Posts in Guest Contributors

In Defense of Patentability of Mathematical Formulas and Relationships

“Mathematical Formulas and Relationships” fall under the “Abstract Idea” exception to the categories of patentable subject matter. Characterizing the “Mathematical Formulas and Relationships” as “Abstract Ideas” has led to misrepresentation of mathematical concepts in patent law. A “Mathematical Formula or Relationship” is a means of expression and should be inspected to extract what it expresses. Next, the content that is being expressed may be evaluated to determine whether the “Mathematical Formula or Relationship” is expressing a “Tool” or a “Model,” both of which are used for building machines and devising technological processes and neither of which needs to be categorically excepted from patentability.

Tillis Bill Would Restore Needed Clarity and Predictability in Patent Eligibility Law

Over the last 15 years, the United States Supreme Court has mutated patent eligibility into an impossibly complex and confusing mess. The Court’s current eligibility test strays far from Congress’s original intent, erodes trust in predictability, and has left many remarking that innovation in the United States is falling behind due to uncertainty of patent eligibility law. Even more troubling, the resulting uncertainty of patent ineligibility for large swaths of innovation in critical technology areas, including artificial intelligence, poses significant risks to U.S. competitiveness, economic growth and national security. The Court has had opportunities to rectify its patent sinkhole but recently declined another chance to mend the chaos. When the Court denied certiorari in American Axle v. Neapco—despite the Solicitor General’s plea to hear the case—it became clear that Congress must step in to rescue U.S. innovation.

Moving Toward a Design Patent Bar – Progress in the IP Community

Challenging established processes is a commonly recognized leadership principle. In recent weeks, the emphasis by the United States Patent and Trademark Office (USPTO) on reconsidering and reforming patent bar eligibility, especially with regard to a potential design patent bar, represents a significant challenge to well-established Patent Office procedures. If the health and viability of an organization can be defined in terms of its ability to revisit, revamp and evolve existing rules and procedures, then this initiative, led by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Kathi Vidal, represents a healthy and viable intellectual property community.

We Need an Open-Source Approach to Weed Out Bad Quality Patents

Much has been written about patent quality. But many authors approach this problem with a bias against the very idea of a patent system. These critics would “solve” the patent quality problem by cutting down the total number of issued patents rather than focusing on problem patents. They suggest increasing examiners and examination time will weed out bad quality patents. And this might throw up additional roadblocks to inventors obtaining a patent by increasing the time and cost of securing an allowance. But this does not necessarily improve patent quality. Instead, it merely reduces the total number of patents issued. Rather than “more examination,” solutions to the patent quality problem need to focus on “better examination.” In theory, “better examination” should stop invalid claims from ever getting issued while simultaneously streamlining allowance for valid claims.

Lawmakers Aim a Triple Whammy at American Innovation

Last week, the Bayh-Dole Coalition held a webinar titled “The Three-Pronged Attack on U.S. Innovation and Intellectual Property.” Before we consider each prong, it’s worthwhile reflecting on a larger point. Each would deal a body blow to American innovation just as we struggle to keep the economy on track. And each would be a self-inflicted wound that must have our foreign rivals shaking their heads at our folly.

Sign the Prenup: What Brands Can Learn From the Kanye West/Adidas IP Breakup

Trust and estate attorneys regularly advise their clients to enter into prenuptial agreements to protect the valuable assets each spouse brings to the marriage as well as how to distribute community property in the event of a divorce. Brand collaborations with celebrities, influencers or other brands are much like marriages, but brand collaborations are even more unlikely to last. Why not plan for the split, whether it be a conscious uncoupling or a Page 6 kind of divorce, with a prenup? The high profile split between Adidas and Ye (fka Kanye West) reminds us that collaboration agreements should not only plan for the best of times, but it is worth setting up the agreement to account for a sudden and troubling end.   

Patent Filings Roundup: Old IP Edge Filings Explode; No New Discretionary Denials Again; Fortress-Backed DivX Rolls On

It was a return to form this week in the district courts, with 115 new patent filings (led by more than 40 new IP Edge complaints) to just 23 new Patent Trial and Appeal Board (PTAB) filings—the latter number being bolstered by a number of challenges to patents held by Raymond Anthony Joao subsidiary Beteiro, LLC by a conglomerate of gambling companies, including PointsBet USA, DraftKings, Inc., BetMGM, LLC, Hillside New Jersey LLC, and Entain Corporate Services Ltd. Micron filed another set of challenges against Katana Silicon Technologies patents, Ecobee challenged another Magnetar entity, Ollnova, which has brought suit on Internet of Things (IoT) related devices; and it was another week without any discretionary denials.

