2023, Invention and Patent - Intellectual Property Pulse

G 2/21 applied to software inventions (T 0687/22)

The IPKat

MARCH 26, 2025

The EPO Board of Appeal decision in T 0687/22 confirms beyond doubt the relevance of G 2/21 to software inventions. The decision in T 0687/22 links the case law from G 1/19 and G 2/21 to highlight t he importance of establishing a credible technical effect of software invention. Headnote II).

Invention

Invention Art Publishing Patent

The UPC's first decision on infringement by equivalence (Plant-e v Bioo, UPC_CFI_239/2023)

The IPKat

JANUARY 28, 2025

In Plant-e v Bioo the UPC provided its first decision addressing the doctrine of equivalents in patent infringement proceedings ( UPC_CFI_239/2023 ). Legal background: Equivalence around Europe The Unified Patent Court Agreement (UPCA) contains no specific provisions on the doctrine of equivalence.

Invention

Invention Art Patent Designs

Plausibility as a moving target: Phase III clinical trial results sink second medical use patent (T 0816/22)

The IPKat

JANUARY 22, 2025

The Board of Appeal decision in T 0816/22 considered whether post-published phase III clinical trial data showing lack of efficacy can invalidate a second medical use patent that appeared plausible based on the data in the application as filed.

Patent

Patent Invention Publishing Art

Guidance on Patenting Inventions with AI Contributions

Patently-O

APRIL 25, 2023

The following are my remarks given on April 25, 2023 to the USPTO as part of their AI listening session: by Dennis Crouch Members of the USPTO, and fellow participants of this AI Listening Session, thank you for inviting me here today and for taking time to consider these important issues.

Invention

Invention Inventor Patent Intellectual Property

The description of a patent should "always" be used to interpret the claims (DexCom vs. Abbott, UPC_CFI_230/2023)

The IPKat

FEBRUARY 21, 2025

The Paris Local Division of the Unified Patent Court (UPC) first substantive decision on patent validity in DexCom v Abbott ( UPC_CFI_230/2023 ), provides some interesting commentary on how much the description should be taken into account when interpreting the claims. quoting UPC_CoA_335/2023 ).

Patent

Patent Invention Art Litigation

Patent Grant Total 2023

Patently-O

DECEMBER 29, 2023

by Dennis Crouch The US Patent and Trademark Office (USPTO) issued a total of 312,100 utility patents in the calendar year 2023. This marks the fourth consecutive year of decline in the number of issued patents. In fact, numbers from US-applicants increased over the past year.

Patent

Patent Inventor Patent Application Invention

A Rare Invocation for a Rare Disease?: Government Urged to Invoke Section 100, Patents Act for Rare Disease Medicine

SpicyIP

JANUARY 20, 2025

Rajya Sabha MP Haris Beeran wrote to the Minister of Health and Family Welfare on December 20, 2024, urging the Central Government to invoke Section 100 (1) of the Patents Act with respect to local production of the rare disease Spinal Muscular Atrophy (SMA) treating drug Risdiplam. 72 lakhs for children (12 bottles) and Rs 1.86

Government

Government Patent Invention Public Domain

The criteria for the novelty and inventive step of pharmaceutical selection inventions (T 1356/21)

The IPKat

DECEMBER 13, 2023

The recent Board of Appeal decision in T 1356/21 covered a number of interesting legal points in the field of pharmaceutical patents. The case related to the novelty and inventive step of a second medical use claim. However, it is possible to patent a "substance or composition for use " in a method of treatment.

Invention

Invention Patent Law Art

Impact of AI on Global IP Systems

IIPRD

JANUARY 7, 2025

AI and the Global IP System We need a worldwide intellectual property (IP) structure that encourages innovation and invention if we are to benefit from generative AI. As contemporary technology has developed, the patent system has faced fresh difficulties. AI is similar to previous computer-assisted inventions in several aspects.

