Week’s news headlines – Feb. 24th 2017


Requisites of a Patent Application: Claims and drawings technically not required on filing date
For as long as I can remember, in order for a nonprovisional utility patent application to be awarded the all important filing date you had to file a specification that adequately described the invention, at least one patent claim and at least one drawing if a drawing would facilitate in the understanding of the invention. Spec, claim, drawing was beaten into generations of patent attorneys as the requirements for getting a filing date. That all changed on December 18, 2013.

Landmark multi-year patent battle in China ends with foreign biotech innovator coming out on top
In what it hailed as a “landmark” biotech patent validity case, Danish company Novozymes has won out in  a six year patent fight with major Chinese competitors following a judgment from the Supreme People’s Court. The result is important because Novozymes has said that some of the patentability requirements in its technology area are harder to meet in China compared with the US and Europe. Additionally, it is a case of a foreign company prevailing in a sector in which the Chinese government has given significant support to local companies in an effort to build up its domestic industry.

Microsoft files IPR against Philips patent asserted against Taiwanese consumer electronics firms
On Friday, February 10th, a petition to institute an inter partes review (IPR) proceeding at the Patent Trial and Appeal Board (PTAB) was filed in a case that pits two of the most active recipients of U.S. patent grants against each other. At the center of the proceedings is a challenge to the validity of a Philips patent covering a technology that enables more information to be stored on an optical or magnetic recording medium.

Time to patent invalidity decisions on Rocket Docket calls value of PTAB into question
On February 9th, Judge Liam O’Grady of the U.S. District Court of the Eastern District of Virginia (E.D. Va.) entered an order granting a motion that invalidated a series of eight patents, which had been asserted by Virginia Innovation Sciences, Inc. against e-commerce giant Amazon.com Inc. (NASDAQ:AMZN). The motion for judgment was filed pursuant to Federal Rule of Civil Procedure 54(b) regarding judgments on multiple claims. This comes just more than one month after another eight patents asserted by Virginia Innovation against both Amazon and Taiwanese consumer electronics firm HTC Corporation (TPE:2498), which were also similarly invalidated in the Eastern District of Virginia under the standard set by the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International.

Foreign patent owners face big hurdles when seeking to get damage awards and licence fees out of China
IAM readers are probably aware that the Chinese government began taking major steps to stem the outflow of capital from the country last year as its foreign currency reserves fell near the $3 trillion mark and the yuan weakened significantly against the dollar. The measures may be working, as the amount of yuan leaving China has slowed significantly. But they’ve also had some unintended consequences on foreign litigants and licensors in the IP realm.

The PTAB has failed to solve the patent troll problem created by large operating companies
Yesterday we published an article authored by Karl Fazio, who is Chief Patent Counsel for Pearson. In the article Mr. Fazio begins by interchangeably using the terms patent troll, non-practicing entity and patent assertion entity. While there is certainly a contingent within the industry that view virtually all patent owners as bad actors when they choose a licensing business model, and then sue for infringement when licenses are refused, I do not find that type of rhetoric particularly useful.

Acacia alumni NPE acquires Chinese patents amid growing enthusiasm about country’s licensing prospects
Texas-based NPE Longhorn IP announced this week that it has acquired a patent portfolio, including several China-only patent families, from a major Chinese telecoms company. Here is the firm’s statement on the deal

Lack of guidance means that the Supreme Court’s latest patent decision is all too familiar
Seven US Supreme Court justices issued their latest patent ruling yesterday in a case that may not have been awaited with the same level of expectancy as next month’s oral arguments in the venue selection case TC Heartland, but which nonetheless showed them sticking to form. As ever with this court it was a case of what wasn’t said as much as what was outlined in the decision.



Copyrightability of private standards in federal regulations
On February 2, 2017, a federal trial court judge in Washington, D.C. ruled, in a 55-page opinion, that private standards developing organizations (“SDOs”) do not lose their copyright or trademark protection if a federal regulation adopts their standards.

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New Brazilian guidelines for examination of patent applications involving inventions based on computer programs

Article 10 of Section 5 of the Brazilian Industrial Property Law indicates that “computer programs per se” are not considered inventions or utility models. The interpretation of this article often leads to doubts when filing patent applications for inventions that are implemented by computer program.

To solve this problem, the BPTO published new guidelines to assist in the technical examination of those patent applications involving computer programs.

The new guidelines highlight that a process or product implemented by computer can be considered an invention when it solves a known problem by means of a technical effect, which is not related to the way the program is written.

