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Russia Suspends Compulsory License Payments for Some Non-Russians

In the latest example of the escalation of tensions between Russia and the West, Russian Prime Minister Mikhail Mishustin last week issued a decree that owners of Russian patents from countries that Russia considers to be unfriendly are no longer entitled to any compensation for compulsory licensing of their patents. In particular, the decree (translated … Continue Reading

Changes to Improve Chinese Patents

In a blog post published in February 2021 (here), we addressed regulatory initiatives from the Chinese government aimed at moving China from a country dependent on “imported” patents (i.e., patents filed by foreign entities) to a country with great autochthone creativity. The initiatives were intended to reduce or eliminate fraudulent and low-quality patent applications and … Continue Reading

Light Administrative Injunctions for Designs in China: Status-check on the 2021 Shenzhen AMR Reform

  In June 2021 the Shenzhen Administration for Market Regulation (Shenzhen AMR) issued the first ever provisions on administrative injunctions against the infringement of a design patents, including online infringements. It was a revolutionary provision. Without need to prove irreparable damage, a right holder could seek quick relief by filing a simple administrative complaint. Now … Continue Reading

China Accedes to the Hague Convention and Now Allows for International Design Filings

On February 5, 2022, China acceded to Hague System for the International Registration of Industrial Designs. The Hague provisions will become effective in China on May 5, 2022. China has been negotiating such accession for a few years, and it was partly anticipated by certain measures of harmonization introduced with the latest amendment to the patent law in … Continue Reading

Once Again, the ITC Finishes the Year with a Flurry of New Complaints

In January 2021, I noted that the U.S. International Trade Commission (ITC) saw a flurry of new complaints filed in the second half of 2020, particularly in November and December. See here. A similar pattern emerged at the end of 2021, culminating with eight Section 337 complaints filed between December 15 – 31, 2021.… Continue Reading

AFCP 2.0 Extended: Your Mileage May Vary

On October 12, 2021, the USPTO extended its program for after-final patent prosecution practice, AFCP 2.0, to September 30, 2022. The USPTO initiated the “pilot” program in 2013, to speed up prosecution and to increase contact between Examiners and applicants. Although the USPTO has not issued statistics about the results of the program, applicants still … Continue Reading

ITC Section 337: Tips for Avoiding Discretionary Denials at the PTAB

We previously wrote that a co-pending ITC Section 337 investigation virtually guarantees that the Patent Trial and Appeal Board (PTAB) will exercise its discretionary power to deny institution under 35 U.S.C. §§ 314(a) and 324(a) when considering a petition for inter partes review (IPR) or post-grant review (PGR). See ITC Section 337: Kiss of Death … Continue Reading

Plaintiffs Beware – Disclose all Evidence of Lost Profits Damages During Discovery

In a patent infringement lawsuit, a plaintiff often seeks to recover lost profits damages—the profits that the patent owner would have made but for the competitor’s alleged infringement—instead of a lower reasonable royalty. A plaintiff is not automatically entitled to such damages, though, even upon a finding of infringement. Rather, the patent owner must prove … Continue Reading

ITC Section 337: Kiss of Death for PTAB Proceedings

When considering a petition for post-grant review (PGR) or inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) has discretion to deny institution under 35 U.S.C. §§ 314(a) and 324(a). The PTAB’s Consolidated Trial Practice Guide provides that, when exercising its discretion, the Board may consider “events in other proceedings related to the … Continue Reading

Timing is Essential for Filing Interlocutory Appeals — Do Not Wait for All Issues to be Resolved

The Federal Circuit recently dismissed an interlocutory appeal filed by LG Electronics as untimely because LG filed its notice of appeal more than seven months after the district court’s order disposing of all LG post-trial motions except for its post-trial motion on damages. The opinion stands as a lesson to all parties contemplating an appeal … Continue Reading

A Reminder to Patentees Suing for Infringement: Your Allegations Must be Sufficient to Show Plausibility that the Accused Product Infringes

A recent Federal Circuit decision has re-affirmed prior guidance on the pleading requirements for a plaintiff alleging patent infringement. The decision was issued in Bot M8 LLC v. Sony Corp. of Am., Case No. 2020-2218, on July 13, 2021. In short, while a plaintiff need not prove its case at the pleading stage, a plaintiff … Continue Reading

