Search Results for: Jonathan Osha


27

Oct 2017

2017 AIPPI Congress in Sydney, Australia

Osha Liang Partners Jonathan Osha and Peter Schechter attended the AIPPI 2017 World Congress from October 13-17, 2017 in Sydney, Australia, one of the world’s most beautiful and vibrant cities.  In John’s role as AIPPI’s Deputy Reporter General and Peter’s as Chair of one of the 2017 Study Questions, they actively took part in AIPPI’s comprehensive Educational Program, featuring all areas of IP law and all…

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25

Jun 2017

Efforts continue toward substantive patent law harmonization; Significant achievements in IP office cooperation are celebrated

Osha Liang managing partner, Jonathan Osha, participated as a member of AIPLA’s Harmonization Task Force in a series of recent meetings relating to international harmonization of patent law, developments in inter-Office cooperation, and improvements to the overall user experience.  On May 29 and May 30, the Industry Trilateral group, including representatives from AIPLA, IPO, Business Europe, and JIPA, met in Valletta, Malta.  Issues discussed included harmonization…

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05

May 2017

Functional Claim Language: The Indefiniteness Trap

By: Seema Mehta and Jonathan Osha Functional claim limitations define an element of an invention in terms of what it does rather than in terms of its structure.  In the United States, 35 U.S.C. §112(f) (pre-A.I.A. 35 U.S.C. §112, 6th paragraph) provides that “means-plus-function” and “step-plus-function” limitations are interpreted to cover the structure or acts disclosed in the specification to perform the recited functions, and…

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28

Apr 2017

2017 FICPI China Symposium in Hangzhou

By: Han-Mei Tso and Jude Yi The International Federation of Intellectual Property Attorneys (FICPI) China Symposium (Hangzhou) 2017, also called the 6th China IP Symposium, was held in Hangzhou, the capital city of eastern China’s Zhejiang province, from March 30 to April 1, 2017. Hangzhou, a “Historic and Cultural City”, was most recently known for successfully hosting the 11th G20 Summit. Additionally, Osha Liang’s China office…

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27

Apr 2017

12th AIPPI Baltic Conference Event Summary

By: Jonathan Osha The 12th AIPPI Baltic Conference was held in Jurmala, Latvia on April 11-13, 2017.  The Conference was organized by the Latvian National Group of AIPPI, in cooperation with the Estonian and Lithuanian National Groups. Approximately 150 registrants attended to hear two days of informative presentations, as well as to enjoy the beautiful seaside city of Jurmala. Topics discussed during the conference ranged…

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28

Dec 2016

Cambodia joins the the Hague System

By: Jonathan Osha Cambodia has joined the Geneva (1999) Act of the Hague System Concerning the International Registration of Industrial Designs by depositing its instrument of Accession on November 25, 2016.   The 1999 Act will enter to force with respect to Cambodia on February 25, 2017.  The accession of Cambodia to the 1999 Act brings the number of Contracting Parties to this Act to 52 and…

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29

Sep 2016

AIPPI 2016 World Congress takes place in Milan, Italy

By: Jonathan Osha, Peter Schechter, and Francesca Giovannini The AIPPI 2016 World Congress took place last week in Milan, Italy.  More than 2000 IP professionals from around the world were in attendance.  Osha Liang’s Jonathan Osha, Peter Schechter, and Francesca Giovannini provide this report on the event. The Congress commenced on Saturday with Study Committee Meetings on IP harmonization topics in Patents, Designs, Copyright, and Security…

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17

Oct 2019

American Axle: The Latest Twist on Patent Eligibility

By Jonathan P. Osha Last month during the AIPPI Congress in London I had the privilege of interviewing USPTO Director Andrei Iancu for a full hour during one of the lunch sessions.  As always, Director Iancu’s comments were thoughtful, candid, and delivered with entertaining flair.  We spent a good part of our time discussing the issues around patent eligibility in the United States under 35…

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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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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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31

Oct 2016

Errors in Citation of Prior Art by USPTO Examiners

By: Jonathan P. Osha At the U.S. offices of Osha Liang, we have noted a significant increase in instances of USPTO Examiners rejecting claims on the basis of prior art that is not actually prior art as defined by 35 U.S.C. §102.  If not noticed by the applicant and pointed out to the Examiner in the next response, this error can lead to the introduction…

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31

Oct 2016

Trademarks: Madrid Update

By: Jonathan P. Osha Algeria, the last country that was a member of only the Madrid Agreement, acceded to the Madrid Protocol in October of 2015.  Thus, during the 50th session of the Madrid Union Assembly earlier this month, the decision was taken to bar any country in the future from acceding to the Agreement only.  Accordingly, from this time forward, a single set of…

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31

Aug 2016

Willful Infringement and Opinions Of Counsel in the U.S.: The Latest Swing of the Pendulum

By: Jonathan P. Osha Since the very early days of patent law in the United States, enhanced damages have been available as a punishment for willful patent infringement.  U.S. patent law has taken the view that willful infringement should be treated as a culpable act, and thus should be punished more harshly than unknowing or “innocent” infringement.  This general concept has continued through to the…

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29

Jun 2016

U.S. Supreme Court Weighs in on Claim Construction and on Appeals of USPTO Decisions to Institute Inter Partes Reviews

By: Jonathan P. Osha On Monday, June 20, 2016, the U.S. Supreme Court issued its decision in Cuozzo Speed Technologies v. Michelle Lee (“Cuozzo”).  In this important decision, the Court considered two aspects of the recently enacted law (the Leahy-Smith America Invents Act, or “AIA”) that created the “inter partes review” and “post grant review” processes at the U.S. Patent and Trademark Office (USPTO).  The first…

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29

Jun 2016

Quick Look: The First Application of the New Defend Trade Secrets Act

By: Jonathan P. Osha In the May 2016 edition of the Osha Liang Newsletter, we introduced the new Federal trade secret law, the Defend Trade Secrets Act (“DTSA”) (see article here).  The DTSA provides a Federal, civil cause of action for theft of trade secrets, and provides remedies both in the form of injunctions and damages.  Now, a District Court in California has issued one of…

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29

Jun 2016

Quick Look: U.S. Supreme Court to Review Question of Extra-Territorial Infringement

By: Jonathan P. Osha On June 27, 2016, the Supreme Court granted review of the Federal Circuit’s decision in Life Technologies Corp. V. Promega Corp. relating to infringement under 35 U.S.C. §271(f)(1).  The Federal Circuit had found Life Technologies to be liable for patent infringement for worldwide sales of a multi-component kit, even though only a single component of that kit was manufactured in and supplied…

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20

May 2016

News Flash: New Federal Trade Secrets Act in the United States

By: Jonathan P. Osha President Obama signed the Defend Trade Secrets Act (“DTSA”) into law on May 11, 2016.  The DTSA for the first time provides a private cause of action for trade secret misappropriation at the federal level.  Previously, prosecution of trade secret theft at the federal level was limited to criminal actions brought by the federal government.  Private actions for trade secret theft were…

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29

Apr 2015

Beacon Power LLC Defeats Twin America Invents Act Validity Challenges to Patent

HOUSTON, April 29, 2015 /PRNewswire/ — Osha Liang LLP’s client Beacon Power LLC has defeated twin America Invents Act validity challenges to its U.S. Patent 8,008,804 covering the use of Flywheel Energy Storage Systems (FESS) for regulating the frequency of the electric power grid. In late 2014, Temporal Power Ltd., a competitor in the emerging market for FESS applications, filed two petitions for Inter Partes…

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