U.S. federal judge Leonie Brikema ruled that an Artificial Intelligence (AI) machine cannot be listed as an inventor on a US patent under current law. Stephen Thaler sued the USPTO after it denied his patent applications that listed an AI named DABUS as the inventor of a new type of flashing light and a beverage container based on fractal geometry. PTO denied the applications because a machine does not qualify as an inventor because it is not a person. In affirming the PTO's decision, Judge Brikema held that the definitions provided by Congress for "inventor" within the Patent Act referred to an "individual" and the statutory meaning is a natural person or a human being. While acknowledging Thaler's arguments based on policy considerations such as incentivizing innovation, the court reasoned that the ultimate decision would lie with Congress.
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On August 2, 2021, the USPTO issued its first Director review decisions subsequent to the Supreme Court decision in Arthrex and the PTO's implementation of an interim procedure whereby review of a PTAB final written decision in an inter partes, post-grant, or covered business method review may be initiated sua sponte by Director or requested by a party to a PTAB proceeding. The order in each of the cases (IPR2020-00081 and IPR2020-00320) denied the request for Director review and provided that "the PTAB's Final Written Decision in this case is the final decision of the agency."
On June 29, 2021, the USPTO issued guidance on interim Director review process in view of the Supreme Court's decision in US v. Arthrex. The PTO now provides a process by which a party can request review by the Director of PTAB final written decision. A party requesting such review must: (1) enter a Request for Rehearing by the Director into PTAB E2E; and (2) submit a notification of the Request for Rehearing by the Director to the Office by email to Director_PTABDecision_Review@uspto.gov copying counsel for all parties by email.
The Trademark Modernization Act of 2020 ("TMA") became law on December 27, 2020 and takes effect on December 27, 2021. The Act provides the following: (1) new procedures to remove registrations based on inaccurate claims of use in commerce--Letters of Protest; ex parte expungement; and ex parte reexam; (2) discretionary shortened response deadlines to office actions; and (3) rebuttable presumption of irreparable harm.
Letters of Protest: TMA expands existing Letter of Protest procedures to allow third parties to submit evidence of conflicting prior registration and evidence that applied-for mark is not actually in use for the goods/services and thereby challenge a trademark application during the examination stage. The current rules only allow Letters of Protest to issues of genericness, prior registrations, ongoing litigation, and examiner error in calculating priority under Paris Convention. Ex Parte Expungement: Under Section 16A of TMA, anyone may petition to expunge a registration, three years after its issuance and before expiration of 10years from registration date, where the trademark has never been used in commerce for specific goods/services listed in the registration. Party is required to provide evidence of "reasonable investigation" showing the registered mark was never used for the identified goods/services. Ex Parte Reexamination: Under Section 16B of TMA, any person may petition, no later than 5years after registration, to reexamine a registration on the basis that the mark was not in use in commerce with some or all of the goods/services in the registration as of the relevant date. The "relevant date" means the date when a use-based application was initially filed under Section 1(a), the date an amendment to allege use is filed under Section 1(c), or the date a statement of use is filed under Section 1(d). PTO Office Action Response Periods: Examiner will have the discretion to set office action response periods that are shorter than 6-month but no less than 60 days with the applicant having the flexibility to seek extensions. Rebuttable Presumption of Irreparable Harm: A trademark owner seeking injunctive relief is entitled to a rebuttable presumption of irreparable harm upon a finding of infringement or a likelihood of success on the merits. On Dec. 18, 2020, the USPTO published a Final Rule regarding burdens of persuasion on motions to amend in AIA trial proceedings before the PTAB. According to the Final Rule, the patent owner has the burden of showing that a motion to amend complies with statutory and regulatory requirements for such a motion, and the petitioner has the burden of showing unpatentability of substitute claims proposed in a motion to amend.
PTO released new guidelines relating to AIA trial proceedings: (1) If PTAB institutes a review, trial will proceed on all challenged claims and on all asserted grounds of unpatentability; (2) provides automatic sur-replies; (3) eliminates the presumption that a genuine issue of material fact is viewed in light most favorable to petitioner for deciding institution; (4) forbids filing new evidence with a sur-reply, except for deposition transcripts of cross-exam of any reply witness. The rules do not apply retroactively.
On Oct. 28, 2020, the PTO issued a new examination guide regarding procedures for examining applications for generic.com terms, which are any combination of a generic term and generic top-level domain such as .com, .biz etc. The procedures were updated in light of the Supreme Court's Booking.com decision in June 2020.
On June 30, 2020, the U.S. Supreme Court held that the addition of ".com" to a generic term can create a protectable trademark. Patent and Trademark Office v. Booking.com B.V., 591 U.S. ___ (2020). In affirming the Fourth Circuit's decision, the Court rejected the PTO's "nearly per se rule" that when a generic term is combined with a generic top-level domain the resulting combination is generic. Full text of the opinion is available here.
1. On May 8, 2020, PTO announced a new Prioritized Examination Pilot Program for small and micro entities without payment of the typical fees associated with other prioritized examination.
2. On May 8, 2020, PTO allowed filing of plant patent applications via EFS. 3. On May 6, 2020, PTO launched a web-based platform to identify patents that may be useful in technologies to combat COVD-19. 4. On May 5, 2020, PTO released a form to assist with making a statement of delay due to COVID-19. On April 27, 2020, the PTO denied a request by Stephen Thaler to name DABUS, an artificial intelligence (AI) system that "invents", as the sole inventor in a patent application filing. In denying the request, the PTO relied on the statutory text ("whoever invents or discovers...may obtain a patent") and a court decision holding that only natural persons could be inventors under U.S. law.
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Disclaimer: The content in this blog is solely for informational purposes and does not constitute legal advice.
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