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China Intellectual Property Quarterly Newsletter, Winter 2009

2/2/2009
China Intellectual Property Quarterly Newsletter, Winter 2009
 

In this issue:


Note from the Editors

These are trying times for many industries. The current global financial crisis has demonstrated the interdependence of the world’s major economic players. In particular, the ability of China and United States to weather the current recession will have a significant impact on the entire world economy. As a global law firm with a major presence in China, Morrison & Foerster LLP is well positioned to provide information and counsel to Chinese companies operating internationally. We believe now it is more important than ever for Chinese companies to develop and protect their intellectual property as they develop technologies and compete at home and abroad.

Therefore, with this inaugural issue, we introduce our China Intellectual Property Quarterly Newsletter. With this and future editions, we hope to share with you trends and important court decisions that impact on companies like yours that have valuable IP. We hope that you will find it helpful information as you guide your own company’s legal strategies.

In this issue, we first discuss the Federal Circuit’s important ruling in In re Bilski, which articulated a new and narrower standard for patent eligibility of processes. 

We then discuss the impact of Bilski on software patents, including some new strategies in prosecuting software patents. We also discuss the impact of Bilskion biotech / life science patents, particularly on patenting diagnostic methods.

We are also happy to report two recent victories secured by Morrison & Foerster LLP before the ITC, and that Morrison & Foerster has strengthened its China litigation and IP practice by relocating two seasoned IP attorneys, Mike Vella and Harris Gao, to the Shanghai Office.

We hope you find Morrison & Foerster’s China IP Quarterly Newsletter informative, and we will continue to monitor the latest developments to keep you updated.  A summary of the articles are included below.


In re Bilski: The Federal Circuit Defines New Rules for Patenting Business Methods

On Oct. 29, 2008, the Federal Circuit issued its long-awaited decision on the patent-eligibility of business methods under Section 101 of the Patent Act.  In In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), the en banc court held that any process, including a business method, is eligible for patent protection only if it is tied to a particular machine or apparatus or transforms a particular article into a different state or thing. The impact of Bilski will depend in large measure on how later decisions apply this new “machine-or-transformation” test and, of course, whether the Supreme Court grants certiorari

To read the full article, please click here.


The Impact of In re Bilski on Software Patents

In In re Bilski, 545 F.3d 943 (Fed. Cir. 2008), the Federal Circuit provided little guidance on how the newly defined “machine-or-transformation test” should be applied to software patents.  In particular, the court left open the question of “whether or when recitation of a computer suffices to tie a process claim to a particular machine.”  In less than two months after the Bilski decision, the Board of Patent Appeals and Interferences (the “Board”) has relied on Bilski to reject claims in four software patent applications. Thus, it is now fairly clear that the Bilski decision will have a significant impact on the prosecution of software patents.  This article discusses how the Board has been applying the Bilski decision, and outlines several strategies in prosecuting software patents in light of the Bilski decision.

To read the full article, please click here.


Patenting Diagnostic Methods in the Wake of In re Bilski

In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) will have a tremendous impact on business method and software patents. In the meantime, the decision also significantly affects patentability of medical diagnostic methods, which frequently involve processes largely performed inside a physician’s head, namely, the mental process of correlating a symptom or characteristics of a patient with a specific disease or condition.

To read the full article, please click here.


Intellectual Property Practice News

Awards and Accolades
Morrison & Foerster’s Intellectual Property practice continues to win prestigious awards and top rankings. In the most recent Managing Intellectual Property rankings of IP groups, Morrison & Foerster was ranked as having the fourth largest IP practice in the U.S. with 249 lawyers devoting at least 75% of their time to IP work.

From the Docket
Our IP trial lawyers racked up resounding plaintiff and defense wins for several technology clients in recent months. Some of our biggest victories came in key venues, such as the Eastern District of Texas and the International Trade Commission.

To read the full article, please click here.

Morrison & Foerster Strengthens its China Litigation and IP Practice
Morrison & Foerster has recently enhanced its Litigation and IP practice in China by relocating two seasoned IP attorneys to its Shanghai Office. The firm now offers comprehensive IP services on the ground to its clients in China, including patent litigation, patent prosecution, licensing, and IP due diligence. Mr. Mike Vella moved from the United States to Shanghai in August 2008, and now leads the firm’s litigation practice in China.

Mr. Vella has 20 years experience representing clients in international intellectual property disputes, including patent,copyright and trademark litigation.  Contact Mr. Vella in Shanghai at mvella@mofo.com or +86 21 2322-5200.

Mr. Harris Gao moved from the United States to Shanghai in January 2009. Mr. Gao is experienced in both patent litigationand prosecution, and knowledgeable about IP issues facing high-tech companies. Contact Mr. Gao in Shanghai at hgao@mofo.com or +86 21 2322-5200.

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