IP

IP Intellectual Property Invention Inventor

Kappos at PTAB Masters 2023: The PTAB Simply ‘Hasn’t Worked Out’ as Intended

IP Watchdog

FEBRUARY 1, 2023

During the PTAB Masters 2023 program, which was held this week on Tuesday and Wednesday at IPWatchdog’s headquarters in Ashburn, Virginia, former U.S. Kappos was Director during the enactment and implementation of the America Invents Act (AIA), which established the PTAB.

Invention

Invention Trademark Patent Government

G 2/21 does not permit armchair inventing (T 0258/21)

The IPKat

OCTOBER 31, 2023

The recent decision in T 0258/21 , by contrast, is the first interpretation of G 2/21 leading to a finding of a lack of inventive step in view of an inadequate disclosure of the purported technical effect. T 0258/21 : Case background T 0258/21 related to the EP patent application EP 12716828.4.

Invention

Invention Art Publishing Patent Application

Epitope claims stand firm: Board of Appeal upholds functional antibody patent despite insufficiency attack (T 0326/22)

The IPKat

JANUARY 19, 2025

In this decision, the Board of Appeal upheld Inhibrx's European patent EP2812443 directed to a genus of anti-CD47 antibodies defined by their epitope binding and functional characteristics, finding both sufficient disclosure and inventive step. Inhibrx's has licensed its CD47 antibody technology to Celgene (BMS).

Invention

Invention Patent Art Patent Application

Is the Patent Eligibility Restoration Act a Good Thing? Probably Not.

JD Supra Law

NOVEMBER 14, 2024

On September 6, 2024, House Representatives Kevin Kiley (R-CA) and Scott Peters (D-CA) introduced the Patent Eligibility Restoration Act (PERA) to Congress. Senators Thom Tillis (R-NC) and Chris Coons (D-DE) introduced an earlier version of the bill to the Senate in 2023. In a press release from Rep.

Patent

Patent Invention

Ironburg Inventions Ltd. v. Valve Corp. 21-2296 (Fed. Cir. Apr. 3, 2023)

Intellectual Property Law Blog

JUNE 5, 2023

Background In 2015, Ironburg Inventions Ltd. 8,641,525 (“the ’525 patent”). . § 315(e)(2); and (2) the “skilled and diligent searcher” inquiry itself with respect to what a skilled and diligent searcher reasonably would have been expected to discover. Ironburg”) sued Valve Corporation (“Valve”) for infringing U.S.

Invention

Invention Art Litigation Patent

Do generative AI inventions and works qualify for patents and copyrights? The Thaler and SURYAST decisions

Barry Sookman

DECEMBER 23, 2023

Artificial intelligence (AI) systems and in particular generative AI (GenAI) systems have raised the question as to whether technical advances in the useful arts or synthetic content generated using these tools can qualify for patent or copyright protection. The Thaler and SURYAST decisions appeared first on Barry Sookman.

Invention

Invention Copyright Patent Inventor

SNIPR Tech. Ltd. v. Rockefeller Univ., No. 22-1260 (Fed. Cir. July 14, 2023)

Intellectual Property Law Blog

OCTOBER 6, 2023

This case addresses certain implications of the Laehy-Smith America Invests Act (AIA), namely whether patents with a filing date after March 16, 2013 (pure AIA patents) may be part of an interference proceeding under pre-AIA, 35 U.S.C. § patent system from a first-to-invent system to a first-to-file system.

Invention

Invention Patent Application Inventor Government

2023 Patent Litigation: A Year In Review

IP Law 360

FEBRUARY 9, 2024

Attorneys filed fewer patent suits in district courts in 2023 than in any year for more than a decade, and the amount of America Invents Act petitions at the Patent Trial and Appeal Board fell to a 10-year low as well. in 2023, with the Eastern District of Texas overtaking it.

Litigation

Litigation Patent Invention

Interpretation of G 2/21: Inventive step may be supported solely by post-published data (T 0116/18)

The IPKat

SEPTEMBER 10, 2023

The minutes are brief but confirm the Board of Appeal's decision to acknowledge the inventive step of the claimed invention and to dismiss the appeal. The inventive step of the claimed invention was acknowledged based on the post-published data submitted by the Patentee. How many moths needed for an invention?

