CNIPA Issues Draft Amendments to Patent Examination Guidelines Focusing on Emerging Technologies and Practical Examination Issues
On April 30, 2025, the China National Intellectual Property Administration (CNIPA) released Draft Amendments to the Patent Examination Guidelines (Comment Draft). The Comment Draft introduces revisions that reflect CNIPA's response to developments in emerging technologies targeting AI and video codec sectors as well as certain practical examination issues. Some key proposed changes are as follows:
Federal Circuit Drives Another Nail into Patent Owners' Coffins in Ingenico v. IOENGINE
In what has to rank as one of the most anti-patent owner decisions of the U.S. Court of Appeals for the Federal Circuit in recent years, the court held that "IPR estoppel does not preclude a [failed IPR] petitioner from relying on the same patents and printed publications as evidence in asserting a ground [of invalidity at a subsequent district court trial] that could not be raised during the IPR." In resolving a sharp split of district court authority on the scope of Inter Partes Review (IPR) estoppel under 35 U.S.C. § 315(e)(2) in favor of accused infringers and patent validity challengers, the Federal Circuit has again substantially devalued patents and the intellectual property of all patent owners. Some new ways to "game the system" created and approved by the court in Ingenico are all too easily seen, while clever counsel representing accused infringers will surely conjure others not immediately apparent.
Patent Agent Advancement
A physicist turned Patent Engineer. A seismic chief R&D advisor turned Patent Agent. An R&D engineer turned Patent Attorney and Partner. These are just a few examples of the career transitions made possible by the Osha Bergman Watanabe & Burton (OBWB) Intellectual Property Training Program (IPTP).
The Geographic Coverage of European Patents Keeps Growing
Through a single European patent application filed with the European Patent Office (EPO) and undergoing a single examination process, inventors and businesses now can obtain patent protection in no less than 46 countries. This is the result of a recent agreement between the European Patent Organization and a Southeast Asian country located a long way from Europe: Laos. The geographic coverage of European patents continues to grow on a global scale and this growth shows no signs of stopping since another agreement was recently signed with Costa Rica.
Copyrightability of Outputs Generated by AI Systems
The first federal copyright law was written to protect books, charts, and maps. Over time, the scope of protection provided by copyright law has expanded to protect musical compositions, graphic works, sculpture and architecture, and digital creations. This expansion has been necessitated, in part, by the development of new and widely available technologies that aid the creative process. Now, the rapid progress of Artificial Intelligence ("AI") technologies and the proliferation of AI-generated media has motivated new inquiries into the types of content that may be protected by copyright law.
Limiting Head Starts, Broadening Disgorgement: Key Takeaways from AMS-OSRAM v. Renesas
The U.S. Court of Appeals for the Federal Circuit recently issued a significant opinion in AMS-OSRAM USA Inc. v. Renesas Electronics America, Inc., clarifying important aspects of trade secret remedies applying Texas trade secrets law. While grounded in a long-running dispute over ambient light sensor technology to adjust screen brightness, the court's opinion provides broadly applicable guidance on reverse engineering, head-start damages, and dual-track recovery under misappropriation and breach of contract theories.
Prosecution Disclaimer in Patent Families
The recent case of Maquet Cardiovascular LLC v. Abiomed Inc. examined the application of prosecution disclaimer and its effect on the interpretation of claims in descendant patents. In patent law, the doctrine of prosecution disclaimer plays a critical role in claim interpretation by limiting the scope of a patent based on statements made by the applicant during prosecution. When a patent applicant clearly and unmistakably disavows certain claim scope to overcome prior art or to distinguish their invention, courts may construe the claims narrowly in accordance with those statements. This legal principle ensures consistency and fairness by preventing patent owners from asserting broader rights in litigation than what was represented to the U.S. Patent and Trademark Office (USPTO) during examination. Understanding prosecution disclaimer is essential for navigating patent infringement disputes, as it directly impacts how patent claims are interpreted and enforced.
Suspension of Expedited Examination of US Design Patent Applications
On April 14, 2025, the United States Patent and Trademark Office (USPTO) announced the suspension of Expedited Examination for Design Patent Applications ("Rocket Docket"), effective April 17, 2025. The stated purpose of the decision is to address growing backlogs and challenges associated with the Rocket Docket system. The Rocket Docket system provided for expedited examination of design patent applications. Average wait time for regular, non-expedited applications is 15 months, or more. The Rocket Docket system reduced this examination pendency to less than 6 months in most instances, upon payment of the requisite fees and submission of detailed —and often quite laborious—prior art search results.
Section 337 Recently: A Big Win for Small Markets and U.S. Importers
Almost a decade after its Lelo decision, the Court of Appeals for the Federal Circuit ("Federal Circuit") clarified the domestic industry requirement of 19 U.S.C. § 1337 ("Section 337"), in favor of U.S. businesses against foreign infringers. In two recent decisions, the court explained that "small market segments can still be significant" and expenditures related to enterprise functions, like sales and marketing, are relevant to establish the existence of an industry, even in the absence of manufacturing practice.
Moderna mRNA Vaccine Claims Invalidated – A Legal Battle with Potential Implications for Future mRNA Vaccine Development
Without exaggeration, messenger ribonucleic acid (mRNA) vaccines can be considered a breakthrough development which during the COVID-19 pandemic turned Moderna's, Pfizers's, and BioNTech's vaccines into household names. The benefits and the future potential of mRNA vaccine technology are undisputed and go far beyond the COVID-19 vaccines. Not surprisingly, vaccine developers attempt to obtain maximum protection for the intellectual property associated with their research efforts. While this may be in the interest of the owner of the intellectual property, it may impede related efforts by other players.
