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This week in IP: DABUS team on AI wins, thin gruel for Oatly, Nintendo settles patent suit

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Managing IP rounds up the latest patent, trademark and copyright news, including some stories you might have missed

DABUS patent team discusses strategy and hopes 

Lawyers spearheading the patent applications for DABUS spoke to Managing IP about what recent legal wins mean for artificial intelligence inventorship.  

Last Wednesday, July 28, South Africa became the first country to issue a patent designating DABUS (Device for the Autonomous Bootstrapping of Unified Sentience) – or indeed any AI system – as the inventor. It also recognised the machine’s owner as the patent owner. 

Two days later, the Federal Court of Australia overturned a decision by the deputy commissioner and ruled that DABUS is the inventor of the Australian patent. 

That decision marks the first time a jurisdiction has acknowledged an AI inventor on a patent that has undergone substantive examination, something which South Africa does not apply.  

DABUS was created by Stephen Thaler, CEO of Imagination Engines. In aninterview with Managing IP, Thaler said it would be “criminal” to list himself as the inventor because the AI system developed the invention without any human input.  

Justice Jonathan Beach of the Federal Court of Australia said in his ruling that because other terms in patent law such as “manner of manufacture” have evolved over the past two centuries to include novel methods of scientific invention, he sees no reason why the term “inventor” should not also evolve to reflect new methods of discovery. 

“Indeed, it makes little sense to be flexible about one and not the other. Tension is created if you give flexibility to ‘manner of manufacture’ and then restrict ‘inventor’,” he wrote. “You would be recognising an otherwise patentable invention and then saying that as there is no inventor, it cannot be patented.” 

Earlier last week, South Africa issued a patent acknowledging DABUS as the inventor and Thaler as its owner. Although the patent was only examined for formalities, sources told Managing IP that the application had been accepted in other jurisdictions on substantive grounds before being rejected. 

Ryan Abbott, professor of legal studies at the University of Surrey and legal representative for Thaler, said he believes the recent wins in Australia and South Africa are the start of a wider trend to redefine inventorship in patent law.  

“The past few years have seen some dramatic improvements in AI functionality and some impressive applications of AI in practical R&D tasks such as predicting protein structures and designing new industrial components. 

“I suspect that in 10 years the idea that people ever questioned the ability of a machine to be inventive will seem strange,” he said. 

Click here to read the full article

Other Managing IP stories published this week include:

Exclusive: India recognises AI as co-author of copyrighted artwork

Diversity data: in-house speak out on new 30-brand pledge

Bad-faith trademark law: ‘one step forward, one step back’

Podcast masterclass: How to manage an in-house team

Counsel: what the USPTO should do about mass bad-faith filings

EU Copyright Directive: what legal threats mean in reality

What US in-house want from China counsel

Thin gruel: Oatly loses trademark battle against UK farm 

Swedish drinks company Oatly has been defeated by a family-run farm that it accused of trademark infringement and passing off. 

In judgment handed down yesterday, August 5, the Intellectual Property Enterprise Court (IPEC) at the England and Wales High Court rejected five claims of infringement and one of passing off lodged against UK-based Glebe Farm Foods.  

Glebe Farm launched a range of oat milk-alternative drinks under the name ‘PureOaty’ in 2020. Oatly, which owns several trademarks for its name, sued at the IPEC, a specialist division of the High Court, earlier this year. 

In his judgment, Mr Nicholas Caddick QC, sitting as a deputy, said he could see “no sensible reason” why Glebe Farm may have been trying to take advantage of the distinctive character of Oatly’s products.  

He added that there is a “low or, at best, very modest level of similarity” based largely on the common use of the letters ‘Oat’, which he noted would also be seen as descriptive.  

“I do not see that there is any risk of injury to the distinctive character of Oatly’s marks. If Oatly loses sales, then it seems to me that that would be the result of there being a rival oat drink product on the market and not because the attractiveness of its brand has been in any way diminished by the defendant’s use of the ‘PureOaty’ sign,” Caddick found.  

