INTRODUCTION Contributed by: Andreas von Falck, Hogan Lovells International LLP
breach of contract will be covered (with some limited exceptions), allowing both monetary and non-monetary judgments from Hong Kong courts in many types of technology-related con- tractual disputes to be registered and enforced by mainland Chinese courts. In June 2024, the Hong Kong Government implemented a “patent box” tax incentive under which qualifying income of an owner of licensee derived from eligible IP is taxed at a conces- sionary rate of 5% (rather than the normal rate of 16.5%). Broadly speaking eligible IP should be generated from R&D activities of the taxpayer and may include both Hong Kong patents and patents granted outside Hong Kong. However, Hong Kong re-registration patents will no longer be eligible if filed on or after 5 July 2026 and non-Hong Kong patents will only be eligible if a corresponding Hong Kong OGP has been filed in respect of the same invention. The Hong Kong Government has been meeting the pat- ent agent sector and other stakeholders during 2024 to discuss plans for establishing regulatory arrangements for local patent agent services, covering professional qualification requirements, registration, patent advice privilege as well as On 21 May 2024, the Federal Circuit issued an en banc opinion overturning the Rosen-Durling test for obviousness of design patents. Prior to this opinion, the design-patent obviousness test required (i) a primary reference that was “basi- cally the same” as the claimed design, and (ii) additional reference(s) that were “so related” to the primary reference that application of dis- closed ornamental features in one would sug- gest application of those features in the other. the regulatory model and framework. Notable Patent Decisions in the USA LKQ Corp. v GM Global Tech. – new obviousness test for design patents
The Federal Circuit, noting that design patents, like utility patents, must meet the non-obvious- ness requirement of 35 U.S.C. Section 103, found that the Rosen-Durling test is “improperly rigid”. In its place, the Federal Circuit adopted a factual inquiry consistent with application of the Graham factors used for utility patents, includ- ing the scope and content of the prior art, dif- ferences between the prior art designs and the design claim at issue, the level of ordinary skill in the pertinent art, and secondary considerations of indicia of obviousness or non-obviousness. Allergen v MSN –patent not subject to ODP challenge from later child On 13 August 2024, the Federal Circuit issued an opinion holding that a first-filed, first-issued, later expiring claim cannot be invalidated for obvious-type double patenting (ODP) by a later- filed, later-issued, earlier-expiring claim having a common priority date. The previous year, the Federal Circuit issued an opinion in In re Cellect holding that related patents can be invalidated for ODP when they expire on different dates as a result of patent term adjustment (PTA) under 35 U.S.C. Section 154(b). Revisiting this issue and relying on the purpose of the ODP doctrine “to prevent paten- tees from obtaining a second patent on a patent- ably indistinct invention to effectively extend the life of a first patent to that subject matter,” the Federal Circuit held that the first-filed, first- issued patent in a family “sets the maximum period of exclusivity for the claimed subject mat- ter and any patentably indistinct variants”.
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