Wen Xie

This is a companion episode and article to Episode 1 which touched on whether there is potential friction between the U.S. Patent and Trademark Office’s (USPTO’s) AI subject matter eligibility guidance and the 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 PEG”). Practitioners have noted that Example 39 of the 2019 PEG is seemingly less effective in overcoming Section 101 rejections following the issuance of the AI Guidance, particularly in light of Example 47, which dealt with training limitations, while Example 39 was a training claim. I’m here to say that there is no conflict between the examples and the two guidance documents overall and to explain why you should come to this conclusion too.

The U.S. Patent and Trademark Office’s (USPTO’s) AI subject matter eligibility guidance issued in July of 2024 contains three written examples, each example having a set of sample claims for which the USPTO conducted their subject matter eligibility analysis…. So let’s review each one of the examples and their main takeaways.

The United States Patent and Trademark Office (USPTO, the Office or the Agency) has recently issued multiple guidance and proposed rules that potentially change the landscape of patent practice. On top of that, the USPTO has also proposed substantial terminal disclaimer fee increases that can induce early filing of terminal disclaimers. The Agency’s actions will significantly impact patenting artificial intelligence and it is important to understand the USPTO’s position from a holistic perspective with respect to this critical emerging technology.

In the latest episode of IP Practice Vlogs, it’s time for another design patent practical exercise. We previously did a design exercise on patenting Apple’s AirPods. This time we are going to patent the lightsaber. Specifically, as an example, we will be using a custom made lightsaber from Disney which was built by my husband at an experience at Galaxy Edge called Savi’s Workshop. The lightsabers that are assembled and sold at Savi’s workshop are all customizable in which the design or physical appearance actually vary depending on the customer’s design choice. I’m going to show you why this custom-made lightsaber is actually a very good candidate for design patent protection despite its variable design.

The Federal Circuit basically confirmed in In re Cellect that terminal disclaimers can knock out patent term adjustment (PTA). If you have patent term extension (PTE) and you filed a terminal disclaimer to overcome an obviousness-type double patenting (ODP) rejection, you can get the PTE term tacked onto the disclaimed date. However, in the case of PTA, the court says that PTA term gets added to the life of the patent first and then the terminal disclaimer goes into effect so that you have disclaimed the PTA term and any extended term such that the two patents now expire on the same date regardless of the PTA. In effect, terminal disclaimers may knock out PTA term.