Intellectual Property Law Blog

FEBRUARY 14, 2024

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. On February 13, 2024, the U.S. 101 and 115.

Inventor 130

Inventor Invention Patent Designs 130

Patently-O

APRIL 3, 2023

by Dennis Crouch Ironburg Inventions Ltd. 3, 2023) The recent decision in Ironburg Inventions Ltd. Valve argued that it had no knowledge of those references at the time of its IPR petition and therefore could not have included them as challenge grounds. Valve Corp., — F.4th 4th —, 21-2296 (Fed. Valve Corp.

Invention 113

Invention Art Patent Law 113

SpicyIP

AUGUST 29, 2024

Recently the MHC remanded a matter back to the Controller for re-consideration on whether the cited prior art would render the invention obvious in light of the explanation in the specification. Interestingly, the impugned order by the Controller has already held the invention to be obvious based on the claims filed by the applicant.

Invention 114

Invention Patent Application Art Patent 114

The IPKat

SEPTEMBER 10, 2023

The minutes of oral proceedings have been published from the referring Board of Appeal case behind G 2/21 ( T 0116/18 ). 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. How many moths needed for an invention? 12.5.1).

Invention 122

Invention Publishing Law Patent Application 122

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. HyperDrive apparently embodies the claimed invention.

Invention 111

Invention Inventor Art Public Use 111

JD Supra Law

DECEMBER 4, 2024

The Patent Trial and Appeal Board determined that a reference could be used as prior art because patent owner failed to provide sufficient evidence that the prior art’s disclosure was invented by all four named inventors, and thus the same “inventive entity,” as the challenged claims. By: Akin Gump Strauss Hauer & Feld LLP

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Invention Inventor Patent Art 65

The IP Law Blog

FEBRUARY 15, 2024

On February 12, 2024, the United States Patent and Trademark Office (“USPTO”) issued guidance on the patentability of inventions developed with the assistance of artificial intelligence, saying that a human must have made a “significant contribution” to the invention.

Invention 109

Invention Inventor Patent Patent Application 109

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. Specifically, artificial intelligence (AI) technologies have opened up new avenues for invention that only minimally entail human intervention.

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IP Intellectual Property Invention Inventor 98

IIPRD

MARCH 13, 2025

Intellectual Property refers to any intangible asset or property originated from the human intellect. All the creations of the human minds such as designs, inventions, artistic works, names, symbols, etc. Key Features: The invention must be new, non-obvious, and have utility. Automatic protection upon creation.

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Intellectual Property Registration Designs Design 83

Patent Trademark Blog

MAY 22, 2023

To be patentable, an invention must be both eligible and unique. Subject matter eligibility relates to the nature of the invention while uniqueness has to do with what has been done in the past. A unique invention must be both novel and nonobvious over the prior art , or past stuff. How can an invention be novel, yet obvious?

Invention 85

Invention Patent Application Patent Art 85

The IPKat

JANUARY 22, 2025

Legal Background: Sufficiency of disclosure for second medical use claims Under established EPO practice, the assessment of sufficiency under Article 83 EPC requires that a skilled person be able to reproduce the claimed invention using the teaching of the patent application as filed and common general knowledge.

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Patent Invention Publishing Art 105

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 referring decision and much of the surrounding commentary to G 2/21 also focused on the terminology of plausibility, which is also often used in the biotech field ( IPKat ).

Invention 98

Invention Art Patent Reporting 98

JD Supra Law

MARCH 6, 2023

Any invention conceived or reduced to practice with the assistance of federal funding is subject to the Bayh-Dole Act, which provides for ownership of such inventions, but only if the grantee (referred to in the Act as a “contractor”) abides by the terms. By: Rothwell, Figg, Ernst & Manbeck, P.C.

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Invention Ownership 97

Intellectual Property Law Blog

NOVEMBER 8, 2023

Apple filed two IPR petitions, each challenging various claims of the ’479 patent as obvious in view of multiple prior art references. During the IPR, neither party had asserted that these errors were material to the claimed invention. Background Corephotonics owns the ’479 patent, which is directed to creating “portrait photos.”