The resolution also defines the existence of three process classes for inventions implemented by a computer program:
1) a process that uses physical quantity to generate a physical product or effect;
2) a process that uses physical quantity to generate a virtual product; and
3) a process that uses abstract quantity to generate a virtual product.

With these guidelines, the BPTO expects an increase in the number of filings for patent applications implemented by computer programs, as well as a more consistent analysis on such applications. Although it is a new guideline, it relates to the examiners’ practices from over the last five years in Brazil.

For more details, please feel free to contact us.

New Brazilian guidelines for examination of patent applications involving inventions based on computer programs – click to read it in PDF

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INTA Comments on Graphical User Interface (GUI), Icon, and Typeface/Type Font Designs to WIPO

Article “INTA Comments on Graphical User Interface (GUI), Icon, and Typeface/Type Font Designs to WIPO”, coauthored by managing partner Gabriel Di Blasi, was originally published in the latest International Trademark Association (INTA) bulletin.




INTA’s Designs Committee has provided comments on the topic of Graphical User Interface (GUI), Icon and Typeface/Type Font Designs to the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) of the World Intellectual Property Organization (WIPO).
In many instances, GUIs, icons and fonts have become a key aspect of a company’s overall brand. They should therefore be considered an important part of the company’s overall IP portfolio. The INTA Designs Committee considers that design protection should be provided for GUIs, icons and fonts, independently from any other form of protection available on the computer program or other technical means of creating it, even if they are projected onto a screen or otherwise only appear when technology is activated.
However, in most of cases, the lifespan of this kind of technology is very short. To the extent that GUIs, icons and fonts may be eligible for overlapping protection, the INTA Designs Committee believes that design law is a good tool to provide short term protection. And this should be without prejudice to protection appropriately provided under other laws, such as copyright, trademark or the law of unfair competition/passing off.
Responding to the Questionnaire of SCT on Graphical User Interface (GUI), Icon and Typeface/Type Font Designs, the INTA Designs Committee has made several suggestions of ways to harmonize the position on GUIs, icons and fonts. In addition, the INTA Designs Committee believes that users are best placed to determine how to disclose an innovative design for the purposes of applying for GUI, icon, or font protection. At present, a designer, especially an individual designer or SME, can be disadvantaged if a design registry outside the designer’s home jurisdiction rejects the application because (under its own rules) the “wrong” representation has been used, even though that representation was accepted in the home jurisdiction.
The designer seeking protection should be allowed to make its own choice on how best to protect the design. Design law protects innovative designs, which have to be novel in order to be protected. A GUI which incorporates an image of a telephone lacking novelty may still be considered novel on the whole, but its novelty will not lie in the telephone image.  Similarly, a design registered for a GUI which shows a digital read-out for a number will not be novel so far as that number is concerned – but may be for the innovative way in which the number is presented.
In practical terms the GUIs, icons and fonts are used across technologies. It is therefore essential that protection is NOT dependent on the product that incorporates it. Once again the designer must have the choice as to how best to represent the design, whether in relation to a specific product, or in the abstract. Furthermore, protection for GUIs and icons should NOT be excluded if the GUI/icon appears only temporarily when a program is loaded.
The INTA Designs Committee considers that there should not be any additional requirements for GUIs, icons or indeed fonts that are animated, and Offices should be able to accept video files within appropriate guidelines. Color and black and white photographs, drawings, including technical drawings and other graphic representations, including CAD and video or moving files, should all be acceptable forms of representations of GUIs, icons and fonts, as long as the representation accurately represents the design.
In their final observations and comments, the INTA Designs Committee has advocated that.

  •  the examination criteria for GUIs and icons be no different to those for other forms of industrial design;
  • for fonts, the additional elements discussed above may also be examined; and
  • the duration of protection for GUI, icon and font designs ought to be the same as for other industrial designs. 

Please see the INTA Designs Committee’s complete response to the questionnaire on inta.org.


Gabriel DI Blasi (Di Blasi, Parente & Associados Advogados)

Patrick Wheeler (Collyer Bristow LLP Solicitors)

Members of INTA Design Committee

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Strategy and Management of Intellectual Property – Londrina (PR)

On March 17th (Friday), managing partner Gabriel Di Blasi will be a speaker at Angelus Ind. De Prod. Odontológicos’ headquarters, in Londrina (Paraná).

The event on Strategy and Management of Intellectual Property will discuss ways to protect technology, and how to use this protection to stimulate businesses through technology mapping.

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