Lucas & Mercanti Joins AIPPI Japan in Presenting on Timely Patent Topics - Lucas & Mercanti, LLP

Lucas & Mercanti Joins AIPPI Japan in Presenting on Timely Patent Topics

02/05/2015 |

On February 5, 2015, Lucas & Mercanti professionals, among them partner Donald Lucas and U.S. Patent Agent and Japanese Patent Attorney, Shintaro Yamada, presented a multi-topic program in Tokyo with the International Association for the Protection of Intellectual Property, generally known under the abbreviated name AIPPI. The mission of AIPPI Japan is to contribute to the development of intellectual property through worldwide research on international trends and promotion of international exchanges.

The Firm was introduced by the Secretary General of the AIPPI Japan, Mr. Goro Umeda. The Executive Director of the AIPPI Japan, Mr. Koichi Minami, also attended the seminar. The Firm and AIPPI spoke to an audience of Lucas & Mercanti clients and AIPPI members on current patent trends and cases in the United States. The first topic was how to draft a strong patent application for U.S. prosecution and litigation. This topic especially focused on differences between Japanese and American practices in drafting patent applications and best practices of American law for preparing patent applications for submission to the Unites States Patent Office.

They discussed recent U.S. patent cases including the U.S. Supreme Court cases of Kimble v. Marvel Enterprises (certiorari granted), Commil USA, LLC v. Cisco Systems, Inc. (certiorari granted) and Teva v. Sandoz. Questions from the attendees related to clarification of claim interpretation after the Teva v. Sandoz decision.

Also discussed were U.S. Court of Appeals for the Federal Circuit cases Ultramercial v. Hlu, DDR holdings v. and JAPANESE FOUNDATION v. Lee. These cases highlighted subject matter eligibility and communications between a Japanese patentee/Japanese Patent Attorney and a U.S. attorney with regard to the improper filing of a disclaimer.

Under the area of patent subject matter eligibility, the new USPTO guidelines, example lists and recent cases were presented. Of particular interest to the attendees were patent eligibility of software and natural products under the new USPTO guidelines and Supreme Court decisions. An Executive Summary of the presentation may be requested by emailing

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