Imagine That IP Law Blog

The concept of the "person of ordinary skill in the art" (POSITA) remains pivotal in patent law, particularly in evaluating obviousness under 35 U.S.C. § 103 and compliance with enablement and written description requirements under 35 U.S.C. § 112. Traditionally, the POSITA is defined by their technical competence and ordinary creativity, enabling them to recognize and combine known methods to achieve predictable outcomes. However, with advances in generative AI such as ChatGPT, a new question arises: could such AI fulfill the role of the POSITA, including providing a benchmark ... Read More ›

The United States Patent and Trademark Office (USPTO) today announced that the After Final Consideration Pilot Program 2.0 (AFCP 2.0) will be allowed to expire. Originally launched in 2013 to facilitate better interaction between patent applicants and examiners after a final rejection, AFCP 2.0 provided a framework for further consideration of claims without the need for expensive and time-consuming appeals or Requests for Continued Examination (RCEs). The program's expiration marks the end of a decade-long pilot, but the USPTO has extended the deadline for final requests ... Read More ›

Patent eligibility in the United States is governed by 35 U.S.C. § 101, which requires that an invention must fit within the categories of a process, machine, manufacture, or composition of matter. However, even if an invention falls into one of these categories, it may still be ineligible for patent protection due to judicial exceptions that exclude laws of nature, natural phenomena, and abstract ideas. A common issue arises when patents claim a desired result without providing the specific method or process for achieving that result. In this blog post, we explore the legal ... Read More ›

Congratulations! You are ready to file a United States (U.S.) non-provisional patent application for your invention. This is a major milestone for any startup. But what comes next? Is it just a waiting game? Well ... maybe not.

A challenge with the standard patent process is that U.S. non-provisional patent applications are subject to the overburdened queues of the U.S. Patent and Trademark Office (USPTO). USPTO statistics for an application show that the Traditional Total Pendency is 26.1 months to 42.9 months. (See Pendency Statistics USPTO from July of 2024). This means that ... Read More ›

UPDATE:  On September 30, 2024 The United States Patent and Trademark Office  announced that the After Final Consideration Pilot Program 2.0 (AFCP 2.0) will be allowed to expire. See The Expiration of the After Final Consideration Pilot Program 2.0 (AFCP 2.0)

Final rejections are inevitable in patent prosecution, often requiring patent practitioners and applicants to carefully consider their next steps. While a Request for Continued Examination (RCE) is a common option, it is not always the most cost-effective, especially when a response can be submitted within the shortened ... Read More ›

The case of Contour IP Holding LLC v. GoPro, Inc. is the first time since October 2021’s Cosmokey Sols. GMBH & Co. KG v. Duo Sec. LLC, 15 F.4th 1091  where the U.S. Court of Appeals for the Federal Circuit has reversed a district court holding of ineligibility under 35 U.S.C. § 101. Accordingly, the Federal Circuit’s September 9, 2024 decision provides valuable insights into how patent eligibility is assessed, particularly for innovations related to video technology.

Background of the Case
Contour IP Holding LLC (“Contour”) filed suit against GoPro, Inc. (“GoPro”) for ... Read More ›

On September 3, 2024, the United States Court of Appeals for the Federal Circuit rendered a significant decision in Broadband iTV, Inc. v. Amazon.com, Inc., which reaffirms the stringent approach towards patent eligibility under 35 U.S.C. § 101. The case concerned five patents owned by Broadband iTV (BBiTV), all related to video-on-demand technology and electronic program guides. BBiTV accused Amazon of infringing these patents, but Amazon successfully moved for summary judgment on the grounds that the patents claimed ineligible subject matter. The Federal Circuit affirmed ... Read More ›

In the case of Allergan USA, Inc. v. MSN Laboratories Private Ltd., the Federal Circuit addressed the issue of obviousness-type double patenting (ODP) concerning claim 40 of U.S. Patent No. 7,741,356 (the '356 patent). This patent was challenged based on the assertion that it was invalid due to ODP over two related patents, U.S. Patent Nos. 8,344,011 (the '011 patent) and 8,609,709 (the '709 patent). The district court initially ruled in favor of invalidity, determining that because the '356 patent expired after the '011 and '709 patents—despite sharing a common priority ... Read More ›

Software development has become a driving force behind innovation and progress across many industries. A key factor in this development is open source software, which has transformed the way technology is created and shared. In this article, we’ll discuss open source software, the risks associated with using such software and strategic insights for corporations who use open source software.

What is Open Source Software?
Open source software (OSS) is computer software that is licensed in a way that allows its source code to be publicly available. This allows anyone to view ... Read More ›

On May 7, 2024, the Federal Trade Commission published a final rule banning the enforcement of nearly all non-compete clauses in employment agreements nationwide (89 FR 38342). This new rule will have sweeping effects across all sectors of the economy, if it survives court challenges that have already been filed (see, e.g., Chamber of Commerce of the United States of America et al. v. FTC, 6:24-cv-00148 (E.D. Tex., April 24, 2024).

What is the new rule?
The FTC’s new rule makes it an unfair method of competition to enter into new non-compete clauses or enforce existing non-compete ... Read More ›