Thought Leadership

Intellectual Property Report: February 2019

Client Updates

OK Google, What Are My Chances of Patenting Artificial Intelligence in 2019?

Jennifer C. Tempesta, Stephanie C. Kato
Artificial intelligence (AI) has developed swiftly over the past decade. As consumers and industries have requested new ways to improve and simplify daily tasks, technology companies have provided phone applications, software solutions, and devices. Accordingly, legal commentators have noted that there are an increasing number of AI-related patent applications being filed in the United States Patent and Trademark Office (PTO). Moreover, courts have narrowed and refined the Alice/Mayo two-step process for determining software-related subject matter eligibility. Based in part on such jurisprudence, the PTO recently announced its revised guidance on examining subject matter eligibility under 35 U.S.C. § 101 as well as new guidance on examination procedures under 35 U.S.C. § 112. With the increase in AI-related patents and the ambiguity regarding the definition of AI-related technologies, the issue of AI patentability has become increasingly scrutinized in the legal community. Reflecting on the patent law developments in 2018 and early 2019, we are left to wonder: what is the outlook for patentability for AI-related technologies going forward?

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What is Unity?: A Look at the USPTO’s AI Development Efforts

Steve Lendaris
The U.S. Patent and Trademark Office (“USPTO”) is preparing to add to the wave of artificial intelligence (“AI”) and machine learning tools, with its own tool to improve its efficiency and quality of its operations. A subset of these tools focus on the application of AI and machine learning to enhance prior art searches with concept-based search and categorization. The USPTO’s tool is called Unity and is planned for use in carrying out automated prior art searches and presenting the results to examiners before beginning a traditional manual search. As the USPTO begins to implement this tool, practitioners should be aware of how these types of tools are used as well as limitations of the technology.

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*Ryan Dowell, a Baker Botts law clerk, assisted in the preparation of this article. 


Brexit: What Happens to Your EU Trade Marks?

Neil Coulson, Zarah Rasool
As the UK's Prime Minister, Theresa May, returns to Brussels to try to find movement on aspects of the Withdrawal Bill, the clock is ticking down towards March 29, the day on which (as things stand) the UK will leave the European Union, deal or no deal. That being the case, what will happen to your EU trade marks?

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Supreme Court Upholds Pre-AIA Meaning of “On Sale” as a Bar to Patentability Under the AIA

Paul RagusaStephanie C. Kato
On January 22nd, the Supreme Court issued a unanimous opinion in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. et al., No. 17-1299, 586 U.S. ___ (2019), and addressed the meaning of “on-sale.” In particular, the Court considered whether the sale of an invention to a third party who is contractually obligated to keep the invention confidential places the invention “on sale” under 35 U.S.C. § 102(a). Slip. op. at 1. The Court concluded that under the Leahy-Smith America Invents Act (AIA), such a sale qualifies as prior art for purposes of determining the patentability of the invention, and thus affirmed the Federal Circuit. Id. at 4-5.

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Federal Circuit Limits Reduction of Patent Term Extension for Applicant Delay, Opens Door for Longer Patent Terms

Paul Ragusa
In January 2019, the United States Court of Appeals for the Federal Circuit determined that the US Patent and Trademark Office (USPTO) improperly reduced Patent Term Adjustment (PTA) for certain applicant delay. Supernus Pharms., Inc., v. Iancu, No. 2017-1357 (Fed. Cir. Jan. 23, 2019). In particular, the court held that the USPTO “may not count as applicant delay a period of time during which there was no action that the applicant could take to conclude prosecution of the patent.” Id. at 14 (emphasis added).

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*Ryan Dowell, a Baker Botts Law Clerk, assisted in the preparation of this article. 


Federal Circuit Affirms Registration of SCHLAFLY Trademark for Beer

Robert Maier
In 2011, craft brewing company Saint Louis Brewery (SLB) filed an application to register its trademark, SCHLAFLY, for use in connection with "beer, ale and lager; beer, ale and porter; beer, ale, lager, stout and porter; beers; black beer; brewed malt-based alcoholic beverage in the nature of a beer; coffee-flavored beer." The SCHLAFLY trademark was based on the last name of one of SLB's co-founders. Thomas Schlafly, and since SLB began selling beer in 1991, SLB has purportedly offered 60 types of SCHLAFLY beer, with sales of over 75 million units between 2009 and 2014. SLB had owned two prior registrations for designs including the SCHLAFLY mark, dating back to 1993 and 2004, respectively. See U.S. Reg. Nos. 1,769,049 and 2,857,942.

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*This article was previously published in the New York Law Journal on January 23, 2019

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