Invention 264

Invention Art Patent 264

JD Supra Law

APRIL 10, 2024

Chewy, Inc. International Business Machines Corporation - Before Moore, Chief Judge, Stoll and Cunningham. Appeal from the United States District Court for the Southern District of New York. By: Knobbe Martens

Invention 75

Invention Business 75

SpicyIP

JANUARY 20, 2025

Section 100 empowers the central government to use, or authorise to use, an invention (application or grant) for the purposes of the government, on a non-commercial basis. This includes but is not limited to using the invention in case of national emergency or other situations of extreme urgency. crores for adults (30 bottles).

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Government Patent Invention Public Domain 119

Intellectual Property Law Blog

JUNE 5, 2023

Background In 2015, Ironburg Inventions Ltd. Issue(s) Who bears the burden of proof regarding what prior art references a “skilled and diligent researcher” could have reasonably been expected to discover that could have formed the basis for an invalidity challenge in an IPR petition? 8,641,525 (“the ’525 patent”).

Invention 130

Invention Art Litigation Patent 130

Patently-O

AUGUST 4, 2021

Ryan Abbott, have made headlines around the world as they sought patent protection for a fractal-inspired beverage container (shown below) that they contend was invented by DABUS. Like the ‘conception’ test in American patent law – the object of the test is to determine the identity of the ‘devisor’ of the invention.

Invention 128

Invention Patent Inventor Intellectual Property 128

The IPKat

FEBRUARY 13, 2025

This patent claimed protection for sitagliptin alone (a new and inventive active ingredient) as well as sitagliptin combined with metformin, an active ingredient that was already known and had been used for decades by the time EP '357 was filed. Merck obtained the SPC based on patent EP 1412357 (EP '357).

Invention 64

Invention Public Domain Art Marketing 64

Technology & Marketing Law Blog

DECEMBER 9, 2022

Someone has referred you here because you’ve said something wrong about the laws related to web scraping in the United States. You’ve Been Referred Here Because You’re Wrong About The First Amendment.” The prior part explained the most recent ruling, a devastating but not unexpected loss for hiQ. Don’t worry! You’re not alone.

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Blogging Law Contracts Cease and Desist 131

SpicyIP

MARCH 26, 2025

On 25th March 2025, the Patent Office officially released the Draft Guidelines for Examination of Computer-Related Inventions (CRI), 2025 , for public consultations. On a quick glance at the guidelines, the guidelines include discussion surrounding all aspects of patenting software (novelty, inventive step, clarity, etc).

Invention 59

Invention Blogging Designs Design 59

Patently-O

APRIL 29, 2024

by Dennis Crouch Ikorongo Technology has filed a petition for certiorari asking the Supreme Court to overturn the Federal Circuit’s heightened disclosure standard for the “same invention” requirement in reissue patents. The petitioner argues that the Federal Circuit’s test, established in Antares Pharma, Inc.

Invention 81

Invention Patent Law Technology 81

The IPKat

JULY 15, 2024

Since G 2/21 , Boards of Appeal have united on the interpretation that the evidence standard for inventive step (the "plausibility/credibility test") remains unchanged. In this case, the selexipag polymorph patent was opposed on the grounds of lack of inventive step.

Invention 117

Invention Patent Publishing Patent Application 117

Patently-O

JULY 28, 2021

Most patents involve two or more joint inventors who all claim to have contributed significantly to the invention. Conception of the invention is typically seen as the critical legal determinant of invention and some courts have written that each joint inventor must have contributed substantially to the conception of the invention.*

Inventor 128

Inventor Invention Patent Prosecution Art 128

Intellectual Property Law Blog

OCTOBER 11, 2022

MPEP Sections to Know – Especially for AI Inventions. A couple key areas of concern for applications that are directed to AI inventions are (1) patent subject matter eligibility and (2) an enabling disclosure. and various USPTO rules cited in the MPEP, all of which refer to natural persons and pronouns.

Patent Application 186

Patent Application Patent Inventor Invention 186

Patently-O

FEBRUARY 16, 2025

The case is now on petition for writ of certiorari to the US Supreme Court and raises significant questions about the burden of proving enablement of prior art references in patent cases. The dispute in the IPR centered primarily on whether the three prior art references were sufficiently enabling.

