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Unified Patent Court and European Patents with Unitary Effect: the German Federal Constitutional Court, more than Brexit, creates a stalemate situation
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The German Federal Constitutional Court (Bundesverfassungsgericht) issued the long-awaited decision on the complaint filed against the
Unified Patent Court (UPC) bills for infringement of the German Constitution. According to the decision, the
Act of approval to the agreement on the UPC to confer sovereign powers on the UPC is void.
The main reason underlying the decision resides in the fact that the Act was not approved by the required qualified majority of 2/3 of the members of the German federal parliament (Bundestag). At the time of approval, according to an uncontested video of the parliamentary voting session at issue submitted by the claimant to the Court, the parliament's members present were about 35.
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Claims may not be Cancelled for Indefiniteness in Inter Partes Review (IPR),
but the Issue of Indefiniteness Will Continue to Arise
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In Samsung Elec. Am., Inc. v. Prisua Eng'g Corp. decided on February 4, 2020, the Court of Appeals for the Federal Circuit ("CAFC") held that the Patent Trial and Appeals Board (PTAB) of the USPTO may not cancel claims in Inter Partes Review ("IPR") on the basis of indefiniteness under 35 § USC 112. At first glance this seems exactly the right answer: Section 311(b) of the statute limits the grounds on which a petitioner can request an IPR to lack of novelty and non-obviousness under Sections 102 and 103, respectively. However, Section 311(b) is silent regarding the authority of the PTAB or Director to cancel claims on any particular bases, especially when a basis such as indefiniteness renders impossible any proper claim construction, which is the first necessary step in determining the scope of challenged claims in an IPR. Despite that silence, it is now clear that Post Grant Review ("PGR") is the only avenue for cancellation of claims for indefiniteness under 35 U.S.C. § 112.
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Patent Venue Statute Requires Presence of Defendant's Employee or Agent in Judicial District
The US Court of Appeals for the Federal Circuit (CAFC) has ruled that a company might have a place of business in a judicial district for patent infringement litigation venue purposes even when it does not have any "place" in the district that has any characteristics of real property or a leasehold interest. However, the Court also held that the company must have at least an employee or agent carrying on the company's business at that "place" in order for venue to be proper in the judicial district. While the CAFC ruled that a Google Global Cache server was not itself an agent of Google, the Court left unanswered the question of under what circumstances a machine could be considered to be a defendant's in-district agent for purposes of the patent venue statute, 35 USC § 1400(b).
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CAFC Says "Use IPR In Time
Or Lose It"
The US Court of Appeals for the Federal Circuit (CAFC) ended the USPTO's procedure allowing a petitioner in an instituted inter partes review (IPR) to file another otherwise time-barred IPR petition in the Patent Trial and Appeal Board (PTAB) and to then have that later-filed petition, including new challenges to additional patent claims on different grounds than were previously raised in the instituted IPR, joined with the existing instituted IPR. In Facebook, Inc. V. Windy City Innovations, LLC, Appeal No. 18-1400 (Fed. Cir. Mar. 18, 2020), the CAFC held that Sections 315(b) and (c) of the patent statute are "clear and unambiguous" in their prohibition of such a procedure, and the PTAB's previously-issued Precedential Opinion Panel (POP) Review reaching the contrary conclusion was wrong, and was not entitled to any judicial deference of any kind.
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WIPO's Coordination Committee Selects New Director General
Daren Tang, the Chief Executive of the Intellectual Property Office of Singapore has been selected to take over as WIPO's new Director General.
READ MORE
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IMPACT OF COVID-19 PANDEMIC ON USPTO OPERATIONS
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The United States Patent and Trademark Office (USPTO) considers the effects of coronavirus to be an "extraordinary situation" within the meaning of 37 CFR 1.183 and 37 CFR 2.146 for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners. Therefore, the USPTO is waiving petition fees in certain situations for customers impacted by the coronavirus. As this is a continually evolving situation, the most current USPTO notices may be found at
www.uspto.gov/coronavirus.
USPTO announces extension of certain patent and trademark-related timing deadlines under the Coronavirus Aid, Relief, and Economic Security Act. The United States Patent and Trademark Office (USPTO) has announced extensions to the time allowed to file certain patent and trademark-related documents and to pay certain required fees. These actions are an exercise of temporary authority provided to the USPTO by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed by President Trump on March 27. Read more at Patent Notice & Trademark Notice
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IMPACT OF COVID-19 PANDEMIC ON EPO OPERATIONS
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Due to the COVID-19 pandemic, the European Patent Office (EPO) has announced measures to safeguard applicants' rights and opposition and appeal parties' rights. Among the announced measures, the EPO communicated that all "time limits" before the EPO expiring on or after 15 March 2020 are extended until 17 April 2020. If the disruption should continue after 17 April 2020, any further extensions and remedies in respect of time limits will be communicated in further EPO notices.
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The International Bureau Suspends Postal Mail
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The International Bureau will transmit all PCT-related documents only via email to the email address provided in relation to each international application.
READ MORE
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Congratulations to Osha Liang partner
Carlyn Burton
on being selected for the 2020 Super Lawyers Texas
Rising Stars
list.
This is the 7th time Carlyn is being recognized as a Rising Star in intellectual property law.
With no more than 2
.5% of attorneys in the State of Texas eligible for selection, C
arlyn's inclusion on the list is testament to her professionalism and excellence in this practice area.
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DISCLAIMER: This information is being provided to you as a service to our clients and those who elected to receive mailings from our firm. The information contained herein is intended for informational purposes only and should not be construed as legal advice. This newsletter does not create any form of attorney-client relationship with our firm or with any of our attorneys.
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