NEWS
IP Updates in Korea
Korea has added exporting an invention to the list of what constitutes “practicing an invention”. This means patent holders can claim damages from overseas sales more actively.
Korea has also introduced two limitations on patent term extensions: a patent term can’t be extended over 14 years from the date of receipt of marketing approval, and only one patent becomes eligible for patent term extension per approval.
In trademark litigation, the Korean Supreme Court has clarified standards for consumer surveys, used as evidence of consumer recognition or perception.
USPTO discontinues the Accelerated Examination program
Given the long wait times for patent prosecution, the USPTO had offered several ways to speed the process up. One of those, Accelerated Examination, offered the option of having the attorney certify much of the examination work in advance. We used the accelerated examination process several times, and got quite good at it. In one instance we received notice of allowance in less than a month! Nevertheless, it seems many attorneys did a poor job of searching (intentionally or unintentionally), so the original premise of faster prosecution was faulty.
Track One, or Prioritized Examination, is still an option for speeding up the prosecution process.
Copyright Office Report on AI Training and Fair Use
Can AI systems use copyrighted materials under the fair use doctrine?
The fair use doctrine is a provision of copyright law that allows for limited usage of copyrighted material in certain situations without needing to obtain permission from the copyright holder. There is a four-factor test used to determine fair use: the character of the use, nature of the work, amount used, and effect upon the market. These are general guidelines and use for one of these purposes is not automatically fair, while other purposes beyond these might be considered fair.
Some of the purposes where fair use is generally allowed are: criticism, comment, news reporting, teaching, scholarship, and research. So, for example, quotes from a copyrighted book can be published in a critique of the book without having to obtain permission from the copyright holder.
Of course, generative artificial intelligence (AI) systems train on looking at large amounts of data, including copyrighted materials. Can this be considered fair use and avoid infringement? This was the scope of the recent study put out by the United States Copyright Office (the USCO).
Do AI models Infringe Training Data?
The USCO report finds that generative AI systems implicate several of the exclusive rights granted to copyright owners. The report also addresses whether the model’s weights are themselves infringing copies of the underlying works. This is disputed, with developers asserting that models are merely comprised of strings of numbers, while others assert as evidence to the contrary that models sometimes generate outputs substantially similar to the training data. The report concludes that where generated outputs are substantially similar, it is a strong argument that copying the model’s weights implicates the reproduction and derivative work rights of the original works.
The Application of the Fair-Use Defense
The key issue when analyzing fair use has been whether the use is “transformative”. There is of course a spectrum, and where the output is based on a diverse dataset, it is more likely to be transformative, but where it is trained to generate outputs substantially similar to copyrighted works, then it is “at best, modestly transformative”. The USCO rejected arguments that AI training is inherently transformative, because it is analogous to human learning. The report asserts that the analogy rests on a faulty premise that fair use is a defense for all acts if those acts are used for learning. But an example was given that a student couldn’t rely on fair use to copy all of the books at a library. The analogy also fails because humans retain only imperfect impressions of the works experienced, filtered through their unique personalities and limitations. AI involves training on the creation of perfect copies. The structure of exclusive copyright rights is premised on certain human limitations.
There are more than 40 cases currently pending related to the issue of AI using copyrighted materials. There won’t be a single answer whether unauthorized use is fair use. There is an ongoing discussion of some form of licensing scheme for AI training data, but for now, the recommendation is to continue development without government intervention.
Revised Policy on Same-Day Dual Filings in China: Invention and Utility Model Applications
There are two types of patent protection in China: Invention patents, which are similar to utility patents in the US; and utility model patents (similar to petty or minor patents), which may be granted for technical solutions that relate to shapes or structures of a product.
Under Chinese patent law, when the same applicant files both an invention patent application and a utility model application for the same invention on the same day (i.e., same filing date), it is considered a same-day dual filing. Whether these applications relate to the same invention is determined based on a declaration made in the request form.
To obtain a patent for the invention, the applicant must waive the corresponding utility model right. The previous practice of amending the invention application to distinguish it from the utility model is no longer permitted under the revised rules.
Background (Previous Practice):
Previously, if the utility model right was still valid and a declaration was submitted at the time of filing, applicants had two options:
- Modify the invention application to differentiate it from the utility model, or
- Waive the utility model right.
Current Practice (Amended Rules):
Now, only the second option—waiving the utility model right—is allowed. This amendment is intended to streamline examination procedures and reduce the burden on both applicants and the patent office.
Implications for Applicants:
At the time of filing in China, applicants should carefully assess:
- Whether dual filing (for both invention and utility model) is necessary—especially if the scopes of protection are the same.
- If the scopes are identical, whether to pursue protection via a utility model or an invention patent.
What Did Those Claims Consist Of?
