NEWS

The European Unitary Patent – Coming Soon

A new European Unitary Patent (UP) system is expected to come into effect in the second half of  2022, making it possible to get patent protection in up to 25 EU Member States with one single application.

Under the current system, once granted by the European Patent Office (EPO), European patents must be validated, maintained, enforced or revoked in each member state individually. Requirements usually vary between countries, which makes the process complicated and costly.

The UP seems to have several important benefits:

  • A simplified prosecution, with no extra requirements (such as translations) and fees.
  • One renewal system and all the administration post grant handled centrally through the EPO.
  • A Unitary Patent Court (UPC) dealing with infringement and validity of UP patents and European patents, and having jurisdiction over all signing member states (see here for the list).
  • Harmonization of substantive law, which should make patent prosecution in Europe much easier to navigate and hopefully prevent inconsistent decisions.
  • A transitional period of seven years with the option of opting out of the UPC jurisdiction for classic European patents, in favor of litigation before national courts.

At Fish IP Law, we remember countless occasions in which the current system has caused delays, expenses and, put quite frankly, headaches. For example, recording the transfer of a granted patent requires recordation in each member state in which the registration was validated. Thus, a simple recordation can involve communicating with several foreign associates, preparing and executing different forms and documents and spending a considerate amount of money.

The expectations for the new simplified UP system are high and we hope they will be met with a positive result.

Read more at Unitary Patent GuideFAQ

Lucia Minnucci, LLM
Lucia Minnucci, LLM

Lucia Minnucci is a Law Clerk at Fish IP™. Lucia received her first degree in law from the University of Bologna, in Bologna, Italy. After obtaining her law degree, Lucia received an LLM degree from the University of Pennsylvania Carey Law School, with a concentration in Intellectual Property and Technology Law.

The Latest Case in Enforcement of Design Patents

In 2021, Wepay Global Payments LLC obtained a design patent (US Pat. No. D930702) for “a display screen portion with animated graphical user interface,” as shown in the pictures below.

The broken lines, as well as the process in which one figure transitions into another, are not part of the claimed design. It is therefore difficult to determine what this design patent is actually claiming. This, however, has not stopped Wepay from trying to enforce the patent.

Wepay has filed 11 infringement suits against PNC, Apple, Tesla, Amazon, Bank of America, PayPal and other well-known companies. Wepay alleges infringement of the design covered by the ‘702 patent, which includes an icon with three squares that simulate a QR code, a screen where the user can choose the recipient of the money, and a display screen with a zero value, where the user can input the amount.

While on one hand a Texas court denied PayPal’s motion to dismiss, on the other a Pennsylvania court agreed with PNC in finding the two apps dissimilar, the only similarity between the two being limited to basic geometric shapes, with differences notable enough for an ordinary observer to distinguish them. In particular, the court pointed out that any similarity between the two designs appears like a QR code, which has been invented before the ‘702 patent.

Given the various lawsuits filed by Wepay, it is expected that the Pennsylvania decision will be appealed. It will be interesting to monitor the process of the ongoing cases, as they will likely provide some insight on the application of the test for design patent infringement.

Additional sources

Animated Design Patents

Dashed Lines Broaden the Scope of a Design Patent, But this is Ridiculous

Banking On Design

A Tale of Two Motions: A Closer Look at Motions to Dismiss in Design Patent Cases

 

Lucia Minnucci, LLM
Lucia Minnucci, LLM

Lucia Minnucci is a Law Clerk at Fish IP™. Lucia received her first degree in law from the University of Bologna, in Bologna, Italy. After obtaining her law degree, Lucia received an LLM degree from the University of Pennsylvania Carey Law School, with a concentration in Intellectual Property and Technology Law.

Should Patents be Granted to AI “Inventions”?

