News Room


30

Jan 2018

New Decision from EPO Enlarged Board of Appeal G1/16 Regarding Disclaimers

By: Francesca Giovannini A disclaimer is a “negative” feature, i.e., a feature describing elements and characteristics that the claimed subject-matter does not have. An amendment based on a disclaimer, as any amendment made to a European patent application or patent, has to comply with the requirements of Art. 123(2) EPC (added subject-matter). For example, when a claim referencing a composition which comprises a metal element...

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30

Jan 2018

Intellectual Property Policy Promotion & Intellectual Property Service Introduction Conference of Hi-tech District (Binjiang), Hangzhou

By: Han-Mei Tso The Intellectual Property Policy Promotion and Intellectual Property Service Introduction Conference of the Hi-tech District (Binjiang), Hangzhou (the “Conference”) was held on January 5, 2018 at “Intelligent e-Valley” in Binjiang District. More than 200 people from enterprises, as well as intellectual property service institutions and agencies in the Hi-tech District, attended the Conference. Mr. Chunmin Yang, the Associate Counsel of Science and...

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28

Jan 2018

U.S. Federal Circuit Announces IPR Time Bar is Reviewable on Appeal

By: Tammy Dunn Approximately one year ago, Osha Liang reported in its newsletter that the United States Court of Appeals for the Federal Circuit in Wi-Fi One LLC v. Broadcom Corp., Case No. 2015-1944, agreed to review the issue of whether patent owners in inter partes review proceedings (IPRs) can appeal decisions by the United States Patent & Trademark Office’s Patent Trial and Appeal Board...

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25

Jan 2018

EU Approach to Standard Essential Patents

By: Catherine Caspar and Elsa Benveniste Our technological era is founded on multiple standards. For example, each and every mobile phone and computer depends on telecommunication standards to communicate with other devices. Standardized technology can—and often does—incorporate proprietary technologies covered by patent rights. Such patent rights are often designated as “Standard Essential Patents” (or “SEPs”) since implementation of the patented invention is essential to comply...

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18

Jan 2018

2018 AIPLA IP Practice in Japan Pre-Meeting

Osha Liang is sponsoring the 2018 IP Practice in Japan Pre-Meeting during the AIPLA Mid-Winter Institute in La Quinta, CA. The Pre-Meeting begins with breakfast on Tuesday, January 23rd at 9:00 am and ends on Wednesday, January 24th at 12:00 pm.  Presentations will be provided by a number of organizations including the Japan Patent Attorneys Association (JPAA) and the International Association for the Protection of Intellectual Property in Japan...

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16

Jan 2018

USPTO Fees On the Rise – Effective 1/16/18

Effective, January 16, 2018, the United States Patent and Trademark Office (USPTO) increased certain fees relating to patent examination and post grant proceedings.  The increase in filing fees affects items such as basic filing fees in utility patents, patent search filing fees, post allowance fees, and Patent Trial and Appeal fees.  While most fees increased by around 10%, certain fees such as Information Disclosure Statements...

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10

Jan 2018

2018 Discover IP Japan Conference

Partners Yuichi Watanabe and Peter Schechter are speaking at the Discover IP Japan Conference organized by the Japan Patent Attorneys Association (JPAA) at The Houston Club on January 30, 2018 from 10:00am – 3:00pm.  The conference is sponsored by the Houston Intellectual Property Law Association (HIPLA) and is aimed at introducing the Japanese IP system to U.S. practitioners and companies.  Lunch will be provided, as well...

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30

Dec 2017

Practice Pointer: When is “When”?

By: Jonathan P. Osha It is common to see the word “when” used in U.S. patent claims.  However, it is also common to see a disconnect between the meaning intended by the applicant and the meaning given by the examiner at the USPTO (and perhaps by a court during litigation).  This Practice Pointer will attempt to clarify the meaning and proper usage of this common...

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29

Dec 2017

Do You Own What You Think You Own? Part I: Patent Assets, Sales, and Good Faith Purchaser

By: Aron T. Griffith One aspect of managing a global patent portfolio is understanding what patents you have.  Likewise, when acquiring a patent portfolio, it is important to understand what patents you are buying. Asset purchase agreements often simply refer to an attached schedule of patents, and may or may not list all family members.  Oversimplified, “Company A conveys to Company B all of the...

