NEWS

New Way Of Enforcing Copyright Against Infringers

January 11, 2021

In late December, 2020, the Consolidated Appropriations Act established the Copyright Claims Board (CCB).

In simple terms, the CCB is like a small claims court for copyright cases. It gives copyright owners an easier and more cost-efficient way of ensuring their rights, without necessarily using an attorney, and without other expenses of federal court litigation.

There are limitations. Damages cannot exceed $30,000, defendants can opt out of the process, and attorney’s fees can only be obtained under “extraordinary” circumstances, and with a ceiling of $5,000. There is an appeal process.

One feature of potentially great interest is that the CCB will have the right to bar claimants for up to 12 months, for repeatedly filing frivolous or harassing claims.

For more information on this topic, see our Copyright Infringement FAQ page.

New Trademark and TTAB Fee Schedule Effective January 2, 2021

January 4, 2021

Several trademark fees have increased starting January 2^nd. The most notable fee increases are:
(1) TEAS standard filing fee is increased from $275 to $350,
(2) Combined §8 and §15 declarations from $325 to $425 per class, and
(3) Combined §8 declaration and §9 renewals from $425 to $525 per class.
The current USPTO trademark fee schedule can be found in the following link: https://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule#Trademark%20Fees.

The Inventive Step in Chinese Patent Law

December 29, 2020

China is becoming an increasingly attractive patent filing destination for foreign companies. But foreign counsels are often confused by the country’s inventive step requirement. Chinese patent examiners often use abstract legal terms, such as “prominent substantive features” and “notable progress,” in their analysis.

This article, The Inventive Step in Chinese Patent Law Compared With the U.S. Non-Obviousness Standard, by Fish IP Law attorney Shuo Liu, Ph.D., Esq., provides an overview of the inventive step requirement in China, in comparison with the non-obviousness standard in the United States.

False Marking

December 21, 2020

What Is False Marking?

False marking (distinct from false marketing) occurs when a product is falsely labeled as covered by an enforceable patent.

Common Ways False Marking Occurs

False marking commonly occurs in three ways:
(1) there is no patent, only a patent application;
(2) the listed patent has expired or lapsed; or
(3) the product falls outside the patent claims.

Statutory Penalties for False Patent Marking

The statutory penalty for false marking is $500 per instance. In theory, a company selling 10,000 falsely marked units could face a $5,000,000 penalty.

Congressional Changes to the False Marking Statute

When the statute was first passed, law firms saw an opportunity and began filing lawsuits aggressively. Their conduct became so widespread that Congress quickly changed the law. Congress limited the penalty to “recovery of damages adequate to compensate for the injury.”

Proving Damages in False Marking Cases

In plain English, this means the plaintiff must prove actual damages. Proving damages for false marking is extremely difficult.

Example of a False Marking Scenario

For example, suppose a competitor falsely marks chairs with the number of an expired patent. Bob avoids selling similar chairs because he fears infringing that patent. However, proving damages would still be difficult.

Bob could easily check www.PublicPAIR and discover the patent was no longer in force.

The Copyright Office’s new GRTX option

October 28, 2020

New Group Copyright Registration for Short Online Works

Have you ever wanted to get federal copyright protection on a whole group of your best hot-take tweets? Well, now you can! The U.S. Copyright Office has created GRTX- a group registration option.

With GRTX, authors can register up to 50 ‘short online literary works’, ranging from 50 to 17,500 words per work. As some initial requirements, the works must have all been written by the same author(s), and only text-based works are eligible. In addition, the works must have been published first online and within a given three-month period.

Works That Are Not Eligible for GRTX Registration

Emails, podcasts, audiobooks and computer programs are not eligible, even if they meet the other criteria.

Who Should Use the GRTX Group Registration Option?

So who is this for? The Copyright office created this option in response to a petition by several writers associations. It is primarily meant to help bloggers and social media posters.

Filing Fees and Benefits of Early Copyright Registration

The low filing fee of $65 covers up to 50 works). Online authors who generate continuous new content should be incentivized to secure copyright coverage early and often.

You can check out the Copyright Office’s FAQ on the subject here and Circular 67 Group Registration of Short Online Literary Works.

Can an AI machine be an inventor?

October 20, 2020

Current Patent Office Position on AI Inventors

Wow, fascinating issue, this one. For now the short answer is a simple “no”. And several patent offices across the globe have already ruled that AI machines cannot be regarded as inventors. See e.g., article by the Chinese law firm, Liu Shen.

However, as AI machines become ever more powerful, the issue is bound to come up again and again. One sign that the issue is still alive is that the U.S. Patent and Trademark Office is apparently trying to resolve several thorny issues related to AI inventors, including the following:

What constitutes an AI invention?

What constitutes an AI invention. Is it the AI database? The algorithm? How the AI is trained?

Patent Disclosure Requirements for AI Inventions

What about disclosure of the inventive subject matter? The current patent laws require that a patentable invention must be disclosed in sufficient detail that a hypothetical person of ordinary skill in the field of the invention (a PHOSITA) can make and use the invention.

Is an AI machine a sole if it comes up with a general idea, but sufficient disclosure is only provided by a human?

Would an AI Qualify as a PHOSITA?

What about that PHOSITA? With that hypothetical person include only humans? Or would it potentially include other AI machines, or other instances of the same AI machine?

Ownership and Assignment of AI-Generated Patents

What about ownership and assignment? If an AI machine has patent rights, are those rights automatically transferred to a person or company owning the AI? What if the AI is public domain? Do the patent rights go to whomever trained or used the AI? What if a person simply installed the AI on his/her computer, and that AI machine invented something without any direction at all?

Prior Art Disclosure Issues for AI Inventors

What about disclosure of prior art? Current patent law requires that an inventor disclose to the patent office all information that the inventor possesses, that a reasonable examiner would want to know about, and that is not cumulative. Depending on the AI algorithm it might be impossible for an AI machine to determine what information it used to derive the invention.

Future Legal Questions About AI and Hybrid Human-Machine Inventors

At Fish IP, we don’t see the issue going away anytime soon. What happens, for example, when electronic or bio-neural processors are embedded in brain tissue? Did an invention arise from the embedded processor, or the human part of the brain? And what if the invention arose because the electronic or bio-neural processor was communicating with others, in a sort of hive as contemplated by US patents 9,501,573 and 10,055,771?

Time to fasten your seat belt!

PATENT OFFICE CATCHING UP ON PTAB APPEALS

September 21, 2020

Although the length of time that PTAB appeals are pending has only gone down slightly over the last three years, the number of new appeals has steadily declined. This seems to be the case for both inter-partes and ex-parte appeals.

It’s not clear why that has happened. One theory is that the relatively lower cost of IPRs and other appeals has made patent holders more likely to settle with a potential competitor – to avoid a relatively high chance of the patent rights being voided.

Source: https://www.uspto.gov/dashboard/ptab/