Patent Lodge

Last Spring, we reported on a case before the U.S. Court Of Appeals for the Federal Circuit relating to U.S. design patents, LKQ Corp. v. G. M. Global Technologies. As we noted then, the Federal Circuit, in agreeing to take up the case, would be deciding whether change was needed for the long-standing, established test for invalidation of U.S. design patents. That case has now been decided.

Ever hear the saying, “when life gives you lemons, make lemonade?” When the U.S. Patent and Trademark Office renders a Final Office Action, or in this analogy, a “lemon,” some practitioners believe responding with a written response and Request for Continued Examination is an automatic course of action. However, why not try and turn the setback into a step forward?

Well, the Summer Olympics are almost upon us and that got me thinking. Technology plays an important part in sport, such as with the development of sport equipment, gear and clothing. Many aspects of this equipment, gear and clothing may be patented, and thus there is a connection between the Olympics and patents. However, what about a connection between Olympians and patents? Put another way, has any Olympian also been a patent holder? 

As part of the overall dynamic involved in pursuing U.S. patents and trademarks, an adversarial undercurrent can often materialize between applicant and the U.S. Patent and Trademark Office. It is no surprise that the intensity of that undercurrent can be a function of the total time/expense before a patent is granted or a trademark is registered. And, if grant/registration is ultimately not achieved, what once was adversarial can be later viewed as unfairly subjective.

Last summer, we reported on the U.S. Supreme Court’s decision regarding enablement compliance (in Amgen Inc. v. Sanofi). The U.S. Patent & Trademark Office has recently responded, publishing new guidelines for enablement, with these guidelines being applicable regardless of the technology.

On October 30, 2023, U.S. President Joe Biden signed an executive order regarding AI to start establishing standards for its protections and regulation. Among other areas of focus, the executive order called on the USPTO to review and provide guidance on AI as it relates to well-established principles concerning inventorship and patentability.

We are pleased to introduce our colleague and partner, Steve Helland. Steve has long provided guidance to clients in legal matters involving information technology, Internet, software, new media and advertising. Steve chairs Fredrikson’s Tech & Data legal group, which further advises on legal issues relating to data privacy, cybersecurity, technology and intellectual property issues.

According to latest trending data, per technopedia.com, the U.S. is the nation most aggressively funding AI technology, with $249 billion dedicated in private funding.

The Federal Circuit has agreed to an en banc hearing of a design patent case that may change the landscape of design patent invalidation in the U.S. The case is LKQ Corp. et al. v. G.M. Global Technology Operations LLC, case number 21-2348.

A recent court decision from the Northern District of California may significantly impact a common strategy, long accepted and practiced among patent holders.