Federal Circuit Hears Case on Whether an AI-Generated Invention Is Patentable

By Alaina J. Lakawicz on June 7, 2022 Posted in Patent, Patents

On June 6, the U.S. Court of Appeals for the Federal Circuit held oral argument on the issue of whether an invention generated by artificial intelligence (AI) is patentable.

The Patent Applications

As described in a companion article, which can be found here, Plaintiff Stephen Thaler, Ph.D., is the owner of a Device for the Autonomous Bootstrapping of Unified Sentience (DABUS), which he claims is an AI machine. Thaler listed DABUS as the inventor on two patent applications, one for a light beacon and one for a beverage container, that he filed with the U.S. Patent and Trademark Office (USPTO). After the USPTO determined that an inventor must be a natural person, thereby excluding DABUS, Thaler filed a civil action seeking review of the USPTO’s decision.

New Lower Trademark Examination Evidentiary Standard for Genericness Refusals at the USPTO

By Deborah A. Wilcox and Megan Mischler on June 2, 2022 Posted in Intellectual Property

The United States Patent and Trademark Office recently issued an Examination Guide clarifying the standard for refusing trademark applications on genericness grounds. Like other substantive refusals, to establish a prima facie case of genericness, the examining attorney must provide “sufficient evidence” to support a reasonable predicate for the refusal.

Prior to this clarification, the Trademark Trial and Appeal Board and the Federal Circuit required a higher showing of “clear and convincing evidence” of genericness, which conflicted with the reasonable basis standard required of other substantive refusals. Accordingly, adopting a reasonable basis standard for refusing trademark applications based on genericness ensures consistency when evaluating substantive issues. It also means there will likely be more refusals on the basis that a term is generic, so applicants need to be advised to consider the inherent distinctiveness of their proposed marks even more closely than before.

Decentralized Domains: Metaverse Land Grab

By Lisa Bollinger Gehman, Kevin Wallace and Deborah A. Wilcox on June 1, 2022 Posted in Trademark

As the metaverse continues to become a more established marketplace, and consumers become more familiar with non-fungible tokens (NFTs), NFT marketplaces, decentralized domains, bitcoin, crypto wallets and the blockchain, it is no surprise that intellectual property (IP) owners are starting to see an increase in unauthorized uses of their trademarks and copyrights.

There is a virtual land grab happening now. Some IP owners may be hesitant to take the jump, wondering how the metaverse is or will be relevant to their business; others are already investing in “goods” and services in the metaverse. And uses of cryptocurrency continue to expand (e.g., one can now buy a physical home with crypto). Many IP owners have discovered unauthorized use of their brands in the metaverse. NFTs are relevant far beyond retailers and artists. This post will focus on decentralized domain names and why trademark owners should understand what they are and perhaps even consider registering some for their brands.

The Federal Circuit Provides Insight on Experimental Use and On-Sale Bar

By John Hilten on May 9, 2022 Posted in Federal Circuit

On April 29, 2022, the Court of Appeals for the Federal Circuit issued an opinion for Sunoco Partners Marketing & Terminals L.P. v. U.S. Venture, Inc., U.S. Oil Co., Inc. (2022 WL 1275697).This case touched on a number of issues, including experimental-use doctrine, on-sale bar, infringement and damages awards. In this article, we will focus on the experimental-use doctrine and the on-sale bar.

As background, Sunoco’s patents were directed to a system and method for blending butane with gasoline at a point close to an end of the distribution process – in particular, the point immediately before being distributed to tanker trucks. Accordingly, producers could blend the maximum allowable butane into each batch of gasoline based on location and time of year. Both the location and time of year were subject to certain regulatory requirements.

Supreme Court Calls for Views of Solicitor General on Petition Involving International Reach of U.S. Trademark Law

By Andrew Samuels on May 2, 2022 Posted in Trademark

This morning, the Supreme Court called for the views of the Solicitor General on the pending petition for writ of certiorari in Abitron Austria GmbH v. Hetronic International, Inc. In Abitron, the Court of Appeals for the Tenth Circuit allowed the plaintiff trademark owner to recover damages not only for the defendants’ sales of infringing products in the U.S., but also for the defendants’ infringing sales outside the U.S. to non-U.S. customers. Even those non-U.S. sales, the Tenth Circuit reasoned, “diverted tens of millions of dollars” of revenue “that otherwise would have ultimately flowed into the United States.”[1] The Tenth Circuit further rejected the defendants’ argument, based on Fourth Circuit law, “that the diversion-of-sales theory is inapplicable to foreign defendants.”[2]

