Launch of RNA Law Shakes Up Brazil's IP Scene

Also: impact of LKQ v. GM on low rate of 103 rejections for design applications at USPTO.

Order and Progress through IP rights?

This Week In IP

Design Patents: rare unanimous en banc Federal Circuit LKQ v. GM decision applies Supreme Court’s flexible approach in KSR for obviousness of utility patents to design patents.

• Federal Circuit: “We . . . overrule the Rosen-Durling test requirements that the primary reference must be ‘basically the same’ as the challenged design claim and that any secondary references must be ‘so related’ to the primary reference that features in one would suggest application of those features to the other.”

• USPTO issues memo next day to design examiners regarding evaluating obviousness: “[i]f an ordinary designer in the field to which the claimed design pertains would have been motivated to modify the prior art design to create the same overall visual appearance as the claimed design, then the examiner should reject the claim under 35 U.S.C. 103 barring convincing secondary indicia of nonobviousness being of record. This inquiry must focus on the visual impression of the claimed design as a whole and not on selected individual pieces. . . there must be some record-supported reason (without impermissible hindsight) that an ordinary designer in the field of the article of manufacture would have modified the primary reference with the feature(s) from the secondary reference(s) to create the same overall appearance as the claimed design.”

• Examination of design applications: prosecution of design patent examination applications has usually been significantly easier than the prosecution of utility patent applications. As the chart below shows, only 7% of Office Actions for design patent applications, which are all handled by TC 2900, included 103 rejections over the last 5 years. In comparison, for example, almost 90% of Office Actions for utility patent applications examined by TC 1700 (chemical), TC 2400 (computer networking and security), and TC 3700 (mechanical and manufacturing) included 103 rejections over the same time period. Design patent applications were usually quickly allowed after applicants made minor adjustments necessary to overcome the 112 rejections and the rare prior art rejections under 102/103. Unlike for utility applications, design examiners almost never ended up continuously making new rejections based on “newly discovered prior art” after applicants made amendments to overcome the previous rejections.

  • Voice of IP: the LKQ decision will undoubtedly lead to an increase in 103 rejections for design patent applications. However, unlike some of the other recent guidance issued by the USPTO, the measured tone of the USPTO memo suggests that design examiners are not being encouraged to take a completely different, more combative approach to examination. Therefore, even with new 103 rejections, applicants are likely to continue to be able to obtain reasonable design patent protection relatively efficiently by working closely with design examiners to reach agreement. However, when filing new applications, applicants should make sure there is room to reach such agreement based on the LKQ decision.

BIG patent verdict…for now:

• Netlist wins $445 million verdict (in EDTX) against Micron Technology for infringing patent for memory-module technology.

  • Another victory by joint forces of Irell & Manella and McKool Smith

  • BUT ip fray notes that more than 95% of $445 million verdict is based on patent claim invalidated by PTAB…other 5% depends on outcome of already instituted PTAB review…Federal Circuit will likely have ultimate say.

Rob Rodrigues Launching RNA Law is a Key Milestone in Brazil's IP Story

With patent enforcement becoming more challenging in the US, sophisticated patentees are increasingly looking towards other jurisdictions to help bolster their chances of successfully waging global patent battles. At the same time, Brazil has emerged as a prime destination due to its large market and predictable system for obtaining injunctions. In this context, Rob Rodrigues has become the go-to attorney for those seeking strong patent protection and effective enforcement in Brazil.

Rodrigues, along with fellow attorneys Tatiana Alves, Karlo Tinoco, and Brenno Telles, has now launched an IP boutique - RNA Law - that is poised to redefine patent practice in Brazil. This move also marks a significant milestone, reflecting Brazil's growing importance in the global patent landscape. The rise of these attorneys' careers has coincided with Brazil's emergence as a serious player in patent enforcement. Previously practicing together at Licks Attorneys, they have been involved in the groundbreaking IP cases that have elevated Brazil to where it is today.

Traditionally, Brazilian IP firms mostly merely acted as foreign agents for clients seeking protection across multiple jurisdictions. However, RNA Law represents a new breed of attorneys who see Brazil as a key player for foreign clients and recognize the increasing importance of patents for Brazilian clients.

While Voice of IP typically doesn't usually cover stories about lawyers switching firms, Voice of IP has been keenly following Brazil's rise as a go-to destination for patent enforcement. RNA Law is now set to be an independent powerhouse in how that story continues to develop.

Do you know why story behind the USPTO’s LKQ memo? Do you know of another important, developing IP story?

Please email eli@VoiceOfIP.com or send message eli.92 on Signal.