Updates on IP news from our global team!

Photo Credit: Ksenia Makagonova

The U.S. Court of Appeals for the Federal Circuit recently affirmed a district court's decision of noninfringement based on the "safe harbor" provision of 35 USC § 271(e)(1). The importation of two medical devices into the United States was found to fall within the safe harbor because the importation was reasonably related to clinical studies necessary to obtain United States Food and Drug Administration (FDA) approval of the devices. This decision navigates key interpretation aspects of the statute and discusses whether intent and alternative uses are relevant to determine compliance with the statute.

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Until recently, a U.S. patent owner was barred from obtaining damages under 35 U.S.C. § 284 for lost sales outside the United States, even where those lost sales were the direct and foreseeable result of patent infringement inside the United States. In Brumfield v. IBG LLC, the CAFC recognized that the Supreme Court had largely overruled prior precedent on this issue, and held that recovery of patent damages based upon foreign activity is possible. While the alleged foreign activity in Brumfield ultimately did not support damages under the newly applied WesternGeco two-step framework, the CAFC’s Brumfield decision now provides a less restrictive standard for obtaining damages for foreign infringing activity.

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On March 18, 2024, the US Patent & Trademark Office (USPTO) issued a memorandum to patent examiners related to resources for examining means-plus-function and step-plus-function limitations under 35 USC § 112(f). The memorandum seeks to remind examiners of resources available when examining limitations under 35 USC § 112(f), give applicants and the public deeper insight into the interpretation § 112(f), and emphasize the applicants’ opportunity to define interpretations in the process of drafting claims and specification. This memorandum also emphasizes the necessity for examiners to create a clear record of the interpretation of the claims. The memorandum nonetheless maintains the current course of USPTO practice without announcing any substantive changes.

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OBWB partner Yuichi Watanabe traveled to Japan as a member of the AIPLA delegation and met with the Japan Patent Office, IP High Court, Japan Patent Attorneys Association, Licensing Executives Society Japan, AIPPI Japan, Japan Intellectual Property Association, and the Japan Trademark Association, where he led a discussion on “Protecting AI-related inventions in the U.S." More information available here and here. 

On April 18th, OBWB partner Han-Mei Tso and the OBWB Hangzhou Representative Office hosted an AIPLA Women in IP Global Networking Event. The event was held on a cruise ship on the Qiantang River in Binjiang, Hangzhou. The theme this year was “Cultivating Leaders” - group discussions focused on female leadership contributions and positive influence in IP practice across a wide range of industries.

On April 24th, the OBWB Representative Office in Hangzhou, in cooperation with the Hangzhou High-Tech Zone (Binjiang) IP Office and the Overseas IP Public Service Station, held the "2024 IP Promotion Week" series of activities, "A Salon Talk - Challenges and Opportunities of IP Practices".

Representatives from hi-tech companies, law firms and IP agencies attended the event. Honorable guests, including Deputy Director of Binjiang IP Office, Director of Hangzhou IPR Center, Vice President-General Counsel of Silicon-Magic Semiconductor, IP Director of Hikvision, Senior IP HR Consultant, Deputy General Manager of Thriring IP, shared their experiences and insights in the IP industry and answered questions on career planning and development in IP practices.

Our OBWB team looks forward to connecting with colleagues at INTA 2024 in Atlanta, Georgia. We welcome you to visit us at our hospitality suite in the Georgia World Congress Center. To request a meeting, please email our event coordinator here. 

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