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HTMLAmending Patent Claims in Inter Partes Review Proceedings
David B. Cochran, Anthony M. Insogna, Lisamarie LoGiudice; Jones Day;
Legal Alert/Article
September 4, 2015, previously published on September 2015
The 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...

 

HTMLCongress Considers US Intellectual Property Box Regime - Should You Re-Evaluate Your Global Structure?
Kristin Konschnik, Mitchell R. Kops, Eric Roose; Withers Bergman LLP;
Legal Alert/Article
September 3, 2015, previously published on September 3, 2015
Intellectual 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...

 

Adobe PDFDefining the Covered Business Method Patent
John V. Biernacki, David B. Cochran, Matthew W. Johnson; Jones Day;
Legal Alert/Article
September 1, 2015, previously published on August 2015
In 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...

 

HTMLPharmaceutical Company Can't Force Journalist to Testify, Judge Rules
Zoe Tillman; Rothwell Figg Ernst Manbeck A Professional Corporation;
Legal Alert/Article
August 28, 2015, previously published on August 21, 2015
Pharmaceutical 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.

 

HTMLU.S. District Court Grants Motion in Important First Amendment Case
Jenny L. Colgate, Steven Lieberman; Rothwell, Figg, Ernst & Manbeck A Professional Corporation;
Legal Alert/Article
August 28, 2015, previously published on August 21, 2015
On 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.

 

HTMLPartial 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;
Legal Alert/Article
August 27, 2015, previously published on August 2015
A 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...

 

HTMLClaim 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;
Legal Alert/Article
August 26, 2015, previously published on August 26, 2015
ABB 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).

 

HTMLPTAB 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.;
Legal Alert/Article
August 25, 2015, previously published on August 24, 2015
On 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...

 

HTMLCanadian Court Finds that Keyword Advertising Does Not Constitute Passing Off
Timothy O. Stevenson; Smart & Biggar/Fetherstonhaugh;
Legal Alert/Article
August 25, 2015, previously published by IP Update — Canada, Smart & Biggar’s Canadian intellectual property and technology law update
The 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...

 

HTMLProposed Rule Changes for AIA Reviews at the PTAB
David B. Cochran, Kenneth S. Luchesi, David M. Maiorana; Jones Day;
Legal Alert/Article
August 20, 2015, previously published on August 2015
On 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...

 


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