China Passes Fourth Amendment to Patent Law
Despite a "regular pattern" of amending the Patent Law every eight years since it was enacted in 1984, on October 17, 2020, China has now passed the Fourth Amendment to the Patent Law after 12 years since the Third Amendment. Considering certain significant changes in the Fourth Amendment to the Patent Law and its profound implications, the long wait may prove worthwhile.
CAFC Declines Trial Court's Request for Help Understanding Section 101
As predicted, the Court of Appeals for the Federal Circuit has now declined to hear an interlocutory appeal of a United States District Judge's denial of an accused infringer's motion to dismiss the complaint based on the infringer's defense of patent subject matter ineligibility under 35 U.S.C. Section 101. Trial judges unsure of how to apply the U.S. Supreme Court's Alice decision and subsequent CAFC precedent applying Alice must invalidate patents-in-suit at the pleading stage of a lawsuit if they wish to obtain early appellate confirmation of their Section 101 patent subject matter eligibility rulings.
Product-by-Process Claims in The United States
Despite numerous areas of patent law harmonization between the IP5 over the past few years, several areas of distinct disagreement remain between the members. One specific area of particular interest to those practicing in the chemical and life science arts is the topic of "product-by-process" claims, by which a product is defined at least in part in terms of the method or process by which it is made.
Patent Specification's Disclaimer of Invention's Scope May Break Chain of Priority
In Akeva, LLC, v. Nike, Inc., the U.S. Court of Appeals for the Federal Circuit held that a disclaimer of claim scope in a patent specification that excluded a particular embodiment prevented later claims in the continuation patents from claiming the excluded embodiment, thereby breaking the priority chain. The Court also held that a disclaimer of claim scope in a specification could not be subsequently rescinded without introducing prohibited new matter.
Summary of USPTO Report on Public Views on Patenting AI Inventions
As part of the efforts to promote the understanding and reliability of intellectual property (IP) rights in relation to Artificial Intelligence (AI) technology, the USPTO issued a request for comments (RFC) on patenting AI inventions on August 27, 2019. Based on the received comments to the RFC, the USPTO issued a report on Public Views on AI and IP policy. A summary of Part I of the report, which addresses patentability of AI inventions, is presented.
Effective October 1st, 2020, Osha Liang LLP will become Osha Bergman Watanabe & Burton LLP (OBWB)
We are excited to share some important news with you. As of October 1st, 2020, we are rebranding. Our U.S. firm will change its name from Osha Liang LLP to Osha Bergman Watanabe & Burton LLP (OBWB).
The Jury Is "In" On Standard Essentiality
As recently explained by the Court of Appeals for the Federal Circuit in Godo Kaisha IP Bridge 1 v. TCL Comm'n Tech. Holdings Ltd., the question of whether a defendant's standard-compliant product infringes a Standard Essential Patent ("SEP") merely because it is standard-compliant may be submitted to a jury. It is not necessary in every case involving SEPs to ask the jury to compare the patent claims to the accused infringing product. Moreover, there is no requirement of any prior ruling by the district court that compliance with mandatory sections of the standard necessarily results in infringement.
Osha Liang Piloting the Inaugural Midsize Mansfield Rule
We are pleased to announce our participation in the inaugural group of midsize law firms piloting Diversity Lab's Midsize Mansfield Rule. Accordingly to Diversity Lab's 09/15/20 press release, "The goal of the Mansfield Rule is to boost the representation of diverse lawyers in law firm leadership by broadening the pool of candidates considered for these roles and opportunities." [See full press release here] This collaboration...
