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 claims at issue were indeed directed to patent ineligible subject matter. This case demonstrates the difficulties of obtaining medical diagnostic claims, but also highlights that a potential path forward may have been possible with disclosure of specific treatment regimens in the specification. Continue Reading
BEST MODE for Patent Practitioners: Bypassing Traps of the Bypass Application
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 prior art, it is imperative for practitioners to verify whether U.S. Patent and Trademark Office (USPTO) Examiners are properly applying pre-AIA 35 U.S.C. § 103 rejections. This can be challenging since the priority chain for a prior art reference can become quite complex, especially when cited references involve priority to PCT applications, non-English disclosures, and provisional applications. Continue Reading
What a Great IDEA! Collecting Data on the Diversity of Patent Inventors
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 Act,” comes as a response to increasing public concerns about the lack of diversity among inventors named on patents, and the inability of the USPTO to provide data to reliably assess the situation. The “idea” hearkens to a primary maxim of business that, “if you can’t measure it, you can’t improve it.” Like many other government programs, it would empower the USPTO to collect such data on a voluntary basis, and require the USPTO to report on any such data provided. Continue Reading
Trade Secret Protection in China Before, and After, the 2020 US-China Trade Agreement
We are delighted to share a recent journal article by our China IP expert, Paolo Beconcini, as published in the Review of Intellectual Property Law (RIPL). In this article, Dr. Beconcini provides a thorough and well-documented review of recent changes in China’s regulations on trade secret protection and enforcement. Many of these changes were made in response to the U.S. WTO lawsuit of 2018 and the U.S.-China Trade Wars, including shifting the burden of proof and lowering thresholds for criminal enforcement. The article assesses the implementation of promised changes, and provides suggestions for further changes as well as guidance to practitioners for navigating trade secret enforcement challenges in China.
© Copyright 2021 Squire Patton Boggs
Trademarking Common Foreign Words – Yes You Can
We are delighted to share an interesting article by our colleagues in France, Catherine Muyl and Marion Cavalier, about whether and how a common word in a regional dialect can qualify as a trademark in France. They describe a case where a company named Krampouz that makes plates for cooking crepes registered the marks “KRAMPOUZ” and “KRAMPOUZ BILLIG.” The word “krampouz” means crêpe in Breton, and “billig” indicates the cast iron plate on which crêpes are traditionally cooked. As they explain, such trademarking of local language terms that would be generic if translated can be successful under French law. As explained here, this approach can also be successful under US law.
Delaware Reminds Litigants Not to Wait to Disclose Infringement Theories Under the Doctrine of Equivalents
Back in July and December 2020, we wrote about the seeming rise in allegations of infringement allegations under the doctrine of equivalents (DOE) in life sciences cases. We noted that in those recent cases the Federal Circuit provided in-depth analyses of the application of DOE, prosecution history estoppel, and the various other limits on the DOE, and suggested that potential infringers needed to keep an eye on the substantive evolution of the doctrine.
But a recent decision in Arendi S.A.R.L. v. Motorola Mobility LLC, Civ. Action No. 1-12-cv-01601 (D. Del.) (docket entry 250), reminds practitioners that before addressing the substantive elements of DOE, they should make sure it’s properly in the case at all. In that case, Arendi’s original complaint accused Motorola of infringing “literally or under the doctrine of equivalents.” Its initial disclosures, filed under the Default Standard for Discovery, accused Motorola of “infringing,” but did not mention the DOE. Similarly, Arendi’s claim charts referred to “infringement” without distinguishing between literal infringement and the DOE. After the close of fact discovery, Arendi submitted its infringement expert reports, noting that “[t]o the extent that the foregoing evidence does not demonstrate literal infringement of this element, the evidence demonstrates infringement . . . under the doctrine of equivalents.” Its reply infringement expert reports, Arendi included substantive opinions relating to the DOE. Continue Reading
Understanding IP in China: Design Patents
In the last of his recent series of blogs on IP in China, Dr. Paolo Beconcini discusses amendments expanding the scope of design protection in China and predicts a new flood of “junk” design applications. He discusses the basis and requirements for Chinese design patents, including issues relating to functionality. He also discusses some structural issues that have contributed low-quality filings, including the lack of required substantive examination. The blog can be found here.
Squire Patton Boggs Recognized for Trademark Expertise Around the World
We are delighted to share the recent recognition of our global trademark practice by World Trademark Review for 2021. Squire Patton Boggs received renewed recognition as a leading firm in the “China (foreign)” chapter, and for its UK and Germany practices. In addition, two of our US partners – Deborah Lodge and Phil Zender – were recognized as “Recommended Experts.” As reported, Ms. Lodge “has a deft touch on strategic branding matters and adds value with her granular privacy and internet law insight. Licensing is a strong component of her practice and something she excels at.” As also reported, Mr. Zender “has a complete command of trademark law and advocates strongly for clients. His advice is extremely thorough and reflects the strategic aspects of his thinking. Highly responsive, he has a way of making each client feel like his only client – his service is second to none.” Importantly, and as also noted in its WTR 1000 rankings, the China, UK, Germany, and US experts of Squire Patton Boggs “link[] up closely . . . to address cross-border issues as if the borders simply weren’t there.”
Congratulations to our experts Kerry Lee (UK), Reinhart Lange (Germany), Iliana Haleen (Germany), Paolo Beconcini (China), Deborah Lodge (US – DC), and Philip Zender (US – California).
Understanding IP in China: The Rules of Evidence
In his continued blog series, Dr. Paolo Beconcini and Elisa Li discuss the principles of evidence pertaining to IP disputes in China, including recent and substantial changes to those rules. In China, evidence must be collected prior to the filing of a case, as there is no discovery. The changes address commonly-occurring issues of authenticity, foreign documents, and damages, and are likely to impact litigation strategies. The blog can be found here.
© Copyright 2021 Squire Patton Boggs
New Procedures Indicate China’s Patent System is Now Focused on Quality, not Quantity, of Patents
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 the massive surge in low-quality patent filings (a/k/a junk patents) by Chinese firms during the last decade, while subtly changing the scope of the statutory rules on the examination of utility models and design patents. The ultimate goal is another implementation of an old Marxist rule, namely, the transformation from quantity to quality.
