We Have Moved
We are pleased to inform you that OBWB's headquarters is moving to a new address. As of July 1st, our new Houston office will be located at: 1100 Louisiana Street. Suite 4900. Houston, Texas 77002.
Green Patents: Common Challenges in Prosecution Before The EPO
Patents relating to technologies having a potential mitigation effect on global climate change have sensibly grown in the last two decades. Although these patents are directed to very diverse technologies, they may share common challenges during the prosecution before the European Patent Office (EPO). One of these challenges relates to admissibility of post-published evidence for assessing inventive step. Whether it may be admitted or not depends on a pending decision of the Enlarged Board of Appeal.
USPTO Issues Interim Guidance Modifying and Clarifying PTAB's Application of "Fintiv" Factors When Making AIA Post-Grant Proceeding Institution Decisions
On June 22, 2022, the USPTO issued interim guidance regarding the application of the so-called "Fintiv" factors the PTAB considers in determining whether to institute an AIA post-grant proceeding where there is parallel district court litigation or ITC administrative proceedings. The interim guidance appears likely to narrow the circumstances, and thereby reduce the number of times, when the PTAB will use its discretionary denial authority.
Tokyo District Court Says All System Components Must Be In Japan for Accused Video Distribution System to Infringe Japanese Patent
In March 2022, the Tokyo District Court applied the principle of territorial jurisdiction to dismiss a patent infringement claim of Dwango Co., Ltd. against American company FC2's video distribution system. According to the decision, there is no infringement of the patent's system claims because FC2's servers are located in the United States, even though the users instruct the system from Japan, and receive video distribution services on terminals located in Japan. Japanese and American patent law appear to dictate opposite results in similar circumstances.
OBWB Partner is Panelist for AIPLA Diversity in IP Law Webinar: OGs of IP - The Sequel
On June 9th, Yuichi Watanabe joins AIPLA panel for their "Diversity in IP Law Webinar" - OGs of IP. This event is free for AIPLA members.
ABA Publishes Article by OBWB Trademark Attorney
OBWB Partner Keelin Hargadon's article "Federal Trademark Registration Program Still at Odds with Cannabis Industry" was recently published in the American Bar Association's spring newsletter.
OBWB Commemorates 24th Anniversary
On May 31st, the OBWB Houston office commemorated the firm's 24th anniversary with a crawfish boil! The smiles say it all. It was great to be able to celebrate this special occasion in person with our colleagues.
EPO and JPO Suspend Patent Prosecution Highway program with both ROSPATENT and EAPO
Following Russia's invasion of Ukraine, the Patent Prosecution Highway (PPH) program between the EPO and both ROSPATENT and EAPO, and also between the JPO and both ROSPATENT and EAPO, have been suspended indefinitely. These actions follow identical measures previously announced by the USPTO.
General Industry Skepticism Alone Is Not Enough To Defeat An Obviousness Invalidity Challenge
Has the Federal Circuit Court of Appeals announced a new bright-line rule regarding industry skepticism and its role as evidence against a finding of motivation to combine prior art references? Some might think so, but a careful analysis of Auris Health, Inc. v. Intuitive Surgical Operations, Inc., may lead to different conclusions.
Recent CAFC Decisions Teach That "Teaching Away" Is Difficult To Establish When Responding to Obviousness Assertions
While "teaching away" is often considered and invoked as a strategy for responding to an assertion of obviousness, its success is less common, with "teaching away" having a high bar to show discouragement or that a resulting combination would not work. Recent decisions of the U.S. Court of Appeals for the Federal Circuit demonstrate the challenges of this strategy.
