Category:Patents

1
Historic 27th WIPO Treaty: WIPO Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge
2
Federal Circuit Relaxes Standard for Design Patent Obviousness Challenges
3
USPTO Considering Changes to Enforceability of Patents Subject to a Terminal Disclaimer
4
Federal Circuit Finds Declaratory Judgment Jurisdiction Over Patent Owner Through Amazon APEX Agreement
5
Guidance on use of Artificial Intelligence-Based Tools in Practice Before the United States Patent and Trademark Office
6
Full Court Parks Trial Judge’s Decision in Carpark Patent Fight
7
New USPTO Guidelines on AI-Assisted Inventions Leave Many Questions Unanswered
8
PayPal Inc. [2023] APO 54: PayPal Machine Stalls in the Face of Intangible Resistance
9
New Accelerated Patent Grant (APG) Program Enhances Opportunities for U.S. Entities
10
Hydrogen Storage, Distribution, and Transportation: Developments in Hydrogen Carriers

Historic 27th WIPO Treaty: WIPO Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge

WIPO member states have adopted a new Treaty related to intellectual property, genetic resources and associated traditional knowledge, marking the 27th WIPO treaty, and the first in over a decade.

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Federal Circuit Relaxes Standard for Design Patent Obviousness Challenges

On 21 May 2024, the Federal Circuit overturned the Rosen-Durling test used to assess non-obviousness of design patents. In LKQ Corporation v. GM Global Technology Operations LLC, the Court en banc ruled the same conditions for patentability that apply to utility patents apply to design patents, specifically holding the obviousness rationale articulated in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), will now apply to design patents. LKQ Corp. v. GM Glob. Tech. Operations LLC, No. 2021-2348, 2024 WL 2280728, at 1 (Fed. Cir. May 21, 2024) (en banc).

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USPTO Considering Changes to Enforceability of Patents Subject to a Terminal Disclaimer

On 10 May 2024, the United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking aimed at changing the current practices surrounding terminal disclaimers. The proposed change could have substantial effects on the enforceability of patents that are subject to a terminal disclaimer.

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Federal Circuit Finds Declaratory Judgment Jurisdiction Over Patent Owner Through Amazon APEX Agreement

On 2 May 2024, the US Court of Appeals for the Federal Circuit (the Federal Circuit) entered its decision in SnapRays, dba SnapPower v. Lighting Defense Group,1 holding the submission of an Amazon Patent Evaluation Express (APEX) Agreement against infringing third-party product listings is a “purposefully directed extra-judicial patent enforcement activit[y]” subjecting the patent owner to personal jurisdiction in the alleged infringer’s home state.2

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Guidance on use of Artificial Intelligence-Based Tools in Practice Before the United States Patent and Trademark Office

On 11 April 2024, the United States Patent and Trademark Office (USPTO) published guidance (referred to herein as the Guidance) on the use of artificial intelligence (AI) based tools, including generative AI, in practice. The USPTO recognizes the benefits of AI and while practitioners are not presently required to disclose whether AI is used as a drafting tool there are a variety of duties that arise with its use. The Guidance outlines the current USPTO policies and illustrates how these rules interact with the use of AI tools. Below, we will highlight different uses of AI tools and provide an overview of potential risks the USPTO discusses in the Guidance.

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Full Court Parks Trial Judge’s Decision in Carpark Patent Fight

In a recent update to a lengthy battle over car parking technology used by the City of Melbourne, SARB Management Group Pty Ltd (SARB) has scored a partial win over rival company Vehicle Monitoring Systems (VMS) on appeal in Full Court of the Federal Court of Australia. 

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New USPTO Guidelines on AI-Assisted Inventions Leave Many Questions Unanswered

The US Patent and Trademark Office (USPTO) recently issued what it labeled as Inventorship Guidance for AI-Assisted Inventions [Docket No. PTO-P-2023-0043].1 Despite its name, the document provides little in the way of certainty that one could not garner from reviewing recent precedent addressing the issue of artificial intelligence (AI) inventions. To begin with, the USPTO warns that its “guidance does not constitute substantive rulemaking and does not have the force and effect of law.”2 Rather, “[t]he guidance sets out agency policy with respect to the USPTO’s interpretation of the inventorship requirements of the Patent Act in view of” controlling jurisprudence, but “[r]ejections will continue to be based on the substantive law, and it is those rejections that are appealable to the PTAB and the courts.”3 Adding to the confusion attendant to the actual purpose thereof, the guidelines admonish that, “[t]o the extent that earlier guidance from the USPTO, including certain sections of the Manual of Patent Examining Procedure. . . is inconsistent with the guidance set forth” in such guidelines, “USPTO personnel are to follow these guidelines,” and “[t]he MPEP will be updated in due course.”4

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PayPal Inc. [2023] APO 54: PayPal Machine Stalls in the Face of Intangible Resistance

The recent refusal of a patent application by PayPal Inc. at the Australian Patent Office sheds light on the challenges surrounding the patentability of AI and machine learning systems (PayPal Inc. [2023] APO 54). The rejected application, which proposed a system for generating more accurate recommendations using AI machine learning, faced scrutiny on the grounds that, while the combination of machine learning models was innovative, it did not offer a substantial technical contribution beyond standard computer usage.

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New Accelerated Patent Grant (APG) Program Enhances Opportunities for U.S. Entities

On November 13 2023, the Mexican PTO (“IMPI”) released guidelines for the Accelerated Patent Grant (“APG”) Agreement. This is a patent work-sharing arrangement allowing qualifying USPTO patent holders the option of expediting prosecution for a corresponding Mexican patent application. The USPTO has been partners with Mexico through the Prosecution Highway (“PPH”) since 2010. PPHs are bilateral agreements among participating nations allowing qualifying patent applicants from one patent office to request expedited prosecution in a participating office. PPH programs have successfully reduced examination time and costs for clients by allowing examiners in later examining offices to utilize the search results from the earlier examiner. While the USPTO has a PPH partnership with IMPI, the APG Program is a new program giving USPTO applicants another opportunity to expedite a counterpart application in Mexico.

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Hydrogen Storage, Distribution, and Transportation: Developments in Hydrogen Carriers

According to the joint EPO-IEA report summarizing patent trends in the hydrogen economy  (summarized here), technologies related to storage, distribution, and transportation of hydrogen are among the most critical challenges for large-scale deployment. Standardized infrastructure for hydrogen trade is essential to allow the market to function and flow.

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