Invention

Invention Publishing Law Patent Application

Special 301 Report 2023: Reflections from Public Health Perspective

SpicyIP

MAY 17, 2023

Image from the Report The US Trade Representative (USTR) released the Special 301 Report for 2023 on April 26, 2023, and has placed India in the ‘Priority Watch List’, yet again. Prabhat Kumar Saha highlighting certain concerns of the USTR in the 2023 Special 301 Report and assessing the same from a public health perspective.

Reporting

Reporting Intellectual Property Patent Application Intellectual Property Law

SCOTUS: “The More a Party Claims for Itself the More it Must Enable”

Intellectual Property Law Blog

MAY 22, 2023

On May 18, 2023, the Supreme Court of the United States issued a unanimous decision in the case of Amgen Inc. After a nine-year saga, beginning when Amgen sued Sanofi for allegedly infringing two of its patents in 2014, the Supreme Court held that Amgen’s asserted patents failed to satisfy the enablement requirement under 35 U.S.C. §

Invention

Invention Art Inventor Patent

G 2/21: Did the invention as originally disclosed embody the technical effect?

The IPKat

MARCH 24, 2023

In order to understand whether a purported technical effect may be relied on for inventive step, the EBA concludes that the substantive question remains what would the skilled person understand from the application as filed? For the EBA, the substantive question at the heart of G 2/21 is a familiar one that needs no reference to plausibility.

Invention

Invention Publishing Patent Art

Arcturus Therapeutics Inc v. Assistant Controller: The Courts Remind the Patent Office to Give Reasons

SpicyIP

MARCH 24, 2025

The Controller had rejected a patent application by Arcturus Therapeutics for the applicants inability to file its second written submission on time. Also, what does this tell about the quality of patent grant/ rejection orders? Her previous posts can be accessed here. Well take quick look at these pressing questions in this post.

Patent

Patent Patent Application Invention Designs

Crystal clear? G 2/21 applied to polymorph patents (T 1994/22)

The IPKat

JULY 15, 2024

The decision of the Enlarged Board of Appeal (EBA) in G 2/21 on the use of post-published evidence to support patentability, was self-confessedly vague and open to interpretation ( IPKat ). The patent protecting the commercialised polymorph of a drug may therefore provide valuable exclusivity.

Invention

Invention Patent Publishing Patent Application

Federal Circuit Narrows AIA Grace Period: Public Disclosure Must Make Invention ‘Reasonably Available’

Patently-O

AUGUST 5, 2024

Kaijet highlights the narrowness of the pre-filing grace period (safe harbor) provision under the America Invents Act (AIA) and serves as a reminder that there are a number of patents that would have been valid under the pre-AIA patent system may no longer be valid under the current law. 2023-1336 (Fed. Sanho Corp.

Invention

Invention Inventor Art Public Use

The Best Inventions of 2023 are a Cross Section of Brilliant Ideas from a Wide Range of Sources

IP Close Up

JUNE 4, 2024

“The Best Inventions for 2023,” Time magazine’s revealing overview of patented breakthrough solutions to life’s challenges, illustrates the breadth of industries, technologies and businesses building Continue reading

Invention

Invention Technology Business Patent

The IPKat EPO Boards of Appeal Year in Review 2023

The IPKat

DECEMBER 22, 2023

PatKat reviewing the year It is time once more for the IPKat patent year in review! Another source of confusion is the divergent approaches of the UK courts and the EPO with respect to the test for the evidence standard in sufficiency and inventive step analysis. Food for thought. This is one to watch for 2024.

Invention

Invention Inventor Patent Law

Senators Propose New Legislation to Clarify Patent Eligibility Under 35 U.S.C. § 101

Intellectual Property Law Blog

JUNE 23, 2023

On June 22, 2023, Senators Chris Coons (D-DE) and Thom Tillis (R-NC) introduced the Patent Eligibility Restoration Act of 2023 , which seeks to clarify the jurisprudence surrounding 35 U.S.C. § A mental process performed solely in the mind of a human being. An unmodified human gene, as that gene exists in the human body.

