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Industry Trilateral, Industry IP5, and IP5 Patent Office Heads Meet in New Orleans, Louisiana
The Industry Trilateral, Industry IP5, and IP5 Patent Office Heads meetings took place in New Orleans, Louisiana from June 11-14, 2018. The series of meetings related to international harmonization of patent law and procedure, developments in inter-Office cooperation, and improvements to the overall user experience. Osha Liang partner
Jonathan Osha
participated in the meetings as part of the AIPLA delegation.
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IP5 Pilot Project on Collaborative Search and Examination Under the PCT
On July 1, 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 European Patent Office (EPO), and the Korean Intellectual Property Office (KIPO).
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The Significance of "Could" vs. "Would" When Assessing Obviousness Rejections
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 art. To arrive at such an obviousness determination, an Examiner may combine the teachings of multiple references, but an essential component of such a combination is that the Examiner must make clear why a skilled artisan would have been motivated to combine the references. Simply put, it is not enough that the references could have been combined, there must be an articulated reasoning behind why they would have been combined.
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Patent Trial and Appeal Board Issues FAQs regarding SAS
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 institution" of IPR, picking and choosing which of the petitioner's grounds would actually be considered, was specifically held to violate the plain language of the America Invents Act that established the IPR post-grant challenge mechanism.
Ever since the SAS decision, there has been uncertainty regarding how the PTAB would adapt its procedures to the holding of the SAS decision, and even more uncertainty as to how pending IPRs would be modified to comply with the U.S. Supreme Court's mandate.
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SIPO Announced Termination and Adjustment of Certain Patent Fees
The State Intellectual Property Office of the People
'
s Republic of China
("SIPO")
issued No. 272 Announcement on June 15, 2018
. I
n order to further reduce the burden on society and promote the protection of patent
right
s
, SIPO
will
terminate
and adjust certain patent fees starting August 1, 2018. Click the link below to read the details of the announcement.
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New Trend of Utility Model Applications in China
In the February 2018 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.
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JPO Published Guidance of Examination of IoT Technology
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.
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Patent Damages Award May Include Foreign Lost Profits Under Certain Limited Circumstances
A damages award under 35 U.S.C. § 284 for infringement under § 271(f)(2) may include foreign lost profits, regardless of the presumption against extraterritorial reach of federal statutes, the U.S. Supreme Court held in a 7-2 decision on June 22, 2018.
WesternGeco LLC v. Ion Geophysical Corp
., ___ U.S. ___, No. 16-1011 (June 22, 2018).
The Court noted that the relevant conduct, that is, the infringing acts, "clearly occurred in the United States, as it was ION's domestic act of supplying the components that infringed WesternGeco's patents." Thus, WesternGeco's damages award for its foreign lost profits was a permissible domestic application of § 284.
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PCT Working Group at WIPO in Geneva
In his role as Deputy Reporter General of AIPPI, partner Jonathan Osha addressed the PCT Working Group at WIPO in Geneva on the issue of incomplete and erroneously filed parts of applications on June 19, 2018.
Read More
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UK Joins the Hague System
As of June 13, 2018, Hague System users can designate the United Kingdom (UK) in an international design application. This will allow Hague applicants both inside and outside the UK to enjoy more flexibility in their protection strategies as they will be able to designate the UK individually, as well as the European Union as a whole.
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Osha Liang Ranked Again in IAM Patent 1000
For the second
year in a row, Osha Liang was recognized by
Intellectual Asset Management (IAM) Patent 1000
as one of the top patent firms in Texas. Osha Liang's intellectual property prosecution practice achieved a "highly recommended" overall ranking. Additionally, Partner
Jeffrey Bergman
was also named a top individual in patent prosecution. Read More
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Osha Liang Hosts IP Seminar in Houston, Texas
Partners Jonathan Osha and Tammy Dunn hosted an informative one-hour seminar in the firm's Houston office on "Introduction to Intellectual Property: What Every Business Owner, Consultant, and Non-IP Lawyer Needs to Know about Patents, Copyrights, Trademarks, and Trade Secrets."
Read More
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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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