IP Tech Blog

MARCH 5, 2024

The Guidance, for USPTO examiners and applicants, addresses inventorship and the use of AI, including generative AI, in the inventive process. The Guidance provides illustrative examples in which AI systems play different roles in the inventive process, to show how the USPTO will analyze inventorship issues.

Invention 57

Invention Inventor Patent Patent Application 57

LexBlog IP

FEBRUARY 13, 2024

In the IPRs, Medtronic asserted that the “Itou” reference qualified as prior art under the pre-AIA § 102(e). Background Medtronic filed two IPR petitions challenging certain claims in Teleflex’s ’116 patent. ” Medtronic appealed. . §

Invention 52

Invention Art Inventor Patent 52

JD Supra Law

SEPTEMBER 17, 2021

Ironburg Inventions Ltd., August 17, 2021), the Federal Circuit ruled on an issue that is not often appealed—whether the Petitioner had authenticated a submitted prior art reference. . In the recent precedential Federal Circuit decision Valve Corporation v. 2020-1315, 2020-1315, 2020-1379, 2021 WL 3628664 (Fed. By: Jones Day

Art 100

Art Invention 100

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 117

Invention Publishing Law Patent Application 117

LexBlog IP

MARCH 5, 2024

The Guidance, for USPTO examiners and applicants, addresses inventorship and the use of AI, including generative AI, in the inventive process. The Guidance provides illustrative examples in which AI systems play different roles in the inventive process, to show how the USPTO will analyze inventorship issues.

Invention 52

Invention Inventor Patent Patent Application 52

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

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 80

Invention Patent Law Technology 80

The IPKat

NOVEMBER 27, 2023

The full written decision of the Board of Appeal in T 0116/18 , the referring Board to G2/21 , was published today. G2/21: Case catch-up In G2/21 , the Board of Appeal asked the EBA to clarify whether post-published evidence may be taken into account for inventive step. G2/21 clearly does not permit armchair inventing (r.11.1,

Invention 64

Invention Publishing Patent Application Law 64

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 112

Invention Patent Publishing Patent Application 112

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.

Invention 97

Invention Ownership 97

The IP Law Blog

AUGUST 11, 2022

Arguably, an AI system, which is a non-human, can also create or invent. While these systems may have been programmed and/or trained by a human, the human may not have actually invented the apparatus or method claimed in the patent application. Rather the Patent Act supports that an “individual” refers to a human being.

Inventor 96

Inventor Invention Patent Patent Application 96

Patently-O

JULY 13, 2023

by Dennis Crouch If you break it down far enough, every invention is simply a combination of known materials or steps. In Axonics, the court ruled that the obviousness analysis must focus on the motivation to combine references to reach the claimed invention, not motivation to combine for some other purpose described in the prior art.

Invention 75

Invention Art Patent Patent Law 75

Patently-O

JUNE 23, 2024

While the majority opinion, authored by Justice Kavanaugh, upheld the MRT, Justice Thomas published a strong dissent relying upon an invention metaphor in a decidedly negative light, something that he has done in several other recent opinions. ” Justice Thomas is not alone in his negative view of judicial invention. .”

Invention 44

Invention Inventor Patent Licensing 44

Patently-O

DECEMBER 6, 2022

In one of them, LKQ asked the court to rule that the current primary reference requirement for design patent obviousness, as stated in In re Rosen and Durling v. First, the court must identify a primary reference—“a something in existence, the design characteristics of which are basically the same as the claimed design.” Teleflex.

Designs 54

Designs Design Design Patent Art 54

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

IP Intelligence

DECEMBER 20, 2022

The Federal Circuit reversed a district court’s summary judgment that interpreted the claims based on a definition in a separate patent that was incorporated by reference. Though they do incorporate by reference a patent that does define a Downloadable as “a small executable ….”. 1] Finjan LLC v.

Patent 52

Patent Invention 52

LexBlog IP

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 52

Inventor Invention Patent Designs 52

LexBlog IP

DECEMBER 15, 2023

Patents 8,048,032, RE45,380, RE45,776, RE45,760, and RE47,379 (collectively, “the challenged patents”) under pre-AIA’s first-to-invent provisions. Medtronics filed five IPR petitions using the ’355 patent as the primary prior art reference under pre-AIA 35 U.S.C. § § 102(e). § 102(e).

Art 52

Art Inventor Invention Patent 52

LexBlog IP

DECEMBER 20, 2022

The Federal Circuit reversed a district court’s summary judgment that interpreted the claims based on a definition in a separate patent that was incorporated by reference. ” Though they do incorporate by reference a patent that does define a Downloadable as “a small executable.” 1] Finjan LLC v.

Patent 52

Patent Invention Intellectual Property 52

LexBlog IP

DECEMBER 20, 2022

The Federal Circuit reversed a district court’s summary judgment that interpreted the claims based on a definition in a separate patent that was incorporated by reference. ” Though they do incorporate by reference a patent that does define a Downloadable as “a small executable.” 1] Finjan LLC v.

Patent 52

Patent Invention Intellectual Property 52

The IPKat

JUNE 19, 2023

The question in G 2/21 was whether post-published evidence can be used to support a purported technical effect relied on for inventive step. We now have the preliminary thoughts from the referring Board of Appeal on how G 2/21 should be applied. direct comparison data).