New from China: Light Administrative Injunctions Now Available for Patents, Designs, and Copyrights

On June 21, 2021, the Shenzhen Administration for Market Regulation (Shenzhen AMR) issued the first ever administrative injunction against the alleged infringement of a design patent. The decision was based on a set of local IP regulations implemented in 2019 to increase protection of intellectual property (IP) rights associated with the booming local innovation in … Continue Reading

Patents for Humanity: The USPTO Recognizes Innovation Relating to COVID-19

The United States Patent and Trademark Office (USPTO) has announced the final deadline for submission of applications for its Patents for Humanity COVID-19 award: The submission deadline is 5 p.m. ET, September 30, 2021. Patents for Humanity is the United States Patent and Trademark Office’s (USPTO) awards competition recognizing innovators who use game-changing technology to … Continue Reading

Breaking News from Karlsruhe: Progress on the Unified Patent Court (UPC)

The progress on the ratification of the Agreement on a Unified Patent Court (UPC Agreement) had been delayed due to two constitutional complaints filed before the Constitutional Court in Germany. It was not the first attack on German UPC legislation. A first act of approval had been adopted by the Bundestag in March 2017, but … Continue Reading

Litigators Take Note – Yu v. Apple is Not Just About Subject Matter Eligibility of Patents

Much of the discussion about the Federal Circuit’s precedential opinion in Yu et al. v. Apple, Inc. et al. has focused on the perceived confusion and dysfunction of U.S. patent law that invalidates a claim directed to an “improved digital camera” as a patent-ineligible “abstract idea.” After delving into the underlying record, this author posits … Continue Reading

The Supreme Court Provides a Different Fix to Make APJs Inferior Officers

On June 21, 2021, in United States v. Arthrex, the United States Supreme Court ruled that Patent Trial & Appeal Board (“PTAB”) Administrative Patent Judges (“APJs”) are unconstitutionally appointed because they effectively wield the power of principal officers while being appointed as inferior officers. 594 U.S. ____ (2021).… Continue Reading

Taking Another Page from the ABA: The USPTO Enacts New Rules of Professional Responsibility for Patent Attorneys and Agents

To mitigate potential conflicts of interest and to improve the public’s understanding of the United States Patent and Trademark Office (USPTO) procedures, the agency has recently made various amendments to its rules relating to the conduct of registered patent attorneys and agents. The resulting changes mirror some well-recognized provisions of the American Bar Association’s (ABA) … Continue Reading

BEST MODE: Compliance with the Duty of Disclosure Requires Vigilance and Self-Awareness

In a recent post, we discussed the importance of complying with the US Patent and Trademark Office’s duty of disclosure under Rule 56 of the Rules of Practice. This post focuses on the existence of this duty throughout the entire prosecution of a patent application, in a specialized factual context involving a priority application outside … Continue Reading

Caution! Technical Documents Concerning Efforts to Design Around a Patent Are Discoverable — Even When Done at the Direction of Counsel

A recent order from a patent infringement lawsuit in the Northern District of Illinois serves as a good reminder that factual information about attempts to design around a patent are generally discoverable. This case also distinguishes discoverable factual information from privileged opinion and mental impressions of design-around efforts. In addition, the order suggests “exceptional circumstances” … Continue Reading

You’ve Been Served! – ITC Allows Service Through Respondents’ Amazon.com Seller Profile Pages

One advantage of filing a patent infringement complaint at the U.S. International Trade Commission (“ITC”) instead of in U.S. District Court is that a Complainant does not need to use the Hague Service Convention process or other treaty to serve the complaint on foreign entities. As explained here, recent ITC decisions expand the methods through … Continue Reading

ITC Initiates Pilot Program to Allow ALJs to Issue Interim Initial Determinations

Earlier today, the U.S. International Trade Commission (ITC) announced a pilot program that will allow Administrative Law Judges (ALJs) to issue interim Initial Determinations (IDs) on fewer than all issues in Section 337 investigations. The announcement can be found here. The pilot program is part of the ITC’s ongoing efforts to expeditiously resolve Section 337 … Continue Reading
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