Marcia Ramos Chang

Great article by Marisa Woutersen at WIPR - World IP Review on Nvidia's rise to be the world's most valuable company. She looks at the relevance of their patent portfolio and compares Nvidia's patent portfolio with other Big Tech companies. The article is behind a paywall but my key takeaways are: - It's very difficult to compare a company like Nvidia that basically has one product (monster graphics cards - yes I know they do a bit more) and tech companies like Samsung who have 100s of products. Inevitably Samsung has way more patents. - AMD is probably their most similar competitor, and Nvidia is ahead here in terms of overall patent filings. - Nvidia is clear playing catch-up with patent filings. They have more pending applications than any other company listed. This suggests there is a realisation that the patent portfolio hasn't kept pace with the company value. Of course, it might also reflect the fact that the suddenly have a lot more cash! - Clearly the value in the portfolio will depend on what and where they invest. The article notes that while AI applications represent core value, where else they invest to diversify beyond AI will be key. The brilliant charts in the article provided by Andrew Samm at Patently. EIP - Better, different.

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I’m interested in how AI is impacting law practice. The U.S. Patent and Trademark Office has issued guidance on how to determine inventorship when AI was involved in creating the invention. In 2022, in Thaler v. Vidal, the Federal Circuit held that “only a natural person can be an inventor, so AI cannot be.”  So, how can something developed by AI be patented? ·      The guidance reaffirms the Federal Circuit decision: Named inventors must be “natural persons.” A non-human, such an AI system, cannot be listed as inventor, even if it was “instrumental” in creating the invention. ·      A person named as inventor must make a “significant contribution” to any AI-assisted invention. ·      This is determined by existing inventorship law: The inventor must contribute in some significant way to the invention’s conception or reduction to practice. ·      USPTO gives an example: A person who merely 1) recognizes the need for a new design to solve a specific problem, 2) prompts an AI system to create a design, and 3) reviews the design outputted by the AI system, has not made a significant contribution. ·      On the other hand, a significant contribution “could be shown by the way the person constructs the prompt in view of a specific problem to elicit a particular solution from the AI system.” ·      These distinctions could be difficult to make in practice. It will be interesting to see how this plays out in real world examples as AI develops and its use in creating inventions increases. ·      The USPTO guidance tells us that inventors using AI should be prepared to demonstrate, with supporting documentation, the specific things they did to contribute to the invention and how AI was used to assist. https://lnkd.in/g6gx_eTV #artificialintelligence #technology #AI

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專利授權作業最重要的議題是取得Claim Chart與Sales Figures，傳統作業流程需要配置許多人力（橘色框內容），導入軟體與AI工具（白色框內容），能大量加速取得Claim Chart與Sales Figures，重新定義專利資產價值。 The most critical issues in patent licensing operations are obtaining Claim Charts and Sales Figures. The traditional workflow requires allocating significant human resources (content in orange boxes). Introducing software and AI tools (content in white boxes) can greatly accelerate the acquisition of Claim Charts and Sales Figures, redefining the value of patent assets.

If you’re interested in how advances in AI are impacting intellectual property law and the creation of new IP, I recommend this article by Marc Vockell at The University of Texas System. It is well written and a great place to start on this topic. https://lnkd.in/gqqivjWp #artificialintelligence #technology #AI

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SB 1047 was a step toward complete AI regulation but failed due to its inherent problems where developers of models are burdened to implement requirements under Section 22603 (b). Overall, I believe the requirements would have created a barrier for companies to enter the AI space, and existing developers of models would have had to comply with high standards, which would come at a cost that not everyone can afford, thereby leading to the stifling of innovation. That being said, it's important that the legislators genuinely see the value technology has brought to the valley while promoting Responsible AI to achieve true AI Regulation. Feel free to share your thoughts—whether you agree or disagree.

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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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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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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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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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Following the recent US Supreme Court case, Nvidia Corp. v. E. Ohman J:or Fonder AB, WilmerHale Partners Michael Bongiorno and Timothy Perla, and Counsel Sonia Sujanani discuss its potential impact on motions to dismiss in securities class actions in a Law360 expert analysis.

