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|Amending Patent Claims in Inter Partes Review Proceedings|
David B. Cochran, Anthony M. Insogna, Lisamarie LoGiudice; Jones Day;
September 4, 2015, previously published on September 2015The inter partes review (“IPR”) statute authorizes a patent owner (“PO”) to “file, after an IPR has been instituted, one motion to amend the patent to: (i) cancel any challenged patent claim,” and “(ii) for each challenged claim, propose a reasonable number...
|Congress Considers US Intellectual Property Box Regime - Should You Re-Evaluate Your Global Structure?|
Kristin Konschnik, Mitchell R. Kops, Eric Roose; Withers Bergman LLP;
September 3, 2015, previously published on September 3, 2015Intellectual property ('IP') box regimes typically apply reduced tax rates to income from intellectual property as an incentive to locate IP-related work in a jurisdiction. Recently unveiled draft legislation may pave the way for a US IP box regime and incentivize taxpayers to reevaluate their...
|Defining the Covered Business Method Patent|
John V. Biernacki, David B. Cochran, Matthew W. Johnson; Jones Day;
September 1, 2015, previously published on August 2015In the America Invents Act (“AIA”), Congress granted the Patent Trial and Appeal Board (“PTAB,” “the Board”) heightened jurisdiction to hear challenges to patents related to performing data processing or other operations used in the practice, administration, or...
|Pharmaceutical Company Can't Force Journalist to Testify, Judge Rules|
Zoe Tillman; Rothwell Figg Ernst Manbeck A Professional Corporation;
August 28, 2015, previously published on August 21, 2015Pharmaceutical company Amgen Inc. cannot force a journalist to testify about an article he wrote in 2007 that was cited in a shareholder lawsuit against the company, a federal district judge in Washington ruled on Friday.
|U.S. District Court Grants Motion in Important First Amendment Case|
Jenny L. Colgate, Steven Lieberman; Rothwell, Figg, Ernst & Manbeck A Professional Corporation;
August 28, 2015, previously published on August 21, 2015On August 21, 2015, the United States District Court for the District of Columbia granted the motion to quash of Paul B. Goldberg, a Washington, D.C.-based, award-winning journalist, and the editor and publisher of The Cancer Letter, on grounds that the information sought by Amgen Inc.
|Partial Priority and Dealing with "Toxic Divisionals" under the European Patent Convention: A New Referral to the EPO Enlarged Board of Appeal: Beyond G 2/98|
Diana C. Leguizamon-Morales, Bojan Savic; Jones Day;
August 27, 2015, previously published on August 2015A new referral to the Enlarged Board of Appeal ("EBA") of the European Patent Office ("EPO") seeks clarification on the assessment of partial priority entitlement as well as a statement on the controversy surrounding the so-called "toxic divisional" attack. The...
|Claim Construction is to be Reviewed on a Correctness Standard, but the Appreciation of Expert Evidence on Construction is to be Reviewed on a Palpable and Overriding Standard|
Adrian J. Howard, Beverley Moore, Chantal Saunders; Borden Ladner Gervais LLP;
August 26, 2015, previously published on August 26, 2015ABB has appealed two earlier judgments of the Federal Court: first, ABB's loss on the merits of a patent infringement action and the declaration that its two patents are invalid (2013 FC 947, first summarized here); second, the award of $350,000 in costs in favour of Hyundai (2013 FC 1050).
|PTAB Summer Package of Proposed Rule Changes Now Available and Open for Public Comment|
Brad M. Scheller; Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.;
August 25, 2015, previously published on August 24, 2015On March 31 we posted about the Patent Office rolling out a series of rulemakings for improving post-grant proceedings before the Patent Trial and Appeal Board (PTAB) pursuant to public feedback to a Request for Comments published by the Office last June. The first rules package went into effect...
|Canadian Court Finds that Keyword Advertising Does Not Constitute Passing Off|
Timothy O. Stevenson; Smart & Biggar/Fetherstonhaugh;
August 25, 2015, previously published by IP
Update — Canada, Smart & Biggar’s Canadian intellectual
property and technology law updateThe recent decision of the Supreme Court of British Columbia in Vancouver Community College v Vancouver Career College (Burnaby) Inc, 2015 BCSC 1470, addresses an interesting trademark issue in the context of online advertising. In particular, the law in Canada regarding keyword advertising and...
|Proposed Rule Changes for AIA Reviews at the PTAB|
David B. Cochran, Kenneth S. Luchesi, David M. Maiorana; Jones Day;
August 20, 2015, previously published on August 2015On August 19, 2015, in a blog post on the agency's website, U.S. Patent and Trademark Office ("USPTO" or "Office") Director Michelle Lee announced a second round of proposed rule changes for America Invents Act ("AIA") reviews. These new proposed rules follow an...