The United States Patent and Trademark Office (“USPTO”) and the United States Copyright Office (“USCO”) delivered a report to Congress entitled Non-Fungible Tokens and Intellectual Property on March 12, 2024 (“Report”). While the Report is comprehensive, it does not recommend
Intellectual Property Law Blog
Up-to-date Information on Intellectual Property Law
Federal Circuit Weighs in on Temporal Rigidity of the Bayh-Dole Act’s Licensing Provisions
In University of South Florida Board of Trustees v. United States,[1] the Federal Circuit rejected a strict temporal limitation on when the Government’s license rights in patents stemming from federally funded research is triggered under the Bayh-Dole Act. Specifically,…
Federal Circuit Concluded that Operating Manuals Subject to Confidentiality Restrictions are Prior Art Printed Publications
In Weber, Inc. v. Provisur Techs., Inc., Nos. 2022-1751, 2022-1813 (Fed. Cir. Feb. 8, 2024), the Federal Circuit reversed the Patent Trial and Appeal Board’s legal conclusion that Weber’s operating manuals were not prior art printed publications based on…
Federal Circuit Rules on when the Patent Trial and Appeal Board is Engaging in Erroneous Claim Construction
EcoFactor, Inc. is the holder of U.S. Patent No. 8,498,753, titled “System, Method and Apparatus for Just-In-Time Conditioning Using a Thermostat,” which focuses on optimizing climate control systems, particularly HVAC systems, in residential and commercial buildings. The patented technology utilizes…
AI-Assisted Inventions: Is There a Duty to Disclose the Use of AI?
Inventors and patent practitioners filing patent applications before U.S. Patent and Trademark Office (USPTO) may have an obligation to disclose if artificial intelligence (AI) is used in the innovation process.…
Federal Circuit Rules on Inventor-as-Lexicographer Definitions and the Proper Scope of Reply and Sur-Reply Briefing Following Patent Owner Responses to IPR Institution Decisions
ParkerVision, Inc., v. Katherin K. Vidal, Under Secretary of Commerce for IP and USPTO Director No. 2022-1548, (Fed. Cir. December 15, 2023) primarily involved three topics: (1) the type of language in a patent specification that “clearly expresses” that the…
AI-Assisted Inventions: Are They Patentable? Who is the Inventor?
Generative artificial intelligence (AI) may change how we invent: many envision a collaborative approach between human inventors and AI systems that develop novel solutions to problems together. Such AI-assisted inventions present a new set of legal issues under patent law.…
Federal Circuit Rules on Written Description Requirement and Prior Art Statements Supporting a Motivation to Combine
RAI Strategic Holdings, Inc. v. Phillip Morris Products S.A., No. 2022-1862 (Fed. Cir. February 9, 2024) addressed two issues: (1) when the written description requirement is met in the context of a claimed range that is narrower than the ranges…
Federal Circuit Rebukes Attempt to Incorporate Arguments by Reference to a Related IPR Petition
In Medtronic, Inc. v. Teleflex Life Sciences Limited, 2022-1721, 2022-1722 (Fed. Cir. Nov. 16, 2023), the Federal Circuit considered whether U.S. Patent RE46,116 (“the ’116 patent”) was entitled to an alleged priority date sufficient to moot Medtronic’s asserted pre-AIA…
Is 2024 the Year When We Will Finally Know the Scope of IPR Estoppel?
This article was originally posted to Law360.…