Jeremy Blum, partner at Bristows, which represented Glebe Farm, said: “The result is hugely satisfying for a great British manufacturer who stuck to its principles in defending its right to use descriptive elements in its branding.” 

He added: “The decision confirms how the creation of ‘PureOaty’ was not done to gain any unfair advantage.”  

Oatly was represented by Gowling WLG. 

Nintendo secures damages in Colopl settlement 

Japanese gaming company Nintendo announced on Wednesday, August 4, that it had settled its patent infringement case against mobile game business Colopl. 

The case began in 2016 when Nintendo alleged that Colopl’s ‘White Cat Project’ infringed five of its patents including the technology used to operate a joystick over a touch pane.  

Nintendo filed a lawsuit for $40 million in damages and, by April this year, demanded almost twice that amount, citing the ongoing infringement of the technology.  

In a press statement issued on August 4, Colopl said it will pay Nintendo a settlement of ¥3.3 billion ($27 million), which includes future licensing. 

Judith Willert joins AIPPI as executive director 

AIPPI has announced that Judith Willert joined the association as executive director on Sunday, August 1. 

The association said in a statement that Willert had experience managing change and business transformation. It added that her international experience and corporate mindset will be helpful as AIPPI rolls out its strategic plan for the next three years. 

She will report to Marek Lazewski, the AIPPI secretary general. 

Willert is based in Zurich, Switzerland, and is a German and Swiss citizen who speaks both German and English. She previously worked as director of global distribution at Adidas until December 2020. She has also worked at Coca-Cola. 

She received her bachelor’s degree from the University of Flensburg in 2003 and her MBA from the same institution in 2005. 

Hirshfeld rejects two post-Arthrex requests for review 

The USPTO rejected requests for director review of two Patent Trial and Appeal Board rulings on Monday, August 2.   

These requests were the first to be considered after the Supreme Court decisionUS v Arthrexon June 21.It set out that the appointment of administrative patent judges at the PTAB was unconstitutional, but that this problem could be fixed by giving the USPTO director more power to overturn the board’s decisions. 

The patentoffice announced on June 29 that it had implemented an interim procedure where the USPTO director could initiate reviews of PTAB rulings. 

One of the requests that was rejected on Monday came from a patent owner: non-practising entity Solas had asked the office to review a ruling that its claims were unpatentable. 

The other came from a patent challenger, Google,which had requested that the office review a decision that certain claims in Hammond Development’s patent were patentable. 

Drew Hirshfeld, commissioner of patents who is currently performing the functions and duties of the USPTO director, did not give many details on why he denied both requests. 

In both cases he wrote: “It is ordered that the request for director review is denied; and furtherordered that the Patent Trial and Appeal Board’s final written decision in this case is the final decision of the agency.” 

Kenya publishes anti-counterfeit regulations 

Kenya published the Anti-Counterfeit (Recordal) Regulations, 2021 in the official gazette last Friday, July 30, introducing a new customs recordation system. 

The regulations contain several provisions to combat counterfeiting including compulsory recordation of all goods imported in Kenya in which intellectual property rights subsist. The IP owner needs to file an application for recordation under the regulations. 

However, the regulations lay down that the importer will be responsible for ensuring that necessary details are available with the Anti-Counterfeit Authority (ACA). Other significant provisions include mechanisms for renewal, exemptions, and penalties for false declaration.  

Although the official website of the ACA does not include much information on the development, law firm Rouse reports that the ACA intends to automate the customs recordation system using an online portal to process recordation applications, maintain recorded rights, and perform other ancillary functions. 

The new regulations have been introduced to implement the 2019 amendments to the Anti-Counterfeit Act as well as the provisions of the Anti-Counterfeit (Amendment) Regulations. 

The ACA also expects expedited identification and processing of counterfeit goods as well as improved coordination among stakeholders once the regulations come into force. 

For now, the regulations will be tabled before the House of Parliament in Kenya for scrutiny and approval. 

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