Posts Tagged: "patentability requirements"

Federal Circuit Says Narrowing Limitation Does Not Create a Contradiction Leading to Indefiniteness

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today reversing the Western District of Texas district court’s indefiniteness analysis and explaining that it improperly found a contradiction between two claim limitations to arrive at its indefiniteness holding. Amperex Technology Limited filed an action seeking declaratory judgment of noninfringement and challenged the validity of certain claims of Maxell, Ltd.’s U.S. Patent No. 9,077,035 for a rechargeable lithium battery and Maxell asserted infringement of the patent in a separate action. The two actions were consolidated in the Western District of Texas and the court ultimately held that two of the “wherein” clauses of the sole independent claim 1 of the ‘035 patent contradicted one another.

Rader’s Ruminations – Patent Eligibility, Part 1: The Judge-Made ‘Exceptions’ are Both Unnecessary and Misconstrued

In supreme irony, the U.S. Supreme Court lists the three exceptions to statutory patent eligibility in Chakrabarty, Diamond v. Chakrabarty, 447 U.S. 303 (1980) — the case most famous for the observation that Thomas Jefferson’s statutory language from the 1793 Act (still in place today) covers “anything under the sun made by man.” Id. at 309. While construing Jefferson’s “broad” statutory language in 35 U.S.C. 101 with “wide scope,” the Court noted: “The laws of nature, physical phenomena, and abstract ideas have been held not patentable.” Id. The Court tries to support this listing with a string citation to several cases — each standing for something different than an exception from statutory language. Still, to ensure clarity, the Court gives examples: “a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter.” Likewise, Einstein could not patent his celebrated law that E=mc2, nor could Newton have patented the law of gravity.”  Id. So far so good, but this classic example of the Court trying to sound informed and competent out of its comfort zone reemerges 30 years later to replace (and effectively overrule) the statutory rule that governed for over 200 years and remains in Title 35.

USPTO Issues Updated Obviousness Guidance Tracing 15 Years of Case Law Following KSR

On February 27, the U.S. Patent and Trademark Office (USPTO) published a notice in the Federal Register providing updated guidance for agency decision-makers on making proper determinations of obviousness under the U.S. Supreme Court’s 2007 ruling in KSR International Co. V. Teleflex Inc. While the USPTO’s examiner guidance doesn’t constitute substantive rulemaking, it traces 15 years of case law from the U.S. Court of Appeals for the Federal Circuit to clarify several areas of confusion stemming from the Supreme Court’s calls for a flexible approach to the obviousness analysis for patent validity.

USPTO AI Guidance Reiterates DABUS Decision

The U.S. Patent and Trademark Office (USPTO) today released guidance for determining inventorship of artificial intelligence (AI)-assisted inventions. As the Office has previously stated, the guidance clarifies that “while AI-assisted inventions are not categorically unpatentable, the inventorship analysis should focus on human contributions, as patents function to incentivize and reward human ingenuity.” The USPTO issued a call for comments on AI inventorship in February 2023. That Federal Register Notice (FRN) asked the public to respond to 11 questions, including “how does the use of an AI system [in the invention process]…differ from the use of other technical tools”; whether AI inventions may be patentable under current patent laws on joint inventorship by, for example, simply listing the natural person involved in inventions created by AI machines; and whether statutory or regulatory changes should be made to better address AI contributions to inventions.

The UK Supreme Court DABUS Decision: The End or Just a Bump in the Road for AI Inventors?

As reported on IPWatchdog, the UK Supreme court recently ruled that a trained neural network (an Artificial Intelligence known as DABUS) could not be listed as the inventor on two patent applications filed by Dr. Stephen Thaler at the UK Intellectual Property Office (UKIPO). As a result, the two applications were treated as withdrawn for failing to comply with the requirements of the UK Patents Act 1977. This not a surprising decision for reasons that will be set out below, and it is consistent both with the earlier UK court decisions, and with the decisions of other jurisdictions around the world where Dr. Thaler has argued his case. The decision has, however, sparked interest in the questions of artificial intelligence and its ability both to “autonomously” devise inventions and to subsequently own them.