Filing/Prosecution and Patentshttp://www.managingip.com/RSS.aspx?FeedID=2910©2017 Managing Intellectual Property60Filing/Prosecution and PatentsMonkey selfie, Octane, Halo, Garmin, Navico, Qualcomm, Apple, PTAB, Amazon – the week in IPA monkey selfie settlement, the Federal Circuit ruling on Octane, Halo being denied enhanced damages, an award of $39m damages for Navico, a denial of Qualcomm’s motion for an injunction against Apple, the percentage of women appearing before the PTAB, the expiration of Amazon’s one-click patent, and IBM chief patent counsel Manny Schecter’s hopes for the new USPTO director were in the recent intellectual property newshttp://www.managingip.com/Article/3751254/Monkey-selfie-Octane-Halo-Garmin-Navico-Qualcomm-Apple-PTAB-Amazonthe-week-in-IP.htmlThu, 14 Sep 2017 20:00:00 GMTRopes & Gray hires PTAB chair from Oblon, and other US people movesManaging IP’s regular update of people moves includes hires by Ropes & Gray, Norton Rose Fulbright, Honigman Miller Schwartz and Cohn, Hogan Lovells, Wolf Greenfield, Shook Hardy & Bacon and BakerHostetler. These include new roles for two former AIPLA presidentshttp://www.managingip.com/Article/3750643/Ropes-and-Gray-hires-PTAB-chair-from-Oblon-and-other-US-people-moves.htmlTue, 12 Sep 2017 21:45:00 GMTPTAB August round-up: Filing down; Federal Circuit criticises PTAB in two opinions; ruling on standing126 PTAB petitions were filed in August, while the Federal Circuit expressed concern with the Board’s practice of joinder and expanded panels in Nidec Motor v Zhongshan Broad Ocean Motor, said it abused its discretion for failing to consider material evidence in Ultratec v CaptionCall, and ruled that an IPR petitioner doesn’t need to satisfy Article III standing requirements to participate in a patent owner’s appeal in Personal Audio v EFFhttp://www.managingip.com/Article/3749451/PTAB-August-round-up-Filing-down-Federal-Circuit-criticises-PTAB-in-two-opinions-ruling-on-standing.htmlThu, 07 Sep 2017 23:30:00 GMTFederal Circuit to answer “serious questions” about PTAB joinder and panelsA concurring opinion in Nidec Motor v Zhongshan Broad Ocean Motor critical of the PTAB’s position on joinder and expanded panels suggests the Federal Circuit will further scrutinise these issues in future decisionshttp://www.managingip.com/Article/3749428/Federal-Circuit-to-answer-serious-questions-about-PTAB-joinder-and-panels.htmlThu, 07 Sep 2017 18:30:00 GMTIn Re Brunetti, Nintendo, hashtag trade marks, Blackbird Technologies, patent application references, CBS, Dr Phil – the week in IPFederal Circuit oral arguments over scandalous and immoral marks, a jury awarding $10m against Nintendo, hashtag trade mark applications increasing 64%, data on cited references in patent applications, a profile of Blackbird Technologies, a dispute over CBS’s use of a photograph in a news programme and an unusual copyright case involving Dr Phil were in the recent intellectual property newshttp://www.managingip.com/Article/3749042/In-Re-Brunetti-Nintendo-hashtag-trade-marks-Blackbird-Technologies-patent-application-references-CBS.htmlWed, 06 Sep 2017 21:30:00 GMTFederal Circuit to hear USPTO attorneys' fees issue en bancParties have been asked to brief on the issue of whether Section 145’s “[a]ll the expenses of the proceedings” provision authorises an award of the USPTO’s attorneys’ fees, after the Federal Circuit ordered a sua sponte rehearing en banc of Nantkwest v Matalhttp://www.managingip.com/Article/3748965/Federal-Circuit-to-hear-USPTO-attorneys-fees-issue-en-banc.htmlWed, 06 Sep 2017 16:45:00 GMTAssessing Trump’s USPTO director nominee, Andrei IancuUSPTO director nominee Andrei Iancu has broad experience of patent litigation and PTAB proceedings. But