On June 6, 2022 the Federal Circuit heard the oral arguments in the future landmark case Thaler v Vidal, which discusses the recent question on whether an AI could be the “inventor” listed on a patent application. In 2019, Thaler filed two patent applications, listing an AI called DABUS as the inventor of the two patents. The USPTO’s refused to grant Thaler the patents, and the United States District Court for the Eastern District of Virginia upheld the USPTO’s decision.

      The Patent Act defines “inventor” as the individual(s) who “invented or discovered the subject matter of the invention.” Therefore, the oral argument on June 6 focused mainly on the meaning of the term “individual.” The Federal Circuit seemed skeptical and hesitant to accept the idea that a machine can “invent” patentable subject matter with no human input. Similarly, in arguing for the USPTO, Barghaan insisted that inventions created entirely without human involvement are not patentable. Barghaan pointed out that in the Patent Act Congress specifically defines the term “individual,” and, in doing so, it uses gender personal pronouns, which clearly indicates the intention to refer to individuals as human beings, rather than machines. Moreover, Barghaan contended that allowing AI “inventions” to be patented would “open Pandora’s box” and create numerous problems. For example, he asked, how would you depose an inventor such as DABUS?

      On the other hand, Thaler’s counsel, Abbott, noted that the Patent Act has routinely been interpreted to give terms broad meaning in order to promote innovation. Interestingly, he contended that refusing to grant patents for subject matter invented by an AI would imply telling companies not to use machines in research and development. According to Abbott’s observation, if an invention created entirely by an AI cannot be patented, companies would be disincentivized from investing in and using AI for fear of being denied protection of new inventions. This could prevent beneficial breakthroughs, such as those in the medical field. Thus, Abbott stated, interpreting “individuals” to include only natural persons will prevent innovation, which is instead what Congress intended to promote through the Patent Act.

      It will be interesting to see what the Federal Circuit decides. However, it seems unlikely that the court will find in favor of Thaler. In particular, the court remarked that in the last decision on the matter, Mohamad v. Palestinian Auth, the US Supreme Court held that an inventor is a natural person. Even though Abbott argued that such interpretation specifically applied only to the particular circumstances of that case, and that the Patent Act has ben routinely interpreted broadly to promote innovation, Abbott also conceded that since Mohamad, and since the Act has been enacted, there has been no new decision interpreting the meaning of “individual.”

      No matter the outcome, the Federal Circuit’s decision will have great significance, as it will considerably shape the way we think of patentable inventions. For an interesting insight on how AI might influence patent law see How AI Might Reboot Patent Law published on Artificial Intelligence (AI) & the Law For Social Impact and Equity as part of a series of four blog posts analyzing Thaler’s allegations. In the first post of the series, the authors also describe how Thaler has brought this fight in numerous other countries, and so far, hasn’t had much luck in overcoming objections.

Lucia Minnucci, LLM
Lucia Minnucci, LLM

Lucia Minnucci is a Law Clerk at Fish IP™. Lucia received her first degree in law from the University of Bologna, in Bologna, Italy. After obtaining her law degree, Lucia received an LLM degree from the University of Pennsylvania Carey Law School, with a concentration in Intellectual Property and Technology Law.

Update on the Chinese Foreign Filing License Requirement: Was Your Invention Developed in China?

When an invention is developed in China, Chinese Patent Law requires an applicant to obtain a foreign filing license before filing a patent application outside of the country. Even where an applicant intends to first file the application outside of China, if the invention or utility model is developed in China, the applicant must first request a confidential examination from the China National Intellectual Property Administration (CNIPA) and obtain a foreign filing license.

Applicants have struggled, however, with the question on how to determine where an invention was developed. First of all, an invention could have been devised by more than one inventor, where not all the inventors are located in the same country; or it could have been developed partially in China and partially in another country. As it is becoming common for inventions to be formulated remotely by inventors located in different countries, the question of where the invention was first created is becoming increasingly difficult to answer.

