Nirav Desai

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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Earlier today, the California Privacy Protection Agency Board voted to advance the new draft CCPA regulations to formal rulemaking. We thought it might be helpful to provide a series of short high-level summary webinars on the new rulemaking topics, starting with automated decisionmaking technology (ADMT). If you missed the Board meeting, the draft ADMT rules were a source of many comments and concerns, including their impact on artificial intelligence. There can be no doubt that the ADMT regulations will generate many proposed revisions. https://lnkd.in/guW-BJPc

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Mark your calendars for Jan. 14, 2025, 10:30AM EDT. Judge Sydney Stein is allowing the audio webcasting of the oral argument in New York Times v. Microsoft, OpenAI for the motions to dismiss. It includes the DMCA claims, but not the direct infringement claims (beyond what is asserted as time-barred). You can see the scope of what defendants seek to dismiss in the link below. You need Microsoft Teams (no irony intended)! For the MS Teams call-in number, visit here: https://lnkd.in/g2PNn_m4

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The Unified Patent Court's Paris Local Division's Presiding Judge Camille Lignières has just opened the door to the equivalent of requests for judicial notice in the U.S., which parties often file between a hearing and a decision. In one of various Dexcom-Abbott cases, a hearing was held on October 30 and the decision was scheduled for December 11. On November 6, one week after the UPC hearing, the Munich I Regional Court decided a parallel case over the parent patent of the patent-in-suit in the Paris case in Dexcom's favor, holding it indirectly infringed and not likely to be invalid. Dexcom "submitted an application pursuant to R. 334.e) and 336 RoP" suggesting to the court to request post-trial briefing from the parties on what implications the German national court's decision should have. Judge Linières declared the application admissible (over Abbott's argument that the relevant statute applies only to the build-up to the hearing), but denied the motion nevertheless, considering that the relevance of a decision on a distinguishable patent and a validity finding that was merely an assessment with a view to a potential stay (as opposed to the adjudication of a full validity defense) fell short of what would have required a request for further briefing. Parties who file requests for judicial notice may still get the psychological benefit of the court being made aware of some new authority. Counsel for Dexcom: Bird & Bird's Anne-Charlotte Le Bihan. Counsel for Abbott (different entities): Taylor Wessing's Christian Dekoninck, August Debouzy's François Pochart. https://lnkd.in/g5q9TaNq

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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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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 U.S. Supreme Court has declined to revisit the scope of patent eligibility under Alice Corp. v. CLS Bank, rejecting Plotagraph Inc.’s petition. The Court's decision marks another instance where Alice's boundaries remain unclarified, leaving patent holders navigating an uncertain landscape. With Congress addressing legislative reforms, the future of patent eligibility in the digital age is a key debate. The case involving Plotagraph and Lightricks Ltd. underscores the need for software and digital tech innovators to meet the heightened standards of inventiveness required under Alice. #PatentLaw #SupremeCourt #IntellectualProperty #AlicePrecedent #Innovation #SCOTUS #USPatentLaw

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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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On June 12, 2024, the House IP Subcommittee held a crucial hearing on third-party litigation funding (#TPLF) and its impact on U.S. national security. Rep. Deborah Ross highlighted the root issue: the unfair Patent Trial and Appeal Board (#PTAB). The PTAB invalidates 84% of patents it reviews, driving contingent fee attorneys away and increasing reliance on TPLF. Without TPLF, small inventors face insurmountable barriers, further risking U.S. innovation and security as China advances in critical technologies. Acts like the bipartisan Balancing Incentive Act (#BIA) and the Restoring America’s Leadership in Innovation Act (#RALIA)are essential to truly protect U.S. inventors and innovation. Watch the hearing here: https://lnkd.in/e65nwZyi #ProtectInventors #FixPTAB #InnovationMatters

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The latest update from the USPTO on inventorship for AI-assisted inventions provides crucial guidance that clarifies subject matter eligibility, especially under the Alice/Mayo test. With expanded examples and streamlined processes, this update is essential reading for anyone navigating patent law—from inventors and practitioners to examiners. Read more in this article authored by Arjun P. and Gary Sorden for Bloomberg Law. https://lnkd.in/epd5vdfa #PatentLaw #Innovation #USPTOUpdate #ColeSchotz #IPLaw

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In the Office’s latest blog post, hear from the Copyright Claims Board’s (CCB) three Copyright Claims Officers about how the CCB can help lighten the federal docket through referrals of copyright cases filed in federal court to the CCB: https://lnkd.in/eSkugDYQ #Copyright #CopyrightClaimsBoard #Blog

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When AI is trained with unlicensed copyrighted material, the question of infringement versus fair use remains unresolved. Many copyright holders assert that this use violates their rights, and are litigating to address the issue. In light of this, is it premature to require AI companies to disclose which copyrighted works are used to train their generative AI systems? #ai #trainingdata

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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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On one hand, the USPTO requires trademark applicants to provide their domicile home address. Trademark applicant Chestek has refused to do so, citing privacy concerns. The government's opposing position is summarized by Dennis Crouch here: https://lnkd.in/dgB6x_2c Like any simple issue in front of America's Innovation Agency, we have watched as this has ballooned into an alarming dispute over the USPTO's authority to implement certain procedural rules without notice and comment rule-making. Meanwhile, the USPTO continues to fail to safeguard confidential patent and trademark information. Twice in 2023, trademark applicants' home addresses have been leaked. Twice in 2024, unpublished patent application info as been made public. These breaches remind me of John Doll's frustrations as a TC1600 Group Director, circa 2000. Always one for a colorful metaphor accompanied by hand gestures, he likened the examination process to that of material being strained through a colander. The process was beyond his ability to manage, because he only had so many fingers to plug up all the "orifices." While the courts decide whether we should trust America’s innovation Agency with further rule making authority, I wonder why anyone’d trust the agency with (i) creating/maintaining IT systems and (ii) maintaining confidential data? https://lnkd.in/dF4KiFtc #USPTO, #patent, #trademark, #Chestek, #Patentlyo, #innovation, #data, #privacy, #leak, #breach, #AIA, #Court, #SCOTUS

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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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📚 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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