Since the mid-2000s, mention Marshall, Tyler, Sherman, Beaumont or Texarkana to an experienced patent litigator and you would get knowing nods about this string of small Texas towns, tips on their favorite BBQ or Tex-Mex restaurants, and war stories about the big patent wars fought there. The Eastern District of Texas, along with the District … Continue Reading
On March 11, 2021, the Federal Circuit issued a precedential decision in In re PTAB of Trustees of the Leland Stanford Junior University affirming a decision by the Patent Trial and Appeal Board (PTAB) to maintain the examiner’s rejection of claims involving analysis of genetic data to determine inheritance. The Federal Circuit found that the … Continue Reading
Although America Invents Act (AIA) patent practice is entering its 8th year, many pre-AIA patent applications remain pending. This requires practitioners to stay attentive as to whether examination is being conducted under pre-AIA practice, and to ensure that the pre-AIA rules are correctly applied. In this regard, to avoid unnecessarily ceding claim scope to disqualified … Continue Reading
A bipartisan group of Senators, including the Chair and ranking minority member of the Subcommittee on Intellectual Property, has proposed legislation that would allow the US Patent & Trademark Office to collect demographic data on patent applicants. The bill, known as the Inventor Diversity for Economic Advancement Act of 2021 or, more simply, the “IDEA … Continue Reading
As is often the case in China, a critical change in the IP system has taken place without the publicity of a new law but with an internal administrative document hidden on a government website. With an administrative Circular issued on January 27, 2021, the China IP office is rewriting the rules that led to … Continue Reading
Monday’s announcement of the institution of a section 337 investigation of Certain Batteries and Products Containing the Same, 337-TA-1244, is notable as the first time in recent memory that a battery company has sued in the US International Trade Commission (ITC) for design patent infringement. Battery patents typically cover new and useful features of a … Continue Reading
In his continued blog series, Dr. Paolo Beconcini examines recent developments in Chinese IP law together with their international causes and consequences. In a first post, he reviews some of the major changes to the Patent Law and assesses their likely impact on foreign businesses in China. In a second post, he reports on the Comprehensive Agreement … Continue Reading
The year 2020 saw increasing acceptance of cannabis in the US, as indicated by legalization in another five states, proposed federal legalization, and the designation of cannabis (where available) as essential during the coronavirus pandemic. The United Nation’s recent reclassification of cannabis signals similar changes on a global scale. As a result of these changes, … Continue Reading
Back in July we wrote about the doctrine of equivalents (DOE) in bio/pharma cases in general, and the on-going saga of DOE in Lilly’s ALIMTA® litigation specifically. Last week, the Federal Circuit penned a new chapter, issuing a non-precedential decision in Eli Lilly and Company v. Apotex, Inc. Didn’t this all end last June? Not … Continue Reading
In 1988, the Danish movie called “Babette’s Feast,” based on a story by Danish novelist Karen Blixen (Isak Dinesen), earned an Oscar for best foreign language film. We remember this much-loved movie about loss, survival and the art of French food. For those of you who are interested in IP and are going to share … Continue Reading
On 18th December 2020, the German Federal Assembly (Bundesrat) approved the law on the Agreement on a Unified Patent Court of 20th June 2013 (UPC-Agreement) with the required two-thirds majority. It was the last puzzle piece for paving the way for a Unitary Patent System in Europe, which is now expected to be operational from … Continue Reading
On December 9, 2020, the US Patent and Trademark Office (Office) published some final rules in the Federal Register. For the most part, these rules codified existing Patent Trial and Appeal Board (PTAB) practice relating to whether and how the PTAB institutes an inter partes review (IPR) or a post-grant review (PGR) proceeding, and to … Continue Reading
On August 27, 2020, the Federal Circuit issued a decision in Baxalta Inc. v. Genentech, Inc. overturning the District Court’s ruling that Genentech did not infringe the claims of US Patent No. 7,033,590 and remanded for further proceedings. The Federal Circuit’s decision was based on its finding that the District Court’s claim construction was erroneous … Continue Reading
On September 16, 2020, the United States Patent and Trademark Office (USPTO) announced a new pilot program for COVID-19 related inventions. The new program allows for the deferral of filing fees for provisional patent applications directed to a product or process related to COVID-19, where the product or process requires Food and Drug Administration (FDA) … Continue Reading
Recent Supreme Court decisions have added clarity to the interpretation of the law of Standard Essential Patents (SEPs) and Fair, Reasonable And Non-Discriminatory (FRAND) licensing rules in Europe. On 5 May 2020, the German Federal Court of Justice issued its decision in Sisvel v. Haier.[1] The reasons for the judgment were published on 7 July … Continue Reading
On July 3, 2020, China released the second draft amendments to the Patent Law. This second draft introduces significant changes to both the current Patent Law and the 2019 draft amendment. It also comes at a time when China is introducing significant legislative and judicial changes to other key IP rights, like new criteria for … Continue Reading
Have you ever wondered why European patent applications sometimes include a “dot” in their number and what is the significance of the number after the dot? Well, we have. Some of our colleagues from non-EU offices have asked us about the meaning and significance of the dot (decimal point) and the digit after it, in … Continue Reading
In the U.S., patent ownership vests with inventors, and each inventor can exploit their rights without accounting to the other. Neglecting to identify the true inventors of a claimed invention, and obtain assignments of their rights, can create chaos. This is what happened in Dana-Farber Cancer Institute, Inc. v. Ono Pharmaceutical (Fed. Circ., 2020), where … Continue Reading
The US Patent and Trademark Office (USPTO) has issued an encouraging and informative 2020 Update to its February 2019 Progress and Potential profile of women inventors on US patents. The initial report documented trends in the proportion of patent inventors who are women (the “Women Inventor Rate”) and the proportion of patents that have at … Continue Reading
Since Egyptian Goddess, Inc. v. Swisa, Inc., the sole test for determining whether a design patent has been infringed is the ordinary observer test. Under this test, “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as … Continue Reading
In April 2020, the Supreme Court of the People’s Republic of China published the amended draft Provisions concerning interpretation of certain norms of the patent law and its implementing regulations about the administrative litigation of patent rejections and invalidations.[1] The Provisions offer the Supreme People’s Court the opportunity to address new issues and matters not … Continue Reading
Inventors and lawyers — both in-house and firm counsel — involved in the prosecution of patents have a duty of candor to the US Patent Office, and breaching that duty renders patents unenforceable for inequitable conduct. Once common in litigation, allegations of inequitable conduct faced a more stringent review after the Federal Circuit’s decision in … Continue Reading
The last several months have presented new and formidable challenges for virtually every industry in light of COVID-19. Among these challenges are what to do about the various industry meetings and conferences that are used for networking, introducing new ideas, securing supply/distribution contracts, and developing technology standards. These types of events have historically been held … Continue Reading
On May 8, 2020, the United States Patent and Trademark Office (USPTO) began a Pilot Program to provide prioritized examination of patent applications of a product or process related to COVID-19 diagnosis or treatment. Examples of such patents include: an Investigational New Drug (IND) application, an Investigational Device Exemption (IDE), a New Drug Application (NDA), … Continue Reading
