Search Results for: Patent


01

Nov 2018

PTAB Replaces BRI Standard with Phillips Standard

By Suzanne Lecocke On October 11, 2018, the United States Patent and Trademark Office (USPTO) published its final rule entitled “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board.”  The final rule, applicable to Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) Review, will become effective on November 13, 2018….

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01

Nov 2018

The Effect and Application of China’s Guiding Cases

By Han-Mei Tso In 2017, Osha Liang Newsletter published three articles discussing patent-related guiding cases issued by the Supreme People’s Court of China (hereinafter “SPC”), i.e., Guiding Case No. 83[1], Guiding Case No. 84[2], and Guiding Case No. 85[3].  This article will further discuss the nature and effect of guiding cases within China’s legal system and explain how to implement IP-related guiding cases into Chinese…

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01

Nov 2018

The Federal Circuit Provides Guidance for Obviousness Decisions at the PTAB: Provide an Explanation and be Consistent

By  Payal Majumdar In Emerson Electric Co. v. SIPCO, LLC, No. 2017-1866 (Fed. Cir. August 29, 2018), the U.S. Court of Appeals for the Federal Circuit provides valuable guidance for panels of judges at the United States Patent Trial and Appeal Board (PTAB).  In this nonprecedential court decision, the Federal court has vacated and remanded a PTAB decision for being inadequate in explaining its reasoning…

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01

Nov 2018

Changes in the Guidelines for Examination

By Yann Gloaguen The European Patent Office (EPO) has recently published the annual update of its Guidelines of Examination (hereinafter “EPO update”), which will come into force on November 1st, 2018.  In particular, the EPO update includes changes to unity of invention requirements and the patentability of mathematical methods. Changes to Unity of invention Requirements: Under the European Patent Convention (EPC), a European patent application must…

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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

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

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

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

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

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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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

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

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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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

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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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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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

Apr 2018

Meetings with WIPO, WTO and EPO

In his role as first deputy reporter general of The International Association for the Protection of Intellectual Property (AIPPI), Jonathan Osha joined the bureau delegation that recently visited the WIPO and the WTO in Geneva and the EPO in Munich. World Intellectual Property Organization (WIPO) The AIPPI delegation met with WIPO in Geneva on Monday, March 26, 2018.  After introductory remarks by Director General Francis…

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