Search Results for: Patent


29

Sep 2017

European Litigation Series, Part II: Search Order and Seizure in Italy

By: Francesca Giovannini Italy is the Eurozone’s third-largest economy after Germany and France and, due to the size of its market and reduced litigation costs, should be taken into consideration when Intellectual Property (IP) rights need to be enforced in Europe. Since exclusive jurisdiction over IP cases has been conferred on select Italian courts, the duration of patent litigation proceedings has been shortened: a first-instance…

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29

Sep 2017

AFCP 2.0 and QPIDS Pilot Programs Extended Until Sept. 30, 2018

By: Thomas Scherer The After-Final Consideration Pilot 2.0 (AFCP 2.0) and Quick Path IDS (QPIDS) pilot programs have been extended to Sept. 30, 2018.  These programs facilitate efficient and expedited examination. The AFCP 2.0 program allocates additional time to Examiners for the consideration of non-broadening amendments made after the issuance of a final office action.  If the Examiner is able to confirm allowability of an…

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07

Sep 2017

Osha Liang Ranked Top Law Firm in PTAB Litigation Diversity

Osha Liang was recently named the law firm with the highest ratio of female attorneys working on Patent Trial and Appeal Board (PTAB) patent cases, according to Docket Alarm’s statistics and as reported in Patently-O’s blog post.  According to the statistics, 72% of Osha Liang’s AIA-Trial representations are staffed by female attorneys. The blog post points out the fact that “Patent litigation is dominated by…

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05

Sep 2017

Osha Liang Attorneys Named 2017 Texas Super Lawyers

Osha Liang is pleased to announce that two attorneys at the firm have been selected as 2017 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 11th consecutive year that Mr. Osha has earned selection to the list of the state’s top…

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28

Aug 2017

Important Case of Inadmissibility of Experimental Evidence Filed After Filing to Support Inventive Step Before the EPO

By: Elsa Benveniste This year, the Board of Appeal of the European Patent Office (EPO) issued decision T488/16 regarding the revocation of Bristol-Myers Squibb’s (BMS) European Patent EP1 169 038. In this case, the Board considered that the anti-cancer drug dasatinib (Sprycel®) claimed by the European patent lacked inventive step, despite the proprietor’s efforts to prove the contrary based on experimental evidence submitted to the…

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25

Aug 2017

Some Practical Considerations Before Litigating in China

By: Jeffrey Bergman and Jeffery Langer Since the creation in 2014 of three IP-only courts, located in Beijing, Shanghai and Guangzhou, there has been a dramatic increase in the number of foreign companies bringing suits (against both foreign and domestic defendants) in China.  Increased damage awards and the awarding of attorney fees by these courts are also attracting attention from China intellectual property rights holders. …

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25

Jul 2017

Proposed Changes to China’s Inventor Reward and Remuneration System

By: Jeffery P. Langer China requires the reward and remuneration of inventors.  Reward is a one-time payment to employees for the invention or creation of intellectual property.  Remuneration, on the other hand, is required if the employer exploits the intellectual property by using it in commerce by, for example, incorporating the intellectual property into a product or licensing the intellectual property to another entity.  Amendments…

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23

Jun 2017

The SLANTS Win Epic Trademark Battle – Supreme Court Rules the “Disparagement Clause” of Trademark Act is Unconstitutional

By: John Montgomery The Supreme Court of the United States has affirmed the judgment of the Court of Appeals for the Federal Circuit, finding the longstanding “disparagement clause” of the Trademark Act of 1946 (the Lanham Act, 15 U.S.C. § 1052(a)) unconstitutional, in violation of the Free Speech Clause of the First Amendment to the Constitution. In an earlier Osha Liang Newsletter article (click here…

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19

Jun 2017

Requirements to Validly Prove An Entitlement to Claim Priority Before the EPO

By: Elsa Benveniste In the recent decision T577/11, a Technical Board of Appeal of the European Patent Office (EPO) considered the issue of an entitlement to claim priority before the EPO, particularly when a transfer of a first patent application occurs before the filing date of a subsequent European application claiming priority on the first application. As in previous decisions, the Board confirmed once again…

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15

Jun 2017

UPC Update (June 2017)

By: Francesca Giovannini As mentioned in Osha Liang’s previous newsletters, the ratification process of the Unified Patent Court (UPC) Agreement has not been completed yet because two of the mandatory participating states—namely the UK and Germany—have yet to conclude their ratification process for the UPC to operate. In addition to the uncertainties generated by the Brexit vote, further doubts have been cast upon imminent operation…

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30

May 2017

A Brewing Dispute: Coffee Pods and the Written Description Requirement

By: Annemarie Vicere On May 23, 2017, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued a decision finding claims that had been broadened during prosecution in a manner to encompass undisclosed embodiments to be invalid under the written description requirement of 35 U.S.C. § 112.  Rivera v. ITC., Case No. 2016-1841 (“Rivera”).  The patent at issue in Rivera is directed to…

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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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24