observers are unclear about his views on a number of issueshttp://www.managingip.com/Article/3748671/Assessing-Trumps-USPTO-director-nominee-Andrei-Iancu.htmlWed, 06 Sep 2017 02:45:00 GMTNews round-up – recent IP stories of interestRecent intellectual property news included stories involving VidAngel, Finjan, a protest at the USPTO, Costco, Tiffany, Cheerios, Rubik’s Cube, CPA Global, Aqua Licensing, Crocs, Warner Bros and Pepe the Froghttp://www.managingip.com/Article/3746728/News-round-uprecent-IP-stories-of-interest.htmlThu, 31 Aug 2017 00:00:00 GMTNew Zealand joins global patent prosecution highwayThe Intellectual Property Office of New Zealand (IPONZ) became a participant patent office in the global patent prosecution highway (GPPH) on July 6. IP practitioners in New Zealand point out that the GPPH provides an accelerated option, but not acceptance of a patent. They also stress that use of the GPPH may not result in the broadest possible claims as claims need to sufficiently correspond to those found allowablehttp://www.managingip.com/Article/3746414/New-Zealand-joins-global-patent-prosecution-highway.htmlWed, 30 Aug 2017 10:30:00 GMTTrump nominates Irell & Manella’s Iancu for USPTO directorAndrei Iancu will succeed Michelle Lee as USPTO director if the US Senate confirms his nomination. He is a managing partner of Irell & Manella in Los Angeleshttp://www.managingip.com/Article/3745986/Trump-nominates-Irell-and-Manellas-Iancu-for-USPTO-director.htmlTue, 29 Aug 2017 05:30:00 GMTIndia releases new guidelines for examination of computer-related inventionsIndia has a new set of guidelines for examination of computer-related inventions that are more favourable to patentees. But Indian IP practitioners see ambiguities that may lead to unsuitable patents being grantedhttp://www.managingip.com/Article/3744871/India-releases-new-guidelines-for-examination-of-computer-related-inventions.htmlThu, 24 Aug 2017 15:30:00 GMTUK and the UPC system: the state of playThe UK has made remarkable progress towards ratifying the UPC Agreement but there will be difficult negotiations to remain in the UPC and unitary patent system post-Brexit. In the first of a two-part article, Kingsley Egbuonu spoke to Alan Johnson of Bristows about UK’s preparations, post-Brexit participation and the impact of being outside the systemhttp://www.managingip.com/Article/3743143/UK-and-the-UPC-system-the-state-of-play.htmlMon, 21 Aug 2017 09:15:00 GMTThe latest Americas IP people movesManaging IP’s regular update of people moves includes hires by Orrick, Mintz Levin, Merchant & Gould, Foley & Lardner, BakerHostetler and King & Spalding, as well as Erich Spangenberg leaving Marathon and a new INTA chief representative officer for Latin America and the Caribbeanhttp://www.managingip.com/Article/3741026/The-latest-Americas-IP-people-moves.htmlMon, 14 Aug 2017 05:15:00 GMTAttorneys’ fees, Federal Circuit, will.i.am, EFF, Erich Spangenberg, CRISPR, Prism, Philips, ITC, Qualcomm, Apple, Aqua IP Investor Pool – the week in IPThe Federal Circuit confirming the attorneys’ fees standard is the same in patent and trade mark cases, will.i.am being denied a trade mark registration, EFF winning an appeal of its podcasting dispute with Personal Audio, Erich Spangenberg leaving Marathon, the EPO intending to grant a CRISPR patent, a $30m damages award being set aside, a $10.3m award for Philips, a pool to connect patent holders with high-growth start-ups, and the ITC taking on Qualcomm’s complaint against Apple were in the recent intellectual property newshttp://www.managingip.com/Article/3740634/Attorneys-fees-Federal-Circuit-william-EFF-Erich-Spangenberg-CRISPR-Prism-Philips-ITC-Qualcomm-Apple.htmlThu, 10 Aug 2017 19:15:00 