Updates on IP news from our global team!

Have you ever looked at a world map and wondered how it is possible that there are still countries that are not part of the PCT?

Great news: Uruguay is on the verge of joining the PCT.

Photo Credit: Guilherme Hellwinkel

Last year, in July 2023, the Executive branch of the Uruguayan government submitted a bill to the Uruguayan Parliament for accession to the PCT. Recently, on June 4th, 2024, the Uruguayan Chamber of Deputies unanimously approved the bill. On June 11th, 2024, the Uruguayan Senate unanimously ratified this bill. 

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Photo Credit: Wei-Cheng Wu

In Warner Chappell Music, Inc. v. Nealy, the U.S. Supreme Court recently affirmed an Eleventh Circuit Court of Appeals ruling that allows plaintiffs to recover full damages for copyright infringement if discovery of the infringement occurred within three years of suit, regardless of when the infringement occurred. This decision corrects a contrary view by the Court of Appeals for the Second Circuit that had resulted in a split of authority with the allowed damages period depending on the particular judicial circuit in which the infringement suit was filed. The Supreme Court resolved the circuit split in favor of the expanded potential scope of recoverable damages.

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Photo Credit: Possessed Photography

The USPTO is proposing a drastic change to the rules surrounding the use of terminal disclaimers to overcome non-statutory obviousness-type double patenting rejections. The proposed rule change would make it mandatory that for any terminal disclaimer to be accepted, it must include an agreement that the patent in which the terminal disclaimer is filed will be automatically unenforceable if the patent is tied, or has ever been tied, to another patent by one or more terminal disclaimers in which: 1) any claim has been finally held unpatentable or invalid under 35 USC §§ 102 or 103 (by a federal court or by the USPTO), and all appeal rights have been exhausted, or 2) a statutory disclaimer has been filed after the validity of the claim is challenged based on anticipation or obviousness.

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Photo Credit: Markus Spiske

In IOEngine, LLC v. Ingenico Inc.[1], the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed in part the U.S. Patent Trial and Appeal Board’s (PTAB) Final Written Decisions in several Inter Partes Reviews (IPR) finding anticipation under 35 U.S.C. § 102 of various claims of U.S. patents  relating to a tunneling client access point (TCAP) that is a “highly secure, portable, power efficient storage and data processing device.” The CAFC concluded that the PTAB erred as a matter of law by incorrectly applying the printed matter doctrine to accord no patentable weight to certain limitations reciting “encrypted communications” and “program code.” In correcting the PTAB’s legal error, the CAFC made clear that “[p]rinted matter encompasses what is communicated—the content or information being communicated—rather than the act of a communication itself.”

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May 2024 marked OBWB's 26th anniversary. In keeping with tradition, OBWB's Houston headquarter office commemorated with a crawfish boil. It was wonderful to have so many colleagues together to celebrate this special occasion.

OBWB partners John Osha, Tammy Terry, and Lisa Margonis attended the FICPI ABC Meeting in Edinburgh, Scotland and enjoyed the substantive content as well as the many networking events held during the conference. John gave a lecture on AI and Copyright with a view toward what lies ahead in this area.

OBWB partner Tammy Terry joined the AIPLA IP Practice in Europe delegation, giving several presentations on U.S. patent litigation in Munich, Paris, and London.

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