Search Results for: Trademark


10

Jul 2017

Fame, Wine, and Cigars: The Finer Points of the DuPont Factors

By: A. Rusty Rogers In a case involving a petition for cancellation of a cigar trademark on the basis of likelihood of confusion with a celebrated wine, the Federal Circuit reminds the Trademark Trial and Appeal Board (TTAB) that the fame prong of the multifactor DuPont balancing test requires considering all evidence when presented. Trademarks provide protection for holders where there is a “likelihood of…

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29

Jun 2017

Claim Construction at the Patent Office: What is Reasonable?

By: Lisa Margonis During examination of patent applications, the U.S. Patent & Trademark Office (USPTO) applies the “broadest reasonable interpretation” (“BRI”) standard to determine the meaning of claim terms.  See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005).  This same standard is applied to patents reviewed by the Patent Trial and Appeal Board (“PTAB”) during post-grant review.  37 C.F.R. §42.100(b).  More specifically,…

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12

Jun 2017

Upheaval in the Patent World? Potential Impact of U.S. Supreme Court Consideration of Inter Partes Review

By: Suzanne Lecocke and Peter Schechter Expected within the next twelve months are two United States Supreme Court rulings that could, once again, significantly alter litigation strategies for both a patentee and an accused infringer in the United States. On May 22, 2017, the U.S. Supreme Court granted certiorari in the case of SAS Inst. Inc. v. Lee, 2017 U.S. LEXIS 3236 (U.S. May 22,…

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26

May 2017

Section 102 Bar Provision Unchanged…For Now

By: Carlyn Burton In the first consideration of the substantive amendments of the Leahy-Smith America Invents Act (AIA), the US Court of Appeals for the Federal Circuit in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.[i] weighed the statutory amendment of the on-sale bar provision. The on-sale bar, found within section 102 of the patent act, serves as a bar to patentability to prevent an…

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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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01

May 2017

China’s Supreme Court Published New Guiding Cases in IP – Part I: Liability of E-Commerce Platform in Patent Infringement

By: Han-Mei Tso and Jude Yi In March 2017, the Supreme People’s Court of China (the Supreme Court) published its 16th set of guiding cases, including 10 intellectual property (IP) cases. It is worth noting that since the first set of guiding cases published in 2012, there were only five IP guiding cases until March 2017. This time, the Supreme Court published 10 IP related cases…

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28

Apr 2017

Update on the PPH Pilot Programme Between EPO and its Cooperating Offices

By: Alexandre Picot Effective February 1st, 2017, a trial period of three years has started for the PPH pilot programme between the European Patent Office (EPO) and the Russian Federal Service for Intellectual Property based on PCT and national work products. Further, effective January 6th, 2017, the IP5 PPH pilot programme has been extended for a period of three years. The EPO has also agreed…

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28

Apr 2017

Close, But Not Close Enough: Analysis of “Near Fit” Prior Art

By: A. Rusty Rogers In a recent decision, the U.S. Federal Circuit unearths a 19th century opinion to highlight the bedrock principle that anticipation requires showing that all elements of a claimed invention existed in the prior art, without the need for distortion or selective modification of a prior art reference. Anticipation under 35 U.S.C. § 102 is established when a prior art reference describes…

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28

Mar 2017

WIPO Reports Record High Number of Cybersquatting Cases in 2016

By: Keelin Hargadon According to a recent WIPO press release, the number of UDRP (Uniform Domain Name Dispute Resolution Policy) cases filed in 2016 was higher than any other year.   Successful UDRP proceedings help rightful trademark owners resolve cybersquatting issues.  WIPO cites the release of over 1,200 new generic Top-Level Domains (gTLDs) as a driving cause for the uptick in filings, with .xyz, .top and .club…

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22

Mar 2017

Osha Liang Recognized in 2017 IP Stars by Managing Intellectual Property

Osha Liang is pleased to announce the firm has been recognized in the 2017 IP Stars Handbook published by Managing Intellectual Property, a leading global legal ranking directory. Osha Liang – Ranked in Texas Intellectual Property as “Highly Recommended” for 2017 Jonathan Osha – Patent Star, Trademark Star IP Stars highlights the country’s leading intellectual property firms and lawyers and is based on surveys completed by peers and in-house counsel, as well…