This is a very weird case interpreting “consisting of”. The Federal Circuit recently affirmed a ruling of non-infringement in Azurity Pharmaceuticals v. Alkem Laboratories. Azurity had sued Alkem for allegedly infringing patent claims related to a drinkable antibiotic.
The patent at issue—Azurity’s U.S. Patent No. 10,959,948—was a continuation of an earlier application that had been rejected due to prior art referencing the ingredient propylene glycol. To overcome that rejection, Azurity amended its claims to disclaim propylene glycol, arguing that its absence distinguished the invention from the prior art. Instead, Azurity used the more generic term “flavoring agent.”
At trial, both parties stipulated that “flavoring agents” in the asserted claims could include substances with or without propylene glycol. Azurity argued that this meant a product containing a flavoring agent with propylene glycol would still infringe, regardless of the claim’s “consisting of” language.
The district court disagreed. It held that Alkem’s product—though it did contain propylene glycol—did not infringe the asserted claims because Azurity had clearly and unmistakably disclaimed that ingredient during prosecution.
As a reminder, in patent claim language:
- “Comprising” means the invention includes the listed elements, but may also include others.
- “Consisting of” is much narrower—it limits the invention strictly to the elements explicitly listed, excluding anything else.
The court concluded that Azurity’s use of “consisting of,” along with its prosecution history, was clear enough to exclude propylene glycol—and, by extension, Alkem’s product—from the scope of the claims.
Mission Impossible: Trademarking the US SPACE FORCE
In a recent ruling, the U.S. Court of Appeals for the Federal Circuit upheld a decision by the Trademark Trial and Appeal Board (TTAB) to deny registration of the trademark “US SPACE FORCE”—a case that offers a fascinating look at how intellectual property law interacts with national identity.
The Background
The term “Space Force” entered the public spotlight in March 2018, when then-President Donald Trump announced plans for a new branch of the military focused on space. By December 2019, the United States Space Force was officially established as the sixth branch of the U.S. Armed Forces.
However, just days after Trump’s 2018 announcement, intellectual property attorney Thomas Foster filed an application to register the trademark “US SPACE FORCE” for a range of goods and services, on behalf of his law firm. The timing was strategic—but ultimately not enough to secure the rights to the name.
The USPTO’s Rejection
The United States Patent and Trademark Office (USPTO) initially refused the application under Section 2(a) of the Lanham Act. This section bars trademarks that falsely suggest a connection with a person, institution, belief, or national symbol.
Foster appealed to the TTAB, which affirmed the USPTO’s refusal. He then requested a reconsideration, which was denied, and ultimately escalated the matter to the Federal Circuit Court.
The Legal Argument: Timing and Association
Foster’s main argument was that the trademark should be evaluated based on the facts at the time the application was filed, not on developments that occurred afterward—such as the formal establishment of the Space Force in 2019.
The court disagreed. It ruled that the proper time for evaluating whether a mark falsely suggests a connection is during the examination of the application, not when it was initially filed. This distinction was crucial, as by the time the application was examined, the U.S. government had clearly signaled its intent to use the name for a new military branch.
The Four-Part False Connection Test
To determine whether a mark falsely suggests a connection, courts apply a four-part test:
- the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution;
- the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution;
- the person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and
- the fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed.
In this case, all four elements were met. “US SPACE FORCE” clearly pointed to a well-known, official government entity with no ties to Foster’s firm.
What the Court Emphasized
Importantly, the court clarified that the mark doesn’t have to be identical to a government name to create a false suggestion of connection. Even though the U.S. Space Force wasn’t formally in existence when the application was filed, the name “US SPACE FORCE” was unmistakably tied to the United States.
Foster attempted to bolster his argument by citing fictional uses of “Space Force” in pop culture, such as TV shows—but the court was unmoved. The unique and unmistakable association with a newly announced military institution outweighed any prior fictional use.
Final Thoughts
This case serves as a reminder that timing, context, and public perception are critical in trademark law—especially when national identity is at play. For attorneys and businesses alike, it underscores the importance of understanding not just what a mark says, but what it implies to the public.
Decluttering the USPTO’s Trademark Register
The USPTO recently announced it had now removed over 50,000 goods and services from the trademark register. Using ex parte expungement and reexamination proceedings, the majority of the cancellations were used against registrations linked to specimen farms.
Trademark registration requires that marks be used in real-life commerce. Specimens of the marks must be provided to the USPTO to demonstrate commercial usage prior to registration. This would serve to show a legitimate connection between the mark and the goods and services provided.
Specimen farms are websites designed to look like commercial sites. These sites list the products and the marks, which are used as specimens provided to the PTO. But the sites don’t actually sell the product.
There are filing firms, companies that assist in filing trademark applications, that created these e-commerce sites purely for the purpose of creating fake specimens.
Clearly the registry of these unused goods and services helps open up the path for legitimate companies and trademarks.