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USPTO Issues Report by Chief Economist on Statutory Subject Matter Rejections and Impact of the Revised Guidance of January, 2019
It is widely recognized that rejections of applications at the USPTO due to lack of statutory subject matter (35 U.S.C. § 101) increased significantly following the U.S. Supreme Court's decision in Alice Corp. v. CLS Bank International in June of 2014. In addition to this increase in overall rejections, many of us practicing in this area noticed a wide variability in how different examiners applied the Alice standard.
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Update on EPO Measures Due to the COVID-19 Pandemic
The March notice of the European Patent Office (EPO) announced measures to safeguard applicants' rights and opposition and appeal parties' rights due to the COVID-19 pandemic, establishing that all "time limits" before the EPO expiring on or after 15 March 2020 were extended until 17 April 2020 (see
March issue
of our Newsletter). The EPO has subsequently announced that all "time limits" expiring on or after 15 March 2020 are further extended until 4 May 2020. The new EPO notice, which has been published in the EPO's
April Official Journal
, also recognizes that due to pandemic spread, there is a global risk of acquiring COVID-19, and no longer makes reference to specific high-risk areas.
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To Institute or Not To Institute - That is the Question:
Recent PTAB Precedential Decisions on § 325 Denials
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The Patent Trial and Appeal Board recently designated two decisions as precedential and a third as informative on the issue of when the Board will and will not exercise its discretion to reject America Invents Act post-grant proceedings petitions that rely upon invalidity arguments similar to those used during the original patent prosecution. Accordingly, precisely how the Board will exercise its discretion under 35 U.S.C. § 325(d) to deny institution in proceedings where a petition presents "the same or substantially the same prior art or arguments" as were previously presented to the USPTO during patent prosecution has been clarified.
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| Thryv, Inc. v. Click-to-Call Techs., LP |
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PTAB Decisions Regarding Applicability of IPR Petition Time Bar Are Not Appealable
The U.S. Supreme Court decided in Thryv, Inc. v. Click-to-Call Techs., LP that decisions by the USPTO's Patent Trial and Appeal Board ("PTAB") regarding applicability of the America Invent Act's 1-year time bar to filing a petition for Inter Partes Review are not appealable. While the patent owner in Thryv was thus held to be unable to challenge a PTAB institution decision that ultimately led to cancellation of its patent claims, the Court's holding in Thryv equally precludes petitioners' appeals of PTAB "no institution" decisions that are based on the 1-year time bar provision.
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Nike, Inc. v. Adidas AG
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PTAB May Assert New Grounds of Unpatentability of Amended Claims in IPR Proceedings, but Must Give Patent Owner Notice and Opportunity to Respond
The U.S. Court of Appeals for the Federal Circuit has ruled that in the context of Inter Partes Review proceedings, the Patent Trial and Appeal Board may raise new grounds of unpatentability with respect to a patent owner's proposed amended claims. However, any new grounds must be limited to prior art already of record in the proceeding, and the patent owner must be given adequate notice and an opportunity to respond to the new grounds, in order to satisfy the requirements of the Administrative Procedure Act.
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HVLPO 2, LLC v. Oxygen Frog, LLC
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Lay Witness Opinion Testimony on Ultimate Question of Obviousness Is Inadmissible at Trial
In HVLPO2, LLC v. Oxygen Frog, LLC, the U.S. Court of Appeals for the Federal Circuit held that a trial court abused its discretion by admitting lay (i.e., non-expert) witness opinion testimony regarding the ultimate question of obviousness during a jury trial. Such lay witness opinion testimony is unduly prejudicial and circumvents extensive discovery rules and procedures designed to ensure that such opinions are relevant, reliable, and offered by persons qualified to offer them.
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Allen v. Cooper - The Supreme Court Blesses Copyright Infringement by States
In a near unanimous decision, the Supreme Court held in
Allen v. Cooper that the Copyright Remedy Clarification Act of 1990 (the "CRCA") - which abrogated state immunity for acts of copyright infringement - was unconstitutional under the Eleventh Amendment of the United States Constitution. As a result, individual states and state agencies (such as state universities) are free to infringe copyright owners' rights with near complete impunity.
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AIPPI & WIPO | JOINT WEBINAR
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On April 16th, AIPPI and WIPO hosted a joint webinar covering the
latest developments in Trademarks, Designs and GIs as well as updates on the PCT, Madrid and Hague systems, and IP Enforcement. This online session was moderated by AIPPI Reporter General Jonathan Osha.
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OSHA LIANG CHINA OFFICE UPDATE
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Our Hangzhou office has relocated to the Kerry Centre in Hangzhou.
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DISCLAIMER: This information is being provided to you as a service to our clients and those who elected to receive mailings from our firm. The information contained herein is intended for informational purposes only and should not be construed as legal advice. This newsletter does not create any form of attorney-client relationship with our firm or with any of our attorneys.
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