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JAPANESE GRACE PERIOD WILL BE EXTENDED TO 12 MONTHS
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 to note that the grace period of 6 months still applies to a disclosure made on or before December 8, 2017. Further, the grace period in Japan does not apply to a foreign priority application (such as a U.S. patent application), and either a PCT application or a domestic Japanese application should be filed within the grace period.
Therefore if, for example, an inventor makes a pre-filing disclosure in the United States, relies on the one-year U.S. grace period to file a U.S. utility patent application, and then enters Japan directly or via PCT based on a later filing within the one-year Paris Convention window, the Japanese grace period may not apply and the Japanese patent would be barred by the pre-filing disclosure.
Please also note that this amendment simply extends the length of the grace period and other requirements for applying the Japanese grace period are unchanged. For example, unlike the U.S. grace period, "Proof of Disclosure" should be submitted within 30 days from the filing date (or from the date of entering the Japanese national phase).
The same revision was made to Japanese design law.
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Thinking About Printed Matter
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 theory that information is information, whether printed or not. This decision significantly expands the envelope of the printed matter doctrine, conflating it simultaneously with other patentable subject matter issues under 35 U.S.C. §101 and obviousness under 35 U.S.C. §103. Judge Newman issued a well-reasoned concurring opinion agreeing with the ultimate decision on the merits but disagreeing with the analysis.
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The Written Description Requirement in the United States
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 application to which the patents in suit claimed priority. The claims in suit were thus not entitled to the benefit of the parent application filing date, and were invalid in view of intervening prior art. This case is a useful reminder of the importance of the written description requirement and the potential dangers of relying on provisional disclosures when adding broadened claims in later applications.
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Virtual Reality Technology Applied for the First Time in China Court Trial
On March 1, 2018, the Beijing First Intermediate People's Court publicly heard a murder case prosecuted by the First Branch of the Beijing People's Procuratorate. In this case, the criminal suspect was accused of killing his girlfriend. Because the prosecutor presented evidence using virtual reality technology for the first time in a China court trial, this normal criminal case received extra attention.
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SIPO Issues Statistics of Design Patents
In April 2018, the State Intellectual Property Office (SIPO) of the People's Republic of China issued the Brief Statistics of Design Patent 2017 (the "Report"). The Report summarizes China's design patent statistics in 2017, covering the numbers of applications, grants, patents-in-force, country distribution, industry distribution, and other data.
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Claim Interpretation Urged by Patent Owner in District Court Infringement Litigation May Be Relied on by Petitioner in IPR Challenge
In Western Digital Corporation v. SPEX Technologies, Inc. ("Western Digital IPR"), the Patent Trial and Appeal Board ("PTAB") recently allowed a petitioner to use a patent owner's claim construction positions taken in district court infringement litigation in an IPR petition, even though the petitioner explicitly disagreed with those positions in district court.
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The UK Ratified the UPC Agreement: One Step Closer to the Completion of the Ratification Process for the UPC to Operate
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, the primacy of EU law ensured by the Court of Justice of the EU is generally deemed to be incompatible with the outcome of the British Referendum, which requires that the UK leave the EU and be exclusively governed by national institutions and laws.
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The Myth of 'Trivial' Drug Patents
Senior Counsel
David Forman wrote an article on "The Myth of 'Trivial' Drug Patents" which was published on IPWatchdog.com on May 31. Click
here to read the full article.
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