Invention

Invention Patent Inventor Business

Trinity Info Media, LLC, fka Trinity Intel Media, LLC, v. Covalent, Inc., No. 2022-1308 (Fed. Cir. July 14, 2023) (“Opinion”)

Intellectual Property Law Blog

OCTOBER 6, 2023

This case addresses whether patents relating to methods and systems for connecting users based on their answers to polling questions claim patentable subject matter under 35 U.S.C. § Background Trinity sued Covalent for patent infringement of U.S. Patent 9,087,321 (“the ’321 patent”) and U.S. 321 patent col.

Invention

Invention Art Patent Technology

The relevance of G 2/21 to machine learning inventions (T 2803/18)

The IPKat

AUGUST 4, 2023

The Enlarged Board of Appeal (EBA) decision in G 2/21 related to the evidence requirement for a purported technical effect relied on for inventive step. The Board of Appeal in T 2803/18 , in particular, highlights how G 2/21 may be relevant to inventions in the field of artificial intelligence and machine learning.

Invention

Invention Art Patent Reporting

Adding matter by cherry-picking from separate embodiments: Philip Morris v BAT ([2023] EWHC 2616 (Pat))

The IPKat

OCTOBER 30, 2023

In the recent UK case of Philip Morris v BAT [2023] EWHC 2616 (Pat) , His Honour Justice Hacon (Hacon HHJ) considered the standard for invalidity due to added matter. Invalidity in view of added matter is a common patent pitfall in Europe ( IPKat ). Smoke Free World. " PM argued that the amendment added matter.

Invention

Invention Patent Application Patent Drafting Patent

HIP Inc. v. Hormel Foods Corp. No. 2022-1696, _ F.4th (Fed. Cir. May 2, 2023)

Intellectual Property Law Blog

JULY 26, 2023

Background Hormel Foods appealed the District Court’s ruling that David Howard should be added as a joint inventor on its patents. Howard is not a joint inventor because he has not made any significant contribution to the invention. is insignificant in quality when measured against the dimension of the full invention.”

Inventor

Inventor Invention Art Patent

To infinity and beyond! The sufficiency requirements for open-ended ranges (T 1977/22)

The IPKat

MARCH 4, 2025

The recent Board of Appeal decision in T 1977/22 related to the patentability of claims defining subject matter with open-ended parameter ranges. This test is applied to all types of invention, including those in the mechanical field ( IPKat ).

Invention

Invention Patent Law Art

No Handling Necessary: Industry Demo Was A Public Use: Minerva Surgical, Inc. v. Hologic, Inc., 2023 WL 1999900 (Fed. Cir. Feb. 15, 2023)

JD Supra Law

MARCH 7, 2023

Be careful of showing your claimed inventions at tradeshows. On February 15, 2023, the Federal Circuit (“CAFC”) affirmed a summary judgment ruling that, by merely showcasing an embodying device at an industry event (the “Event”), Minerva Surgical, Inc. By: Irwin IP LLP

Public Use

Public Use Invention IP Patent

OpenAI's granted large language model (LLM) patents

The IPKat

AUGUST 13, 2024

OpenAI has the reputation for protecting its innovations through the use of trade secrets as opposed to patents. This is perhaps not surprising, given that patent applications are not published until 18 months after they are filed, and that OpenAI's major innovation of ChatGPT was first released about 2 years ago. Who are OpenAI?

Patent

Patent Editing Inventor Patent Application

A Look Back at India’s Top IP Developments of 2023

SpicyIP

DECEMBER 30, 2023

As 2023 comes to an end, in line with our annual tradition, we take stock of the top IP developments that occurred this year. We’ve tried to represent a diversity of subject matter also in this list, so it’s a mixed bag of cases dealing with patents, trademarks, copyright law etc. A special thanks to Mr. G. Nataraj, Ms.

IP

IP Copyright Trademark Intellectual Property

Yita LLC v. MacNeil IP LLC 2022-1373, 2022-1374 (Fed. Cir. June 6, 2023)

Intellectual Property Law Blog

JUNE 26, 2023

Background Appellant Yita sought inter partes review of two patents sharing a specification, both of which are directed to the vehicle floor tray. In one IPR, the Board determined that claims of one patent (the ’186 patent) were not unpatentable for obviousness.

