This week in IP: Counsel discuss AI inventorship, Welsh lamb gets GI status, PTAB updates Orange Book study
Managing IP rounds up the latest patent, trademark and copyright news, including some stories you might have missed
Counsel speak out on AI authorship: where do we go from here?
Last week Managing IP exclusively reported that the copyright office in India had recognised an artificial intelligence-based app – RAGHAV – as the co-author of an artistic work for the very first time.
The news emerged after South Africa became the first-ever country to grant a patent designating an AI tool (DABUS) as the inventor. Shortly after, the Australian Federal Court said DABUS was the inventor of the patent filed in the country.
Combined, these developments have sparked a conversation on whether legal recognition of AI creations is likely to become more commonplace or whether it is merely hype triggered by a few isolated cases.
Other Managing IP stories published this week include:
Welsh lamb receives first post-Brexit GI
Gower salt marsh lamb has become the first food product to receive protected status under the UK’s new geographical indication schemes, it was announced on Wednesday, August 11.
The meat, which comes from lamb born, reared and slaughtered in the Gower area of south Wales, has been given a protected designation of origin (PDO) after producers showed that its characteristics essentially and exclusively derive from its area of production.
Although the UK maintained protection for pre-existing GIs and PDOs in the Brexit deal, it set up new GI schemes that exclude the EU (although Northern Ireland was also excluded owing to the political deal).
The grant means verified Gower salt marsh lamb producers can use the GI logo on their goods as a badge of authenticity and quality.
Dan and Will Pritchard from Weobley Castle Farm, who produce the lamb, said: “This recognition means that the reputation of our regional product is protected, and it helps us promote traditional agricultural practices and eliminate non-genuine products.”
According to the UK government, the meat gains its unique characteristics from specific vegetation and environment of the salt marshes on the north Gower coastline, where the lambs graze over long distances for more than half of their lifetime.
PTAB updates Orange Book patent study
The Patent Trial and Appeal Board has published an update to its Orange Book biologic patent study, it was announced on Wednesday, August 11.
The update analyses all America Invents Act (AIA) petitions challenging Orange Book patents and biologic patents through June 2021.
The revised version also provides information on the number of petitions filed, institution rates, and claim outcomes in final written decisions in that time.
According to the update, 4% of all AIA petitions have challenged Orange Book patents, and 2% have challenged biologic patents.
The institution rate for biologic patents at the PTAB was reported to be 55% and 62% for Orange Book patents.
Orange Book-listed patents are those that the US Food and Drug Administration has approved and deemed both safe and effective for the general public's use.
The study was last updated in 2019.
Intel loses appeal for $2.18bn infringement case
Judge Alan Albright of the Western District of Texas rejected Intel’s request to set aside a jury verdict ordering the chip maker to pay damages of $2.18 billion to VLSI Technology, in a decision on Tuesday, August 10.
Jurors decided in March that Intel had infringed two of VLSI’s patents and should pay $1.5 billion for the infringement the first one and $674 million for the second. The awards were some of the highest ever given in patent infringement cases in US history.
Intel claimed it was seeking a new trial because the first verdict had been tainted by evidentiary rulings that had been based on earlier Intel settlements.
In a different infringement case between VLSI and Intel, a jury in Waco ruled in Intel’s favour, rejecting the plaintiff’s bid for $3.1 billion in patent infringement damages.
Intel said in a statement on Tuesday that it would appeal Albright’s decision, and called for reforms to prevent exorbitant damages for low-quality patents.
UKIPO releases IP trends report
The UKIPO announced on Monday, August 9, that it was launching a research programme to find out why applicants use intellectual property.
The aim of the programme will be to develop evidence of the strategic drivers for IP, the office said, built around broad research themes such as IP filers, the role of the government in driving filings, and the role of the international IP landscape.
As part of the programme, the UKIPO released a report looking at patent filing trends from 2000 to 2020 and comparing them to filings at the EPO.
According to the report, applications to the UKIPO have fallen over the past 20 years. The decrease, it said, could mostly be attributed to a decline in the number of applications from individuals rather than companies.
The report set out that demand has remained strong among non-UK-based applicants – particularly those residing in China – as well as those in large companies and users of the Patent Cooperation Treaty.
The report also showed that UK-based applicants used the UKIPO more than the EPO, but that the gap appeared to be closing.
One explanation for the applicants’ behaviour could be the differences in fees and coverage between the two patent offices.
Dr Seuss goes to jury trial in California
A federal court in California rejected a request by Dr Seuss Enterprises for a pre-trial summary judgment in a copyright infringement matter on Monday, August 9, holding that the case was fit for a jury trial.
A jury at the District Court for the Southern District of California will now decide whether the comic book mashup of Dr Seuss and Star Trek called ‘Oh, The Places You’ll Boldly Go’, or ‘Boldly!’, infringed the copyrighted works of Dr Seuss Enterprises, the estate of the famous author.
The Court of Appeals for the Ninth Circuit found in December 2020 that the defendants ComicMix and David Gerrold, a former Star Trek writer, didn’t make fair use of the copyrighted works.
Judge Janis Sammartino of the Southern District of California said that the question of whether summary judgment should be granted boiled down to the substantial similarity between the copyrighted works and the alleged infringing work.
The court observed that protectable elements of Seuss’s copyrighted works overlapped with 'Boldly!', thus satisfying the extrinsic test of overlap of concrete elements, but failed on the total concept and feel-based intrinsic test.
Designs e-register goes live in India
The design office in India made its e-register available on the official website last week.
The e-register will allow the public to access detailed information on design registrations including status and address for service.
Previously, the online database of the design office merely provided cursory information about some registrations and many of the registered designs were not part of the database.
Anyone who previously needed detailed information had to conduct an official search of the physical register, which was tedious and time-consuming.
Practitioners expect that additional information such as assignment and renewal status will also be made available once the e-register is fully operational.
Unlike the patents register, however, the designs e-register currently does not allow anyone to inspect the documents filed by a registrant.
Last month, Managing IP published a story on the design system in India where counsel pressed on the need for a searchable database of all design applications in addition to registrations.
As of now, there is no news on whether design application details will also be made available online.
USPTO moves to trademark own name
The USPTO is seeking to trademark its own name and logo in an effort to curtail bad actors trying to pass themselves off as the office, it was announced last week.
Commissioner for trademarks David Gooder wrote on Thursday, August 5, that there had been “a rapid increase in sophistication of those unlawfully passing themselves off as the USPTO”, with scammers impersonating the agency to request illegitimate fees.
By applying for federal registration of the office’s name and logo, he said, the USPTO hoped to curb these scammers and bring an end to the unlawful practice.
The application was filed on Wednesday, August 4, by the Department of Commerce.
“We recognise the intrigue and irony of filing for federal registration of the USPTO marks with the USPTO,” Gooder wrote. “It’s a big reason why the Department of Commerce is filing the application on our behalf, just as it has for its other bureaus.”
Gooder said the USPTO had already taken several steps to protect trademark applicants from being victimised by opportunists, including alerting users to known scammers by posting a list on the USPTO website and working with law enforcement when appropriate.