The USPTO’s Proposed Terminal Disclaimer Rule Change: It’s Radical, But Is It Legal?

In a May 10, 2024, Notice of Proposed Rulemaking (NPRM), the USPTO proposed sweeping changes in the rules governing the filing of terminal disclaimers. If the USPTO implements the proposed changes, entire patent families could be wiped out if just one claim of one patent in the family is found invalid over prior art. Patent owners could have a lot more to worry about than just preserving common ownership of terminally disclaimed patents. The public hue and cry thus far have been significant. Here, we discuss why.

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Identifying a Single Biomolecule Means Single-molecule Detection Sensitivity

Every single word matters. Nowhere was this truer than when the Federal Circuit recently held, in an appeal from the Patent Trial and Appeal Board captioned Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc., that an apparatus for identifying a single biomolecule meant examining one biomolecule alone and not inferring its identity from an ensemble of copies. The court’s opinion provides a valuable lesson for patent practitioners as well as owners and potential challengers of patents.

Pacific Biosciences of California, Inc. — known as “PacBio” — filed two inter-partes reviews against U.S. Patent 7,767,441 B2 (“the ’441 patent”), which issued to Personal Genomics Taiwan, Inc. — referred to here as “PGT”. PacBio was successful in one (IPR2020-1163, “the ’1163 decision”), invalidating claims 1‐6, 9, and 43‐58 of the ’441 patent as anticipated by, or obvious over, a PCT publication known as “Choumane,” and unsuccessful in the other (IPR2020-1200, “the ’1200 decision”).

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Intelligent AI Guidance from the USPTO Identifies Potential Perils

Much like word processing with spell check and other now commonplace digital tools were once only the stuff of science fiction, artificial intelligence (AI) is quickly becoming widespread in knowledge work including law practice. IP law is no exception. The use of AI in IP law practice has practical benefits, including the potential for enhanced efficiency and lower costs in drafting and prosecuting patents before the U.S. Patent and Trademark Office (USPTO). The USPTO has expressed support for the good that can come from the use of AI in the legal profession, while also warning about the problems that its use can create. Indeed, incentivizing and protecting AI innovation is one of the top priorities and a major initiative of the USPTO, along with the Council for Inclusive Innovation (CI2), Empowering Women’s Entrepreneurship (WE), and others. The USPTO’s recently issued notice of rulemaking is an important step toward avoiding perils and alleviating fears about the use of AI when practicing before the Office.

The USPTO’s AI Guidance for Practitioners

Just two months after issuing its Inventorship Guidance for AI-assisted inventions, discussed in our prior blog here, the USPTO made good on its promise to issue Practice Guidance concerning the USPTO’s existing rules and their applicability to the use of AI tools.

In its Practice Guidance, the Office takes the stance that the existing rules are adequate to address the challenges posed by AI when it comes to its usage and how parties and practitioners should use AI tools. Rather than issuing a new set of AI-specific rules, the Practice Guidance offers clarity as to how existing rules apply when using AI technologies in dealings before the USPTO.

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The USPTO Proposes Steep RCE Fees. Will Patent Prosecution and Appeal Strategies Change?

As discussed in two of our recent blogs (here) and here), the United States Patent and Trademark Office (USPTO or Office) recently proposed substantial patent fee increases for continuing applications and terminal disclaimers. The USPTO is also proposing substantial increases for an applicant to request continued examination of an application whose claims have been rejected, but only minor increases for appeals of rejections. As we discuss below, these increases are likely to affect strategies for prosecuting patent applications.


While a patent application is pending, a patent applicant has a variety of procedural tools at their disposal to secure allowance of their patent applications. One such tool, which can put application claims in optimal order, is one or more requests for continued examination (RCEs). When the applicant files an RCE, the applicant can secure another opportunity to amend the claims. Often, a patent examiner will agree with the claim amendments and allow the application. Sometimes, an agreement cannot be reached. During these times, the applicant can choose to take their disagreement with the examiner to a higher authority, the Patent Trial and Appeal Board (PTAB), by filing an appeal.

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Are the USPTO’s Proposed Terminal Disclaimer Fees the End of Continuing Applications?

As discussed in our previous blog (here), the United States Patent and Trademark Office’s (USPTO) has proposed substantial surcharges for filing continuing applications, depending on the timing of filing. The USPTO is also proposing substantial increases for an applicant to file a terminal disclaimer. As we discuss below, these increases are likely to affect strategies for prosecuting patent applications.


Continuing applications often require the filing of terminal disclaimers, because the claims of the continuing applications can be similar to the claims in the parent or another previously filed related application. Terminal disclaimers are intended to ensure that the limited monopoly that a patentee enjoys does not get extended through similar claims that have later expiration dates. But terminal disclaimers also provide a mechanism for refining the claims to an applicant’s invention.

