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USPTO Ramps Up Efforts to Promote Women Entrepreneurs

The United States Patent and Trademark Office (USPTO) on Wednesday launched the Women’s Entrepreneurship (WE) initiative to “inspire women and tap their potential to meaningfully increase equity, job creation, and economic prosperity.” The initiative is a collaborative effort with the United States Department of Commerce. “Unleashing the potential of women entrepreneurs is good for business, good for families and good for our economy,” said U.S. Secretary of Commerce Gina Raimondo.

IP Practice Vlogs: Lessons in Calculating Patent Term

After June 8, 1995, U.S. utility patent terms changed from 17 years from issuance to 20 years from filing to harmonize with the rest of the world under the Uruguay Rounds Agreement Act. For design patents, after the Hague Agreement on May 13, 2015, design patent terms changed to from 14 years from issuance to 15 years from the date of grant/issuance. In the United States, patent term is subject to the following: patent term adjustment (PTAs), patent term extension (PTEs) and terminal disclaimers. While many other countries also have PTAs and PTEs, terminal disclaimer practice exists only in the United States because we are the only country that issues judicially-created, non-statutory double patenting rejections.

Advice from the SEP Masters: Rely on the Data, Engage with Courts and Regulators, Be Wary of Calls for Special Tribunals

IPWatchdog held its Standards, Patents and Competition Masters ™ 2022 Program this week, November, 14-15, in Ashburn, Virginia, covering topics from how to define “fair reasonable and non-discriminatory” (FRAND) rates to litigating standard essential patents (SEPs) in South America and Europe. Almost all of the panels touched on how courts around the world are viewing the practices of implementers and patent holders in the SEP debate and how standoffs between implementers and patent owners in FRAND cases can be better resolved.

CAFC Expressly States Patentee Disclaimers During IPR are Not Binding on the PTAB’s Patentability Analysis

Earlier today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in CUPP Computing AS v. Trend Micro Inc. affirming final written decisions from a trio of inter partes review (IPR) proceedings invalidating CUPP Computing’s patent claims covering methods for performing security operations on a mobile device. The CAFC’s decision makes clear to patent owners defending their rights at the Patent Trial and Appeal Board (PTAB) that the Board is not required to consider a disclaimer entered during IPR as binding on the proceedings before it.

Court Throws Out Trade Secrets Lawsuit Filed Against IBM China

The U.S. District Court for the Southern District of New York last week dismissed a trade secrets lawsuit against International Business Machines Corp (IBM) and IBM China by Beijing Neu Cloud Oriental System Technology Co. The Chinese firm alleged that IBM stole trade secrets from its joint venture in order to sell IBM products to the Chinese market. IBM China and Beijing Teamsun Technology Co. originally formed Beijing Neu Cloud in 2014 as a joint venture to distribute IBM technology in China. But in a 2021 complaint, Beijing Neu Cloud alleged that IBM induced “Neu Cloud and its majority owner through later-breached contracts to expend resources and provide IBM with access to sensitive, confidential customer information, which IBM then secretly used to create competing ventures in China.”

Partial Win for VLSI Against Intel as CAFC Reverses PTAB on One Claim of Integrated Circuit Patent

In a precedential opinion issued yesterday, the U.S. Court of Appeals for the Federal Circuit (CAFC) ruled partially in favor of VLSI Technology, Inc. in its case with Intel, reversing the Patent Trial and Appeal Board’s (PTAB’s) holding that one claim of U.S. Patent No. 7,247,552 was unpatentable. The court upheld the PTAB’s unpatentability findings on the three other challenged claims. Intel filed three separate inter partes review (IPR) petitions against VLSI challenging the validity of claims 1, 2, 11, and 20 of the ‘552 patent, which is directed to “’[a] technique for alleviating the problems of defects caused by stress applied to bond pads’ of an integrated circuit.”

Understanding IP Matters: Embracing Open Innovation – The Business of Licensing with or without Patents

Is it a great time to be an inventor or a terrible one? From some corners of the inventing community, the news is doom and gloom, but for Stephen Key, a successful creator and entrepreneur, the opportunities faced by inventive people today are as varied and exciting as the challenges. Patents, he believes, are a tool to help people share their creativity. To commercialize some products they are absolutely necessary, but to bring others to market they may not be needed. In an industry where inventors are regularly charged tens of thousands of dollars for help with inventions that will never make it to market, his unique perspective and commitment to giving back to the next generation of creators have earned him a large following.

Disruptive Startups Cannot Survive in a Post-AIA Patent Landscape

I founded Netlist in Irvine, California, over 20 years ago to develop the most sophisticated memory module technology in the world. We succeeded, shipping over a billion dollars of product and partnering with top companies, such as IBM, HP and Dell, to power their high performance computers. Netlist continues to invest heavily in R&D in the U.S. We hold more than 130 patents, many of which have been designated as standards-essential. Our memory technology has benefited consumers, businesses and the U.S. military as it is now an integral part of advanced computers deployed in a variety of industries. When we began the company, we were under the impression that securing a U.S. patent was the high-water mark of innovation and that this would protect our inventions against infringement. A patent, we believed, would allow small innovators like Netlist to compete with large incumbents that wield enormous market power.

