NEWS
New Offices
We are officially moved into our new offices. We are now located at 19900 MacArthur Blvd. Suite 810, Irvine CA 92612, a few miles south of the old office building.
Here are a few pictures of the new place.
Fish IP Law Is Moving!
Fish IP Law is moving to a new location this weekend. We should be completely moved in by Wed. Dec. 14. The new offices will be located at 19900 MacArthur Blvd. Suite 810, Irvine, CA 92612.
Update on the European Unitary Patent – Coming April 1, 2023
What is the European Unitary Patent?
The new European Unitary Patent (UP) system is now coming into effect on April 1, 2023 for 17 EU member states. Included are Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, Sweden. Other EU countries are expected to join at a later date.
Benefits of the Unitary Patent System
In our previous article, we highlighted some benefits of the new UP system. There will be a Unitary Patent Court (UPC), which will have jurisdiction over the infringement and validity of UP patents and over all signing member states. The UPC will also have jurisdiction over existing European Patents, but the holders of such patents will have the option to “opt out” of the UPC.
Should owners of existing European Patent opt in or opt out of the UPC?
We think that the UPC jurisdiction will be highly advantageous. First of all, it will be cheaper to litigate in, and it will prevent forum shopping among member states. A UPC decision will be valid and enforceable in all signing member states. This will prevent diverging decisions and lack of legal certainty. One foreseeable and important disadvantage, however, is that a patent deemed invalid by a UPC decision will also be automatically invalidated in all signing member states.
Cost and Coverage Advantages of the UP System
In any case, the UP system will undoubtedly be worth it for those seeking protection in numerous member states. The cost of filing through the UP system is scheduled to be about the same as filing in five individual states.
Read more at Unitary Patent Guide – FAQ
Related articles on the European Unitary Patent: The European Unitary Patent- Coming Soon
Lucia Minnucci, LL.M
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 LL.M degree from the University of Pennsylvania Carey Law School, with a concentration in Intellectual Property and Technology Law.
The European Unitary Patent – Coming Soon
A New European Unitary Patent System
A new European Unitary Patent (UP) system is expected to come into effect in the second half of 2022. This will make it possible to get patent protection in up to 25 EU Member States with one single application.
How the Current European Patent Validation System Works
Under the current system, patents are granted by the European Patent Office (EPO). Those patents must then be validated, maintained, enforced or revoked in each member state individually. Requirements usually vary between countries, which makes the process complicated and costly.
Key Benefits of the Unitary Patent System
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. You may opt out of the UPC jurisdiction for classic European patents, in favor of litigation before national courts.
Administrative Challenges Under the Current System
At Fish IP Law, we remember countless occasions in which the current system has caused delays, expenses and headaches. For example, recording the transfer of a granted patent. This simple step required recordation in each member state in which the registration was validated. Because of this, a simple recordation can involve communicating with several foreign associates, preparing and executing different forms and documents and spending a considerate amount of money.
Expectations for the European Unitary Patent
We have high expectations for the new simplified UP system.
Read more at Unitary Patent Guide – FAQ
Previous articles on the European Unitary Patent: European Unified Patents Update
Lucia Minnucci, LL.M
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 LL.M 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
A Design Patent for a Graphical User Interface
In 2021, Wepay Global Payments LLC obtained a design patent for “a display screen portion with animated graphical user interface”. (US Pat. No. D930702) 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.
Multiple Design Patent Infringement Lawsuits Filed
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.
Wepay alleges infringement of the design covered by the ‘702 patent. What does that design include? First, there is an icon that simulates a QR code. Second, it includes a screen where the user can choose the recipient of the money. Third, there is a display screen with a zero value, where the user can input the amount.
Courts Reach Different Conclusions on Design Similarity
A Texas court denied PayPal’s motion to dismiss. However, a Pennsylvania court agreed with PNC in finding the two apps dissimilar. The only similarity between the two being limited to basic geometric shapes. But the differences were notable enough for an ordinary observer to distinguish them. In particular, the court pointed out that any similarity between the two d
Possible Appeal and Implications for Design Patent Law
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
Dashed Lines Broaden the Scope of a Design Patent, But this is Ridiculous
A Tale of Two Motions: A Closer Look at Motions to Dismiss in Design Patent Cases
For more information on Design patents, we have a FAQ on Design Patent Applications that explains them, in contrast with Utility patents. It is found in our Types of Patents section.
Lucia Minnucci, LL.M
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 LL.M 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”?
The DABUS Case and the Question of AI Inventorship
On June 6, 2022 the Federal Circuit heard the oral arguments in the future landmark case Thaler v Vidal. These discuss 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. Furthermore, the United States District Court for the Eastern District of Virginia upheld the USPTO’s decision.
How the Patent Act Defines an “Inventor”
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 of 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”. It does so using gender personal pronouns, which clearly indicates 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?
Arguments Supporting Patent Protection for AI-Generated Inventions
Countering that, 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 have a negative implication. Namely, 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. That’s the opposite of what Congress intended to promote through the Patent Act.
Prior Supreme Court Guidance on the Meaning of “Individual”
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 Mohamad v. Palestinian Auth, the Supreme Court held that an inventor is a natural person. Abbott argued that such interpretation specifically applied only to the particular circumstances of that case. Furthermore, the Patent Act has been routinely interpreted broadly to promote innovation. However, Abbott also conceded that since Mohamad (and the Patent Act), there has been no new decision re-interpreting “individual.”
Why the Federal Circuit’s Decision Could Shape the Future of Patent Law
No matter the outcome, the Federal Circuit’s decision will have great significance. 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. The article was published on Artificial Intelligence (AI) & the Law For Social Impact and Equity. It is part of a series of four blog posts analyzing Thaler’s allegations. In the first post of the series, the authors describe how Thaler has brought this fight in numerous other countries. And so far, he hasn’t had much luck in overcoming objections.
Prior articles on AI and Inventorship: Artificial Intelligence as Inventor
Lucia Minnucci, LL.M
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 LL.M 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
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.