The USPTO Proposals

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Why the Taylor Swift AI Scandal is Pushing Lawmakers to Address Pornographic Deepfakes

Last month, viral AI-generated pornographic pictures of Taylor Swift circulated on X (formerly Twitter), with one post remaining for 17 hours and receiving more than 45 million views, 24,000 reposts, and hundreds of thousands of likes before the verified account was suspended for violating platform policy. The images, allegedly created using a company’s text-to-image tool Designer, originated from a challenge on 4chan. The posts spurred an explosion of comments and “Protect Taylor Swift” hashtags on X by the army of “Swifties” (the name used by Taylor Swift supporters) seeking to bury the pornographic content. Ultimately, the controversy sparked the attention of Members of Congress.

Regrettably, Taylor Swift is not the only victim of deepfake porn. Malicious actors on the internet have been targeting teen girls and creating AI-generated deepfake images at unprecedented rates. This year, for example, New Jersey high schooler Francesca Mani spoke at a news conference alongside Congressman Joe Morelle, and she explained that nonconsensual AI-generated intimate images of her, along with the images of 30 other girls at her school, were shared on the internet.

While men are victim as well, women are disproportionately impacted by the spread of AI-generated and altered intimate images. A MIT Technology Review report revealed that the vast majority of deepfakes target women. Between 90% and 95% of these videos are non-consensual porn involving women, a report from Sensity AI found. Unfortunately, the current legal and regulatory framework in the U.S. offers victims of such abuse little recourse.

How does deepfake technology work?

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The Potential Mushroom Effect of the USPTO’s Mushrooming Patent Application Fees

The United States Patent and Trademark Office’s (USPTO) recently proposed patent fee increases could have far-ranging consequences for applicants looking to build a patent family from a single patent application. In this first of a series of blogs, we will discuss the potential consequences of the USPTO’s proposed fee increases for continuing applications, including continuation, divisional, and continuation-in-part applications. Subsequent blogs will discuss the impact of increased cost of terminal disclaimers, and of appeals and Requests for Continued Examination (RCEs). All of these proposed increases will synergistically – and not in a good way – dramatically increase the cost and the risk of building a patent portfolio.

The USPTO Proposals

In an April 3, 2024 Notice of Proposed Rulemaking (NPRM), the USPTO has set forth a new, steeply graduated fee structure for continuing applications. The cost of a regular continuing application (no more than 20 claims, no more than three independent claims) will go up a little less than 10 percent.

In addition, the proposed fees include surcharges for filing a continuing application too long after the “Earliest Benefit Date” (EBD), also known as the “patent term filing date” (the date from which the 20-year patent term is calculated). Continuing applications filed more than five years from the EBD will incur a $2,200 (undiscounted) surcharge, while continuing application filed more than eight years from the EBD will incur a $3,500 (undiscounted) surcharge. So-called small entities receive a 60% discount on these fees, and micro entities would receive an 80% discount.

The USPTO’s rationale for the new fees is that the Office relies on maintenance fees, due periodically after a patent issues, to make up for losses during examination, as the filing, search, and examination fees paid on filing are much less than what it costs the Office to handle a patent application through issuance. Continuing applications filed five or eight years after their EBD will miss at least one maintenance fee, possibly two, so that the Office cannot use those fees as part of cost recovery.

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The USPTO Re-Explains What “Means” Means

On March 18, 2024, the United States Patent and Trademark Office (USPTO) issued a Memorandum containing guidance to help patent examiners analyze claim language that may be interpreted as “means-plus-function” or “step-plus-function” language under 35 U.S.C. § 112(f). The USPTO said that the Memorandum was not a change in practice for examiners. Sometimes, however, how something is said can affect the interpretation of what is said. We will examine some examples of that here.

Background – What Does “Means-Plus-Function” Mean?

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Apple v. Rivos: Lessons for Companies Facing Claims of Trade Secret Theft (US)

Our colleagues at Employment Law World recently blogged about a recent trade secrets decision from the Northern District of California, Apple v. Rivos. The case involved a common fact pattern: numerous employees were hired away from Apple by Rivos and Apple brought claims for trade secret misappropriation (among others). The court dismissed the claims against Rivos and provides important guidance that other companies can take to try and limit their liability in potential trade secret claims. Given the importance of trade secret law to our readership, we wanted to take a moment to share it with you.

Check out the full post on Employment Law Worldview: Apple v. Rivos: Lessons for Companies Facing Claims of Trade Secret Theft (US) | Employment Law Worldview

New Social Media Guidance for 2024 Olympians

The opportunity to compete at the Olympic Games represents one of the most honorable achievements of any athlete’s career. And while Olympians may have always been trailblazers in the world of sports, today’s competitors are more than just athletes – they are brand ambassadors, marketing representatives, and social media influencers. While an athlete’s ability to reach audiences presents a unique opportunity for brand partners, it also presents event integrity concerns for the International Olympic Committee (“IOC”). In prior Olympic Games, athletes have used social media to grant fans glimpses into their daily lives – from training regimens to life in the Olympic Village.

This summer in Paris, fans will once again have unprecedented access to competitors’ lives at the 2024 Olympic Games. With this in mind, the IOC issued new guidance for athletes using social media during the Games, which provides athletes more flexibility online and opportunities to share their stories with fans. Importantly, the new rules distinguish between Olympic and Non-Olympic Partners – highlighting the key restrictions that brands and sponsors will have to consider when planning marketing campaigns involving 2024 Olympians.

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