Tag: Patents

1
The Dust Settles Further In Relation to Patents for Computer Implemented Inventions in Australia
2
Australian Appeal Case Revisits Patentability of Computer Implemented Inventions
3
Should Copyright Exceptions Apply to AI Mined Data? And Other Questions Raised Under the UKIPO Consultation on Artificial Intelligence and Copyright and Patents
4
Board of Directors of the Dubai International Financial Centre (DIFC) Authority Issues IP Legislation Update
5
AI Can Invent – Australia is First to Recognise Non-Human Inventorship
6
Australia aligns with the U.S. and EU by adopting ‘exhaustion of rights’ doctrine
7
PTAB Decisions Can Now Be Nominated Anonymously
8
Free Extensions of Time from IP Australia and IPONZ for COVID-19 delays
9
COVID-19: USPTO Offers 30-Day Extension of Filing and Payment Deadlines to Those Affected by COVID-19 Outbreak
10
PTAB designates additional decisions precedential relating to its discretion to deny petitions

The Dust Settles Further In Relation to Patents for Computer Implemented Inventions in Australia

Last month we wrote about the Full Federal Court’s decision in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 (Aristocrat), which concerned the patentability of computer implemented inventions (CIIs).

This month, the Full Court determined another appeal regarding CIIs: Repipe v Commissioner of Patents [2021] FCAFC 223. The decision concerned two patent applications by Repipe Pty Ltd that disclosed systems and methods for providing information to field workers by way of a central computer server connected to a GPS-enabled mobile device (i.e. a smartphone). The applications were treated as the same for all relevant purposes at trial and during the appeal.

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Australian Appeal Case Revisits Patentability of Computer Implemented Inventions

The vexed issue of ‘patent eligibility’ for computer implemented inventions has raised its head again in Australia, this time in the Full Court of the Australian Federal Court decision of Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202. The decision expands upon principles for assessing the eligibility of computer-implemented technology, but the line between assessing eligibility and other aspects of patentability remains blurred.

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Should Copyright Exceptions Apply to AI Mined Data? And Other Questions Raised Under the UKIPO Consultation on Artificial Intelligence and Copyright and Patents

On Friday 29 October, the UK’s Intellectual Property Office (the “UKIPO”) launched a consultation entitled “Artificial Intelligence and IP: copyright and patents” (see here), which closes 11:45pm on 7 January 2022 (London time). The consultation forms part of the UK government’s ‘National Artificial Intelligence (AI) Strategy’ (the “Strategy”), which followed the government’s 2017 Industrial Strategy publication.

The aim of the consultation is to determine the right incentives for Artificial Intelligence (“AI”) development and innovation, while continuing to promote human creativity and innovation.

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Board of Directors of the Dubai International Financial Centre (DIFC) Authority Issues IP Legislation Update

The Board of Directors of the Dubai International Financial Centre (DIFC) Authority recently issued the DIFC Intellectual Property Regulations (IP Regulations). The IP Regulations took effect on 5 July 2021 and were issued pursuant to the DIFC Intellectual Property Law, DIFC Law No. of 2019 (IP Law).

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AI Can Invent – Australia is First to Recognise Non-Human Inventorship

The Australian Federal Court recently handed down its first-instance judgement in Thaler v Commissioner of Patents [2021] FCA 879 where the central issue considered was whether an artificial intelligence (AI) system could be an ‘inventor’ for the purposes of the Australian Patents Act 1990 (Act) and its corresponding regulations. The Court found that an AI system can be an inventor – where ‘inventor’ may be construed broadly to include a ‘person or thing that invents’1. This decision puts Australia in the spotlight as a favourable country to patent AI-created inventions – for now. Given the subject-matter and controversy generated by this decision, an appeal to the Full Federal Court is almost certain.

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Australia aligns with the U.S. and EU by adopting ‘exhaustion of rights’ doctrine

The High Court of Australia’s recent decision Calidad Pty Ltd v Seiko Epson Corporation [2020] HCA 41 (Calidad) has more closely aligned Australian patent law with its U.S. and European counterparts. Key takeaways from this decision are:

  • the ‘doctrine of exhaustion of rights’ has replaced the ‘implied licence doctrine’;
  • a patent owner’s exclusive rights are extinguished by the first sale of the patented goods;
  • innovators have greater scope to reuse products without risking patent infringement; and
  • patentees seeking greater control over post-sale use should do so through contract law.
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PTAB Decisions Can Now Be Nominated Anonymously

The Patent Trial and Appeal Board (“PTAB”) now allows “individuals to anonymously nominate any routine decision of the Board for designation as precedential or informative.” (Click here for PTAB Decision Nomination form.)

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Free Extensions of Time from IP Australia and IPONZ for COVID-19 delays

The COVID-19 outbreak has impacted all businesses in one way or another and IP Australia understands that dealing with IP matters is not necessarily the highest priority for some businesses.

As a result, from 22 April 2020 IP Australia is providing free three month extensions of time for most deadlines but not renewal and continuation fees deadlines. Additionally, the six month grace period is still available and ordinary extensions of time will remain available for periods of longer than three months.

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COVID-19: USPTO Offers 30-Day Extension of Filing and Payment Deadlines to Those Affected by COVID-19 Outbreak

In a Notice issued March 31, 2020, the U.S. Patent and Trademark Office (“USPTO”) extended certain filing and payment deadlines due between March 27, 2020, and April 30, 2020, by 30 days from the initial due date, provided that the filing is accompanied by a statement that the delay was due to the COVID-19 outbreak. The USPTO’s authority to offer this extension was part of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), signed into law on March 26, 2020.

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PTAB designates additional decisions precedential relating to its discretion to deny petitions

On Tuesday, the Patent Trial and Appeal Board (PTAB) designated two decisions precedential and one as informative explaining the circumstances under which the Board will exercise its discretion under 35 U.S.C. § 325(d) and 35 U.S.C. § 314(a) to deny petitions.  The cases analyzed situations where the prior art and invalidity arguments advanced by Petitioner were similar/identical to those previously considered by the examiner and where the timing of a final decision may coincide with another body’s findings (e.g., a district court trial) regarding validity.  These cases provide guidance to Petitioners and Patent Owners alike about how to construct discretionary denial arguments, in particular regarding the appropriate way to address art that may or may not be cumulative to already-considered references. 

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