MONTHLY INSIGHTS | OCTOBER 2020
 

Product-by-Process Claims 
in The United States

Despite numerous areas of patent law harmonization between the IP5 over the past few years, several areas of distinct disagreement remain between the members. One specific area of particular interest to those practicing in the chemical and life science arts is the topic of "product-by-process" claims, by which a product is defined at least in part in terms of the method or process by which it is made. READ MORE
Patent Specification's Disclaimer of Invention's Scope May Break Chain of Priority
In Akeva, LLC, v. Nike, Inc., the U.S. Court of Appeals for the Federal Circuit held that a disclaimer of claim scope in a patent specification that excluded a particular embodiment prevented later claims in the continuation patents from claiming the excluded embodiment, thereby breaking the priority chain. The Court also held that a disclaimer of claim scope in a specification could not be subsequently rescinded without introducing prohibited new matter.  READ MORE
Summary of USPTO Report on Public Views on Patenting AI Inventions

As part of the efforts to promote the understanding and reliability of intellectual property (IP) rights in relation to Artificial Intelligence (AI) technology, the USPTO issued a request for comments (RFC) on patenting AI inventions on August 27, 2019. Based on the received comments to the RFC, the USPTO issued a report on Public Views on AI and IP policy. A summary of Part I of the report, which addresses patentability of AI inventions, is presented.  READ MORE
CAFC Declines Trial Court's Request for Help Understanding Section 101

As predicted, the Court of Appeals for the Federal Circuit has now declined to hear an interlocutory appeal of a United States District Judge's denial of an accused infringer's motion to dismiss the complaint based on the infringer's defense of patent subject matter ineligibility under 35 U.S.C. Section 101. Trial judges unsure of how to apply the U.S. Supreme Court's Alice decision and subsequent CAFC precedent applying Alice must invalidate patents-in-suit at the pleading stage of a lawsuit if they wish to obtain early appellate confirmation of their Section 101 patent subject matter eligibility rulings. READ MORE
China Passes Fourth Amendment to Patent Law
Despite a "regular pattern" of amending the Patent Law every eight years since it was enacted 
in 1984, on October 17, 2020, China has now passed the Fourth Amendment to the Patent Law after 12 years since the Third Amendment. Considering certain significant changes  in the Fourth Amendment to the Patent Law and its profound implications, the long wait may prove worthwhile.

         READ MORE

IP INDUSTRY EVENTS

Osha Bergman Watanabe & Burton LLP was delighted to sponsor several 
recent IP events. OBWB collaborated as a gold sponsor for AIPPI's 2020
World Congress, and as a silver sponsor for AIPLA's 2020 Annual Meeting.


OBWB PILOTS THE MIDSIZE MANSFIELD PROJECT

We are pleased to announce our firm's participation in the inaugural group of midsize law firms piloting Diversity Lab's Midsize Mansfield Rule. This collaboration is another step in furthering our firm's commitment to supporting diversity and inclusion in the workplace.

Accordingly to Diversity Lab's recent press release, "The goal of the Mansfield Rule is to boost the representation of diverse lawyers in law firm leadership by broadening the pool of candidates considered for these roles and opportunities."

NEW WEBSITE

We welcome you to visit our new website obwbip.com

Austin    Boulder    Hangzhou    Houston    Paris    Tokyo    Washington, D.C.



Follow us on Twitter View our profile on LinkedIn 
 www.obwbip.com

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.