USPTO Efforts to Reduce Fraud are Good for the Trademark System

Security issues have long dogged the U.S. trademark system. Unscrupulous operators – sometimes competitors, sometimes bad actors with nothing better to do – too frequently muck up the application process by modifying those filings or filing improper submissions. This is no small problem given the U.S. Patent and Trademark Office (the USPTO) remains a mammoth and international hub of trademark filings. In fiscal 2021, trademark application filings topped 943,000, a record high. This marked an increase of about 28% from the prior year, with that increase driven primarily by Chinese filers.

Overbroad State Right-to-Repair Bills Would Violate Federal Copyright Law

The right-to-repair movement has been making strides in recent years, as many states are now contemplating bills that would require electronic device manufacturers to make their parts, tools and know-how available to device owners and independent repair shops. While the goal of expanding repair opportunities for consumers is certainly laudable, repair advocates are pulling a fast one when it comes to the federal copyright law implications of their preferred state legislative solutions. As Professor Adam Mossoff and I explain in a new Hudson Institute policy memo, these proposed state right-to-repair bills are unconstitutional on their face because they directly conflict with the rights secured to authors under the federal Copyright Act. They are also the wrong policy since they would upset the legal and policy foundations that have led to the unprecedented success of today’s thriving digital marketplace. States should not waste valuable time and resources on harmful right-to-repair bills that will be struck down when they are inevitably challenged.

Understanding IP Matters: Rock On — ‘Cracker’ Lead Singer Advocates for Musicians and Other Creators

One contradiction of the digital era is that, while it’s become easier to make and distribute music, it’s also more difficult to earn a living doing it. Artists must accept the extremely low rates that streaming platforms like Spotify and YouTube pay for their songs. What does the future look like for garage bands? And will stronger enforcement of copyright protection help? Bruce Berman, host of the “Understanding IP Matters” podcast, sought out musician, serial entrepreneur, university instructor and intellectual property advocate, David Lowery, to find out in Episode 4 of Season 2 of “Understanding IP Matters.”

U.S. Copyright Office Backtracks on Registration of Partially AI-Generated Work

On October 28, Kristina Kashtanova, an artist and artificial intelligence (AI) consultant and researcher, received notice from the U.S. Copyright Office (USCO) that the registration for the first issue of her partially AI-generated graphic novel, Zarya Of The Dawn, may be canceled. A month earlier, on September 15, the USCO issued a registration for Kashtanova’s work, which was subsequently widely publicized as the first known instance of an AI-generated work being successfully registered with the USCO. In the USCO’s recent communication, “I was asked to provide details of my process to show that there was substantial human involvement in the process of creation of this graphic novel,” Kashtanova explained by email. When asked to confirm the potential cancellation for Kashtanova’s registration, the USCO provided a written statement saying…“Copyright under U.S. law requires human authorship. The Office will not knowingly grant registration to a work that was claimed to have been created solely by machine with artificial intelligence.”

Patently Strategic Podcast: Into the Patentverse, Volume 2

Virtual Reality (VR) and Augmented Reality (AR) intellectual property (IP) have been around for some time now, but how do they relate to the Metaverse? And how will VR and AR patent rights change as the Metaverse continues to evolve? The Patently Strategic Podcast will be exploring these topics in our next installment of Into the Patentverse.

Discretionary Denial Under Section 325(d): Nuances of Advanced Bionics Framework for Prior Art Cited in an IDS During Prosecution

The Patent Trial and Appeal Board (PTAB) has the discretion to deny institution of an inter partes review (IPR) proceeding under 35 U.S.C. § 325(d) if “the same or substantially the same prior art or arguments previously were presented to the Office.” In Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH (“Advanced Bionics”), the PTAB established a two-part framework for determining whether a PTAB panel should exercise discretion under Section 325(d). This article surveys recent PTAB decisions having the common fact that the IPR challenges rely upon prior art that is the same or substantially the same as prior art submitted in an IDS during prosecution to glean insights as to how parties and the Board are addressing Advanced Bionics in this scenario.

IP Goes Pop! Halloween Spooktacular 2: The Return

IP Goes Pop! is back with its second annual Spooktacular! In this episode, things get much spookier as we pit the top four Halloween Monsters against each other. Listen in for a breakdown of these famous characters and archetypes. Play along as your co-hosts, Volpe Koenig Shareholders, Michael Snyder and Joseph Gushue rank Dracula, Dr. Frankenstein’s Monster, Werewolves, and Mummies. What powers or abilities do they have that set them apart from each other? What movie or television show made them Halloween staples, and do these movies stand the test of time? Find out who rates highest on the jack-o-lantern meter to be crowned the spookiest monster of Halloween.

What’s in a Pose? When it Comes to Brand Protection, Quite a Lot

Usain Bolt filed a recent U.S. trademark application depicting his widely recognized victory pose. The trademark has been applied for in relation to items such as clothing, jewellery, shoes and restaurant and bar services. As Bolt has retired from athletics, he is clearly hoping to add more strings to his bow.