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08

Mar 2017

Osha Liang Attorneys Recognized as 2017 Texas Super Lawyers Rising Stars

Houston, TX — International intellectual property law firm Osha Liang LLP is pleased to announce that two attorneys from the Houston office were selected for inclusion in Texas Rising Stars® 2017 by Thomson Reuters. Osha Liang lawyers on the Texas Rising Stars® 2017 list include: Carlyn A. Burton – Intellectual Property Monica M. Katthage – Intellectual Property Litigation The Texas Rising Stars represent the top 2.5 percent of Texas attorneys who…

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27

Feb 2017

Silence Not Golden with Provisional Application, CAFC says

By: John Montgomery and David Madio Introduction The United States Court of Appeals for the Federal Circuit (CAFC) provides guidance on when a provisional application can be used in patent claim construction.  The split decision highlights the importance of the specification and the relevance of a provisional application in claim construction and subsequent determination of the validity of the claims.  The different views might be beneficially…

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19

Jan 2017

Osha Liang Once Again Named to Top 10 List for TC 3600 Allowance Rates

Osha Liang has once again achieved a top-10 ranking by Juristat in patent examination allowance by the U.S. Patent and Trademark Office’s (USPTO) Technology Center (TC) 3600. The USPTO’s TC 3600 provides examination for a wide range of technologies, including software, business methods, and the oil and gas industry. With an allowance rate of 80.7 percent, Osha Liang was recognized as one of the most…

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17

Jan 2017

Federal Circuit to Review the Reviewability of the IPR Time Bar

By: Tammy Dunn Inter partes review proceedings (IPRs) have become an increasingly popular avenue for those who seek to invalidate claims in a patent.  Created by Congress through the America Invents Act, IPRs offer a more streamlined and relatively cost-effective way to invalidate patents than historically has been available in United States district court proceedings.  Unlike district court, where judges and juries make decisions regarding…

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12

Jan 2017

USPTO No Longer Accepting Submissions for P3 Program

The United States Patent and Trademark Office (USPTO) gave notice on January 12, 2017 that the submissions for the Post-Prosecution Pilot (P3) program would no longer be accepted after that date.  The UPSTO indicates that it intends to review the results of the pilot, and will publish a report at a later date on the P3 website. 日本語 米国特許庁 (USPTO)は、2017年1月12日以降、Post-Prosecution Pilot (P3)プログラムの申請を受け付けないことを告知しました。米国特許庁は、この試行プログラムの結果を検証し、P3プログラムのウェブサイトで後日レポートを公開する予定です。 简体中文 美国专利商标局(USPTO)于2017年1月12日发表申明,在该日期之后将不再接收审查后试点(Post-Prosecution Pilot…

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28

Dec 2016

Recent USPTO Roundtables Explore Patent Subject Matter Eligibility

By: David Rosenblitt and David Forman Patent law in the US has been shaken in recent years by Supreme Court decisions holding that several kinds of inventions are not eligible for patents[1], relying on the judicially created concept that laws of nature, natural phenomena, and abstract ideas cannot receive patents. The result of these decisions is that it very difficult or impossible to patent computer…

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29

Nov 2016

SAS Institute v. ComplementSoft LLC – Partial IPR Institution Is a Mixed Bag for Both Patent Owners and Patent Challengers

By: Tammy Dunn and Peter Schechter The Patent Trial and Appeal Board (PTAB) currently decides whether to review validity of patent claims challenged in petitions for inter partes review (IPR) on a claim-by-claim basis, often resulting in “partial institution” of the IPR trial proceedings.  While this practice has been criticized, it was most recently approved by the U.S. Court of Appeals for the Federal Circuit…

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29

Nov 2016

U.S. Supreme Court Considers Copyright Protection for Designs Applied to Cheerleader Uniforms

By: John Montgomery Are Copyrights for Designs Applied to Cheerleader Uniforms Enforceable? Will the Fashion Industry Obtain Copyright Tools Effective to “Kill” the Knockoff Apparel Industry? Will The Supreme Court Establish or Endorse a Test for Determining Separability of Protectable Copyright Design from Otherwise Unprotectable Useful Articles? On November 1, 2016, the Supreme Court of the U.S. heard oral arguments in a case disputing the availability…

