Prosecution – Page 2 – IP Law Watch

Shifting Gears on the Presumption of Nexus for Secondary Considerations of Non-Obviousness

Jan 03 2020

The Federal Circuit’s decision last week in Fox Factory, Inc. v. SRAM, LLC provided clarity regarding the nexus requirement of secondary considerations of non-obviousness, particularly with respect to whether a patentee is entitled to a presumption of nexus. [1] Despite the Patent Trial and Appeal Board (“PTAB”) finding that the cited art disclosed all the limitations of the challenged patent—which claimed a bicycle chainring for engagement with a drivetrain—and that a skilled artisan would have been motivated to combine the cited prior art, the PTAB found that, based on an analysis of secondary considerations, the claims of the challenged patent were not obvious. [2] The Federal Circuit focused in on the comparison of the patentee’s product and the scope of the challenged claims. [3] In doing so, the panel found that “[a] patent claim is not co-extensive with a product that includes a ‘critical’ un-claimed feature . . . that materially impacts the product’s functionality.” [4]

Unconstitutionality of PTAB judges corrected by Federal Circuit decision

Nov 03 2019

In a Halloween decision, the Federal Circuit issued its opinion in Arthrex, Inc. v. Smith & Nephew, Inc. et al., an appeal from IPR2017-00275. Without wading into the technical merits of the decision, the three judge panel of Judges Moore, Reyna, and Chen, issued a decision that, at first glance, sent tremors through those who practice before the PTAB in AIA-based post-grant review proceedings: finding the appointment of PTAB judges unconstitutional.

New Intellectual Property (Dispute Resolution) Bill In Singapore

Jul 18 2019

On 8 July 2019, the Intellectual Property (Dispute Resolution) Bill (Bill) was tabled in Parliament, after a public consultation on the draft Bill that was conducted in March 2019 by the Singapore Ministry of Law.

The Bill aims to ensure that the Singapore Intellectual Property (IP) regime continues to support innovative activities in Singapore and positions Singapore as a choice of venue for international IP dispute resolution.

Webpage specimens not automatically use in commerce

Apr 12 2019

On April 10, 2019, the Federal Circuit issued a precedential opinion, at the request of the U.S. Patent and Trademark Office (USPTO), regarding submissions of webpages as specimens of use. In re Siny Corp is an important reminder to applicants and practitioners to carefully consider whether webpage specimens to be submitted to the USPTO actually comprise the offering of goods and/or services at the point of sale, or whether they are mere advertising.

Federal Circuit holds that reissue application of hemodialysis shunt patent impermissibly recaptured surrendered subject matter

May 02 2018

The Federal Circuit, in a nonprecedential decision, held that claims of a reissue application were properly rejected because they recaptured subject matter surrendered during the original prosecution of U.S. Patent No. 8,282,591 (“the ’591 patent”).[1]

The ’591 patent is directed to an arteriovenous shunt that connects a graft to an artery and passes returned blood through a “single lumen venous outflow catheter” into the right atrium of a patient’s heart. This system reduces the risk of infection, clotting, and hyperplasia compared to systems that remove and return blood through a graft connected to a vein.[2]

Getting closer to put the UPC into force

Apr 26 2018

April 26, 2018 is a remarkable date: first it’s World IP Day celebrating IP around the world. Second, and this is unique, the British IP Minister Sam Gyimah MP announced that the UK ratified the Unified Patent Court Agreement (UPC Agreement). By doing so the UK agreed to be bound to both the UPC agreement and the UPC’s Protocol on Privileges and Immunities (PPI). The UPC will be a court common to the contracting member states within the EU having exclusive competence in respect of European Patents and European Patents with unitary effect.

Significant changes ahead for Australian patents

Sep 07 2017

The Australian Government has proposed significant changes to Australian patent law following an inquiry into the IP system recently completed by its advisory body, the Productivity Commission. These include:

Amending the inventive step threshold to reflect that of the European Patent Office
Phasing out innovation patents
Requiring applicants to identify an invention’s technical features in their claims, and
Adding an objects clause to the Patents Act.

European Copyright Reform

Feb 01 2016

By Alessandra Bellani and Alessandra Feller

On December 9 2015 the European Commission presented a proposal for European Copyright reform. The proposed framework, inspired by the European digital single market project, aims to provide European users with wider content and strengthen copyright protection, as well as ensure authors a fair remuneration.

Is Australia’s Innovation Patent System on Borrowed Time?

Aug 19 2015

On 5 August 2015, the Australian Patent Office (IP Australia) released a consultation paper seeking feedback from interested stakeholders on the Advisory Council on Intellectual Property’s (ACIP) recommendation that the Australian Government should abolish the innovation patent system.

Introduced in 2001 under the Howard Government, the innovation patent system is Australia’s second tier patent right having a shorter term,eight years, and a lower threshold of invention (i.e. an ‘innovative step’ as opposed to an ‘inventive step’ required for a standard patent).

Louboutin Succeeds Again in Long Standing European Union Trade Mark Opposition Over Red Sole

Jul 29 2015

Christian Louboutin (Louboutin) has again been successful in a long running opposition proceeding filed by Roland SE (Roland) against its red sole trade mark in the European Union.

Louboutin has faced legal challenges around the world in registering and enforcing its signature red sole on its shoes. In 2010, Louboutin filed a Community Trade Mark application for the below trade mark in class 25 for “high-heeled shoes (except orthopaedic footwear)” (Louboutin Mark):
shoe

(Louboutin Mark)

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