Insights

In 2023 and 2024, several U.S. states enacted extensive “Right to Repair” laws, reflecting a growing legislative focus on ensuring consumers have access to the parts and resources needed to repair their own products without relying on the product’s original manufacturer. Most recently, California, Colorado, Minnesota, New York, Massachusetts, and Oregon implemented comprehensive regulations aimed at providing consumers direct access to tools, parts, and information for the repair of various electronic devices and equipment, including digital products and agricultural machinery. As the “Right to Repair” movement continues to gain significant traction across the United States, it is critical that manufacturers understand these laws and how these laws will impact their individual businesses.

The Federal Circuit recently denied a petition for rehearing en banc in the much watched In re Cellect matter.  The landmark panel decision determined how obviousness-type double patenting (“ODP”) is impacted when patent term adjustment (“PTA”) is added to the term of one or more patents in a family under 35 U.S.C. § 154(b), resulting in different terms for the family member patents that would otherwise expire on the same day.

Unitary Patents are being granted and the Unified Patent Court is up and running as of June 1, 2023.  Since the 1970’s, there have been attempts at establishing a unitary European patent that would cover multiple European countries and would be enforced by a single court system.  This type of system is in contrast to the system known since 1973 of granting European Patents by the European Patent Office (EPO) and validating the European Patent in designated European countries, wherein each validated patent is enforced in the national court associated with the validated patent.

Since the Supreme Court’s 2017 sea change venue decision in TC Heartland v. Kraft Food Group Brands, the Northern District of West Virginia has seen an uptick in substantive Hatch-Waxman litigation involving local pharmaceutical company, Viatris Inc. (formerly known as Mylan Pharmaceuticals). Viatris is frequently named as a defendant in Hatch-Waxman litigations, each of which is triggered by Viatris’s service of a statutorily-required notice letter stating why the patents that allegedly cover the brand name drug are invalid and/or not infringed by a proposed generic drug. Hatch-Waxman litigants have battled over the requirements for these notice letters in other courts. In Bausch Health Ireland Ltd. et al. v. Mylan Pharms. Inc., the Northern District of West Virginia has now added to that body of law, adopting a holding consistent with other courts that a generic drug company is not foreclosed from asserting additional defenses in litigation even if those defenses were not raised in the generic drug company’s notice letter. See No. 1:22CV20, 2023 WL 2726432, at *3 (N.D.W. Va. Mar. 30, 2023).

In March 2023, the USPTO and its Council for Inclusive Innovation announced the First-Time Filer Expedited Examination Pilot Program.  This new program benefits those individuals or small businesses that are first-time filers for patent rights and qualify as “micro entities.”  Through the program, these micro entities receive an expedited first Office action, which the USPTO hopes will lower time-based barriers for inventors that acted as barriers to commercialization or may have otherwise precluded inventors’ use of the patent system. 

On February 24, 2023, the Director of the United States Patent and Trademark Office (“USPTO”) issued a precedential Director Review Decision in the Inter Partes Review (“IPR”) of Nested Bean, Inc. v. Big Beings Pty Ltd.[1] The decision modified the Patent Trial and Appeal Board’s (PTAB) final written decision that had found all challenged multiple dependent claims fully invalid, notwithstanding the fact that one of the independent claims from which the multiple dependent claims depended was not found to be invalid.[2]

New ways to utilize the internet for fun and leisure have skyrocketed recently. ChatGPT allows people to ask everyday questions and draft novels to their liking thorough AI, and the metaverse is constantly developing new ways to interact with each other in virtual worlds. With these new frontiers in the spotlight, it is important for companies to also consider the current remarkable technology being updated and used by millions of consumers that goes hand in hand with these new mediums. Cloud gaming is a technology that allows users to play video games on remote servers and stream the gameplay to their devices, also called gaming-as-a service. This technology, along with AI and the metaverse, has the potential to revolutionize the media industry by making interactive games and live brand collaborations more accessible and convenient for users.

The USPTO has announced that it will commence issuing patent certificates only electronically through its electronic patent application filing and management system, Patent Center. This is in line with the USPTO's efforts to achieve fully electronic processing of patent applications. The paper patent issuance process, which involved physically delivering “ribbon copy” patents to the correspondence address of record, will be replaced with the issuance of patents electronically under a new digital USPTO seal and digital signature from the USPTO Director. Patent Center will enable the patentee and the public to view and print the official electronic patent grant immediately upon issuance. To implement electronic patent issuance, the USPTO is removing and reserving 37 CFR 1.315, which refers to the delivery or mailing of the patent upon issuance to the correspondence address of record. 

