MONTHLY INSIGHTS

DECEMBER 2022

Sending you our very best wishes for a happy, healthy,

and prosperous new year!

OBWB leadership pictured at the Houston 2022 Holiday Party.

Left to right: Thomas Scherer, Benjamin Caldwell, Carlyn Burton, Jeffrey Bergman, Tammy Terry, Seema Mehta, Yuichi Watanabe, Lisa Margonis, Aron Griffith,

Jonathan Osha, and Kevin Kuelbs.

United States Supreme Court Reviews The Enablement Requirement For The

Second Time in History

Most patent litigation cases do not hinge on questions of whether the patents-in-suit meet the enablement requirement. As a result, these issues do not often reach the Supreme Court of the United States. That has now changed. For the second time in history, the Supreme Court of the United States has agreed to review a case to address the enablement question. READ MORE

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USPTO’s Shortened Deadline For Responding to Trademark Office Actions Comes Into Force

The United States Patent and Trademark Office (USPTO) announced that starting from December 3, 2022, trademark applicants have 3 months to respond to most office actions. Previously, applicants had 6 months to respond to an office action. READ MORE

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The Out-of-Europe Reach of European Patents

While all eyes are on the unitary patent which will initially make it possible to get patent protection in 17 of the EU Member States through a European patent, the geographical coverage of European patents, far from being limited to the EU, extends beyond the geographical limits of Europe, to both Asia and Africa. A single European patent application filed with the EPO thus offers the chance to obtain protection in no less than 44 countries. READ MORE

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2022 YEAR IN REVIEW

For your perusal, here is an overview of just some of the topics OBWB's Monthly Insights covered in 2022

U.S. Litigation


Permissible Venue for U.S. Patent Infringement Suit Restricted Again


USPTO Issues Interim Guidance Modifying and Clarifying PTAB's Application of "Fintiv" Factors


Texas District Court Ends Automatic Assignment of New Patent Litigation Cases to Judge Albright


Gathering Evidence in The United States for Use in Foreign Litigation






USPTO Practice


Intelligently Protecting AI: The Do's and Don'ts Under U.S. Patent Law


Strategies For Dealing With Obviousness Rejections Based on Overlapping Ranges


Recent CAFC Decisions Teach That "Teaching Away" Is Difficult To Establish When Responding to Obviousness Assertions


Negative Claim Limitations – Is Silence Enough?





International Developments


Tokyo District Court Says All System Components Must Be In Japan for Accused Video Distribution System to Infringe Japanese Patent


WTO Reaches Agreement on Temporary TRIPS Waiver Regarding COVID-19 Vaccines


General Patent Term Compensation in China


Europe: Entry into Operation of The Unified Patent Court is Closer Than Ever



Trademark


Madrid System vs. National Filing


The USPTO's Efforts against Fraudulent Trademark Filers and Options for Affected Victims


USPTO's Shortened Deadline for Responding to Trademark Office Actions Comes Into Force










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