Third-Party Complaints Must Shift Liability—Not Defeat It

By James Hatten on April 27, 2022 Posted in Patents

A party sued for patent infringement may seek to shift some or all of its liability through an indemnification claim. While a patent infringement defendant may seek to implead an indemnitor under Rule 14 of the Federal Rules of Civil Procedure, a recent Eastern District of Kentucky decision is a reminder that third-party complaints are limited to claims seeking to shift liability for the underlying patent infringement claim. Linda’s Leather, LLC v. Zambrano, No. 5:21-CV-046-CHB, 2022 WL 100216 (E.D. Ky. Jan. 10, 2022).

Linda’s Leather, LLC, accused Victor Zambrano of patent infringement. Zambrano subsequently filed a third-party complaint against Linda Scott, the sole member of Linda’s Leather and identified as the sole inventor on the asserted patents. Zambrano asserted four declaratory judgment claims in his third-party complaint, stating that the patented inventions were a result of work done by Scott for Zambrano, making him at least a joint inventor on the patents, that his products did not infringe, and, in the alternative, that the patents were invalid and that he had a license. Each was dismissed.

World IP Day – A Day To Celebrate Youth-Led Creativity

By Phillip Wolfe on April 26, 2022 Posted in Intellectual Property

World Intellectual Property Day is again upon us. While last year’s theme focused on IP for small businesses, the focus this year is on celebrating youth-led innovation and creativity. With the increased consumption of media and the ease of creating and publishing content on various social media platforms, the time couldn’t be better for such a celebration.

Today’s youth are increasingly creating IP-protected content. Some platforms count youth, even those as young as age 7, as their biggest earners: They have built followings through content creation, created brands and then further leveraged the value already created to extend their brands into merchandising and non-fungible tokens, for example. But whether they understand their rights – what rights they have and what rights they can and often do sign away – is a different story. This is reason enough to dedicate this year’s World IP Day to helping young people find out how IP rights can support their goals. That way, they understand the rules that allow them to leverage their content into profit.

New Combined Petition Option for the Expanded Collaborative Search Pilot Program – Is It Worth Implementing Into Your International Patent Portfolio Strategy?

By Tayan Patel on March 31, 2022 Posted in USPTO

Effective March 29, 2022, the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO) will accept a new combined petition option to participate in the Expanded Collaborative Search Pilot (CSP) program. The Expanded CSP program is currently active through Oct. 31, 2022, with each intellectual property (IP) partner office granting only 400 petitions per year. The new combined petition option (and the original petition option) offers an easy path to expedite initial examination of a patent application under “special” status without incurring government fees or fulfilling other requirements under 37 CFR § 1.102.

Forced Nationalization of Patent Monopolies Held by “Unfriendlies” in Russia

By Mark Krietzman and Audrey Williams on March 16, 2022 Posted in Patents

On February 24, 2022, the world watched in horror at Russia’s unprovoked invasion of Ukraine.[1] Lost in the destruction and devastation inflicted on Ukraine and her people, is Russia’s effective nationalization of patents in Russia with owners in foreign countries that Russia deems to be unfriendly.

Considerations For Applicants and Practitioners Due to Recent EPC Guidelines Regarding Description Amendment Requirements

By Mark Einsiedel on March 7, 2022 Posted in Patents

Article 84 of the European Patent Convention (EPC) requires that the claims of a European patent application “shall define the matter for which protection is sought” and “shall be clear and concise and be supported by the description.”[i] To assist practitioners and patent examiners, the European Patent Office (EPO) provides patent examination guidelines interpreting the EPC. Recently, the EPO updated these guidelines, including Guideline F-IV 4.3, which interprets the requirements of EPC Article 84. New Guideline F-IV 4.3 provides strict description (i.e., specification and drawings) amendment requirements by providing that “[a]ny inconsistency between the description and the claims must be avoided if it could throw doubt on the subject-matter for which protection is sought and therefore render the claim unclear or unsupported under Art. 84,” such as where “[p]art of the description and/or drawings is inconsistent with the subject-matter for which protection is sought.”[ii] This may occur where parts of the description are not encompassed by the wording of the claims or are inconsistent therewith, such as may reasonably result from making amendments to the claims that are narrower than the full scope of the original description. In such situations, Guideline F-IV 4.3 specifically instructs that “[t]he applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking them as not falling within the subject-matter for which protection is sought.”[iii]