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I want to meet the 𝐆𝐞𝐧𝐢𝐮𝐬 behind Claim 9! 🤣 I recently stumbled upon patent application US20040161257A1 assigned to 𝐓𝐨𝐬𝐡𝐢𝐛𝐚 𝐂𝐨𝐫𝐩, and I can't help but be amused by Claim 9. 𝐂𝐥𝐚𝐢𝐦 9 states: The method of providing user interface displays in an image forming apparatus 𝐰𝐡𝐢𝐜𝐡 𝐢𝐬 𝐫𝐞𝐚𝐥𝐥𝐲 𝐚 𝐛𝐨𝐠𝐮𝐬 𝐜𝐥𝐚𝐢𝐦 𝐢𝐧𝐜𝐥𝐮𝐝𝐞𝐝 𝐚𝐦𝐨𝐧𝐠𝐬𝐭 𝐫𝐞𝐚𝐥 𝐜𝐥𝐚𝐢𝐦𝐬, 𝐚𝐧𝐝 𝐰𝐡𝐢𝐜𝐡 𝐬𝐡𝐨𝐮𝐥𝐝 𝐛𝐞 𝐫𝐞𝐦𝐨𝐯𝐞𝐝 𝐛𝐞𝐟𝐨𝐫𝐞 𝐟𝐢𝐥𝐢𝐧𝐠; 𝐰𝐡𝐞𝐫𝐞𝐢𝐧 𝐭𝐡𝐞 𝐜𝐥𝐚𝐢𝐦 𝐢𝐬 𝐢𝐧𝐜𝐥𝐮𝐝𝐞𝐝 𝐭𝐨 𝐝𝐞𝐭𝐞𝐫𝐦𝐢𝐧𝐞 𝐢𝐟 𝐭𝐡𝐞 𝐢𝐧𝐯𝐞𝐧𝐭𝐨𝐫 𝐚𝐜𝐭𝐮𝐚𝐥𝐥𝐲 𝐫𝐞𝐚𝐝 𝐭𝐡𝐞 𝐜𝐥𝐚𝐢𝐦𝐬 𝐚𝐧𝐝 𝐭𝐡𝐞 𝐢𝐧𝐯𝐞𝐧𝐭𝐨𝐫 𝐬𝐡𝐨𝐮𝐥𝐝 𝐢𝐧𝐬𝐭𝐫𝐮𝐜𝐭 𝐭𝐡𝐞 𝐚𝐭𝐭𝐨𝐫𝐧𝐞𝐲𝐬 𝐭𝐨 𝐫𝐞𝐦𝐨𝐯𝐞 𝐭𝐡𝐞 𝐜𝐥𝐚𝐢𝐦. I mean, who thought this was a good idea? It’s almost like they were trying to test if anyone was paying attention! 😂 𝐋𝐨𝐨𝐤𝐢𝐧𝐠 𝐟𝐨𝐫 𝐬𝐨𝐦𝐞𝐨𝐧𝐞 𝐭𝐨 𝐞𝐧𝐬𝐮𝐫𝐞 𝐲𝐨𝐮𝐫 𝐩𝐚𝐭𝐞𝐧𝐭 𝐜𝐥𝐚𝐢𝐦𝐬 𝐚𝐫𝐞𝐧’𝐭 𝐢𝐧𝐭𝐞𝐧𝐭𝐢𝐨𝐧𝐚𝐥𝐥𝐲 or 𝐮𝐧𝐢𝐧𝐭𝐞𝐧𝐭𝐢𝐨𝐧𝐚𝐥𝐥𝐲 𝐜𝐨𝐦𝐞𝐝𝐢𝐜? 😂 As an experienced patent drafter, I specialize in crafting well-structured, precise, and powerful claims that won’t leave your reviewers scratching their heads or laughing out loud. #PatentDrafting #PatentProsecution iProlific

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🤖📜Breaking news in the world of AI regulation! 🤖📜 California Governor Gavin Newsom has vetoed SB 1047, which aimed to impose safety regulations on large-scale AI models, but signed AB 2013 into law, requiring transparency from generative AI developers. The future of AI regulation in California remains dynamic, as this decision will influence both developers and regulators. ⚖️🔍 Thank you to my co-authors for their insights and contributions on this topic: Leigha Beckman, Minna Naranjo , and Andrew Gray! 🙌💡 Read the full article for more details on what this means for AI safety and transparency moving forward. 🚀🤝 #AI #AIsafety #GenerativeAI #Transparency

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Dion Bregman is way better at using emojis than I am, so a re-post it is! Check out this article for insights into some California AI bills that were passed / vetoed over the weekend. And, if you're in the GenAI space, make sure you know what public disclosures you may need to make by January 2026! #wearemorganlewis

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Click below to download our Alert about a recent Federal Circuit decision that gives design patent challengers more flexibility to frame their obviousness theories. John Evans Vishal Khatri #intellectualproperty #patentlaw

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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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🚨 Patent rendered unenforceable due to USPTO typo! 😱 Court dismisses infringement claims over a simple '267' vs '268' error in terminal disclaimer. Proofreading has never been more crucial in patent law. #PatentLaw #IPLitigation

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