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.
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.
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.
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.
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
We posted an update on this back in November 2021, but all 13 countries have now ratified the Protocol on Provisional Application of the Unified Patent Court Agreement. The European Union is now in the process of putting the court together and it may be ready within the year.
The proposals include both a Unitary Patent covering participating member states, as well as a Unified Patent Court with jurisdiction over the litigation aspects. There is also a provision to opt out of this. In practice, there may be a cost savings only in the event the patent would be sought in four or more countries. So if, for example, you were only seeking patent protection in one country, it would be cheaper to prosecute in that country alone, rather than the unified patent.
But this could be a great option for those seeking protection across Europe when the details are all worked out.
It should also be noted that Unified Patent challenges will eventually be heard only in the Unified Patent Court, but there will be a temporary hybrid situation allowing litigation through national courts.
More information is available through the European Patent Offices page.
Venner-Shipley, one of our UK associates has provided an in-depth analysis found here.
We’ve put together a little video about Valentine’s Day.
First, we give the historical background about who Saint Valentine was, and how he came to be celebrated. Then the transformation from a feast day to a commercial holiday for lovers. Finally, we give you some Valentines-related patents, and then wish a happy valentines to all of our inventors trying to make the world a better place. Happy Valentine’s Day!