Art

Art Invention IP Patent

Dapagliflozin Patent receives another Blow: Same Old Coverage-Disclosure Story

SpicyIP

AUGUST 6, 2021

To quickly recap the arguments, AstraZeneca claims that sale of Dapagliflozin violates not one but two of its patents: the genus IN 205147 (IN 147) which expired in October 2020, and the species IN 235625 (IN 625) set to expire in 2023. One invention, two patents? Quite like the order by Shakdher J.,

Patent

Patent Invention Inventor Law

Choosing the Right Intellectual Property Protection

IIPRD

MARCH 13, 2025

With so many IPs available trademarks, patents, copyrights, and more – how can you choose the right one for your work, product, or business? All the creations of the human minds such as designs, inventions, artistic works, names, symbols, etc. It is governed by the Patent Act, 1970. Registration of patent is mandatory.

Intellectual Property

Intellectual Property Registration Designs Design

The USPTO Claims it Wants to Ensure ‘Robust and Reliable’ Patents – But Its Questions Imply Another Assault on Patent Owners

IP Watchdog

FEBRUARY 1, 2023

Last October, the United States Patent and Trademark Office (USPTO) issued a Request for Comments on USPTO Initiatives To Ensure the Robustness and Reliability of Patent Rights. Responses to this request are due by this Thursday, February 2, 2023. We need patents that are respected when they are issued. 2) Flexibility.

Patent Prosecution

Patent Prosecution Patent Inventor Invention

In Re: Cellect, LLC No. 2022-1293 (Fed. Cir. Aug. 28, 2023)

Intellectual Property Law Blog

OCTOBER 24, 2023

This case addresses how Patent Term Adjustment (PTA) interacts with obviousness-type double patenting (ODP). for infringement of four patents. Subsequently, Samsung requested four ex parte reexaminations asserting that the patents were unpatentable based on ODP, which was not raised by the examiner during prosecution.

Designs

Designs Design Patent Inventor

Delhi High Court Sets Aside 3 Orders from the Patent Office and the Trademark Registry, in 1 day!

SpicyIP

MAY 10, 2023

Image from here On April 28, 2023, Justice Amit Bansal of the Delhi High Court passed three separate orders, all dealing with a similar issue- unclear, unreasoned orders from the Patent Office and the Trademark Registry (IP Offices) that rejected the patent/ trademark applications. Rosemount Inc.

Trademark

Trademark Invention Patent Art

Federal Circuit Continues to Strike Down Patents as Abstract Ideas

The IP Law Blog

OCTOBER 12, 2023

The Federal Circuit Court of Appeals has again relied on the Supreme Court’s Alice case to invalidate patents on the grounds that they are directed to an abstract idea. 8/2/2023) 2023 U.S. Realtime owned several patents covering systems and methods for digital data compression. Realtime Data LLC v. Fortinet Inc. (

Patent

Patent Invention Law Patent Law

UCB, Inc. v. Actavis Laboratories UT, Inc. No. 2021-1924, (Fed. Cir. Apr. 12, 2023)

Intellectual Property Law Blog

JULY 31, 2023

UCB”) holds patents (the “Muller” patents, priority date in 1999) covering the active ingredient rotigotine in Neupro, a Parkinson’s medication administered via a patch on the skin. The Muller patents disclose ratios of rotigotine to PVP ranging from 9:1.5 In 2014, UCB sued Actavis for infringement of the Muller patents.

Art

Art Invention Patent Patent Application

In re Couvaras, No. 2022-1489 (Fed. Cir. June 14, 2023)

Intellectual Property Law Blog

AUGUST 1, 2023

Patent Application 15/131,442 (the “’442 Patent”) with claims directed to a method of increasing prostacyclin release in systemic blood vessels of a human to improve vasodilation and reduce hypertension. Background John L. Couvaras filed U.S. The Federal Circuit rejected this argument, relying on In re Montgomery , 677 F.3d

Art

Art Invention Patent Patent Application

G 2/21 applied to software inventions (T 0687/22)