A recent decision of the CNIPA, on May 9, 2022, shed some light on the matter. With this decision the CNIPA provided two criteria to determine whether an invention is developed in China: the address of the patentee and the nationality of the inventors. The address of the patentee is relevant because, where there is evidence that the patentee’s Chinese location has resources and capacity for research and development, and if there is no evidence of such resources outside of China, it is likely that the invention was developed in China.

Likewise, the CNIPA held that where the inventors are Chinese citizens with no permanent residence outside of China, it is more likely that the invention was developed in China. However, contrary evidence can be provided showing that the inventors spent a considerable amount of time, sufficient for research and development of the invention, outside of the country.

Questions remain as to how to weight these elements when, for example, a patentee has R&D resources and facilities both in China and outside of the country, or when the inventors are of different nationalities, have different residencies and at least one has contributed to the invention while outside of China. Nonetheless, this recent decision is a good step forward, providing insight on which elements the CNIPA is likely to give weight to and consider relevant to determine whether an invention has been developed in China.

 

Resources:

http://foundin.cn/en/bbs/board.php?bo_table=ip_trends_en&wr_id=35

http://www.lindapatent.com/en/info/insights_podcasts/2020/0226/1038.html

https://www.ipwatchdog.com/2022/05/06/foreign-filing-requirements-part-iii-managing-compliance/id=148877/

https://www.americanbar.org/groups/intellectual_property_law/publications/landslide/2019-20/march-april/global-collaborations-foreign-filing-licenses/

Lucia Minnucci, LLM
Lucia Minnucci, LLM

Lucia Minnucci is a Law Clerk at Fish IP™. Lucia received her first degree in law from the University of Bologna, in Bologna, Italy. After obtaining her law degree, Lucia received an LLM degree from the University of Pennsylvania Carey Law School, with a concentration in Intellectual Property and Technology Law.

St. Patrick’s Day video

We’ve put together a fun video about St. Patrick’s Day. It explains who St. Patrick was, how his birthday came to be a celebration of Irish culture, and some related patents.  

Play Video

Ignorance Of The Law May Be An Excuse In Copyright Registration

On February 24th, 2022, the Supreme Court has published a decision, Unicolors v H&M, that will make challenging the validity of a copyright registration much harder.

Under the US Copyright Act, registration of a copyright is necessary to bring infringement suits. Therefore, alleged infringers often try to prove that the copyright registration is invalid, and that therefore the owner cannot bring the suit. That strategy was used by H&M when Unicolors sued for infringement of several clothing patterns, and won at trial. H&M appealed, asserting that Unicolors’ registration was invalid due to an error in the application of the law.

The ultimate question in Unicolors focused on whether, in a copyright registration, both an error of fact, such as in the description of the work, and an error of law, such as in the appropriate method of publication, can be excused. According to the Copyright Act, if copyright holders make a mistake in registering the copyright, the registration remains valid as long as they had no knowledge of the mistake. Since the principle that “ignorance of the law is no excuse” does not apply in civil cases, and the Act does not distinguish between a mistake of a fact and a mistake of law, SCOTUS held that both errors are excused if there is no actual knowledge.

While the decision ultimately imposes a higher burden on alleged infringers, it was positively welcomed by copyright associations and rightsholders (see Copyright Alliance, Supreme Court (Finally) Renders a Copyright Decision That’s Not for the Birds). Copyrights holders should be aware, however, that consciously closing one’s eyes (i.e. willful blindness) will not save them from invalidation, as it may be interpreted as having knowledge of the error.

Deferred Subject Matter Eligibility Program

The USPTO is implementing a pilot program called the Deferred Subject Matter Eligibility response.

The point of the program is to defer the whole question of subject matter eligibility until a later stage of patent prosecution.  Deferring subject matter eligibility allows examiners to first check to see if the invention clears the other hurdles, of §§ 112, 102, and 103. If it is struck down in one of those categories, then no time is wasted arguing over the more difficult question of the eligibility.

For more information, check out the USPTO page: https://www.uspto.gov/patents/initiatives/patent-application-initiatives/deferred-subject-matter-eligibility-response