CAFC Effectively Says "Miranda Warning" Does Not Apply to Patent Prosecution
Whether in film or television crime dramas, most people have seen a suspected criminal given her "Miranda Warning" which includes the familiar line: "Anything you say can and will be used against you in a court of law." The U.S. Court of Appeals for the Federal Circuit recently ruled that patent applicants, in certain circumstances, may make statements during prosecution of their applications without any consequences at all.
USPTO Amending Rules by Creating a Separate Design Patent Bar for Practitioners
Since October 2022, the USPTO has publicized their intent to increase the number of registered practitioners and broaden the educational skill set of those registered by creating a separate Design Patent Bar eligible to design professionals that would not otherwise qualify for the current regular Patent Bar. On November 16, 2023, the USPTO officially established the Design Patent Bar, giving notice in the Federal Register.
Actelion – Significant Digits of a Claimed Numerical Value – Is It Significant Enough?
The United States Court of Appeals for the Federal Circuit recently vacated a district court's decision regarding the interpretation of claimed term "pH of 13 or higher," and remanded to the district court for consideration of the parties' provided extrinsic evidence. The Actelion decision is an important reminder that the way a numerical range is presented is of key importance to how it will be construed.
Intellectual Property High Court in Japan Reverses District Court Decision, Establishes Criteria for Determining "Producing" of Accused System without Strict Application of Principle of Territoriality
On 26 May, 2023, the Grand Panel of the Intellectual Property High Court (IPHC) held that FC2 infringed DWANGO's system patent in Japan, even though a server of the accused computer system was located outside Japan (i.e., in the USA). In the patent for a system including a server and terminal devices connected via a network, the Grand Panel held that the accused act of creating a system including a server located outside Japan and a user terminal located in Japan constituted "producing" under Article 2(3)(i) of the Japanese Patent Law.
Sonos v. Google: The Return of Prosecution Laches?
The doctrine of prosecution laches has rarely been applied by U.S. courts in recent years. A recent decision of the U.S. District Court for the Northern District of California shows that the doctrine is not yet dead.
Shifting Scope of Comparison Prior Art in Design Patent Infringement
The U.S. Court of Appeals for the Federal Circuit, in Columbia Sportswear North America, Inc., v Seirus Innovative Accessories, Inc., has overruled a longstanding case on the protective scope of design patents. As ruled in Columbia, the scope of prior art available for comparison in infringement analysis is now limited to the same type of article as the patented claim.
Future Decision G 1/23 Will Complement Opinion G 1/92 By Attempting to Clarify The Threshold Of Enablement For Complex Products To Form Part Of The State Of The Art
Future decision G 1/23 of the Enlarged Board of Appeal of the European Patent Office will shed the light on the criteria that must be met for a (complex) product subject to prior use to form part of the state of the art, and in particular on the extent to which the composition or internal structure of the complex product should be analyzable and reproducible by a skilled person.
Federal Circuit Strengthens "Field of Endeavor" Prong of the Non-Analogous Art Test
The Court of Appeals for the Federal Circuit recently revisited an important issue directed to the relevance of prior art references combined in an obviousness rejection, specifically with respect to the analogous art doctrine. In Netflix, Inc. v. DivX, LLC, the Patent Trial and Appeal Board had ruled for the patentee DivX, holding that a secondary prior art reference was not analogous art. On appeal, the Federal Circuit clarified the strict requirements of the two-prong test for non-analogous art.
Claimed Combination "As A Whole" May Support Nexus Between Claimed Invention and Commercial Success Even If Individual Elements Are Found In Prior Art
After recently reminding that in order for commercial success of an invention to support non-obviousness, the required nexus cannot rest solely on a claim element that is known in the prior art, the U.S. Court of Appeals for the Federal Circuit has further reminded patent owners and applicants that nexus may be established upon consideration of the claimed combination as a whole, even if individual elements of the claim are found in the prior art.
The EPO Ten-Day Notification Rule is Abolished: Practical Examples
In view of the ongoing digital transformation in the patent grant procedure at the European Patent Office (EPO), the European Patent Convention (EPC) rules concerning the presentation requirements of documents submitted in proceedings before the EPO have been amended. These EPC amendments, which will enter into force on 1 November 2023, include the deletion of the so-called "ten-day notification rule" and the introduction of a new notification rule less favorable to users of the EPC system. The calculation of periods in proceedings before the EPO is impacted accordingly. Importantly, users of the EPC system cannot rely any longer on an automatic 10-day extension of deadlines, which was originally conceived to compensate for postal service delays.