Invention 56

Invention Art Publishing Patent 56

Patently-O

APRIL 8, 2024

By Dennis Crouch In 1931, the United States Supreme Court decided a landmark case on the patentability of inventions, De Forest Radio Co. 103 as part of the Patent Act of 1952, it nonetheless applied a similar requirement for “invention.” 101, all under the general rubric of the “invention” requirement.

Invention 62

Invention Art Patent Television 62

Patently-O

MAY 31, 2022

This case raises the novel legal issue of whether a patent can be obtained for an invention created by an artificial intelligence (AI) in the absence of a traditional human inventor (“AI-Generated Invention”). This ignores fundamental statutory and constitutional principles and also stymies innovation. Appellee Brief.

Invention 89

Invention Inventor Art Patent 89

The IPKat

NOVEMBER 13, 2023

In particular, in this divisional patent Regeneron had attempted to avoid a novelty attack by explicitly disclaiming embodiments of the invention from the claim. Legal background: Undisclosed disclaimers Patent claims generally define the essential features present in the claimed invention.

Invention 70

Invention Art Patent Law 70

IP Intelligence

FEBRUARY 23, 2024

Patent and Trademark Office (USPTO) released its much anticipated Inventorship Guidance on AI-Assisted Inventions (“Guidance”). [1] The Guidance strives to ensure balance between protecting and incentivizing AI-assisted inventions and not hindering future human innovation, as “the patent system is designed to encourage human ingenuity.” [2]

Invention 52

Invention Inventor Patent Application Designs 52

The IPKat

AUGUST 10, 2021

A Board of Appeal is about to refer questions to the Enlarged Board of Appeal (EBA) on the ability of a patentee to rely on post-published evidence to support the inventive step of a claim, and particularly to support the plausibility that the technical problem has been solved over the full scope of the claim.

Invention 111

Invention Publishing Patent Application Patent 111

Patently-O

MARCH 26, 2024

Teva references the landmark Supreme Court case of Atlantic Works v. The Supreme Court ultimately reversed the lower court’s decision upholding the patent and found instead that Brady’s claimed invention lacked novelty and did not constitute a patentable advance over the prior art. Brady , 107 U.S. 192 (1883).

Invention 57

Invention Art Patent Designs 57

Patently-O

NOVEMBER 13, 2023

by Dennis Crouch Berkely Center for Law & Technology is hosting a great half-day virtual-conference this week: “AI as an Inventing Tool – it’s Implications for Patent Law” organized by Prof. Importantly, LLMs know the references and have their key points accessible for dynamic consideration and analysis. Colleen Chien.

Invention 67

Invention Patent Law Law Art 67

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 115

Intellectual Property Law Intellectual Property Invention Patent 115

The IPKat

OCTOBER 21, 2022

The final decision in this referral has the potential to either lower or increase the plausibility requirement in EPO inventive step analysis. In its preliminary opinion , the EBA hedges its bets but hints at accepting a standard of lack of ab initio implausibility for a technical effect supporting inventive step.

Invention 84

Invention Publishing Patent Application Patent 84

JD Supra Law

DECEMBER 18, 2023

Patents 8,048,032, RE45,380, RE45,776, RE45,760, and RE47,379 (collectively, “the challenged patents”) under pre-AIA’s first-to-invent provisions. Patent 7,736,355 (“the ’355 patent”) does not qualify as prior art to related U.S. By: Sheppard Mullin Richter & Hampton LLP

Art 58

Art Invention Patent 58

JD Supra Law

FEBRUARY 13, 2024

Robert Bahr, Deputy Commissioner for Patent Examination Policy, notes that the patent statutes preclude construing “inventor” to cover machines because Title 35 of the United States Code consistently refers to inventors at natural persons.”). See USPTO Says AI Machine Cannot Qualify as an Inventor (e.g.,

Invention 68

Invention Inventor Patent Application Patent 68

LexBlog IP

AUGUST 11, 2022

Arguably, an AI system, which is a non-human, can also create or invent. While these systems may have been programmed and/or trained by a human, the human may not have actually invented the apparatus or method claimed in the patent application. Rather the Patent Act supports that an “individual” refers to a human being.

Inventor 52

Inventor Invention Patent Application Patent 52

Patently-O

JULY 18, 2024

The court found the claim language itself shows the invention’s focus served the human-organizing purpose of “assist[ing] an investigator in conducting a background investigation,” and the individual claim steps were all focused on information handling at a technically generic level. .” Covalent, Inc. ,

Patent 62

Patent Invention Technology Inventor 62

LexBlog IP

SEPTEMBER 2, 2021

a CAFC panel reversed an obviousness determination by the PTAB (“Board”), holding that the Board improperly found motivation to modify a prior art reference, where the “inventive concept’ of the prior art reference taught away from that modification. Daikin Industries, Ltd. , Read more.

Art 40

Art Invention Intellectual Property 40

Patently-O

MAY 19, 2022

a) the invention was … patented or described in a printed publication … before the invention thereof by the applicant for patent, or. (b) b) the invention was patented or described in a printed publication … more than one year prior to the date of the application for patent in the United States, or.

Invention 54

Invention Inventor Art Patent 54

LexBlog IP

AUGUST 9, 2022

What is at the core of invention? All inventions boil down to applying some natural law , but where is the line between natural law and invention? ” The most recent Supreme Court case which granted certiorari with regard to an “inventive concept” is Alice Corp. .” By: Banks Griffin.

Inventor 52

Inventor Invention Patent Prosecution Law 52