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23

Dec 2017

Pleading Standards Revisited

By: Califf Cooper The U.S. Federal Circuit provided some additional insight into the pleading standard for direct and indirect patent infringement claims in a recent decision, Lifetime Industries, Inc. v. Trim-Lok, Inc., 2017-1096, (Fed. Cir. Sept 7, 2017). Lifetime sued Trim-Lok in the Northern District of Indiana for direct and indirect patent infringement of U.S. Pat. No. 6,966,590 (the ’590 patent).  The ’590 patent relates...

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15

Dec 2017

Brazilian Government Considers Adopting Simplified Procedure for Granting Patents Without Substantive Examination

By: Guest Authors Saulo Calazans and Ivan Ahlert, partners of Dannemann Siemsen The Brazilian Ministry of Industry, Foreign Trade and Services (MDIC) and the National Institute of Industrial Property (INPI) announced the imminent entry into force of regulations for a simplified procedure for the allowance of patent applications. This initiative aims at addressing the considerable existing patent examination backlog. The proposal as submitted to public...

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02

Dec 2017

Applicants May Save Money By Paying Fees to the EPO By Credit Card

By: Francesca Giovannini As a part of its ongoing drive to fully digitize all patent processes, the European Patent Office (EPO) has decided to no longer accept written instructions for payment of patent fees starting December 1, 2017. Debit orders are now accepted and only processed electronically using Online Filing (EPOLINE), new online filing (CMS), Online Fee Payment, or ePCT. The payment option via bank transfers remains unaffected.  More notably, the EPO has newly introduced a web-based method of payment by credit card. Users of the new...

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30

Nov 2017

Certifying Priority Electronically: Updates to the USPTO’s PDX Program

By: Kevin Kuelbs The Priority Document Exchange (“PDX”) streamlines the process for transmitting priority documents among participating patent offices worldwide by providing electronic access.  Utilizing the PDX allows applicants to avoid fees for obtaining certified copies of priority documents and the incidental costs associated with transmitting and filing priority documents with the appropriate patent office. Agreements to transmit documents via the electronic PDX exist between...

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30

Nov 2017

Improvements in Wearable Optics Lead to Stretchy Optical Fiber Sensors

By: Nelson Monterrosa Wearable sensor research has increased in the last years. The expansion of wearable technologies encourages the development of more efficient sensors for collecting and processing data from the real world. Small wearable sensors allow researchers to track body motion more efficiently. Wearable sensors applications range from allowing physicians to monitor life-threatening conditions to improving the quality of animations in video games. Efficient...

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30

Nov 2017

EPO Standard for Proof of Recording Patent Assignments

By: Catherine Caspar A European patent application may be transferred for one or more of the designated contracting states. Article 72 of the European Patent Convention (EPC) is an autonomous provision which exclusively governs the formal requirements of such transfers and defines a high standard of proof for the recordal of assignments. According to Article 72, “An assignment of a European patent application shall be...

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30

Nov 2017

China’s Guiding Cases in IP Law, Part III: Infringement of Design Patents

By: Han-Mei Tso and Ken J. Yu In March 2017, the Supreme People’s Court of China (the “Supreme Court”) published its 16th set of guiding cases, including ten intellectual property (“IP”) cases.  Among the ten IP guiding cases, three of them relate to patent infringement. In recent editions of the Osha Liang Newsletter, we discussed the patent infringement guiding case in connection with the liability...

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30

Nov 2017

Who Says the PTAB Never Allows Amendments? The Question is: Can an Amendment Survive Appeal?

By: Tammy J. Dunn One of the most common criticisms of inter partes review (IPR) proceedings, a specialized proceeding in which third parties can challenge the validity of a patent in front of the Patent Trial and Appeal Board of the US Patent & Trademark Office (“the PTAB” or “the Board”) on certain grounds based on prior art printed publications, is that there is no...

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29

Nov 2017

New Rule Extends US Attorney-Client Privilege in Proceedings before the PTAB

By: Tammy J. Dunn A new rule will take effect on December 7, 2017.  The new rule applies to the scope of attorney-client privilege in proceedings before the PTAB.  According to the Rule: [A]ny communication between a client and a USPTO patent practitioner or a foreign jurisdiction patent practitioner that is reasonably necessary and incident to the scope of the practitioner’s authority shall receive the...

