Dysfunctional Patent Families: The Federal Circuit Draws Two Different Conclusions on Whether a Later-Filed Patent Can Invalidate an Earlier-Filed One in the Same Family

When a patent application is allowed, the claims may not precisely cover everything that the applicant wants to protect. Rather than add new claims after a notice of allowance and prolong prosecution, applicants will commonly file one or more continuation applications to pursue different claims. The continuation has substantially the same specification and drawings as the original application and will claim priority to the original application, so it is treated as having the same filing date and – absent any adjustments due to patent office delay – the same expiration date as the original. But when such patents have different adjustments to their term, troubles may arise. The Federal Circuit’s most recent decision on this issue addresses some, but not all, potentially problematic situations, as we explain here.

Artificial Intelligence and Intellectual Property Legal Frameworks in the Asia-Pacific Region

By Candice Kwok and Nicole Brenner on September 17, 2024 Posted in Artificial Intelligence, Copyright, Cybersecurity, Data Protection, Intellectual Property, Patent Litigation, Technology

Globally, governments are grappling with the emergence of artificial intelligence (“AI”). AI technologies introduce exciting new opportunities but also bring challenges for regulators and companies across all industries. In the Asia-Pacific (“APAC”) region, there is no exception. APAC governments are adapting to AI and finding ways to encourage and regulate AI development through existing intellectual property (“IP”) regimes and new legal frameworks.

AI technologies aim to simulate human intelligence through developing smart machines capable of performing tasks that require human intelligence. The expanding market for AI ranges from machine learning to generative AI to virtual assistants to robotics, and this list merely scratches the surface.

Part III: You’ve Got Patents! Or Someone Else Does… Where Can You Find Resolution?

By Tamara Fraizer on September 12, 2024 Posted in Designs, Intellectual Property, IP Litigation, Life Sciences Biotech Pharma, Patent Litigation, Technology, US, USPTO

As noted in Part I of this series, patent litigation can be a mechanism for parties to spar and evaluate patent rights, as well as each other, prior to making the business agreements that settle such disputes. Once a patent is asserted to be infringed with the filing of a lawsuit, the dispute can become risky and costly for both sides. Opportunities for settlement, discussed in Part II of this series, may appear and foster discussion. But agreeing on terms for resolution of a patent dispute often requires the assistance of a neutral third party in some form of Alternative Dispute Resolution (“ADR”). We discuss several options here.

What’s So Confusing? Olympic Rings Tattoos Now Allowed

By Squire Patton Boggs on September 9, 2024 Posted in Brand Protection, France, Marketing, Trademarks

A few paralympic champions were disqualified in the past on the ground that the famous Olympic rings they had tattooed on their bodies could be seen during the competitions and this was forbidden by the rule set out by the International Paralympic Committee. The Olympic rings have been registered as trademarks in many countries and generate substantial revenue, and the rule was said to be justified due to a “risk of confusion” – a concept well-known to trademark specialists. The rule against those with Olympic Rings tattoos nonetheless raised many questions and the ban was lifted right before the beginning of the Paris Paralympic Games. Our French attorneys explain why this use of a registered trademark raised questions and some lessons to be learned from the actions of the Paralympic Committee actions. Check out the full post on our Sports Shorts blog here.

A New Era for Consumer Law and Regulation

By Carlton Daniel, Tatiana Siakka and Ailin O'Flaherty on September 5, 2024 Posted in Advertising, Competition and Markets Authority, Consumer Law, Europe, Internet, Marketing, Subscriptions, Technology, UK

Consumer law and regulation has been thrusted into the limelight in recent months. The main reason for this is the introduction of the Digital Markets, Competition and Consumers Act (DMCC Act), which received Royal Assent on 24 May 2024. The changes introduced by the DMCC Act are significant and will result in both increased consumer rights protection, and a strengthened enforcement process which seeks to crack down on unfair practices. As a result, the regulatory risk in the business-to-consumer space is likely to rise quite significantly.

Part II: You’ve Got Patents! Or Someone Else Does… What are the Opportunities for Settlement Once They’re Asserted?

By Tamara Fraizer on August 27, 2024 Posted in Designs, Intellectual Property, IP Litigation, Life Sciences Biotech Pharma, Patent Litigation, Patents, Technology

As noted in our related blog, only a small percentage of issued patents are ever asserted to be infringed with the filing of a lawsuit, even when infringed. Why? Because patent litigation is notoriously expensive and it’s risky for patent owners, as patent challengers more-often-than-not win and can invalidate the patent claims. Despite the costs and the risks, patent litigation is not ― as many may think ― akin to boarding a runaway train. Rather, patent litigation often serves as a mechanism for parties to spar and evaluate the patent rights, as well as each other, prior to making the business agreements that settle such disputes.

So what do litigants need to know about the interface between litigation and its settlement? Understanding the stages of patent litigation, as discussed in our related blog, is essential. As discussed here, such understanding can empower litigants to proceed strategically and leverage events at the key stages of the litigation to resolve the dispute with a private settlement agreement.

