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The collective expertise of our global team distinguishes OBWB in the field of Intellectual Property Law. We align our best resources to meet each client's specific needs and we treat each matter with the highest degree of attention and care.

Newsletter Archive Links

USPTO's Updated Guidance for Making an Obviousness Determination

In late February, the United States Patent and Trademark Office (USPTO) issued an update to the current guidance to examiners in making obviousness determinations. The five-point guidance emphasizes the flexible approach to determining obviousness in light of the U.S. Supreme Court's decision in KSR Int'l Co. v. Teleflex Inc. (KSR). The update is based on a review of several cases from the past ten years of post-KSR America Invents Act (AIA) law.

Specification Support for Numerical Range Endpoints

In RAI Strategic Holdings, Inc. v. Philip Morris Products S.A., the U.S. Court of Appeals for the Federal Circuit recently vacated a PTAB determination that a claim phrase specifying a numerical range lacked written description support under 35 U.S.C. § 112. The Court held that the PTAB's determination was not supported by substantial evidence. This decision reinforces the existing legal standard that a claimed numerical range may be implicitly supported in the specification considering the knowledge of a person having ordinary skill in the art, rather than being expressly supported by actual written description.

A Cautionary Tale of Language Used in Prosecution History

The U.S. Court of Appeals for the Federal Circuit recently affirmed a district court's decision of noninfringement of an International Business Machines Corporation patent based on intrinsic evidence supporting a specific claim interpretation. The claims were found to require "pre-fetching" of data for local storage and later "on-demand" retrieval even though this feature was not explicitly recited in those claims, in view of certain language in the specification and the prosecution history of the patent. Thus, the claims were not infringed. This decision highlights the importance of not only claim language, but also the language in the specification and that used during prosecution.

Can Inventions Made Using Artificial Intelligence Be Patented?

On February 13, 2024, the USPTO published its much-anticipated guidance on inventorship for AI-assisted inventions with immediate effect. This guidance, issued pursuant to President Biden's Executive Order on AI issued in October 2023, clarifies how the USPTO will analyze inventorship of inventions made by humans with the use or assistance of AI and explains how this may impact other areas of patent practice. The USPTO has also issued examples demonstrating how the new guidelines should be applied in practice and is seeking public comments on the guidance as well as the examples.

USPTO Updates Guidance on Enablement

In 2023, the U.S. Supreme Court affirmed invalidity of two Amgen patents based on a lack of enablement for broad genus claims that would potentially encompass millions of antibodies. The Court explained that Amgen's teaching of how to make and use their invention was little more than research assignments, and therefore requires undue experimentation to arrive at the breadth of the claims. In January of 2024, the USPTO updated its guidelines for assessing compliance with the enablement requirement based on the Amgen decision.

Great Concepts, LLC v. Chutter, Inc.: A "Green-Light" for Fraud?

In Great Concepts, LLC v. Chutter, Inc., the U.S. Court of Appeals for the Federal Circuit (CAFC) held that the Trademark Trial and Appeal Board (TTAB) is authorized to cancel the registration of a mark if the "registration was obtained fraudulently," but is not authorized to cancel the registration if the incontestability status of the mark is "obtained fraudulently."

Masimo vs. Apple – Important Considerations Regarding the International Trade Commission

Exemplified by the recent dispute between Masimo and Apple regarding Apple's Series 9 and Ultra 2 watches, the U.S. International Trade Commission (ITC) is an important venue that deserves consideration by those seeking to enforce their intellectual property. In today's global economy, protecting intellectual property (IP) rights is paramount for businesses seeking to maintain their competitive edge. The ITC, an independent federal agency of the United States, plays a crucial role in safeguarding trade interests at the border, particularly concerning IP infringement issues. This article will delve into what the ITC is, its functions, and how it differs from federal courts in enforcing IP rights.

An Accelerated Pathway Program for Semiconductor Patents

The United States Patent and Trademark Office (USPTO) is implementing the Semiconductor Technology Pilot Program to expedite the examination of patent applications related to semiconductor manufacturing, research, and development. Under this program, which supports the CHIPS Act enacted by Congress in 2022, applications will be advanced out of turn for examination until a First Office Action is issued. The notice of Semiconductor Technology Pilot Program was published in the Federal Register on December 1, 2023.