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27

Nov 2017

US Bar/JPO Liaison Council Meeting

On November 9, 2017, the US Bar/JPO Liaison Council delegates met with 18 judges of the Japanese IP High Court in Tokyo, Japan.  The Liaison Council gave presentations providing updates on U.S. law.  Osha Liang Associate Ko Nakamura, representing the Houston Bar Association, gave a detailed presentation on the U.S. Supreme Court’s decision regarding patent exhaustion in Impression Products, Inc. v. Lexmark International, Inc.   Judge...

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27

Nov 2017

Foreign Excellence Webinar: The Intelligent Attorney’s Guide to Patenting in Japan

Japanese Patent Attorney, Shigeki Takeuchi, is co-presenting a webinar titled, “Foreign Excellence Webinar #02: The Intelligent Attorney’s Guide to Patenting in Japan.”  In this advanced webinar, attendees will learn how to patent in Japan, Japanese country data, patent protection scope/cost, patent enforcement, the basic on how to file, and prosecution.  The webinar will take place on November 30, 2017 at 1:00 PM CST. To register...

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25

Nov 2017

Why Intellectual Property Matters in Sports Technology

By: Tammy J. Dunn Imagine spending millions of dollars in research and development to develop some of the best and most innovative sports technology products available.  Imagine spending as much, if not more, on top marketing and advertising to develop a brand name synonymous with success in the industry.  Imagine that feeling of having “arrived” after years of hard work, sleepless nights, and making sacrifices...

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24

Nov 2017

Written Description a Problem for Biological Drugs

By: David S. Forman, Ph.D. Half of the ten biggest selling pharmaceuticals are biological drugs based on monoclonal antibodies.  Monoclonal antibodies are made by growing clones of a large number of single antibody-producing cells, and then screening the clones to find cells making antibodies that specifically bind to a desired target molecule, called an “antigen.”  Typically, this screening yields several monoclonal antibodies that have the...

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17

Nov 2017

Giles S. Rich Inn of Court Meeting

Attorneys Jeffery P. Langer and David S. Forman led a panel discussion at the Giles S. Rich Inn Court program titled, “IP and Vice” on November 16, 2017 at the United States Court of Appeals for the Federal Circuit in Washington, D.C. The program focused on how intellectual property law has evolved to address various “vice” products including cigarettes, pornography, adult sexual products, marijuana, and alcohol.  Panelists included...

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06

Nov 2017

IIPCC HKEX Innovation Commercialization Conference

Partner Jeffery P. Langer is moderating a panel on “Best Practices for Commercialization” in Hong Kong at the International IP Commercialization Council (IIPCC) on December 11 from 2:00-5:30 PM. To support and achieve success in innovation requires an understanding both of how innovation and entrepreneurship truly operate, and why innovative companies can no longer afford to ignore Intellectual Property (IP).  This event provides an unprecedented opportunity...

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02

Nov 2017

Osha Liang Receives 2018 “U.S. News & World Report – Best Law Firm” Ranking

  For the third year in a row, Osha Liang is proud to announce the firm has been ranked in the 2018 edition of “U.S. News and World Report – Best Lawyers®” list of Best Law Firms.  Osha Liang holds Tier One ranking in patent law in Houston. In addition to the firm`s recognition, Managing Partner Jonathan Osha was recognized as 2018 “Best Lawyers in America”...

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30

Oct 2017

Trick or Treat!…or Troll or Tribe? Questions in Need of Answers

By: Suzanne Lecocke The latest approach to try to save a patent from an inter partes (IPR) proceeding is to transfer the patent to a Native American tribe.  Patent owners hope to thwart America Invents Act (“AIA”) validity challenges based on the doctrine of sovereign immunity.  This comes at a time when the entire AIA IPR proceedings are in a state of flux.  Depending upon...

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30

Oct 2017

2016 Patent Statistics Annual Report by SIPO

By: Han-Mei Tso and Jude Yi In September 2017, the State Intellectual Property Office of China (SIPO) published the 2016 Patent Statistics Annual Report. This annual publication includes comprehensive statistical data accumulated through the daily work of the SIPO, reflecting various aspects of China’s current patent landscape in the areas of patent procurement, maintenance, and administrative enforcement. The Report, which contains more than 200 pages,...

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30

Oct 2017

Oktoberfeisty: An Emerging Row over Patenting GMO 2-row

By: A. Rusty Rogers Following the issuance of a number of patents over genetically modified barley to Carlsberg and Heineken, controversy has erupted regarding unfair monopolies over European beer markets and fears of accidental infringement.  With similar patents in the U.S. and a number of other jurisdictions, it may be a matter of time before patents over living organisms are once again brought into the...

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