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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.

Court Decision Corrects Time Window For Copyright Damages Accrual

In Warner Chappell Music, Inc. v. Nealy, the U.S. Supreme Court recently affirmed an Eleventh Circuit Court of Appeals ruling that allows plaintiffs to recover full damages for copyright infringement if discovery of the infringement occurred within three years of suit, regardless of when the infringement occurred. This decision corrects a contrary view by the Court of Appeals for the Second Circuit that had resulted in a split of authority with the allowed damages period depending on the particular judicial circuit in which the infringement suit was filed. The Supreme Court resolved the circuit split in favor of the expanded potential scope of recoverable damages.

Federal Circuit Clarifies Printed Matter Doctrine in Claim Interpretation of Electronic Communications

In IOEngine, LLC v. Ingenico Inc.[1], the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed in part the U.S. Patent Trial and Appeal Board's (PTAB) Final Written Decisions in several Inter Partes Reviews (IPR) finding anticipation under 35 U.S.C. § 102 of various claims of U.S. patents relating to a tunneling client access point (TCAP) that is a "highly secure, portable, power efficient storage and data processing device." The CAFC concluded that the PTAB erred as a matter of law by incorrectly applying the printed matter doctrine to accord no patentable weight to certain limitations reciting "encrypted communications" and "program code." In correcting the PTAB's legal error, the CAFC made clear that "[p]rinted matter encompasses what is communicated—the content or information being communicated—rather than the act of a communication itself."

USPTO Proposes Draconian Rule Change Affecting Terminal Disclaimer Filings in Response to Obviousness-type Double Patenting Rejections

The USPTO is proposing a drastic change to the rules surrounding the use of terminal disclaimers to overcome non-statutory obviousness-type double patenting rejections. The proposed rule change would make it mandatory that for any terminal disclaimer to be accepted, it must include an agreement that the patent in which the terminal disclaimer is filed will be automatically unenforceable if the patent is tied, or has ever been tied, to another patent by one or more terminal disclaimers in which: 1) any claim has been finally held unpatentable or invalid under 35 USC §§ 102 or 103 (by a federal court or by the USPTO), and all appeal rights have been exhausted, or 2) a statutory disclaimer has been filed after the validity of the claim is challenged based on anticipation or obviousness.

John Osha Speaker at FICPI in Edinburgh

John Osha addressed the challenges and issues surrounding AI and Intellectual Property Law in an engaging presentation at the FICPI ABC Meeting held in Edinburgh, Scotland.

Uruguay Is on the Verge of Joining the PCT

Have you ever looked at a world map and wondered how it is possible that there are still countries that are not part of the PCT? Great news: Uruguay is on the verge of joining the PCT.Last year, in July 2023, the Executive branch of the Uruguayan government submitted a bill to the Uruguayan Parliament for accession to the PCT. Recently, on June 4th, 2024, the Uruguayan Chamber of Deputies unanimously approved the bill. On June 11th, 2024, the Uruguayan Senate unanimously ratified this bill.

How Using Amazon's Patent Enforcement Program (APEX) Can Lead You to Court in the Accused Infringer's Home State.

In May 2024, the Court of Appeals for the Federal Circuit held in SnapRays v. Lighting Defense Group, that a patent owner's use of Amazon's APEX program against an accused infringer gave rise to personal jurisdiction over the patent owner in the district where the accused infringer resided. This case is a reminder to patent owners and accused infringers alike to be strategic in all forms of patent enforcement and defense in the U.S., and to keep in mind not only the advantages but also potential disadvantages of utilizing third-party non-judicial enforcement programs.

Federal Circuit Abandons Long Standing Legal Test for Obviousness of Design Patents

In LKQ Corp. v. GM Global Tech. Operations LLC, the Court of Appeals for the Federal Circuit ("CAFC") or "Federal Circuit") overruled the existing Rosen-Durling test for analyzing obviousness of design patents. That test required that the primary reference must (1) be "basically the same" as the challenged design claim and (2) that any secondary references must be "so related" to the primary reference that features in one would suggest application of those features to the other. In place of the Rosen-Durling test, the Federal Circuit's new, more flexible approach is more consistent with the statutory scheme for obviousness of utility patents. The LKQ Court noted that, "[a]s with any change, there may be some degree of uncertainty for at least a brief period, [] our elimination of the rigid Rosen-Durling test is compelled by both the statute and Supreme Court precedent." This decision will likely make obviousness rejections more common, and design patents harder to obtain, as examiners have greater flexibility in establishing primary references and combining the primary references with secondary references. Additionally, this decision will likely make invalidating existing design patents easier as a wider array of prior art will be available to challengers.

WIPO Member States Approve New Treaty on Genetic Resources and Traditional Knowledge

On May 24, 2024, the WIPO member states approved a new treaty titled, "TREATY ON INTELLECTUAL PROPERTY, GENETIC RESOURCES AND ASSOCIATED TRADITIONAL KNOWLEDGE." The first new WIPO treaty in more than a decade, this approval marks the culmination of efforts that began with a proposal by Columbia in 1999 and continued through lengthy negotiations within WIPO since 2001. Negotiations had been difficult because while some states considered this treaty to be an important step toward protecting local genetic resources and traditional knowledge of indigenous people and communities, other parties considered the proposed requirements to be unduly burdensome on patent applicants and argued the Nagoya Protocol, the current definition of prior art, and existing requirements such as the duty of disclosure in the United States Patent Office already address these concerns. Ultimately, the language of the treaty as approved is a compromise that reflects these differing views.

USPTO Requests Input on the Impact of AI on Prior Art and Level of Knowledge of the Skilled Person in the Art

On April 30, 2024, the United States Patent and Trademark Office (USPTO) published a Request for Comments (RFC) regarding the impact of the proliferation of artificial intelligence (AI) on prior art, the knowledge of a person having ordinary skill in the art (PHOSITA), and determinations of patentability made in view of the foregoing. In this article we provide context for the questions asked in the RFC and ask our readers to provide input on a selection of the questions from the RFC via a survey.

An Example of the Motivation to Combine Requirement in Obviousness Determinations

In Virtek Vision International ULC v. Assembly Guidance Systems, Inc. [1], the United States Court of Appeals for the Federal Circuit (CAFC) reversed the Patent Trial and Appeal Board's (PTAB) determination that various claims of U.S. Patent No. 10,052,734 were unpatentable under AIA 35 U.S.C. § 103. The CAFC concluded that the PTAB erred as a matter of law with respect to how the "motivation to combine" doctrine was applied. In particular, although PTAB's rationale focused on a "finite number of identified predictable solutions" in satisfaction of criterion supplied by the U.S. Supreme Court in KSR Int'l Co. v. Teleflex Inc. [2], the CAFC asserted that the recognition of finite alternative arrangements by itself is not sufficient to meet the motivation to combine requirement.