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

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.

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Great Expectations! New EU Design Law to Come into Force Soon  

For many years, it has been possible to obtain registered IP protection for the designs of products that have visual appeal in the Member States of the EU. Separately, this is also the case in the UK. The resulting registered industrial design rights have become a valuable and powerful legal tool in every company’s IP strategy although this form of protection is still underused by many companies.

After more than twenty years, the industrial design protection system in the EU was ready for a revamp to make design protection in the digital age more efficient, affordable and future proof (we had commented on the draft proposals adopted by the EU Commission on this blog here). The long-awaited new EU Design Regulation and Directive are now expected to be formally adopted by the EU Council and published shortly. The new EU Design Regulation will then enter info force after four months, and EU Member States will have three years to transpose the Directive into their national laws. In this blog, we will focus on the key changes introduced by the new law.

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UK Supreme Court Rules on Personal Liability for Assisting Trade Mark Infringement

On 15 May 2024 the UK Supreme Court handed down its judgement in the case of Lifestyle Equities v Ahmed (Lifestyle Equities C.V. and another (Respondents) v Ahmed and another (Appellants) – The Supreme Court) clarifying the law on the personal liability of individuals who (unknowingly) assist another (the Primary Infringer) to infringe a registered trade mark and raising the bar for trade mark owners looking to pursue such personal liability claims.

Background

Whilst the hearings which preceded this case involved a number of different trials and parties, the basic facts relevant to this Supreme Court judgment were relatively straightforward: between 2008 to 2018 Hornby Street Limited (the Company) had sold, mainly to retailers in the UK, clothing bearing various “Santa Monica Polo Club” logos. Lifestyle Equities are the owners of a various registered trade marks for “Beverely Hills Polo Club” in the category of clothing and successfully pursued trade mark infringement proceedings against the Company on the grounds of a confusing similarity between its registered trade marks and the “Santa Monica Polo Club” logos used by the Company.

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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.

Background

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.

Background

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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