Other Barks & Bites for Friday, March 13: Former USPTO Patent Examiner Settles Conflict Allegations; EU Parliament Endorses EUIPO Register of Works Used to Train AI; U.S.-Based Operations Become Discretionary Denial Factor at PTAB

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This week in Other Barks & Bites: the U.S. Department of Justice announces a six-figure settlement with a former U.S. Patent and Trademark Office patent examiner over conflict of interest allegations for the second time in two weeks; Sandoz establishes biosimilar unit to take advantage of “golden decade” of lost exclusivity for blockbuster drugs; USPTO Director John Squires issues a memo establishing U.S.-based operations as a discretionary denial consideration for petitions at the Patent Trial and Appeal Board; the EU Parliament formally adopts a recommendation to create a register of copyrighted works that have been used to train AI models to ensure creators are remunerated; Albania becomes the first World Intellectual Property Organization member nation to accede to the Riyadh Design Law Treaty; and the Fifth Circuit reverses the dismissal of a trademark case after finding minimum contacts by the defendant credit union despite low membership levels in Texas.

Bites

Former USPTO Patent Examiner Pays Six-Figure Settlement Over Conflict Allegations – On Wednesday, March 11, the U.S. Department of Justice (DoJ) announced that Christine Tu, a former patent examiner at the U.S. Patent and Trademark Office (USPTO), agreed to pay $122,480 to resolve allegations that she violated agency conflict of interest rules by working substantially on one patent application filed by a company in which Tu had a disqualifying financial interest, and by reviewing more than 20 patent applications filed by a commercial competitor of a company in which Tu owned more than $125,000 worth of stock. The DoJ’s announcement follows about two weeks after it revealed that a different USPTO patent examiner agreed to pay $500,000 to settle similar allegations of substantially working on patent applications filed by companies in which the examiner held a direct financial stake.

Squires Memo Establishes U.S.-Based Operations as Discretionary Denial Factor – On Wednesday, March 11, USPTO Director John Squires issued a memorandum to all users of the Patent Trial and Appeal Board (PTAB) informing those parties that the agency would begin looking at the extent of U.S.-based operations for both patent owners and PTAB petitioners when analyzing factors for discretionary denial of America Invents Act (AIA) validity challenges at the PTAB. Those considerations would include the extent to which products accused of infringement are made in the U.S., the extent to which products sold or licensed by the patent owner and competing with the accused products are made in the U.S., and whether the petitioner is a small business that has been sued for infringing the patent at issue.

GAO Report Advising Against March-In Rights Highlighted in U.S. Chamber Blog – On Tuesday, March 10, the U.S. Chamber of Commerce published a blog post authored by John Manchester, Director of IP Policy at the U.S. Chamber’s GIPC, highlighting several key findings from a recent report by the U.S. Government Accountability Office (GAO) providing guidance on the assertion of government march-in rights under the Bayh-Dole Act of 1980 based on the market price of pharmaceuticals developed in part through federal research funding. Among the GAO’s key findings highlighted by the U.S. Chamber include that march-in rights were designed to ensure market availability and not as a price regulation measure, and that the exercise of march-in rights would only impact a very low percentage of medicines, as few as 2% of medicines that have been commercialized over the past 40 years, while threatening the early-stage funding necessary for turning basic research into medicines available for patient use.

EU Parliament Endorses EUIPO Register Listing Copyrighted Works Used to Train AI – On Tuesday, March 10, the European Parliament adopted several recommendations stemming from a report issued by the Legal Affairs Committee (JURI) seeking to address questions raised about the interplay of generative AI and copyright. In a move seen as strongly backing EU artists and creators groups, members of EU Parliament approved proposals to, among other things, create a register at the European Union Intellectual Property Office (EUIPO) of copyrighted works used to train generative AI models in an effort to ensure that copyright owners are remunerated for such uses of their works.