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04

Nov 2016

Osha Liang sponsors OPEN Houston Annual Business Pitch Competition

Osha Liang announced today the firm is a proud sponsor of OPEN Houston’s 7th Annual Business Pitch Competition on November 5, 2016 in Houston, Texas.  Details of the event can be found here: http://www.openhouston.org/annual-conference-2016/. The annual event is organized by OPEN Houston’s Charter Membership and Executive Committee.  The theme of this year’s event is “Opportunity of Adversity.”  OPEN Houston’s Annual Business Pitch Competition brings together…

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31

Oct 2016

China IPR Judgments and Decisions

By: Jude Yi and Jeffery P. Langer As China attaches more importance to Intellectual Property Rights (IPR) and IPR disputes continue to rise in frequency, the Chinese government hopes to enhance its judicial openness in the IPR respect.  In order to do so, in addition to the existing website China Judgments Online (http://wenshu.court.gov.cn/), the Supreme Court later added an IPR-focused website under its governance, China…

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27

Oct 2016

Brexit: An Update on Planned Legislative Reforms Affecting IP Rights

By: Francesca Giovannini British Prime Minister Theresa May stated on October 2, 2016 that the notification under Article 50 of the Lisbon Treaty, the formal mechanism for leaving the European Union (EU), will be sent by the end of March 2017 and announced a so-called Great Repeal Bill repealing the 1972 European Communities Act giving direct effect to all EU law. The Great Repeal Bill will…

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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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29

Sep 2016

The Analogous Art Test: A Natural Alternative to the Slippery Slope of Hindsight Bias

By: A. Rusty Rogers When cobbling together references to establish a prima facie case of obviousness, the Patent and Trademark Office (PTO) is under the burden to establish that the prior art selected also satisfies what is reasonable to assume that a skilled artisan would consult during the inventive process, also known as the “analogous art test.”  In a case involving use of molasses for de-icing…

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08

Sep 2016

Osha Liang Attorneys Named 2016 Texas Super Lawyers

HOUSTON, Sept. 8, 2016 /PRNewswire/ — International intellectual property law firm Osha Liang LLP is pleased to announce that two attorneys at the firm have been selected as 2016 Thomson Reuters Texas Super Lawyers©. The firm’s honorees are partners Jonathan P. Osha and Jeffrey S. Bergman. Both were recognized in the Intellectual Property and Intellectual Property Litigation categories. This is the tenth consecutive year that Mr….

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23

Aug 2016

US/JP Collaborative Search Pilot Program To Be More User-Friendly

By: Masayuki Takaoka Elimination of publication requirement in the Collaborative Search Pilot Program Between the Japan Patent Office and the United States Patent and Trademark Office The Japan Patent Office (JPO) and the United States Patent and Trademark Office (USPTO) implemented a Collaborative Search Pilot Program (US/JP-CSP) on August 1, 2015, to study whether the exchange of search results between offices for corresponding counterpart applications improves…

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25

Jul 2016

USPTO Post-Prosecution Pilot Program

By: Kelly C. McKinney On July 11, 2016, the U.S. Patent and Trademark Office (USPTO) launched a Post-Prosecution Pilot Program (“P3”) in further advancement of its Enhanced Patent Quality Initiative for improving patent quality.  P3 is an addition to the after-final practice landscape, which also includes the Pre-Appeal Brief Conference Pilot Program (“Pre-Appeal program”) and the After Final Consideration Pilot Program 2.0 (“AFCP 2.0”).  Indeed, P3…

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25

Jul 2016

2016 Japan Patent Office Annual Statistics Report

By: Shinya Kimura On June 30, 2016, the Japan Patent Office (JPO) released the JPO Annual Report 2016.*  The annual report provides a comprehensive compilation of statistics on Japanese intellectual property (IP) rights, and introduces the JPO’s initiatives to improve the IP system in Japan.  The report also includes statistics on patent filings at the five largest IP offices known as IP5, which consists of 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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