactive measures to protect the health and well-being of our team, our clients, and the community at large. Our Hangzhou office colleagues started working remotely in January while colleagues at our Paris office have been working remotely since...

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10

Mar 2020

2020 Rising Star

Congratulations to Osha Liang Partner Carlyn Burton on being selected to the Super Lawyers 2020 Texas Rising Stars List. “Being selected to Rising Stars is limited to a small number of attorneys in each state. As one of the few attorneys to garner the distinction of Rising Stars, Carlyn Burton has earned the respect of peers as one of the top-rated attorneys in the nation.”...

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28

Feb 2020

U.S. Patent Will Expire 44 Years After Earliest Effective Filing Date Due to U.S. Army Secrecy Order

By Nelson Monterrosa 繁體中文 The U.S. Government uses secrecy orders to protect national security by preventing certain patent applications from being published, granted, or otherwise available to the public.  However, at least 21 companies have been sued for alleged infringement of a pre-TRIPs U.S. patent for which grant was delayed by 27 years due to a secrecy order.  In what one hopes is an extraordinarily...

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28

Feb 2020

Outbreak of Coronavirus: Impact on proceedings before the European Patent Office and the EPC member states

By Francesca Giovannini 繁體中文 As of today, February 28, no specific information relating to the worldwide outbreak of the Coronavirus has been issued by the European Patent Office (EPO). Nevertheless and because of this, while expressing solidarity with all people involved and wishing all our readers health, we would like to remind applicants, proprietors and opponents of European patents that some law provisions on time...

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28

Feb 2020

USPTO No Longer Accepting Requests to Participate in the IP5 PCT Collaborative Search and Examination Pilot Program

By Peter Schechter On January 3, 2020, the United States Patent and Trademark Office (USPTO) announced that it has reached the total number of applications that can be accepted for the IP5 Offices’ Patent Cooperation Treaty (PCT) Collaborative Search and Examination (CS&E) pilot program.  Each IP5 Office has set a target of accepting 100 PCT applications over the course of the two-year pilot program, and...

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28

Feb 2020

Enforcing Patents The Amazon Way

By Tammy Dunn and Lisa Margonis 繁體中文 For years, patent owners have struggled with what to do about infringers on Amazon and other online marketplaces.  The traditional answer has been to get an order from a court or other tribunal that has determined infringement and to present a copy of that order to the online marketplace.  For many, however, engaging in expensive protracted litigation in...

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28

Feb 2020

The Impact of Brexit on Patents in Europe

By Dr. Bertrand Clair 繁體中文 Shortly after the historic Brexit referendum on June 26, 2016, Theresa May, the Prime Minister at the time, said “Brexit means Brexit”. As of January 31, 2020, at midnight, the United Kingdom left the European Union (EU). What does Brexit mean for Patents in Europe? A withdrawal agreement has been concluded between the UK and the EU, setting a transition...

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25

Feb 2020

Osha Liang Sponsors First in Texas Tech Challenge Event

Osha Liang was pleased to join a number of corporate sponsors in supporting the ‘Girls Are First In Texas Luncheon’ hosted at the 2020 First Tech Challenge Central Texas Regional Championship held in New Braunfels, Texas. Osha Liang Patent Agent, Dr. Michael Maldei, coaches the all-girl robotics group ‘Club Oreo’ which is comprised of middle-school students. They are regular participants at local competitions and events....

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11

Feb 2020

Osha Liang Sponsors Compudopt’s ‘Women in Tech’ Event

On February 8th, non-profit Compudopt hosted their first ever ‘Women in Tech’ forum at their Houston headquarters. The event was attended by local students and a number of professional women who volunteered to assist. Students were able to participate in one-on-one discussions with mentors and enjoyed hands-on activities including a live demonstration of medical devices by Boston Scientific, and a visit to Compudopt’s refurb lab...

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06

Feb 2020

Women in IP: A Look Into Diversity & Inventorship

  On February 6th, Osha Liang Partner Carlyn Burton joined fellow panelists, Katherine Franco (partner at Blank Rome), Lydia Evans (owner of SW&G Essentials),  and moderator, Hope Shimabuku (Regional Director of Texas Regional USPTO) for a presentation on, “Women in IP Law: A Look into Diversity & Inventorship.” This was just one session of a 3-day event (33rd Annual Course: Advanced Intellectual Property Law) hosted...

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05

Feb 2020

Texas State Bar Hosting 33rd Annual Course on Advanced Intellectual Property Law.

