IP Law Watch – Legal issues, law and regulations concerning the world of IP

First Denial Based on USPTO’s New Discretionary Denial Factors

Jun 13 2025

Earlier this year, Chief Judge Boalick issued guidance on the USPTO’s recission of “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation,” explaining how the Fintiv factors should be addressed going forward. Shortly after, Acting Director Stewart issued a memorandum titled “Interim Processes for PTAB Workload Management” that provided additional non-Fintiv discretionary factors that should be assessed to determine whether discretionary denial of an IPR petition is appropriate.

A Quest Against Middle-earth: Lord of the Fries Successfully Registers LORD OF THE Mark

May 13 2025

The intellectual property rights owner of The Lord of the Rings franchise, Middle-earth Enterprises, LLC (Middle-earth Enterprises) has renewed its pursuit against Lord of the Fries IP Pty Ltd (Lord of the Fries), having recently appealed the Australian Trade Marks Office’s decision allowing the registration of the word mark LORD OF THE filed by Lord of the Fries. We discuss below the key issues in dispute in the trade mark opposition filed by Middle-earth Enterprises.¹

Estoppel Estopped?

May 13 2025

The Federal Circuit recently resolved a split among the district courts whether patent infringement defendants who bring inter partes review (IPR) challenges are estopped from raising new prior art challenges in a co-pending district court litigation. While some district courts had earlier found estoppel to have broad effect, and thus prevent challenges based on products on sale or public use, the Federal Circuit’s decision means that estoppel is limited only to challenges based on patents or printed publications, opening the door to use patents and publications to provide evidence of what subject matter was “on sale” or “in public use.”

Could This be the Ai-nswer? A Collective Copyright Licence for Generative AI Training

Apr 28 2025

The Copyright Licensing Agency (CLA), a United Kingdom (UK) not-for-profit, has announced that it is developing a Generative AI (GenAI) Training Licence, and is hoping to publish the licence in the third quarter of 2025.

Detailed Guidance on New USPTO IDS Size Fees

Apr 04 2025

On 19 January 2025 the USPTO enacted a new Information Disclosure Statement (IDS) size fee. A new IDS size fee, codified under 37 C.F.R. 1.17(v), is accrued for any pending application when the number of cumulative references cited by the applicant exceeds each of 50, 100, and 200 references (hereinafter, “IDS Size Fee”).

Last Mile Logistics Comes to the End of the Road – Dei Gratia v Commissioner of Patents [2024] FCA 1145

Mar 31 2025

In Dei Gratia Pty Ltd v Commissioner of Patents [2024] FCA 1145 (Dei Gratia), the Federal Court of Australia dismissed an appeal by Dei Gratia and confirmed the decision of the Commissioner of Patents to refuse the patent application for ‘last mile logistics’. The claimed invention purported to facilitate the delivery of goods from the last point in a distribution chain to end consumers. By selecting a preferred local outlet, customers would be able to overcome delivery issues such as the need to be at home at a specific time and the protection of perishable goods that have been left at doors in high temperatures.

Best Method Challenge Continues to Offer “a Material Advantage” – Zoetis Services LLC v Boehringer Ingelheim Animal Health USA Inc [2024] FCAFC 145

Mar 27 2025

Finding against Zoetis, the Full Federal Court held that Zoetis’ three patent applications relating to pig vaccines were invalid due to the failure to disclose the best method.

Patent Trial and Appeal Board Designates “Informative” Decision Regarding Claim Construction

Mar 20 2025

On 20 March 2025, the Patent Trial and Appeal Board (PTAB) designated as “Informative” the majority opinion in the Decision Denying Institution in IPR2024-00952, a decision originally entered on December 13, 2024.

Make Protecting Your UK and EU Product Packaging and Labels Your New Year’s IP Resolution. Part 2: Combatting Dupes and Copycats in the United Kingdom

Mar 17 2025

By: Arthur Artinian, Simon Casinader, and Georgina Rigg

Everybody knows that trade marks are necessary to protect a brand’s logo and name, and a lot of people know that registered designs are a powerful tool in stopping counterfeit goods, but did you know these rights can also be used to help protect against unwanted “dupes” (also known as “copycat” or “lookalike” products)? Dupes and copycats deliberately mimic a successful product, and they imitate the look and feel to unfairly benefit from the goodwill attached to the product through the “halo effect,” i.e., the impression that if it looks like the original, it must be as good.

No Copyright Protection for Birkenstock Sandals: A Significant Decision from the German Federal Court of Justice

Mar 11 2025

On 20 February 2025, the German Federal Supreme Court (BGH) delivered a landmark ruling in a case concerning the copyright protection of Birkenstock sandals. In its decision, the BGH firmly rejected the claim that Birkenstock’s sandal designs qualify for copyright as “applied art” under German copyright law. This judgment not only clarifies the scope of protection for industrial design works but also contrasts with prior rulings from regional courts in Hamburg and Cologne, highlighting the challenges of determining what constitutes “creative” or “artistic” design in functional products.