Posts Tagged: "Guest Contributor"

Throughout 2023, a number of legislative initiatives impacting intellectual property rights were introduced in the United States Congress or signed into law by the President. In some instances, these efforts are meant to try and re-balance the various, sometimes competing, interests of the public and the innovators. In other instances, the legislation is aimed at weaponizing the intellectual property right procurement process to reward some and punish others. Various pieces of legislation as well as Executive Directives directed at artificial intelligence also have been introduced at different levels. This piece, however, leaves those AI issues for others to address. Below is a summary of some of the key legislative efforts in 2023 touching on U.S. IP rights.

In a laudable effort to curtail rampant corporate IP theft, a bipartisan group of U.S. Senators has called on a hesitant Department of Justice (DOJ) to step up its enforcement. As reported in Forbes, Senators Thom Tillis (R-NC), Chris Coons (D-DE), and Marsha Blackburn (R-TN) recently issued a letter to the DOJ identifying the core gap in its prosecution habits. Their primary complaint was “the DOJ’s focus on individual, as opposed to corporate, offenders.” This is an oversight that must be corrected. 

In October of 2023, a divided panel of the U.S. Court of Appeals for the Federal Circuit ruled in Great Concepts, LLC v. Chutter, Inc., 84 F. 4th 1014 (Fed. Cir. 2023) that a fraudulent filing for incontestability under Section 15 of the Lanham Act is not a proper ground for the Trademark Trial and Appeal Board (TTAB) to cancel a registration under Section 14 of the Act. In so holding, it endorsed prior rulings to the effect that fraud in filing a Section 8 affidavit of continuing use, or a renewal application under Section 9—acts of “maintaining” a registration—constitutes “obtaining” a registration within the meaning of Section 14, while rejecting earlier TTAB decisions that had treated Section 15 affidavits the same way.

From SAG-AFTRA strikes to the class action lawsuit of McKernan against Stability AI, Stability Diffusion and Midjourney, the creative industries are concerned with the ability of AI systems to produce outputs in the likeness of their original works. Earlier this year, a class action lawsuit against popular generative AI developers Stability AI, Midjourney, and DeviantArt was filed in the United States alleging copyright infringement. McKernan and others claimed that generative AI outputs have reproduced a significant portion of their original work.

In 2023, the U.S. Copyright Office (USCO) addressed key challenges in copyright law, ranging from navigating the intricacies of AI-generated content to refining rules for the modern music industry, as well as proposing new exemptions as part of the ninth triennial rulemaking proceeding. These major developments underscore the Office’s dedication to keeping copyright law current in the face of rapid evolution, and offering a glimpse of what lies ahead.

On June 1, 2023, the Unified Patent Court (UPC) opened, providing a new venue for patent litigation across all 17 ratifying European Union member states. The court represents a significant shift in patent litigation in the EU, which is poised to impact the global patent strategy of U.S. and multinational companies. Through the European Patent Office (EPO), inventors have long been able to obtain patent protection across most of the EU through a single application. Once the EPO grants a European Patent, inventors have the option of obtaining local patent protection in any member state that they select without the need for further examination or review. However, historically, once the EPO granted a patent, there was no single enforcement or invalidation mechanism, leaving it up to the member states to enforce patent rights.

If you’re reading IPWatchdog, you probably have some familiarity with intellectual property rights, such as patents, copyrights and trademarks. However, one distinct type of intellectual property is often left out and misunderstood. It’s called the right of publicity. While publicity rights are often confused with other types of intellectual property or privacy rights, or mistakenly associated only with famous individuals, they are incredibly important, far-reaching, and deserve much more attention.

Although the proceedings before federal district courts may not garner as much attention as those of the U.S. Court of appeals for the Federal Circuit or the Supreme Court, they can be an important proving ground for the decisions rendered by those courts. And 2023 was no exception to that rule. As discussed below, the Zogenix v. Apotex and Teva v. Eli Lilly decisions provide a glimpse into what litigants can expect in the aftermath of the GSK v. Teva and Amgen v. Sanofi decisions, respectively. These cases will have an especially significant impact on the life sciences industry, and watching how these decisions are applied by the district courts should be a priority for practitioners in this space.

In 2023, the U.S. Supreme Court decided four intellectual property cases. The cases touched all of the major fields of intellectual property—two cases interpreted the federal trademark act (Jack Daniel’s and Abitron), one case involved patent enablement (Amgen), and one case explicated the federal copyright statutes (Goldsmith). The decisions were split along party lines, with two cases finding in favor of intellectual property owners (Jack Daniel’s and Goldsmith) and two cases in favor of the accused infringers (Abitron and Amgen).

Innovators that invest in R&D are the driving force behind today’s rapidly evolving technological landscape. However, implementers that rely on – and as a result benefit from – those innovations to sell their own products and services aren’t usually eager to pay those innovators. But by paying the innovators, the implementers are actually helping make sure that the cycle of innovation continues. Matteo Sabattini, the new President and Chief Licensing Officer of Convida, joins Eli on this episode of the Clause 8 podcast to talk about this important dynamic.

As 2023 draws to a close, here’s a gift of five golden Federal Circuit patent cases! These decisions issued by the U.S. Court of Appeals for the Federal Circuit (CAFC) significantly impact patent practitioners in several areas, including patent prosecution, litigation, and inter partes reviews (IPRs).

On December 11, the Review Board of the U.S. Copyright Office (USCO) released a letter affirming the USCO’s refusal to register a work created with the use of artificial intelligence (AI) software. The decision to affirm the refusal marks the fourth time a registrant has been documented as being denied the ability to obtain a copyright registration over the output of an AI system following requests for reconsideration.

The U.S. Supreme Court’s Alice decision alleges that “…merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.” And the Patent Eligibility Restoration Act (PERA) of 2023 alleges that “adding a non-essential reference to a computer by merely stating, ‘do it on a computer’ shall not establish such eligibility.” Clearly, it is assumed that “merely” doing something on a computer or “merely” saying “do it on a computer” is not a desirable thing in the eyes of some; a computer supposedly invalidates the inventive effort and “merely” doing something on a computer is undeserving of even consideration of a patent.

One might think that we had enough crises already without creating a new one, but apparently that’s not the case. To much fanfare, the Biden Administration unveiled its long awaited “guidelines” for agency use of the march in rights provision of the Bayh-Dole Act. Ironically, it started this exercise just as it had joined every other administration in dismissing attempts to misuse the statute as a pretext for the government to micro-manage the price of a successfully commercialized government funded invention.

In 1975, Ian Murgitroyd founded his own firm in Glasgow, Scotland after stumbling into the patent field.  He could not have imagined that it would become one of the world’s biggest IP service providers, let alone that it would make history by being the first and only law firm to be listed on the London Stock Exchange or later be acquired by a private equity firm for £63 million.