Art 52

Art Invention Technology Patent 52

IP Watchdog

JUNE 25, 2024

The invalidation rate of patents in America Invents Act (AIA) proceedings, such as inter partes reviews (IPRs), has been high since the inception of the PTAB. For convenience, we refer to “invalidation” with the understanding that the PTAB adjudicates claims as “unpatentable”).

Intellectual Property Law 117

Intellectual Property Law Intellectual Property Invention Patent 117

Intellectual Property Law Blog

JUNE 26, 2023

The Board determined that there was a motivation to combine and reasonable expectation of success in combining the prior art references to arrive at the claimed inventions but rejected Yita’s obviousness challenge because Appellee MacNeil’s secondary-considerations evidence was compelling and indicative of non-obviousness.

Art 130

Art Invention IP Patent 130

IP and Legal Filings

DECEMBER 19, 2024

Many courts tried to determine whether a software invention is abstract by devising several tests to determine whether any invention related to computers might be patentable. In the instant case the term inventive step was stretched over the economic value of the inventive. In Bishwanath Prasad Radhey Shyam v.

Technology 52

Technology Invention Patent Intellectual Property 52

IPilogue

SEPTEMBER 24, 2021

Here, he filed patents for inventions generated by Dr. Stephen Thaler’s “DABUS”, an AI machine that was quite literally invented to invent. They ultimately concluded that the ordinary meaning of “individual” referred to a “natural person.” This term is referenced explicitly in the U.S.

Inventor 129

Inventor Invention Patent Law 129

SpicyIP

DECEMBER 6, 2024

The Controller had issued a rejection order stating that the invention was barred by Section 3(d) (bar against evergreening of Patents) and had not satisfied Section 2(1)(ja) (inventive step). Consequently, the Court referred the matter back to the Indian Patent Office for fresh consideration.

Patent 59

Patent Invention Blogging Reporting 59

JD Supra Law

DECEMBER 20, 2024

The claimed invention related to enhancing the flow of geothermal fluid via horizontal wells which generate a water density difference and a pressure difference. Because the record did not include publication dates for two references, the PTAB. IPR2014-00665, Paper 18 (PTAB Sept. Petitioner challenged all claims under 35 U.S.C.

Invention 68

Invention Technology Patent 68

Patently-O

MAY 24, 2024

Although the primary reference need not be “basically the same” as the claimed invention, the court still maintained that the obviousness analysis begins with a primary reference. ” And, like the primary reference, any secondary references must also be analogous art.

Design Patent 130

Design Patent Designs Design Art 130

Intellectual Property Law Blog

DECEMBER 14, 2023

the case addresses the weight the Patent Trial and Appeal Board (PTAB) should give to the intended purpose of a primary reference when evaluating a Person of Ordinary Skill in the Art’s (POSITA) motivation to combine that primary reference with secondary references. Teleflex Innovations S.A.R.L. , The opinion provides Fig.

Design 147

Design Designs Invention Patent 147

Patently-O

JULY 22, 2021

The majority sided with the patentee and reversed the IPR Board’s single-reference obviousness determination. Daikin petitioned for inter partes review, and the PTAB agreed that the claims were invalid as obvious based upon a single prior art reference, U.S. However, our invention] has a very narrow molecular-weight distribution.

Invention 126

Invention Art Marketing Marketing 126

The IPKat

FEBRUARY 21, 2025

For the Local Division, this would contradict both the usual distinction between "first" and "second" portions and the description's reference to "a portion of the analyte data. The Local Division instead determined the core inventive concept as being assessed whether using NFC as the second protocol was obvious. and another portion."

Patent 59

Patent Invention Art Litigation 59

Intellectual Property Law Blog

DECEMBER 15, 2023

Medtronic’s invention concerns a medical device that stimulates sacral nerves. The “real question” is “why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.” In fact, they make no reference to sacral neuromodulation. Patent Nos.

Art 147

Art Invention Patent Infringement Patent 147