On March 18, 2024, the United States Patent and Trademark Office (USPTO) issued a Memorandum containing guidance to help patent examiners analyze claim language that may be interpreted as “means-plus-function” or “step-plus-function” language under 35 U.S.C. § 112(f). The USPTO said that the Memorandum was not a change in practice for examiners. Sometimes, however, how something is said can affect the interpretation of what is said. We will examine some examples of that here.
Background – What Does “Means-Plus-Function” Mean?
Our colleagues at Employment Law World recently blogged about a recent trade secrets decision from the Northern District of California, Apple v. Rivos. The case involved a common fact pattern: numerous employees were hired away from Apple by Rivos and Apple brought claims for trade secret misappropriation (among others). The court dismissed the claims against Rivos and provides important guidance that other companies can take to try and limit their liability in potential trade secret claims. Given the importance of trade secret law to our readership, we wanted to take a moment to share it with you.
The opportunity to compete at the Olympic Games represents one of the most honorable achievements of any athlete’s career. And while Olympians may have always been trailblazers in the world of sports, today’s competitors are more than just athletes – they are brand ambassadors, marketing representatives, and social media influencers. While an athlete’s ability to reach audiences presents a unique opportunity for brand partners, it also presents event integrity concerns for the International Olympic Committee (“IOC”). In prior Olympic Games, athletes have used social media to grant fans glimpses into their daily lives – from training regimens to life in the Olympic Village.
This summer in Paris, fans will once again have unprecedented access to competitors’ lives at the 2024 Olympic Games. With this in mind, the IOC issued new guidance for athletes using social media during the Games, which provides athletes more flexibility online and opportunities to share their stories with fans. Importantly, the new rules distinguish between Olympic and Non-Olympic Partners – highlighting the key restrictions that brands and sponsors will have to consider when planning marketing campaigns involving 2024 Olympians.
SPB’s Joe Grasser and Scott Warren recently examined the current state of Japan’s copyright laws as they relate to Artificial Intelligence (AI). As they explain, Japan has taken a very flexible approach to help “jump start” AI development in the country.
Over the past several months, we have seen an increase in notices from alleged trademark firms. The emails are identical or substantially similar to the following:
Hi [recipient],
I hope this email finds you in good health.
I am writing to you on behalf of the legal department of [Trademark Firm].
We have received an application for the registration of the trademark “[recipient company name]”. The applicant is seeking legal protection for this brand name. We are currently reviewing the application to ensure compliance with trademark regulations and will proceed with the necessary legal procedures accordingly. During our research, we came across your information and discovered that this brand name is not currently registered with the USPTO, leaving it open for registration by any interested party.
On September 18, 2023, NetChoice, LLC — a national trade association with members from the tech and social media industry — obtained a preliminary injunction from the District Court for the Northern District of California preventing the State of California from enforcing the California Age-Appropriate Design Code Act (“AADC” or the “Act”). The reason? The court found it likely violates the First Amendment.
The AADC targets all online products and services that children under the age of 18 are likely to access by, among other things, requiring the relevant online product and service providers to provide Data Protection Impact Assessment (“DPIA”) reports to the California Attorney General identifying (1) each offered service, product, or feature likely to be accessed by children, (2) any risk of “material detriment to children” arising from the provider’s data management practices, and (3) a timed plan to mitigate such risks.
Like any other intellectual property asset, EU trade marks can be and are often used as collateral in financial transactions. However, reconciling the EU trade mark regulation (the “EU TM Regulation”) with the applicable national laws on “rights in rem” is not always straightforward, especially when the EU trade mark owner is located outside the EU.
Take, for example, Spain: it is not uncommon for the (non-EU) secured parties (in order to avoid the complexities and costs associated with doing so under Spanish law) to allow and even encourage the grant of the security interest under the rules and formalities of their own non-EU country (usually also that of the EU trade mark owner), even though Article 19(2) of the EU TM Regulation makes it clear (as does the EUIPO Trade mark and Design Guidelines) that security interests over EU trade marks registered in the name of non-EU residents must comply with the laws of the country where the EUIPO is located, i.e., Spain. Moreover, because the EUIPO does not examine the validity/enforceability of these security interests, the truth is that they are usually registered and published in the Official Journal of the EUIPO when the registration formalities are complied with, whether or not the national laws have been complied with.
Does this mean that there is a way around the EU law?
The United States Patent and Trademark Office (USPTO) recently published updated guidance emphasizing a very flexible approach to determining obviousness under 35 U.S.C. § 103, consistent with the U.S. Supreme Court’s opinion in KSR v. Teleflex. The guidelines are written for USPTO personnel but combined with the Manual of Patent Examining Procedure (MPEP), they provide guidance to practitioners. While purporting to say nothing new, there may be some helpful clues for practitioners among the five parts of the guidance.
Five Different Ways to Express Flexibility in Obviousness Rejections
Artificial Intelligence (AI) systems are becoming an increasingly important part of our lives and are affecting almost every industry. In compliance with section 5.2(c)(i) of the President’s October 30, 2023 Executive Order (EO) 14110, titled “Safe, Secure, And Trustworthy Development and Use of Artificial Intelligence (AI)”, the US Patent and Trademark Office (USPTO) has issued Guidance entitled Inventorship Guidance for AI-Assisted Inventions, effective from February 13, 2024, to address what happens when an invention is the result of a human and AI collaboration (AI-assisted inventions).
The Guidance, for USPTO examiners and applicants, addresses inventorship and the use of AI, including generative AI, in the inventive process. The Guidance provides illustrative examples in which AI systems play different roles in the inventive process, to show how the USPTO will analyze inventorship issues.
In Waterdrop Microdrink GmbH v. Qingdao Ecopure Filter Co., Ltd., the District Court for the Central District of California denied a motion to compel compliance with a subpoena relating to a Trademark Trial and Appeal Board (“TTAB”) proceeding, because the subpoena was never signed by the Clerk of the Court — despite the fact that the Board’s own operating manual, the Trademark Board Manual of Procedure (“TBMP”), states that a subpoena in a TTAB proceeding could simply be signed by an attorney. This a noteworthy change in the jurisprudence surrounding TTAB proceedings and is something that all TTAB practitioners must be mindful of when seeking third-party discovery.
