INSIGHTS | MARCH 2021
Unpacking Amazon's Patent Infringement Evaluation Process
Law360 recently published an article by OBWB Partners Lisa Margonis and Tammy Terry. We invite you to read their IP insights in Law360's Expert Analysis.
Inventors Will No Longer Be Notified By The EPO About Their Designation
Since the first European Patent Convention (EPC) came into force in the seventies, the European Patent Office (EPO) has been informing any designated inventor of a European patent application of the data about his or her designation and the bibliographic data of the patent application. This long-established practice will be discontinued for any designation of the inventor newly filed (or rectified) on or after April 1, 2021. READ MORE
New Bill Proposes the Abolition of the Indian Intellectual Property Appellate Board
The Tribunals Reforms (Rationalisation and Conditions of Service) Bill, 2021 was introduced in Parliament in February. If enacted into law, this Bill will result in the dissolution of the Intellectual Property Appellate Board, which currently exercises appellate jurisdiction over decisions of the Indian Patent Office and Trade Marks Registry. READ MORE
The Importance of the Patent Marking Statute
Patent marking is a simple concept in a world that is progressively becoming more complicated. In the 1950s, it was simple for Texas Instruments to mark their newly patented transistor radio with “Patent No. 2,892,931.” A recent trial court decision illuminates the importance of proper compliance with the Patent Marking Statute on a relatively simple device if a patentee wishes to seek pre-litigation infringement damages from a potential infringer of a consumer product patent. This court decision provides a reminder about the importance of patent marking to other patentees selling more complex inventions, such as computers, software, chemicals, and machines. READ MORE
Which PTAB Decisions Are Appealable to the CAFC and Which Are Not? The Federal Circuit Court of Appeals Weighs in Again…
Since the enactment of the America Invents Act and the creation of inter partes review (IPR) proceedings, institution decisions have not been appealable according to statute. 
Dissatisfied litigants have still tried to appeal some institution decisions. As a result, a number of appellate decisions have discussed various scenarios regarding whether or not a decision that seems like it should not be appealable may or may not be actually appealable and vice versa. In Uniloc 2017 LLC v. Facebook Inc., the United States Court of Appeals for the Federal Circuit weighs in again on this question, making yet another distinction between appealable and non-appealable IPR decisions. READ MORE
Enlarged Board of Appeal of European Patent Office Clarifies Examination of Patentability of Computer-Implemented Simulations
The Enlarged Board of Appeal of the European Patent Office (EPO) has concluded that the long-established “COMVIK” approach for computer-implemented inventions applies also to computer-implemented simulations. Accordingly, inventions directed to computer-implemented simulations are expected to be examined by the EPO as any computer-implemented invention and to be subject to the same two hurdles set by the COMVIK approach for assessing compliance of such an invention with the eligibility requirement (first hurdle) and the inventive step requirement (second hurdle). READ MORE