Osha Liang Partner Carlyn Burton joins panelists, Katherine Franco (Blank Rome) and Lydia Evans (SW&G Essentials) for their presentation titled, “Women in IP Law: A Look into Diversity & Inventorship.” Ms. Burton looks forward to addressing how companies can move the needle in the number of woman inventing in the United States. Course Director Hope C. Shimabuku, (Regional Director Texas Regional USPTO) will moderate the...

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04

Feb 2020

Changes in the Guidelines for Examination

The European Patent Office (EPO) has recently published the annual update of its Guidelines of Examination (hereinafter “EPO update”), which will come into force on November 1st, 2018.  In particular, the EPO update includes changes to unity of invention requirements and the patentability of mathematical methods. Changes to Unity of invention Requirements: Under the European Patent Convention (EPC), a European patent application must relate to...

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31

Jan 2020

The New Year Gift from CNIPA: Amendments to Patent Examination Guidelines

By Han-Mei Tso 繁體中文 The China National Intellectual Property Administration (CNIPA) on the very last day of 2019 sent out to the IP community its new year gift – an official announcement of amendments to the Patent Examination Guidelines (hereinafter the “Guidelines”) to be effective as of February 1, 2020.  The amendments were announced only a few months after the CNIPA previously published extensive amendments...

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31

Jan 2020

Petition Denied: The United States Supreme Court Refuses to Reconsider Patent Eligibility Jurisprudence

By James Carlson On January 13, 2020, the Supreme Court of the United States denied certiorari in three pending cases:  Athena Diagnostics, Inc. v. Mayo Collaborative (19-430) (hereinafter “Athena”), HP Inc. v. Berkheimer (18-415) (hereinafter “Berkheimer”), and Hikma Pharmaceuticals USA Inc. v. Vanda Pharmaceuticals Inc. (18-817) (hereinafter “Hikma Pharmas”).  Afterwards, the Supreme Court again denied similar petitions on January 27, 2020, in Trading Technologies Int’l. v. IBG...

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31

Jan 2020

Software Specially Designed To Automate the Analysis of Geospatial Imagery Added to U.S. Export Control List

By Anna C. Domask, Ph.D. 繁體中文 On January 6, 2020, the U.S. Department of Commerce announced an interim final rule pertaining to “software specially designed to automate the analysis of geospatial imagery.”  Software falls under this regulation when it: 1) “provides a graphical user interface” where a user indicates “positive and negative samples of an object of interest, 2) uses “scale, color, and rotational normalization...

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27

Jan 2020

From Petroleum to Patents

By David Madio, Ph.D. 繁體中文 One unanticipated thing I’ve learned is that careers often go in directions one would have never imagined.  I’m glad to report, however, that the unexpected path has been filled with more enjoyment than I ever could have dreamed.  And none of the steps have ultimately been wasted, each one making a subsequent one possible. Briefly, my career path began with...

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14

Jan 2020

Introducing our new Managing Partner: Jeffrey Bergman

繁體中文 Osha Liang is pleased to announce the election of Jeffrey Bergman as the new Managing Partner of Osha Liang LLP, effective immediately. Jeffrey Bergman joined the firm in 1999 as a recent graduate from the Master’s program in Chemistry at Cornell University.  He participated in the firm’s Patent Agent Training Program, and thereafter attended law school at night while working full-time as an agent. ...

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07

Jan 2020

In AIA Validity Challenges, Patents Are Better Prior Art Than Printed Publications

By Peter Schechter Anyone other than the Patent Owner may request cancellation as unpatentable one or more claims of a U.S. patent in an Inter Partes Review proceeding.  The America Invents Act, in 35 U.S.C. Section 311(b), provides that an IPR Petitioner may challenge patentability “only on a ground that could be raised under section [35 U.S.C Section] 102 (anticipation) or 103 (obviousness) and only...

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03

Jan 2020

Are State Legal Texts with Annotations Copyrightable? The U.S. Supreme Court to Decide in Georgia v. Public.Resource.Org

By Califf Cooper 繁體中文 The Supreme Court recently heard oral arguments to decide whether Georgia’s annotated version of the Georgia legal code is protected by copyright.  The case stems from Public.Resource.Org publishing the full annotated version of the code online and Georgia’s subsequent case for copyright infringement. The State of Georgia contracted with LexisNexis to produce and publish the annotated version of the state’s legal...

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10

Dec 2019

USPTO’s Administrative Patent Judges Not Constitutionally Appointed

By David Forman The Appointments Clause of the U.S. Constitution governs the appointment of “Officers of the United States.”  U.S. Const. art. II, §2, cl. 2 provides: [The President] shall nominate, and by and with the Advice and Consent of the Senate, shall appoint Ambassadors, other public Ministers and Consuls, Judges of the supreme Court, and all other Officers of the United States, whose Appointments...

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