INNOVATE is the online magazine by and for AIPLA members from IP law students all the way through retired practitioners. Designed as an online publication, INNOVATE features magazine-like articles on a wide variety of topics in IP law.
In This Section
Four U.S. Utility Patent Infringement Defenses the Average Bear Overlooks
Written by John D. Vandenberg on January 13, 2023What’s better than winning a patent lawsuit for an accused infringer? Winning on a theory the average bear patent litigator would have missed!
IP in Russia: “dura lex, sed lex” is still
Written by Kirill Osipov on January 13, 2023The author describes how Russian courts are treating IP rights of foreign entities and concludes that the current political climate has not affected how those IP rights are enforced.
The International Trade Commission, Though Designed to Protect Domestic Industry, Frequently Threatens It
Written by Joe Galvin on January 13, 2023The International Trade Commission (ITC) has power under Section 337 of the Tariff Act to investigate whether goods are being imported unfairly and are affecting a domestic industry. One type of unfair import is a good that infringes U.S. intellectual property rights, including patents. Section 337 can therefore be a useful tool for protecting American industry against infringing imports. But, increasingly, the ITC has become a means for certain non-practicing entities (or “NPEs”), often referred to as “patent trolls,” to exploit the ITC for financial gain—and to do so in a way that perversely threatens the very domestic industry the ITC was designed to protect.
IP Deadlines under Martial Law in Ukraine
Written by Slobodan Petosevic on January 13, 2023Until early April 2022 it was not clear exactly how IP deadlines would be affected by the martial law in Ukraine. The martial law, which was first introduced in Ukraine on February 24, 2022, has been extended several times and remains effective as of the writing of this article.
How to Invalidate a Patent in Ukraine – a Quick Guide
Written by Taras Manolov on June 7, 2022The amendments to the Ukrainian Patent Law, effective as of August 16, 2020, introduced new administrative procedures which allow third parties to invalidate patents and utility models.
Should a PHOSITA be defined by the specification or by the claims?
Written by Pu-Cheng (Leo) Huang on June 7, 2022An inventor cannot obtain a patent for an invention that is obvious to a “person having skill in the art” (“PHOSITA”) but courts continue to struggle with the question of whether the relevant person should be identified in light of the invention disclosed in the specification or the invention claimed. In a recent IPR decision, the PTAB adopted the former approach. Axonics Modulation Technologies, Inc. v. Medtronic, Inc., IPR2020-00715, (PTAB Sep. 13, 2021). However, the Supreme Court and the MPEP suggested that “it is to the claims of every patent that we must turn when we are seeking to determine what the invention is.” This Article considers the PTAB’s analysis and suggests the claims should be the proper measure for determining who is a PHOSITA.
Entering the National Phase of Patent Applications in India under the Patent Cooperation Treaty
Written by Dr. Mohaan Dewan on June 7, 2022The Patent Cooperation Treaty (PCT), administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO), assists applicants in seeking patent protection for an invention simultaneously in a large number of countries by filing a single “international” (or “PCT”) patent application, and complying with the PCT formality requirements and procedures. This phase is termed the “international” phase. The granting of patents remains under the control of the national or regional patent Offices in what is termed the “national phase.” For obtaining patent protection in India, applicants need to enter the PCT national phase in India by complying with the specific provisions of the Indian Patents Act. Unlike most jurisdictions, the Indian Patent Office (IPO) does not allow any amendments at the time of national phase entry. Although amendments may be made after the national phase entry, there are limitations on the types of amendments that are allowed.
Strategies in Response to Patent Eligibility Requirements for Computer Software Patents in the United States, Taiwan, Japan, China and Europe
Written by George Huang on June 7, 2022Eligibility is the first challenge applicants would face during patent prosecution, especially for a computer software related application. While there is little difference in the majority of patent regulations among each jurisdiction due to international harmonization, significant differences exist regarding eligibility of computer software related applications. This article describes computer software patent eligibility requirements for TIPO, JPO, USPTO, CNIPA and EPO, analyzes and compares examination in each office using a single case example, and discusses corresponding prosecution strategies.
Written by Austen Zuege on October 21, 2021Mark Twain observed that “[o]nly one thing is impossible for God: to find any sense in any copyright law on the planet.” From the standpoint of individuals and small businesses, Twain’s observation might ring true.