GMTCanada publishes proposed amendments to Patent RulesThe Canadian government has published proposed amendments to the Canadian Patent Rules for public consultationhttp://www.managingip.com/Article/3740633/Canada-publishes-proposed-amendments-to-Patent-Rules.htmlThu, 10 Aug 2017 19:15:00 GMTJuly PTAB data and analysis: Filing falls, motion to amend granted on remand, Federal Circuit reverses amendment, sovereign immunity applied for third time139 Patent Trial and Appeal Board petitions were filed in July. The month also included the Board granting a motion to amend on remand, the Federal Circuit vacating a granted motion to amend, and sovereign immunity as a defence to an IPR being applied for the third timehttp://www.managingip.com/Article/3740239/July-PTAB-data-and-analysis-Filing-falls-motion-to-amend-granted-on-remand-Federal-Circuit-reverses.htmlWed, 09 Aug 2017 17:00:00 GMTPTAB designates Athena Automation assignor estoppel decision as precedentialThe Patent Trial and Appeal Board’s October 2013 decision determining that the doctrine of assignor estoppel is not an exception to Section 311(a) is the ninth to be deemed precedentialhttp://www.managingip.com/Article/3740237/PTAB-designates-Athena-Automation-assignor-estoppel-decision-as-precedential.htmlWed, 09 Aug 2017 17:00:00 GMTCRISPR, Apple, Nokia, Blockchain patents, Dominion Harbor, Quincy Jones, TC Heartland – the week in IPUC Berkeley’s appeal in its CRISPR dispute with the Broad Institute of MIT and Harvard, Apple’s $2bn payment to Nokia, Blockchain applications at the USPTO almost doubling, Dominion Harbor and Hawkeye Ventures creating a $50 million patent acquisition fund, Quincy Jones being awarded $9.4m in unpaid royalties, and a judge stating TC Heartland was a “sea change” were in the recent intellectual property newshttp://www.managingip.com/Article/3738316/CRISPR-Apple-Nokia-Blockchain-patents-Dominion-Harbor-Quincy-Jones-TC-Heartlandthe-week-in-IP.htmlWed, 02 Aug 2017 00:15:00 GMTIP STARS Patent Handbook (2017) is now availableThis year’s publication is the 21st edition of Managing Intellectual Property’s legal directory, and the biggest yet publishedhttp://www.managingip.com/Article/3737989/IP-STARS-Patent-Handbook-2017-is-now-available.htmlTue, 01 Aug 2017 10:30:00 GMTPTAB first-half data: Comcast tops petitioner ranking, Rovi most targeted patent ownerComcast taking its dispute with Rovi to the PTAB made them the top petitioner and patent owner at the PTAB in the first half of 2017. Apple and Samsung have fallen down the petitioner rankings while Fish & Richardson, Sterne Kessler and Finnegan dropped in the law firm rankings, with Banner Witcoff, Baker Botts and Ropes & Gray making strideshttp://www.managingip.com/Article/3737885/PTAB-first-half-data-Comcast-tops-petitioner-ranking-Rovi-most-targeted-patent-owner.htmlTue, 01 Aug 2017 00:30:00 GMTCopycat car makers and the role of design rightsIn a guest post, Matthew Jones of EIP discusses the role of design rights for automobile manufacturershttp://www.managingip.com/Article/3737750/Copycat-car-makers-and-the-role-of-design-rights.htmlMon, 31 Jul 2017 15:15:00 GMTUnitary Patent and UPC: A progress report (July 2017)UK consents to UPC Agreement (UPCA) Protocol and will resume legislative procedure for UPCA ratification in the autumn, UPC IT team seeks user input, and Germany’s legislative steps for ratification criticisedhttp://www.managingip.com/Article/3737742/Unitary-Patent-and-UPC-A-progress-report-July-2017.htmlFri, 28 Jul 2017 10:00:00 GMTApple, WARF, Qualcomm, Google, Richard Prince, CLASSICS Act, STRONGER Patents Act, Tam – the week in IPA judge more than doubling WARF’s damages award, Qualcomm taking its Apple dispute to Europe, Google filing for a US