Last year, in the case of Thaler v. Vidal, the Federal Circuit affirmed that only natural persons (i.e., human beings) can be named inventors on U.S. patents, thereby excluding artificial intelligence from being listed as an inventor per se.  43 F.4th 1207 (Fed. Cir. 2022).  Most Courts around the world ruled similarly.  But this does not mean that artificial intelligence (“AI”) inventions, including inventions developed with AI as a tool and inventions directed to AI subject matters, are not patentable.  To the contrary, according to the U.S. Patent & Trademark Office’s (“USPTO’s”) October 2020 Public Views on Artificial Intelligence and Intellectual Property Policy Report (“2020 Report”), academics and practitioners generally agree that artificial intelligence can represent a subset of computer-implemented technology that can be a subject matter of an invention or used to assist with other inventions.  2020 Report, at iii.  Current stakeholders generally agree that the U.S. laws are calibrated to address artificial intelligence inventions.  2020 Report, at iii.

On January 5, 2023, President Biden signed into law the Protecting American Intellectual Property Act, a new bill aimed at imposing sanctions on foreign individuals and entities involved in the theft of trade secrets belonging to a U.S. individual or entity. The law provides a new mechanism for the U.S., and potentially U.S. companies, to combat theft of trade secrets committed by foreign entities or individuals.

First, 2023 continues an upward trend in the assertion and litigation of standard-essential patents (SEPs) in the automotive space as the latest wireless communications technologies, including 5G cellular and Bluetooth 4.X and 5.X, are increasingly incorporated into new vehicle infotainment systems and other onboard computers. Both vehicle manufacturers and their suppliers should be concerned.

On October 22, 2021, the Court of Federal Claims (Court) unsealed a decision awarding contractor SecurityPoint Holdings, Inc. (SecurityPoint) over $100 million in damages for TSA’s infringement of SecurityPoint’s patent No. 6,888,460 (“the ‘460 patent”). The ‘460 patent concerns a system of trays that recycle through security screening checkpoints by use of movable carts, and was first filed with the U.S. Patent and Trademark Office on July 3, 2002 by SecurityPoint CEO Joseph Ambrefe. Ambrefe had offered the TSA a license to use the patent in exchange for the exclusive right to advertise on the trays, but TSA refused the offer.

On May 21, 2020 the U.S. Copyright Office published its highly anticipated report about Section 512 of Title 17 of the United States Code. The aim of the report was to determine, in light of the monumental changes the Internet has undergone since the days of dial-up and floppy disks, whether Section 512 continues to work “effectively in achieving its aim of balancing the needs of online service providers (OSPs) with those of creators.” The Copyright Office’s report marks the first time the government has studied the effectiveness of the controversial Section 512 since it was enacted more than 20 years ago. As noted by the Copyright Office, “[t]he proper balance of intermediary safe harbors and liability online is a topic on which few stakeholders have no opinion, and passions (as well as rhetoric) run high on all sides.”

Last week, the U.S. Court of Appeals for the Federal Circuit, in In Re: Forney Industries, Inc., held that a multicolored mark, when used on product packaging, can be inherently distinctive, and thus eligible for federal trademark registration. The proposed mark consisted of the use of black next to a yellow to red color spectrum as shown below on tools and accessories for welding:

Effective August 3, 2019, the U.S. Patent and Trademark Office (USPTO) will require all foreign-domiciled trademark applicants, registrants, and parties to a trademark proceeding to be represented by an attorney who is licensed to practice law in the United States. This requirement will apply to any entity with a principal place of business outside of the United States and its territories and any individual with a permanent legal residence outside of the United States and its territories.

In new guidelines issued this past Thursday, May 2, 2019, the United States Patent & Trademark Office clarified the procedure for examining trademarks for cannabis-derived goods, services involving cannabis, and cannabis production. These guidelines explain that the 2018 Farm Bill exempts hemp (defined as cannabis plants and derivatives such as CBD that contain no more than 0.3 percent THC on a dry-weight basis) from the definition of marijuana in the Controlled Substances Act (21 U.S.C. § 801 et seq.)(CSA).

A pan-European preliminary injunction and a pan-European order to preserve evidence (saisie) are among the many new measures afforded by the Unified Patent Court (UPC). Such measures can have a tremendous impact, not only on proceedings before the UPC, but also on the business of a party targeted by such measures. Furthermore, where the possibility exists to temporarily lock a competitor out of the European market or force that competitor to grant access to confidential information, there also exists a very high risk that such measures could be applied for inappropriately.

In our previous alert, we explained for what matters the UPC will be granted exclusive competence, and how parties can best avoid this exclusivity: (i) during a transitional period of seven or up to fourteen years from entry into force of the UPC Agreement, several specific claims can still be brought either before the UPC or before the national court (Article 83(1) UPC Agreement); (ii) patentees also have the possibility to completely opt-out from the exclusive competence of the UPC (Article 83(3) UPC Agreement).

Crowell & Moring's series of alerts provides practical information and professional comment on all the ramifications regarding the introduction of the Unified Patent Court (UPC). For further information, please contact the lawyers listed near the bottom of each alert. To view other alerts in this series, please click here.

Crowell & Moring's series of alerts provides practical information and professional comment on all the ramifications regarding the introduction of the Unified Patent Court (UPC). For further information, please see our UPC leaflet PDF or contact the lawyers listed near the bottom of each alert. To view other alerts in this series, please click here.