News Room


01

Oct 2018

Not Simply Renamed – “SIPO” becomes “CNIPA”

By: Han-Mei Tso On September 3, 2018, the State Intellectual Property Office of China announced on its website[1] that the English name of the Chinese governmental body has changed from the “State Intellectual Property Office” (“SIPO”) to the “China National Intellectual Property Administration” (“CNIPA”).  Accordingly, the agency’s English abbreviation of the bureau has changed from “SIPO” to “CNIPA” as well.  The website domain has also...

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01

Oct 2018

Osha Liang Hosts “Strategy for International Patent Procurement” Seminar in Hangzhou

On August 31, 2018, Osha Liang’s Hangzhou Office co-hosted a seminar on “Strategy for International Patent Procurement” at the Overseas Talents Innovation Base of Binjiang District (the “Base”) in Hangzhou, China.  The seminar was aimed at helping start-up companies strategically plan overseas market development by enhancing their commercial competitiveness and expanding their international vision.  Ms. Han-Mei Tso, the chief partner in Osha Liang’s Hangzhou Office,...

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01

Oct 2018

New French Provisions Impacting National Intellectual Property Rights

By: Francesca Giovannini New legislative provisions affecting French intellectual property (IP) rights are under discussion.  In particular, these provisions are contained in a proposed law known as “Action Plan for Business Growth and Transformation” (in French: PACTE) currently examined by the parliament and in a decree the government intends to issue shortly.  Once the bill is finalized and passed and the decree is issued, the...

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01

Oct 2018

U.S. CAFC’s Solidified Decision of the Interpretation of Inter Partes Review (IPR) Time Bar under 35 U.S.C. § 315(b)

By: Yen-Kai (Eldwin) Hseu The U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) recently decided the case Luminara Worldwide, LLC v. Iancu, No. 17-1629 (Fed. Cir. 2018).  The Luminara Worldwide decision provides important insight into the Federal Circuit’s interpretation for the Inter Partes Review (IPR) time bar under 35 U.S.C. § 315(b). The IPR time bar provision of the America Invents Act, 35...

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01

Oct 2018

The Music Modernization Act: A Copyright Update for a Digital Age

By: Louis Bonham and James Carlson The United States Congress has passed the Orrin G. Hatch Music Modernization Act of 2018 (“MMA”), which now heads to President Trump for his signature.  The U.S. Senate renamed the bill in honor of retiring Republican Senator Orrin Hatch, the bill’s sponsor and also a fellow songwriter. The bill includes a previous version of the MMA passed by the U.S....

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01

Oct 2018

A Trademark within a Copyright: 9th Circuit Clarifies Trademark Rights in Expressive Works

By: John Montgomery and James Carlson Courts typically use a test set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (“Rogers”), to determine whether artistic expression under the First Amendment of the U.S. Constitution overrides application of traditional trademark rights. If use of the trademark in the work does not add expressive value to the work that is protectable by the First amendment,...

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01

Oct 2018

Powerful Technique Promises to Revolutionize Biotechnology

By: David Forman A powerful technique promises to revolutionize biotechnology.  With the clumsy name of CRISPR-Cas9, this method enables rapid and convenient editing of genes with potential applications for medicine, agriculture, and other technologies.  The Federal Circuit recently resolved a dispute over patent rights to this gene-editing method.[1]  The competing parties were a group in Boston (The Broad Institute, MIT, and Harvard) (“Broad”) and the...

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10

Sep 2018

11th Annual Comp-U-Dopt Oktoberfest Celebration on October 18, 2018

Osha Liang is proud to support Comp-U-Dopt and its 11th Anniversary Oktoberfest Celebration on October 18th from 6:30-10:00 p.m. at their warehouse located at 1602 Airline Drive in Houston.  Celebrate the achievements of Oktoberfest this year with good food, great beer, and all your friends while giving back to underserved kids in the Houston community.  Highlights for the event include live music by The Sundogs,...

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10

Sep 2018

Jonathan Osha and Jeffrey Bergman Once Again Named Texas Super Lawyers

Osha Liang is pleased to announce that two attorneys at the firm have been selected as 2018 Thomson Reuters Texas Super Lawyers©. The firm’s honorees are Managing Partner Jonathan P. Osha and Partner Jeffrey S. Bergman. Both were recognized in the Intellectual Property and Intellectual Property Litigation categories. This is the 13th consecutive year that Mr. Osha and the 3rd consecutive year that Mr. Bergman have earned...

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31

Aug 2018

Patent Subject Matter Eligibility Six Months after Berkheimer v. HP Inc.

By: James Carlson In February 2018, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (hereinafter “Berkheimer decision”).  The Berkheimer decision may prove to be the most important U.S. court case regarding patent subject matter eligibility since the Supreme Court’s opinion in Alice Corp. v. CLS Bank Int’l., 134 S.Ct. 2347...

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31

Aug 2018

2018 Annual Statistics Report by the Japan Patent Office

By: Mutsumi Fukuoka On July 30, 2018, the Japan Patent Office (JPO) released its “2018 Annual Report” (in Japanese only). The 2018 Annual Report provides a comprehensive compilation of statistics on intellectual property (IP).  In this article, we will update our newsletter of July 2017 by highlighting some of the important features of patent statistics from the JPO Annual Report 2018. PCT International Applications Continue...

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31

Aug 2018

Simple Laws (Sometimes) Have Simple Meanings

By: Peter Schechter The Court of Appeals for the Federal Circuit (CAFC), sitting en banc, has decided that the statutory phrase “served with a complaint” – which appears in a time bar provision regarding Inter Partes Review (IPR) means, quite simply: served with a complaint.  The statute is not concerned with any effect, or lack of effect, of such service of a complaint.  Nor is...

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31

Aug 2018

If You Participate in Standards-Setting Orgs., Disclose Your IP Rights Early & Often, or Quit the Org.

By: Peter Schechter In 2011, Rambus was cleared of allegations of improper conduct in connection with its participation in standards-setting organizations (SSO).  There, Rambus owned patent applications relating to proposed technical standards under consideration, but there was not clear and convincing evidence that any claims of any pending applications were necessarily infringed by the proposed standards.  Rambus withdrew from the SSO and then, after it...

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16

Aug 2018

Jonathan Osha Receives Best Lawyers in America 2019 Recognition

Managing Partner Jonathan Osha was recently selected by his peers for inclusion in The Best Lawyers in America© 2019 in the fields of Litigation: Patent and Patent Law.  He has been recognized in the field of Litigation: Patent since 2018 and in Patent Law since 2014. ABOUT BEST LAWYERS Since it was first published in 1983, Best Lawyers® has become universally regarded as the definitive guide to legal...

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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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