injunction against its Canada Supreme Court loss, a judge allowing the Richard Prince copyright suit to proceed, the CLASSICS Act being introduced, the chances of success for the STRONGER Patents Act and applications for offensive trade marks were in the recent intellectual property newshttp://www.managingip.com/Article/3736664/Apple-WARF-Qualcomm-Google-Richard-Prince-CLASSICS-Act-STRONGER-Patents-Act-Tamthe-week-in-IP.htmlWed, 26 Jul 2017 21:30:00 GMTUSPTO shares patent subject matter eligibility feedbackThe USPTO has released a report providing an overview of patent eligibility law and feedback it has received on the issue. A majority of commenters recommended legislative changehttp://www.managingip.com/Article/3736622/USPTO-shares-patent-subject-matter-eligibility-feedback.htmlWed, 26 Jul 2017 18:15:00 GMTChina proposes pharmaceutical patent linkage schemeThe China Food and Drug Administration (CFDA) is planning to introduce a patent linkage scheme that will require a generic applicant to make a non-infringement declaration against an innovator’s patent portfoliohttp://www.managingip.com/Article/3735722/China-proposes-pharmaceutical-patent-linkage-scheme.htmlMon, 24 Jul 2017 14:15:00 GMTThe practical significance of Eli Lilly v ActavisUK patent practitioners are in agreement that the UK Supreme Court’s decision in Eli Lilly v Actavis introduced the doctrine of equivalents into UK patent law, but there seems to be some doubt as to whether it also introduced a general doctrine of prosecution history estoppel. Kingsley Egbuonu analyses the decision and its impact on law and practice in the UKhttp://www.managingip.com/Article/3735678/The-practical-significance-of-Eli-Lilly-v-Actavis.htmlMon, 24 Jul 2017 10:00:00 GMTInterim USPTO director Matal makes predictions on Oil States, TC Heartland and reformIn an open and wide-ranging speech at the Patents for Financial Services Summit in New York, interim USPTO director Joseph Matal predicted “we are going to win” the Oil States case, TC Heartland “is not going to put the venue issue to bed” and “there will be further patent reform legislation in the coming Congress”http://www.managingip.com/Article/3735172/Interim-USPTO-director-Matal-makes-predictions-on-Oil-States-TC-Heartland-and-reform.htmlFri, 21 Jul 2017 10:00:00 GMTPredicting Aqua Products, evolving estoppel, expert testimony strategies – PTAB issues to watchThe discussions at Managing IP’s recent PTAB Forum 2017 provided some clues about the biggest issues on PTAB practitioners’ minds, including estoppel, handling remands, expert testimony strategies and predictions for two pending Federal Circuit en banc opinionshttp://www.managingip.com/Article/3733714/Predicting-Aqua-Products-evolving-estoppel-expert-testimony-strategiesPTAB-issues-to-watch.htmlMon, 17 Jul 2017 09:00:00 GMTThe latest people moves in the USManaging IP’s regular update of people moves includes the latest on the new firm being established by Ropes & Gray partners, and hires by Morrison & Foerster, Crowell & Moring, BakerHostetler, Dorsey & Whitney, Steptoe & Johnson, Wolf Greenfield, McAndrews Held & Malloy and Foley & Lardnerhttp://www.managingip.com/Article/3733061/The-latest-people-moves-in-the-US.htmlThu, 13 Jul 2017 18:15:00 GMTBroken promise doctrine in Canada poses questions for courtsThe rejection of the promise doctrine has brought Canada into line with other countries and been welcomed by pharmaceutical companies. It also raises questions such as how courts will determine the “subject matter of the invention” and how the enhanced disclosure requirement will be resolvedhttp://www.managingip.com/Article/3733052/Broken-promise-doctrine-in-Canada-poses-questions-for-courts.htmlThu, 13 Jul 2017 17:45:00 GMT