The DAPA Saga in the Indian Courts
Written by Dr Mohaan Dewan on October 21, 2021A decision handed down in July 2021, in the DAPA saga, by the Divisional Bench of the Delhi High Court, had some thought-provoking observations.
How to Obtain IP insurance for Clients or How to Watch Your Client's Back
Written by Phil Green on October 21, 2021Picture your client telling you that his or her company received a cease and desist letter and was then served with a lawsuit for infringement. As a conscientious attorney, the first thing you do is to check the IP insurance policy but you discover that your client decided to save money by not purchasing a policy at all.
A Pandemic Lockdown, Misplaced Mail, and a Limitation Claim Denied…
Written by Amrita V. Singh on March 15, 2021This article reviews the first reported decision of the Federal Court on whether the Canadian Federal Government’s Time Limits and Other Periods Act (COVID-19) legislation (“TLOPA Act”) extends the time limits set out in the Patented Medicines (Notice of Compliance) Regulations (“NOC Regulations”).
Recognizing 35 U.S.C.101, 102, 103, and 112 in Jurassic Park
Written by Renee Shaw on March 15, 20212020 marked the 30th Anniversary of Michael Creighton's epic novel Jurassic Park. This book directed the trajectory of my first career as a technical research specialist and my current pursuit of intellectual property licensing professional.
Trends, Developments, and Filing Strategies of AI Medical Patents in Taiwan
Written by George Jui-Hsien Huang on March 15, 2021The use of artificial intelligence (AI) technology has been booming all around the world. The increased use of AI is reflected in an exponentially growing number of AI related patent applications according to the World Intellectual Property Organization (WIPO)
Patents for Antibodies in Russia: Make your Protection Stronger
Written by Olga Strokova on March 15, 2021Antibody-based drugs are among the widest-selling in the world. They are being used to treat a widening range of conditions and their significance and value in treating cancer continues to grow. Accordingly, this makes them an indispensable component of the pharmaceutical industry; and it also means that their protection through invention [i.e. utility] patents is absolutely essential.
Sankalp Rehabilitation Trust V Hoffman La Roche: A Case Revisited
Written by Dr. Mohaan R. Dewan on March 15, 2021Section 8 of the Indian Patents Act mandates applicant(s) filing an application for a patent in India to furnish information pertaining to patent applications filed in ‘any country outside India’ for ‘the same or substantially the same invention’ filed in India.
Intellectual Property Rights of Artificial Intelligence Inventors
Written by Randi L. Karpinia, esq. on November 20, 2020On April 27, 2020 the United States Patent and Trademark Office (“USPTO”) published a decision declining to extend patent inventorship to an Artificial Intelligence (“AI”) named DABUS. The decision found that the application did not name an “inventor.”
With Great Popularity, Comes Great Responsibility
Written by Dr. Mohan Dewan on November 20, 2020Endorsement, in a matter of speaking, is a strategic method of influencing the minds of consumers. A brand owner typically approaches an influential figure to act as a brand ambassador, generally an exclusive brand ambassador for a limited period of time in exchange for a fee. The brand owner then publicizes videos, images and statements of the celebrity/public figure, to promote the brand owner’s products/services. The endorsement gives an impression that the celebrity is certifying (endorsing) the claims made by the brand owner in respect of the products/services. There is an implied connection, that the celebrity, has himself/herself used the product or has availed of the services and approves of or is satisfied with them. This is the subliminal message conveyed by the endorsement.
Are there Multiple Experimental Use Standards?
Written by Dustin Lee on November 20, 2020Researchers and physicians are often the greatest sources of both excitement and pain for in-house patent counsel—they zealously create inventions that save lives and improve quality of living; inventions that inspire admiration. But those same researchers and physicians can inadvertently destroy patentability through uncoordinated testing.
The Global Significance of India’s Pharmaceutical Patent Laws
Written by Dr. Rajeshkumar Acharya on November 20, 2020Patents are one of the major forms of Intellectual Property Rights (IPRs) used in the pharmaceutical industry. Significant changes to India’s patent system occurred after India signed the Trade Related Aspects of Intellectual Property Rights (TRIPS) agreement in 1995.
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