Posts in IP News

A reasonable expectation of success in combining references to obtain the claimed invention does not require absolute certainty or predictability. As a result, an invention is not non-obvious simply because persons of ordinary skill in the art continues to study aspects of the claimed invention after an initial disclosure. Rather, conducting additional or follow-up studies can be strong evidence that success is expected or likely.

The African economy, which is home to more than a billion people, has tripled since the year 2000 (Michael Lalor; 2014) and currently houses 9 of the 15 fastest growing economies in the world (Spoor & Fisher; 2016), presenting immense business opportunities. In this article, we shall take a look at the patenting systems in Africa, which are a complicated mix of National and Regional systems, and the costs involved… The lack of a single regional patent office makes the process of obtaining patents in Africa an extremely challenging one as applicants have to navigate their way through a bundle of regional and national legislations, each mandating its own set of procedures.

We need to ask ourselves: what are the defining features of a “filler patent”? At least two things stand out. First, “filler patents” go through more rounds of prosecution than other patents. Secondly, the independent claims of “filler patents” are longer (have higher word counts) than other patents… A “round of prosecution” means an Office action from the USPTO and the applicant’s response. It is typical for “filler patents” to go through multiple rounds of prosecution, such as six or more rounds. At each round of prosecution, the claims are tailored, so that the scope of protection of the resulting patent is whittled down until essentially nothing is left. Then the application is allowed to issue.

The overly inclusive nature of obviousness interpretations has led to problems. First, with an overly broad view of obviousness, patent applicants are encouraged to flood patent examiners with prior art references in order to immunize prosecution from future surprises of prior art, even though many of these references are irrelevant. This flood of prior art burdens examiners and encumbers the patent prosecution process. Second, PTO examiners, PTAB judges and the federal district courts have different standards of determining obviousness, with the courts maintaining a clear and convincing standard for challenging the validity of an issued patent. For example, examiners may tend to narrow prior art to the field of an invention, thereby allowing applications that are then retested in IPRs under broader (higher bandwidth) standards, thereby explaining discrepancies in IPR claim kill rates.

The World Intellectual Property Organization (WIPO) has published its annual World Intellectual Property Indicators. The 2016 report dissects the macro trends associated with filing activity and registrations for 2015 in the following intellectual property areas: patents, trademarks, industrial designs, and plant varieties… The twenty-year era of growth in industrial design patent applications came to an abrupt end in 2014, with a substantial drop in applications filed by 10.2%. In 2015, these figures are back on the rise, with a 2.3% increase. The number of designs in applications also rose in 2015, with non-resident applicant designs being the primary catalyst for growth. China was the main contributor to the number of designs per application, providing half the global total.

Palo Alto, CA (August 1, 2017) – VLP Law Group LLP is pleased to announce that David J. Thibodeau has joined the firm’s Intellectual Property Practice Group as a partner, based in Boston and New Hampshire. Mr. Thibodeau’s law practice emphasizes the development and refining of patent portfolios, strategic advice concerning competitive intellectual property rights, and due diligence for technology-based financial, merger/acquisition and other business transactions.

In a unanimous decision, the Court of Appeal has upheld the High Court’s ruling involving Nestlé’s attempt to register a four-finger bar shape as a trade mark in the United Kingdom, meaning – at least for now – it remains unregistered.

On Wednesday, July 26th, Madison, WI-based chocolatier CocoVaa, LLC filed a complaint for declaratory relief against candy-making giant Mars Inc. of McLean, VA. The complaint seeks a judgment that the standard character mark “COCOVAA” does not infringe upon Mars’ trademark for “COCOAVIA”, a nutritional supplement derived from cocoa designed to improve blood flow. The case has been filed in the Western District of Wisconsin.

The General Court of the Court of Justice of the European Union (CJEU) has dismissed an appeal from the unsuccessful application by Arrigo Cipriani (Arrigo) to have Hotel Cipriani’s EU trade mark (EUTM) for CIPRIANI, registered for hotel services among other things, declared invalid on the grounds that (i) it was registered in bad faith and (ii) that, under national Italian law, Arrigo had a prior right to that name… The CJEU affirmed the test for bad faith and the principle that extending the protection of a national mark by registering an EUTM is part of an undertaking’s normal commercial strategy. The fact that the Registrant had an earlier, identical national mark, which Arrigo did not oppose or object to, contributed to the finding that there was no bad faith. In any case, bad faith remains a high threshold to prove and if owners have EU national rights, which were never challenged by the invalidity applicant, this could further add to the difficulty of proving bad faith by the registrant.

On July 28th, 2017, China’s State Intellectual Property Office (SIPO) announced a new set of regulations which are intended to streamline the examination of patent applications in certain burgeoning fields of technology. The new policy, which comes in response to “the central government’s call for an improved business environment, streamlined procedures for administrative approval, and the booming market,” will allow for the examination of both utility model and industrial design patent applications; SIPO guidelines issued as recently as five years ago only covered a single patent application designation, invention patents.

Although the distinction between inherency in obviousness and anticipation is sometimes blurred, the two concepts are quite different and a claim may be inherently anticipated without being inherently obvious.  This could happen if the missing and unknown limitation were to flow naturally from the teachings of the prior art, and yet not be predictedable… A major difference between having knowledge of the missing limitation versus not having it is that the knowledge can provide the motivation to combine prior art references. 

“I think at the end of the day, patents are either valid or invalid as a legal instrument and therefore it’s not very helpful to talk about quality or ‘good’ or ‘bad,” Judge Michel said. “They’re either valid or not valid and with respect to someone practicing the technology, the patent is either infringed as properly construed or it is not infringed.”

Dentons, the global law firm, has added three patent partners to its award-winning Intellectual Property and Technology practice. Peter Yim and Brian Ho have joined the Firm’s San Francisco office and Christopher Eide joined the Silicon Valley office. Also joining are 16 associates and patent agents/analysts in five offices across the US.

Ironically, judicial decisions on patent eligibility tend to depend on inventiveness, with tests of originality that tend to refer to novelty, reducing the issue of patentability to novelty. For example, post-Alice Federal Circuit decisions in Enfish and Bascom flush out the two-step tests of a technical contribution and an inventive step, thereby reducing patentability to inventiveness. Uncertainty about patent validity, the changing standards for assessing patent validity or the false equivalence between patentability and novelty, has tended to destabilize the patent system.

The Federal Circuit issued a decision in Regeneron Pharmaceuticals, Inc. v. Merus N.V. upholding the determination that the patent owned by biotech firm Regeneron was unenforceable. The decision affirmed a lower court’s finding based on Regeneron’s inequitable conduct during prosecution of the patent at the U.S. Patent and Trademark Office (USPTO), which was the result of the withholding of references from the USPTO that had but-for materiality. The patent, which the Federal Circuit deemed unenforceable, is U.S. Patent No. 8502018, titled Methods of Modifying Eukaryotic Cells.