Ninth Circuit Affirms Validity of Unicolors’ Copyright Registration on Remand, But H&M Scores Big on Remittitur Calculations

On November 10, the U.S. Court of Appeals for the Ninth Circuit ruled in Unicolors, Inc. v. H&M Hennes & Mauritz, L.P. following remand from the U.S. Supreme Court, which clarified the knowledge standard required for invalidating copyright registrations based on inaccuracies in the registration application. In light of that ruling, the Ninth Circuit upheld Unicolors’ ability to maintain its copyright infringement action against H&M because the plaintiff did not have the requisite knowledge of the legal inaccuracy on its registration application to invalidate the registration. While the Ninth Circuit dismissed most of H&M’s arguments on remand, the appellate court did agree with H&M that the district court’s post-remittitur damages were improperly calculated, leading to a significant reduction in the amount awarded to Unicolors in the case.

Making the Most of Relationships with International Associates

For many intellectual property lawyers, the search for a local associate to assist with IP filings around the world begins and ends with a quick email to colleagues asking who knows someone in a particular country. And while personal connections are important, this method probably won’t lead to the best legal services for your clients. As we emerge from the pandemic and return to face-to-face meetings, here are several tips for vetting foreign associates. This process ideally starts overseas and leads to in-person conversations, but text chats and video calls still have value.

Federal Circuit Affirms PTAB’s Mixed Decision on Air Mattress Patents

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision affirming the Patent Trial and Appeal Board (PTAB) on two mixed inter partes review (IPR) decisions involving American National Manufacturing and Sleep Number Corp. that found some, but not all, of the challenged claims not unpatentable. The IPRs on appeal involve U.S. Patent Nos. 8,769,747 and 9,737,154. They “describe systems and methods that purport to adjust the pressure in an air mattress ‘in less time and with greater accuracy’ than previously known.” American National filed IPR petitions challenging many claims of both patents and asserting that most of the challenged claims would have been obvious over various prior art references.

USPTO Rescinds Voluntary CLE Certification Program Following Stakeholder Criticism

Today, the Federal Register published a final interim rule submitted by the U.S. Patent and Trademark Office (USPTO) that will eliminate provisions within the agency’s rules of practice establishing a voluntary program for certifying the completion of continuing legal education (CLE) credits by registered patent practitioners and those granted limited recognition to practice in patent matters before the USPTO. The elimination of the voluntary CLE program follows a series of criticisms raised over the agency’s lack of compliance with federal administrative law statutes meant to objectively quantify the burden of agency rulemaking on stakeholders.

How to Rewrite Method-of-Treatment Claims to Conform to Japanese Patent Practice

In the United States, claims directed to methods of treating/diagnosing human disease are patentable. On the other hand, in Japan, such claims are unpatentable. Therefore, the applicant is required to rewrite or delete the claims when a patent application (e.g., Patent Cooperation Treaty application) containing such claims enters the Japanese national phase and is examined. In this article, I offer my personal views on how to rewrite method-of-treatment claims for Japanese examination. I will particularly focus on claims that may or may not conform to Japanese patent practice while past Japanese patent cases and the current patent system are taken into account.

This Week in Washington IP: Science Results from the James Webb Space Telescope, Measuring Innovation and Competitiveness in the U.S. and EU, and PPAC’s Next Regular Meeting at the USPTO

This week in Washington IP news, the House Space Subcommittee takes a look at the first few images and scientific measurements that have been captured by the James Webb Space Telescope, while the Senate Judiciary Committee vets several nominees to federal judgeships including a couple of judges chosen for appellate courts seeing much of the country’s IP appeals. Elsewhere, the Information Technology & Innovation Foundation releases the findings of a joint study on competitiveness and innovation in North America and Europe, the U.S. Patent and Trademark Office hosts the latest regular meeting of the Patent Public Advisory Committee, and Brookings Institution discusses the role of state and local regulators in regulating digital assets and cryptocurrency.

SCOTUS Takes on Scope of Enablement Inquiry in Amgen v. Sanofi: Implications for Pharma/ Biotech and Beyond

On November 4, the U.S. Supreme Court granted Amgen’s petition for certiorari against the advice of the U.S. government – taking up Amgen’s challenge to the Federal Circuit’s enablement review of its PCSK9 antibody patents covering evolocumab (Repatha®). In its petition, Amgen asserts that the Federal Circuit has gone too far in invalidating its PCSK9 antibody patents by imposing a disclosure burden beyond the requirements of 35 U.S.C. § 112. Notably, the Supreme Court, albeit with a different composition, recently declined to hear several other similar cases raising issues with the Federal Circuit’s enablement precedent.

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