SCOTUS Denies Lynk Labs’ Cert Petition on Pre-AIA Prior Art Publication Challenge – On Monday, March 9, the U.S. Supreme Court issued an order list denying a petition for writ of certiorari filed by Lynk Labs challenging the Federal Circuit’s decision affirming PTAB findings that a U.S. patent application asserted by Samsung qualified as prior art even though it was not published until after the filing date of Lynk Labs’ challenged patent. Both respondent Samsung and the U.S. Solicitor General had urged against the Court granting the petition based on a plain reading of the statue and special timing rules for U.S. patent applications as prior art under pre-America Invents Act 35 U.S.C. § 102(e)(1), whereas Lynk Labs had argued from a long line of Federal Circuit cases that a printed publication was required to be publicly accessible by the time of the challenged patent’s filing to qualify as prior art.

Barks 

Albania Becomes First Member Nation of WIPO’s Riyadh Design Law Treaty – On Friday, March 13, the World Intellectual Property Organization (WIPO) announced that the southeastern European nation of Albania had become the first nation to formally accede to WIPO’s Riyadh Design Law Treaty, which aims to harmonize administrative procedures for protecting the look and feel of a wide array of consumer goods and was adopted by WIPO member state consensus in November 2024.

USPTO Publishes Supplemental Design Patent Guidance on Computer-Generated Interfaces – On Thursday, March 12, the USPTO issued a notice announcing that the agency was releasing supplemental guidance for the examination of design patent applications claiming computer-generated interfaces and icons, which is intended to provide more flexibility for design patent applicants claiming such subject matter in how they present that subject matter as statutorily compliant with 35 U.S.C. § 171 governing design patents.

EPO Adopts OCR Solution for Agency Workflows Developed With Mistral AI – On Wednesday, March 11, the European Patent Office (EPO) announced that an agency collaboration with European frontier artificial intelligence (AI) developer Mistral AI has resulted in the adoption of state-of-the-art optical character recognition (OCR) technology into EPO workflows, aiding in the management of multilingual documents and documents containing complex chemical structures and sequence listings.

Second Circuit Finds South Asian International Film Festival Marks Unprotectable – On Wednesday, March 11, the U.S. Court of Appeals for the Second Circuit issued a summary order in Amin v. Tidal Growth Consultants affirming the Southern District of New York’s denial of injunctive relief to South Asian International Film Festival operator Shilen Amin against the operator of the Long Island South Asian Film Festival after finding no abuse of discretion in the district court’s findings that Amin’s mark was highly descriptive without any evidence of acquired secondary meaning.

Fifth Circuit Vacates Trademark Dismissal Finding Jurisdiction Through Continuing Obligations – On Monday, March 9, the U.S. Court of Appeals for the Fifth Circuit issued a per curiam opinion in Raiz Federal Credit Union v. Rize Federal Credit Union vacating the Western District of Texas’ dismissal of a trademark infringement case after finding specific personal jurisdiction satisfied by Rize’s minimum contacts with Texas, which includes its continuing obligations to 500 members in the state, although the appellate court acknowledged that the question was close given that the majority of those members, which accounted for less than 1% of Rize’s total membership, were transplants from other states.

UK’s PRS Starts Legal Proceedings Against Steam Over Unauthorized Music Use – On Monday, March 9, UK-based music copyright management organization Performing Rights Society (PRS) announced that it had filed legal proceedings against video game distribution platform Steam over that company’s unauthorized use in several video game titles available through Steam including Grand Theft Auto, EA SPORTS FC and Forza Horizon.

This Week on Wall Street

Sandoz Establishes Biosimiliars Division for “Golden Decade” of Exclusivity Losses – On Tuesday, March 10, Swiss pharmaceutical company Sandoz announced that it was creating a new business division focused on biosimilar development, manufacturing and supply, with Sandoz CEO Richard Saynor specifically citing a “golden decade” of expiring exclusivity for blockbuster drugs worth more than $650 billion USD as a major reason behind the move.

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2024 are announcing quarterly earnings next week (2023 rank in parentheses):

• Monday: Hon Hai Precision Industry Co., Ltd. (290th)
• Tuesday: None
• Wednesday: Micron Technology Inc. (16th); Tencent Holdings Ltd. (34th)
• Thursday: Accenture plc (t-281st); Alibaba Group Holding Ltd. (t-281st)
• Friday: None