USPTO Updates Guidance on Enablement
In 2023, the U.S. Supreme Court affirmed invalidity of two Amgen patents based on a lack of enablement for broad genus claims that would potentially encompass millions of antibodies. The Court explained that Amgen's teaching of how to make and use their invention was little more than research assignments, and therefore requires undue experimentation to arrive at the breadth of the claims. In January of 2024, the USPTO updated its guidelines for assessing compliance with the enablement requirement based on the Amgen decision.
Did The USPTO's Refusal to Register "Trump Too Small" as a Trademark Violate Free Speech?
In Vidal v. Elster, the U.S. Supreme Court will address whether the USPTO's refusal to register the mark "TRUMP TOO SMALL" violates the free speech clause of the First Amendment of the U.S. Constitution by imposing a content-based restriction on speech that criticizes a government official or public figure.
Great Concepts, LLC v. Chutter, Inc.: A "Green-Light" for Fraud?
In Great Concepts, LLC v. Chutter, Inc., the U.S. Court of Appeals for the Federal Circuit (CAFC) held that the Trademark Trial and Appeal Board (TTAB) is authorized to cancel the registration of a mark if the "registration was obtained fraudulently," but is not authorized to cancel the registration if the incontestability status of the mark is "obtained fraudulently."
Masimo vs. Apple – Important Considerations Regarding the International Trade Commission
Exemplified by the recent dispute between Masimo and Apple regarding Apple's Series 9 and Ultra 2 watches, the U.S. International Trade Commission (ITC) is an important venue that deserves consideration by those seeking to enforce their intellectual property. In today's global economy, protecting intellectual property (IP) rights is paramount for businesses seeking to maintain their competitive edge. The ITC, an independent federal agency of the United States, plays a crucial role in safeguarding trade interests at the border, particularly concerning IP infringement issues. This article will delve into what the ITC is, its functions, and how it differs from federal courts in enforcing IP rights.
An Accelerated Pathway Program for Semiconductor Patents
The United States Patent and Trademark Office (USPTO) is implementing the Semiconductor Technology Pilot Program to expedite the examination of patent applications related to semiconductor manufacturing, research, and development. Under this program, which supports the CHIPS Act enacted by Congress in 2022, applications will be advanced out of turn for examination until a First Office Action is issued. The notice of Semiconductor Technology Pilot Program was published in the Federal Register on December 1, 2023.
Emotional Perception AI v UKIPO: Is There a Change in The UK Intellectual Property Office's Assessment of AI?
The UK Intellectual Property Office (UKIPO) has been more strict on eligibility requirements for computer-implemented inventions, including claims directed to artificial intelligence (AI), than the European Patent Office (EPO). However, a recent ruling in the High Court of England and Wales suggests that this could be about to change.
Decoding Patents: Navigating the Implications of Foreign Prosecution Estoppel and Choice of POSITA
The recent decision by the United States Court of Appeals for the Federal Circuit (CAFC) in K-fee System GmbH v. Nespresso USA, Inc. involved important questions of claim construction and patent prosecution estoppel. Aligning with the ordinary understanding of the average person, the court interpreted the term "barcode" based on visual appearance rather than strict data encoding. However, did the Federal Circuit err in its claim construction by focusing on the wrong "person" of ordinary skill in the art (POSITA) when they construed "barcode" based on appearance rather than functionality? Notably, the court considered statements from the patent owner in foreign patent prosecution while construing the term, a consideration that seems to challenge established CAFC precedent. This departure raises concerns about the potential impact on existing standards. As such, the ruling potentially expands the scope of prosecution history estoppel globally, prompting practitioners to take into account statements made in foreign prosecution of related patents during litigation proceedings in the United States. Ultimately, the decision navigates the delicate equilibrium between adaptability and precision in patent law, influencing the landscape of intellectual property protection.
When Inventors Become Co-clients: Best Practices for Inventor Communications in Prosecuting Patent Applications
Preparing a patent application requires careful communication between patent practitioners and inventors employed by a particular client. For a given invention, patent lawyers and patent agents must confirm many important technological concepts with the inventors in order to describe the invention and draft a specification that meets various patentability requirements. On the other hand, reckless communication may find the inventor becoming a co-client as discussed in a recent district court case.
CAFC Effectively Says "Miranda Warning" Does Not Apply to Patent Prosecution
Whether in film or television crime dramas, most people have seen a suspected criminal given her "Miranda Warning" which includes the familiar line: "Anything you say can and will be used against you in a court of law." The U.S. Court of Appeals for the Federal Circuit recently ruled that patent applicants, in certain circumstances, may make statements during prosecution of their applications without any consequences at all.
USPTO Amending Rules by Creating a Separate Design Patent Bar for Practitioners
Since October 2022, the USPTO has publicized their intent to increase the number of registered practitioners and broaden the educational skill set of those registered by creating a separate Design Patent Bar eligible to design professionals that would not otherwise qualify for the current regular Patent Bar. On November 16, 2023, the USPTO officially established the Design Patent Bar, giving notice in the Federal Register.