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Intellectual Property Report

Client Updates

The Pros And Cons Of NIST's Proposed March-In Framework
Nick LeePaul Ragusa
The U.S. Department of Commerce's National Institute of Standards and Technology is studying more than 50,000 comments it received on its proposed guidance addressing the circumstances when federal agencies should exercise march-in rights.
The NIST released the proposal on Dec. 8 2023, and the comment period closed on Feb. 6.
The proposed guidance is titled "Interagency Guidance Framework for Considering the Exercise of March-In Rights" under the Bayh-Dole Act.
While some comments supported the guidance by indicating that march-in rights can promote competition and stabilize product prices at the market level, other comments underscored risk to contractors that use federal funding in terms of competition for innovative personnel, commercial partnerships, and ultimately realizing a commercial product from such efforts.
To read the full article, click here.
This article was previously published in Law360 on April 11, 2024.

Patent Office Issues New Guidance on the Law of Obviousness
Robert MaierBenjamin Rosen
The United States Patent and Trademark Office (USPTO) recently published new guidance explaining the requirements for patent examiners to reject patent claims for obviousness in view of what was already known in the prior art. 89 Fed. Reg. 14449 (Feb. 27, 2024). The new guidance seeks to provide added clarity to patent examiners and practitioners regarding application of the law in this critical area.
To read the full article, click here.
This article was previously published in the New York Law Journal on March 26, 2024.

Schedule A Cases Can Provide Quick, Cost-Effective Relief Against Widespread Intellectual Property Theft on Online Marketplaces
Tommy Martin 
Protecting a company’s intellectual property (IP) on online marketplaces can be like a game of Whack-a-Mole. While certain marketplaces provide mechanisms for quickly and inexpensively removing unlawful listings from their platforms, it does not take long for bad actors to pop up again with new listings on the same platforms. Fortunately, there is a powerful mechanism for reaching an even larger number of bad actors even more quickly than going directly to the online marketplace. They have been coined “Schedule A Cases” by the district court that has become the most popular venue for this type of litigation – the U.S. District Court for the District of Illinois.
To read the full article, click here.
This article was previously published in the Intellectual Property & Technology Law Journal in May 2024.

The EU AI Act: Uncharted Territory for General-Purpose AI
Alexander HendryPaul LugardParker Hancock
The European Union officially adopted the final text of its comprehensive Artificial Intelligence Act (“AI Act”) on March 13, 2023. The EU has adopted a “risk-based approach”, with specific provisions governing General-Purpose AI systems (“GPAIs”). These cutting-edge technologies have the potential to be revolutionary but have also caused considerable controversy in their relatively short time in the spotlight.
This update provides an overview of some of the key issues raised by the AI Act’s application to GPAIs.
To read the full article, click here.

This Month: Our Take on AI
Joseph Cahill

Tennessee Protects Performing Artists from AI-Generated Deepfakes: Tennessee Governor Bill Lee recently signed the Ensuring Likeness Voice and Image Security (ELVIS) Act into law, providing explicit protection for artists' voices in addition to protections of their image and likeness under existing Tennessee law. The act addresses the growing concerns surrounding AI-generated deepfakes and aims to combat the unauthorized production of creative works intended to emulate the voice of a performing artist. The ELVIS Act prohibits any unauthorized use of an artist's name, image, photograph, or voice, regardless of the context, empowering artists to safeguard their artistic integrity and maintain control over their creative identities. The act takes effect July 1, 2024. Parker Hancock writes more about this development in "Tennessee Moves To Protect Performing Artists from AI-Generated 'Deepfakes'."

Federal Agencies Unite to Combat AI Violations: Nine federal agencies have joined forces to address the potential risks and challenges posed by automated systems and AI technologies. The agencies have pledged to use their collective authorities to protect individuals' rights and enforce civil rights, non-discrimination, fair competition, consumer protection, and equal opportunity laws in the context of automated systems. Enforcement priorities include addressing biases stemming from problematic data and datasets, model opacity and access, and design and use of AI systems. The agencies are actively working on providing guidance and considering new regulations to address AI-related risks. I discuss this development in "Federal Agencies Unite to Combat AI Violations: A New Era of Enforcement."

Federal Agencies to Appoint Chief AI Officers: The White House Office of Management and Budget (OMB) has issued a new policy requiring federal agencies to designate Chief AI Officers and establish AI Governance Boards. The Chief AI Officers will coordinate the use of AI within their respective agencies, while the AI Governance Boards will oversee and govern the implementation of AI across the organization. The policy mandates concrete safeguards by December 1, 2024, when using AI in ways that could impact the rights or safety of Americans. It also promotes responsible AI innovation and workforce development within federal agencies. Parker Hancock elaborates on this policy in "Federal Agencies to Appoint Chief AI Officers and Establish AI Governance Boards."

FDA Outlines Collaborative Approach to AI in Medical Products: The U.S. Food and Drug Administration (FDA) published a document titled "Artificial Intelligence & Medical Products," detailing how the agency's medical product Centers are working together to ensure the safe and responsible use of AI in the development and regulation of medical products. The document outlines four key areas of focus: fostering collaboration with stakeholders, advancing the development of regulatory approaches, promoting the development of standards and best practices, and supporting research related to the evaluation and monitoring of AI performance. The FDA plans to issue guidance on various aspects of AI use in medical product development and regulation. Parker Hancock provides more information in "FDA Outlines Collaborative Approach to AI in Medical Products."

To read more on our Team's insights on AI and the impact on our world, click here

April 2024 Intellectual Property Report Recap
In case you missed it, here is a video recap of our April 2024 Intellectual Property Report that looked at:

  • USPTO Issues Updated Guidance Highlighting the Requirement for a Flexible Approach to the Obviousness Determination
  • Use This Four-Step Framework to Protect Al-Assisted Inventions in the U.S.
  • Our Take on AI

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