May 2017

PTAB Reverses Course Mid-Torrent: Use of “Inapplicable” Prior Art During IPR

By: Rusty Rogers This is a cautionary tale about the ability of the U.S. Patent Trial and Appeals Board’s (PTAB) to rely on additional prior art references in a decision on inter partes review (IPR) – even prior art initially deemed “inapplicable.”  In its recent decision in Novartis AG v. Torrent Pharmaceuticals (April 12, 2017), the Court of Appeals of The Federal Circuit (CAFC) approved the PTAB’s use of prior…

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22

May 2017

Another legislative proposal from a major intellectual property organization seeking to calm the 101 waters, this time from AIPLA

By: Robert Lord and Kelly McKinney The current state of § 101 jurisprudence in the United States (“U.S.”) is shrouded in confusion and uncertainty.  Indeed, decisions made by the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit, as set forth in Alice and its progeny, have been inconsistent and lack clear guidance on how to analyze patent eligibility under 35 U.S.C….

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15

May 2017

China Is Formulating Guidelines for Anti-Monopoly Enforcement against Abuse of IPRs

By: Han-Mei Tso and Jude Yi Recently, the Anti-Monopoly Commission of the State Council of the People’s Republic of China released to the public “Anti-Monopoly Enforcement Guidelines on Abuse of Intellectual Property Rights” (hereafter, “Guidelines”), welcoming comments from March 23, 2017, to April 21, 2017. These Guidelines, drafted by the Anti-Monopoly Commission, are based on a prior proposal jointly contributed by the National Development and Reform…

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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

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

Apr 2017

The Marking Statute, Disclaimers, and Impact on Damages

By: Thomas Scherer On April 17, 2017, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) rendered a decision in Rembrandt Wireless Technologies, L.P., v. Samsung Electronics Co., LTD., et al., No. 16-1729 (Fed. Cir. 2017).  The appeal involved several issues, e.g., claim construction during infringement analysis, obviousness determinations made in invalidity analysis, and the appropriate calculation of damages.  One aspect of the case that…

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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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25

Apr 2017

UPC: Factors to be Considered in Making the Decision of Opting Out

By: Francesca Giovannini Despite the ongoing uncertainties in the ratification process of the Unified Patent Court (UPC) Agreement, the so called “sunrise period” giving the possibility of opting out of European patents/applications from the exclusive jurisdiction of the UPC before the UPC becomes operational could nevertheless start soon, i.e., in September 2017 at the earliest. In addition to the uncertainties generated by the Brexit vote,…

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21

Apr 2017

Before Suing, Know Thyself

By: Califf Cooper In Bayer Cropscience AG, et al. v. Dow Agrosciences LLC, the Federal Circuit recently affirmed a district court’s award of $5.9M in attorney’s fees under 35 U.S.C. § 285 finding the case qualified as an “exceptional case.” The underlying case concerned a license for Bayer’s soybean seeds that were genetically modified to resist weed killers.  Bayer initially licensed the soybean patents to…

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31

Mar 2017

Medgraph v. Medtronic: Divided Infringement in the Limelight

By: A. Rusty Rogers In the wake of the Akamai Techs. Inc. v. Limelight Networks, Inc. family of decisions, the standard for finding divided infringement has become somewhat more favorable for patent holders in certain cases.  However, after protracted litigation amidst the shifting sands of divided infringement jurisprudence, Medgraph learned the hard way that establishing direct infringement between multiple actors first begins with the bedrock principle that a…

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31

Mar 2017

UPC: Confirmation that Opting Out is Planned to Start Sept. 2017

By: Francesca Giovannini The Unified Patent Court (UPC) Preparatory Committee met in The Hague on 15 March 2017 and confirmed that, as previously announced, opting out European patents and applications before the UPC becomes operational is scheduled to begin in September 2017. The UPC Preparatory Committee also confirmed that the planned entry into force of the UPC Agreement and operation of the Unified Patent Court…

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31

Mar 2017

Why Does the U.S. Supreme Court Keep Reversing the Federal Circuit?

By: David Forman The ultimate court of appeal in U.S. patent law is the Supreme Court, but throughout most of its history the Court decided relatively few patent cases, none at all in some years.  That pattern continued after 1982, when all patent appeals were moved to a single appellate court, the United States Court of Appeals for the Federal Circuit.  But then, in 2005, the…

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31

Mar 2017

U.S. Supreme Court Rules Copyright Protection is Available for Designs Applied to Cheerleader Uniforms

By: John Montgomery On March 22, 2017, the Supreme Court ruled in a 6 to 2 decision that surface decorations incorporated into cheerleader uniforms could be protected by copyright.* The opinion of the Court provides a two-part test for determining whether protectable design features are separable from a useful article to which they are applied, so that they are protectable under the Copyright Act, §101. …

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31

Mar 2017

More Ammunition Against an Examiner’s Improper Anticipation Rejection

By: Seema Mehta The U.S. Federal Circuit recently issued an opinion (Nidec Motor Corp. v. Zhongshan Broad Ocean Motor) on a straight-forward anticipation issue, with some good quotes for use in prosecution practice.  In this case, appealed from a Patent Trials and Appeals Board (PTAB) decision in an Inter Partes review (IPR) proceeding, the Federal Circuit reversed the Board’s finding of anticipation of claim 21…

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