Part I: You’ve Got Patents! Or Someone Else Does… What Happens When They’re Asserted?

By Tamara Fraizer on August 19, 2024 Posted in Designs, Intellectual Property, IP Litigation, Life Sciences Biotech Pharma, Patent Litigation, Patents, Technology, US

The number of patents issuing each year has increased dramatically since the Patent Act of 1952 codified US patent law — from fewer than 50,000 patents issued per year to around 350,000 patents issued per year for the last decade. Yet over the last decade, the number of patent litigations filed has fallen to fewer than 3,500 each year. By any metric, an extremely small percentage of patents are ever asserted. While cost and risk are factors, many patent owners and accused infringers shy away from patent litigation, perhaps due in part to a lack of information about its conduct and resolution. We provide here an introduction and brief overview.

What do muscles, the brain and trademarks have in common? In each case, the principle of “use it or lose it” applies

By Dr. Sandra Mueller and Christoph Krieger on August 8, 2024 Posted in Brand Protection, China, Europe, European Union Intellectual Property Office, France, Germany, Intellectual Property, Marketing, Spain, Trade Mark, Trademark Infringement, Trademarks

As trademark owners it is vital to not only use your registered trademark in a serious and thus rights-preserving manner, but also continuously take care to obtain and secure evidence of a rights-preserving use. Proof of use can become significant at various stages in the life cycle of a trademark. Focusing on revocation actions by third parties, the European General Court has recently underlined again that EU trademark law operates on the straightforward principle of “use it or lose it” and that a trademark no longer in the five-year grace period, no matter how well-known, may be vulnerable to be revoked for non-use if its owner does not provide sufficient evidence of use. Whilst well-known trademarks are also protected as non-registered trademarks, maintaining trademark registrations is crucial for efficient enforcement by national courts and public authorities such as customs and the police. This blog should serve as a crisp reminder for trademark owners on why proof of use having ready can be decisive for the protection of your brand.

U.S. Olympic & Paralympic Committee Suing U.S. Beverage Company Over Trademark Infringement

By Marisol Mork and Lauryn Durham on August 2, 2024 Posted in Advertising, Brand Protection, Competition and Markets Authority, IP Litigation, Marketing, Social Media, Trade Mark, Trademark Infringement, Trademarks, US

The Summer 2024 Olympics in Paris are underway and while millions of eyes are on the games, the United States Olympic & Paralympics Committee (“USOPC”) has its eyes peeled for trademark infringers.

The USOPC serves both the National Olympic Committee and National Paralympic Committee for the U.S. and is responsible for the training and funding of the U.S. Olympic, Paralympic, Youth Olympic, Pan American and Parapan American teams. It owns numerous trademarks, the licensing of which is critical for its funding of the U.S. Olympic Team.

The USOPC recently sued US beverage company Prime Hydration (“Prime”) for alleged trademark infringement in the United States District Court for the District of Colorado. According to the USOPC’s complaint, Prime used Olympic-related terms and trademarks such as “OLYMPIC,” “OLYMPIAN,” “TEAM USA,” and “GOING FOR GOLD” on beverage product packaging, internet and in store advertising and social media promotions without the USOPC’s consent. Pursuant to the Ted Stevens Olympic and Amateur Sports Act, 36 U.S.C. § 220506 (the “Ted Stevens Act”), the USOPC has exclusive rights to commercially exploit certain marks and symbols related to the Olympics in the United States, including the symbol of the IOC, “consisting of 5 interlocking rings,” the word “Olympic,” and “any trademark, trade name, sign, symbol, or insignia falsely representing association with, or authorization” by the IOC, “the International Paralympic Committee, the Pan-American Sports Organization, or the [USOPC].”

Like a Tree Falling that No One Hears: AI-generated Disclosures Have the Potential to Block Patentability of Human Ingenuity

By Malisheia Douglas on July 19, 2024 Posted in Artificial Intelligence, Cybersecurity, Patent Litigation, Patents, Technology, US

The U.S. Patent and Trademark Office continues to seek stakeholder input on AI-generated disclosures and patentability. Earlier this year, USPTO issued a public Request for Comment on the impact of artificial intelligence on prior art, the known understanding of a person of ordinary skill and how this effects patentability, specifically novelty and obviousness of a claimed invention. Additionally, the Office is hosting a listening session on these topics virtually and in person later this summer. The inquiries are significant and potential rule changes at the USPTO could completely upset the apple cart. In short, if AI-generated prior art is deemed known to the person of ordinary skill and can be used to destroy patentability, the role of novelty and non-obviousness from a human perspective may be minimized. We explore here the potential consequences of AI for our assessments of human invention.

The Impact of AI on Prior Art

AI can be used to explore multiple seemingly infinite permutations of inventive concepts. If AI-generated permutations that pre-date what would otherwise be a patentable invention are deemed to be prior art, the potential for patenting of human ingenuity may be whittled away.