The UPC's first decision on infringement by equivalence (Plant-e v Bioo, UPC_CFI_239/2023)

Trending Sources

Plausibility as a moving target: Phase III clinical trial results sink second medical use patent (T 0816/22)

Guidance on Patenting Inventions with AI Contributions

The description of a patent should "always" be used to interpret the claims (DexCom vs. Abbott, UPC_CFI_230/2023)

Patent Grant Total 2023

A Rare Invocation for a Rare Disease?: Government Urged to Invoke Section 100, Patents Act for Rare Disease Medicine

The criteria for the novelty and inventive step of pharmaceutical selection inventions (T 1356/21)

Impact of AI on Global IP Systems

Kappos at PTAB Masters 2023: The PTAB Simply ‘Hasn’t Worked Out’ as Intended

G 2/21 does not permit armchair inventing (T 0258/21)

Epitope claims stand firm: Board of Appeal upholds functional antibody patent despite insufficiency attack (T 0326/22)

Is the Patent Eligibility Restoration Act a Good Thing? Probably Not.

Ironburg Inventions Ltd. v. Valve Corp. 21-2296 (Fed. Cir. Apr. 3, 2023)

Do generative AI inventions and works qualify for patents and copyrights? The Thaler and SURYAST decisions

SNIPR Tech. Ltd. v. Rockefeller Univ., No. 22-1260 (Fed. Cir. July 14, 2023)

2023 Patent Litigation: A Year In Review

Interpretation of G 2/21: Inventive step may be supported solely by post-published data (T 0116/18)

Special 301 Report 2023: Reflections from Public Health Perspective

SCOTUS: “The More a Party Claims for Itself the More it Must Enable”

G 2/21: Did the invention as originally disclosed embody the technical effect?

Arcturus Therapeutics Inc v. Assistant Controller: The Courts Remind the Patent Office to Give Reasons

Crystal clear? G 2/21 applied to polymorph patents (T 1994/22)

Federal Circuit Narrows AIA Grace Period: Public Disclosure Must Make Invention ‘Reasonably Available’

The Best Inventions of 2023 are a Cross Section of Brilliant Ideas from a Wide Range of Sources

The IPKat EPO Boards of Appeal Year in Review 2023

Senators Propose New Legislation to Clarify Patent Eligibility Under 35 U.S.C. § 101

Trinity Info Media, LLC, fka Trinity Intel Media, LLC, v. Covalent, Inc., No. 2022-1308 (Fed. Cir. July 14, 2023) (“Opinion”)

The relevance of G 2/21 to machine learning inventions (T 2803/18)

Adding matter by cherry-picking from separate embodiments: Philip Morris v BAT ([2023] EWHC 2616 (Pat))

HIP Inc. v. Hormel Foods Corp. No. 2022-1696, _ F.4th (Fed. Cir. May 2, 2023)

To infinity and beyond! The sufficiency requirements for open-ended ranges (T 1977/22)

No Handling Necessary: Industry Demo Was A Public Use: Minerva Surgical, Inc. v. Hologic, Inc., 2023 WL 1999900 (Fed. Cir. Feb. 15, 2023)

OpenAI's granted large language model (LLM) patents

A Look Back at India’s Top IP Developments of 2023

Yita LLC v. MacNeil IP LLC 2022-1373, 2022-1374 (Fed. Cir. June 6, 2023)

Dapagliflozin Patent receives another Blow: Same Old Coverage-Disclosure Story

Choosing the Right Intellectual Property Protection

The USPTO Claims it Wants to Ensure ‘Robust and Reliable’ Patents – But Its Questions Imply Another Assault on Patent Owners

In Re: Cellect, LLC No. 2022-1293 (Fed. Cir. Aug. 28, 2023)

Delhi High Court Sets Aside 3 Orders from the Patent Office and the Trademark Registry, in 1 day!

Federal Circuit Continues to Strike Down Patents as Abstract Ideas

UCB, Inc. v. Actavis Laboratories UT, Inc. No. 2021-1924, (Fed. Cir. Apr. 12, 2023)

In re Couvaras, No. 2022-1489 (Fed. Cir. June 14, 2023)

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