Posts Tagged: "Patentability"

Can AI Prompts Be Patented? Don’t Be Too Quick to Dismiss this Question

Recent debates about AI patentability have focused on whether the outputs of an AI system, such as a neural network, can be patented. Such debates have been spurred not only by recent general advances in the power of AI but also by Dr. Stephen Thaler’s “Artificial Inventor” project’s attempts to obtain patents on devices generated using his neural network-based DABUS software. If you thought that whether an AI-generated output can be patented is a cutting-edge question, then consider whether an input to an AI system, such as a prompt to a large language model (LLM), can be patented.

EPO Enlarged Board of Appeal Introduces Strong Presumption of Priority Entitlement

The Enlarged Board of Appeal of the European Patent Office (EPO) on October 10 issued its (consolidated) decision G1/22 & G2/22, which promises to significantly reduce priority issues for applicants—U.S.applicants in particular. When the applicants for a European patent application differ from the applicants on the priority application, the EPO employs the well-established “joint applicants approach” to evaluate the priority claim’s validity. For the priority claim to be valid, and assuming there’s been no transfer of the priority right, all applicants of the priority application must also be among the applicants of the subsequent European patent application. The table below outlines various scenarios and indicates whether the priority claim is valid according to the joint applicants approach.

Amici for IP and Auto Industries Tell Full CAFC to Stick with What Works on Design Patents

Late last week, more than half a dozen amicus briefs were filed in support of GM Global Technology Operations in a case that is set to potentially shake up design patent law. The latest briefs generally urged the en banc U.S. Court of Appeals for the Federal Circuit (CAFC) to keep the law as is in order to avoid major disruptions. In June of this year, the CAFC granted a rare en banc review of its January, 2023, decision in LKQ Corporation v. GM Global Technology Operations, which affirmed a Patent Trial and Appeal Board (PTAB) ruling that LKQ failed to show by a preponderance of the evidence that GM’s design patent was anticipated or would have been obvious.

Is the United States’ Nonobviousness Test ‘Plausibly’ Similar to the EPO/UK Inventive Step Standard?

Recent cases in the European Patent Office (EPO), the UK, and United States illustrate substantive differences between these jurisdictions as they continue to develop their inventive step/nonobviousness frameworks. In particular, the EPO and UK have recently provided guidance on a concept known as “plausibility,” i.e., whether the scope of the patent must be justified by the patentee’s technical contribution to the art in solving an identified problem. “If it is not plausible that the invention solves any technical problem then the patentee has made no technical contribution and the invention does not involve an inventive step.” Sandoz Limited v. Bristol-Meyers Squibb Holdings [2023] EWCA Civ 472. That standard, however, is quite dissimilar from the United States’ statutory standard of whether “the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious…”

Meeting Marvels: The Value and Necessity of Invention Disclosure Meetings

The single best tool available to increase patent value and decrease patent costs is not directed to application drafting or patent prosecution or law firm selection. Instead, it occurs much earlier in the process. The best tool is meeting with inventors. When I was outside counsel and I received a new application to draft, the very first thing I did was set up a meeting with the inventors. As in-house counsel, when I receive a new invention submission, I do the same. It does not matter if the invention is simple, non-enabling, or incomplete. It does not matter if the inventor is familiar, experienced, or knowledgeable. It does not matter if we meet in person, by phone, or by video. For every invention, we meet.