News Room


01

Aug 2018

The First Case in China Using Blockchain Technology to Preserve Electronic Evidence

By: Han-Mei Tso and Jude Yi On June 28, 2018, the Hangzhou Internet Court of China (the “Court”) made a public judgment regarding a dispute over infringement of the right to disseminate work on the Internet.  In this judgment, the Court accepted the use of electronic data as evidence preserved by blockchain technology in a legal dispute while also specifying a method and process for...

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01

Aug 2018

WTO Stomps Out Challenges to Australia’s Tobacco Plain Packaging Laws

By: Califf Cooper The World Trade Organization (WTO) awarded Australia a big victory over the challenges to its plain packaging laws for tobacco products by a handful of tobacco producing countries.  After a seven year fight, the WTO rejected the arguments that plain packaging laws infringed on trademarks and intellectual property rights. In December 2011, the Australian government proposed the Tobacco Plain Packaging Act that...

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01

Aug 2018

Update #2 on Tribal Sovereignty at the PTAB

By: Suzanne Lecocke The U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed the Patent Trial & Appeal Board’s (PTAB’s) denial of Allergan’s motion to terminate an inter partes proceeding (“IPR”) on the basis of tribal sovereign immunity.[1]   Allergan’s “trick”[2] of using sovereign immunity to cut off invalidity challenges has not worked at the district level, at the PTAB, or at the Federal...

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01

Aug 2018

Inherent Disclosures in Prior Art in the United States

By: Emily Marie Boggs A patent claim may be rejected under 35 USC § 102 as being anticipated by a prior art reference if each and every element of the claim is disclosed by the prior art reference, either expressly or inherently.  According to the inherency doctrine, a prior art reference inherently discloses a claim limitation when “the limitation at issue necessarily must be present,...

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01

Aug 2018

Incorporated by Reference, But to What Extent?

By: Ko Nakamura Incorporation by reference is a useful mechanism by which an application can incorporate disclosure from other documents as if the disclosure was explicitly contained therein without having to repeat the disclosure in the application.  “To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the...

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18

Jul 2018

2018 AIPLA Annual Meeting Sponsors

Osha Liang is sponsoring the 2018 American Intellectual Property Association (AIPLA) Annual Meeting in Washington, DC on October 25-27, 2018. For more information, please visit the organization’s website here.


18

Jul 2018

Participation in the 2018 China Patent Annual Conference in Beijing

In his role as First Deputy Reporter General of AIPPI, Jonathan Osha is speaking in a breakout panel session at the China Patent Annual Conference (CPAC) 2018.  The event takes place on August 30-31, 2018 in Beijing, China.  The panel is titled, “Obtaining Strong Patents Internationally” and a brief description of the panel topic can be found below: In today’s environment, obtaining patents in foreign countries is vital...

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02

Jul 2018

PCT Working Group in Geneva on June 19

In his role as Deputy Reporter General of AIPPI, partner Jonathan Osha addressed the PCT Working Group at WIPO in Geneva on the issue of incomplete and erroneously filed parts of applications on June 19, 2018. Pictures from the event:


29

Jun 2018

The Significance of “Could” vs. “Would” When Assessing Obviousness Rejections

By: Zachary Schaefer, Francesca Giovannini, Han-Mei Tso, and Mutsumi Fukuoka USPTO PERSPECTIVE United States patent law does not allow the patenting of an invention if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the...

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29

Jun 2018

USPTO’s PTAB Issues “Frequently Asked Questions” Regarding Impact of Supreme Court’s SAS Institute v. Iancu Decision, But Provides Few Truly Useful Answers

By: Peter Schechter Earlier this year, the U.S. Supreme Court ruled that the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office was required to either institute Inter Partes Review (IPR) of all challenged claims on all grounds raised, or not, in response to a petition challenging claims of a US patent on grounds of unpatentability.  The PTAB’s practice of “partial...

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29

Jun 2018

Patent Damages Award May Include Foreign Lost Profits Under Certain Limited Circumstances

By: Peter Schechter A damages award under 35 U.S.C. § 284 for infringement under § 271(f)(2) may include foreign lost profits, regardless of the presumption against extraterritorial reach of federal statutes, the U.S. Supreme Court held in a 7-2 decision on June 22, 2018. WesternGeco LLC  v. Ion Geophysical Corp., ___ U.S. ___, No. 16-1011 (June 22, 2018).  The Court noted that the relevant conduct,...

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29

Jun 2018

JPO Published Guidance of Examination of IoT Technology

By: Mutsumi Fukuoka On June 15, 2018, the Japanese Patent Office (JPO) published Guidance of Examination of IoT (Internet of Things) technology on their website. Although patent applications related to IoT technology have been examined according to the existing Examination guidelines without issues, the Guidance was prepared because development and practical implementation of IoT technology has been rapidly increasing in Japan in recent years. The...

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29

Jun 2018

IP5 Pilot Project on Collaborative Search and Examination Under the PCT

By: Yann Gloaguen On July 1st 2018, the IP5 Offices launched the second phase of a pilot project aimed at testing and further developing the concept of Collaborative Search Examination (CS&E), a collaboration effort amongst the five “IP5 Offices”, i.e. the United States Patent and Trademark Office (USPTO), the State Intellectual Property Office the People’s Republic of China (SIPO), the Japan Patent Office (JPO), the...

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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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15

Jun 2018

Osha Liang Ranked Again in IAM Patent 1000

For the second year in a row, Osha Liang was recognized by Intellectual Asset Management (IAM) Patent 1000 as one of the top patent firms in Texas.  Osha Liang’s intellectual property practice achieved a “highly recommended” overall ranking and was recognized in the category of prosecution.  Additionally, Partner Jeffrey Bergman was also named a top individual in patent prosecution. IAM Patent 1000 has fast become...

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01

Jun 2018

NanKang IC Design Incubation Center “Startup Series” Presentation on June 8

Partners Han-Mei Tso and Yuichi Watanabe will be presenting at the NanKang IC Design Incubation Center’s Startup Series#9: Business Secret Management That You Must Know.  The seminar will take place at the NanKang IC Design Incubation Center in Taipei, Taiwan on Friday, June 8 from 1:30-4:30pm. They will share their experience through practical cases while focusing on how to manage business secrets to reduce infringement,...

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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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16

May 2018

Introduction to Intellectual Property: What Every Business Owner, Consultant, and Non-IP Lawyer Needs to Know about Patents, Copyrights, Trademarks, and Trade Secrets

Osha Liang is hosting a seminar on “Introduction to Intellectual Property: What Every Business Owner, Consultant, and Non-IP Lawyer Needs to Know about Patents, Copyrights, Trademarks, and Trade Secrets”.  Managing Partner Jonathan Osha and Litigation Partner Tammy Dunn are covering the following topics in this one-hour informative seminar: What are the different types of intellectual property (IP)? How are these rights protected and what are the costs...

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09

May 2018

URGENT POST-GRANT PRACTICE UPDATE

The USPTO has published a proposal today to change the way claims in unexpired patents are interpreted in AIA post-grant validity challenges (including IPR, PGR, CBMR) in the Patent Trial and Appeal Board (PTAB). Currently, claim terms are given their “broadest reasonable interpretation” consistent with the patent specification (“BRI standard”). The USPTO proposes to use the same claim interpretation approach used in U.S. federal district courts, construing...

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