David Rouille

The law for design patent obviousness may change in the upcoming months when a decision is issued from the Federal Circuit Court of Appeals from February 2024 en banc rehearing of LKQ Corp. v. GM Global Technology Operations LLC. Although the law has not yet changed, the application of the current law has recently changed at the United States Patent & Trademark Office (USPTO). With the use of AI-assisted searching, design patent examiners appear to be issuing more obviousness rejections under the current law. While we await any change to the law, practitioners should be prepared to address AI-assisted design patent rejections and should develop strategies for maintaining a design patent portfolio while the law and procedure evolve. Learn more about this trending IP topic from Brooks Kushman P.C. attorney Michael Turner. Read more: https://lnkd.in/epms2vAJ #designpatents #ai #intellectualproperty

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New dress code decision by Unified Patent Court's Presidium -- German patent attorneys can now wear those black robes with blue shoulder areas. Maybe the UPC didn't want that originally because it looks so similar to what the judges wear. Whatever the reason may have been, here's the text of the decision (and further below, the link to the PDF): By decision of 27 May 2024, the Presidium amended the decision on the Official Attire in the Unified Patent Court of 4 April 2023, which entered into force on 1 June 2023, by adding the following paragraph to Article 2. If a European Patent Attorney pursuant to Article 48(2) of the Agreement is also a Patent Attorney authorized to practise before a court of a Contracting Member State, he/she may wear the official attire prescribed for him/her in the court of that Contracting Member State instead of the attire prescribed for him/her by the European Patent Office. This amendment will enter into force on 24 June 2024. UPDATE on June 21: Please disregard the incorrect document title below. That one was in the original PDF published by the UPC, and the link works. Unfortunately LinkedIn does not re-scan a webpage for which it has generated a LinkedIn short link.

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Question for my Patent Geek Peers: In the last year or so, I have been faced with FOAs that make no sense in that the examiners seem to be grabbing for RCEs in a way they haven't in years past. That is, the *vibes* are that where an allowance would have been made after a NFOA previously, examiners are ignoring what would have been sufficient arguments made in the NFOA (and which they are legally required to consider) and pushing the application out a Final for which we have to do more work (and, of course, spend more money) in an RCE. Is anyone else seeing this, or have I just had a run of bad luck? Expect someone can run the stats to see if the internal incentives for examiners have changed, but for my startup and early stage clients, it is a real pain to have to go through this extra step, both for the expense and time involved. (Playing with AI Images for Algo.)

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➡️ All IP people, this is a list to follow! Mustafa Cakir, RTTP, QPIP makes a weekly wrap up of top IP posts in LinkedIn. This week I got to the list too! Easy way to keep up interesting and relevant IP topics! Thanks for sharing Mustafa!

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Many software inventions are about user interaction flows. It's good patent drafting practice to focus on method claims for these. They typically have less "clutter" than apparatus claims, and make it easy for the examiner to understand the gist of the invention. Are you on team "method claim" or team "apparatus claim"? #patentingAI #softwarepatent #UX #UI #AI #IP

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TDI adopted a rule clarifying that nonrenewals and discontinuations must be delivered in paper or noneletronic form in addition to electronically when insurers are conducting business electronically under Texas Insurance Code Section 35.004. The rule provides that “termination” referenced in Section 35.004 (requiring paper or nonelectronic delivery) includes nonrenewal, a refusal to renew, or discontinuation. Check out the adoption order: https://lnkd.in/g8wEKcpF

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A new ruling out of the Federal Circuit could drastically change how design patents are viewed and prosecuted, while opening the floodgates for invalidation proceedings against design patents. More info: 💡https://lnkd.in/gzVkCQPR. Legal analysis provided by Ashley Earle, Jeff Kersting, and Eric Robbins of FBT’s #IntellectualProperty team. #Patents #DesignPatent #IPLaw #PatentEnforcement #IPLitigation #Innovation #PatentPorfolio #USPTO #UtilityPatents

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I hope you can join me and the esteemed panelists at NYIPLA's One-Day Patent CLE Seminar, a program exploring the latest issues, trends, and legislative initiatives in intellectual property, which includes the following panel on AI and the Practice of Law: Ethical and Practical Issues of Using GenAI.

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Listen in to this podcast with our Tradespace CEO Alec Sorensen to see how we can help you with context-enabled decision making for your IP strategies. Exciting content!

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The USPTO has proposed a new rule that could significantly impact inventors seeking patent protection. The proposal introduces a steeply graduated fee system for terminal disclaimers, which are used to address non-statutory double patenting issues. While the USPTO argues that this change will make the patent examination process more efficient, it could also impose higher fees on inventors, potentially hindering innovation. As a patent practitioner, I am concerned that these changes may disproportionately impact individual inventors, small businesses, and non-profits, who are already navigating high costs in securing patent protections. The proposed fee increases seem unnecessary, especially since patent examiners can issue 103 rejections at a time. It's important for all players in the innovation ecosystem, large and small, to have access to the patent system. I encourage others in the community to voice their concerns during the public comment period. Let's ensure that the patent system continues to support innovation for all. #USPTO #Patents #USPatent #USPatentProsecution #TechLawyer Source: https://lnkd.in/grAvbiZz

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The Federal Circuit has overhauled the approach to design patent obviousness, discarding the long-standing Rosen-Durling test in favor of the more flexible Graham test used for utility patents. This decision in the LKQ Corp. v. GM Global Tech case aims to align design patent standards with Supreme Court precedent, promoting a broader and more flexible standard. While this change aims for consistency, it also introduces uncertainty for the validity of many design patents. Read more: https://lnkd.in/gQpunpnP

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📚 Read our newest IP practice tip focusing on reissue and reexamination! 💡 This month, Jason Eisenberg and Jessica J. Harrison, BSECE, MSECE, JD share invaluable insights on strategies for patent owner reexamination requests, pitfalls to avoid in reissues, and savvy tactics for requesters to protect their request documents against potential patent owner amendments and arguments. Read more: https://lnkd.in/eifPP_Qz #Reissue #Reexamination #USPTO #Patent

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An interesting case to watch. It all started in 2020 when Ikorongo Technology LLC sued Bumble Trading LLC for infringing two reissue patents. When Judge Alan Albright ruled in favor of Bumble, it was because he felt Ikorongo failed the "original patent" requirement. Ikorongo has challenged the ruling, effectively testing the original patent requirement. #OriginalPatentRequirement #FederalCircuit #Ikorongo #Bumble

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From Akin Gump Strauss Hauer & Feld LLP: Upending over 40 years of precedent, this decision is expected to have a significant impact on the landscape of obtaining and enforcing design patents. Design patent owners and challengers alike should follow post-LKQ decisions and the relevant USPTO guidance closely to understand how this more-flexible obviousness analysis will impact design patent invalidity and patentability determinations moving forward. #designpatents #uspto #intellectualproperty #obviousness #patents

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🌟 Exciting Developments in Design Patent Law 🌟 The Federal Circuit has reshaped the landscape for design patent obviousness with its recent en banc decision in LKQ v. GM. In this landmark ruling, the court overruled the previous Rosen–Durling test, offering a new framework rooted in Supreme Court precedent and aiming for greater consistency. The decision reflects a significant departure from prior rigidities, promoting a more flexible approach. While the shift may initially bring some uncertainty, it ultimately underscores the court's commitment to adaptability and statutory compliance. Read more about this pivotal decision in Marshall Gerstein partner Jeremy Kriegel’s recent post on PTABWatch.com. https://bit.ly/3xpgnA6 #DesignPatents #FederalCircuit #PatentLaw #Innovation

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