Imagine That IP Law Blog

Before examining whether a particular invention is patentable over the prior art, there’s an even more fundamental question: who is the inventor? The U.S. Constitution gives Congress the power to grant exclusive patent rights to inventors, but does not define who or what qualifies as an inventor. Previously, this has been a relatively straightforward issue, with the Federal Circuit noting in Univ. of Utah v. Max-Planck-Gesellschaft zur Forderung der Wissenschaften e.V, 734 F.3d 1315, 1323 (Fed. Circ. 2013), that “inventors must be natural persons and cannot be corporations ... Read More ›

ChatGPT has exploded in the media recently with news stories ranging from educators’ concerns over students using ChatGPT to cheat on assessments, to ChatGPT becoming an existential threat to Google’s online advertising dominance, as well as ChatGPT potentially replacing professionals such as software coders and writers, and even the threat that an artificial intelligence (AI) could take and pass exams for doctors and lawyers.

For those not yet exposed to it, ChatGPT is an online “chat bot” from OpenAI, powered by artificial intelligence (AI), that can engage in a ... Read More ›

The advantages of 3D printing in the automotive industry are clear — reduce the overhead spend on standard manufacturing tools and procedures while also increasing speed of production. Computer-aided design (CAD) software, generally provided in the form of an electronic file for use on a computer, is fundamental to the 3D printing manufacturing process in that the end product is based upon the CAD file. While a company’s actual 3D-printed products can be protected by both design and utility patents, securing the intellectual property of the manufacturing process, including ... Read More ›

One misconception among those who primarily litigate patent infringement actions before U.S. federal courts is that post-grant proceedings before the Patent Trial and Appeal Board (PTAB), including inter partes reviews (IPRs) and post grant reviews (PGRs), are similar to federal patent litigation. Although there are similarities between these types of proceedings, as IPR/PGR proceedings are also adversarial between the petitioner (i.e., the patent challenger) and the patent owner, there are important differences between the two. Besides the differences in legal ... Read More ›

Discussing the technical advantages of an invention, a standard practice in many jurisdictions such as before the European Patent Office, has long been disfavored in the US.  However, recent Federal Circuit case law suggests that there may be significant value to be gained by discussing the advantages of the claimed invention in the context of the prior art in order to establish patent eligibility under 35 U.S.C. §101.

In the recent Federal Circuit Court of Appeals case of Cooperative Entertainment, Inc. v. Kollective Tech, Inc., the Court reaffirmed the importance of the ... Read More ›

Artificial Intelligence (AI) is everywhere these days, from personal assistants to self-driving cars. With the continuous introduction of new technology, the use of artificial intelligence in business has been growing rapidly, and in ways that people have never imagined. AI is used in many software products and services, and is also being integrated into manufacturing processes. AI frequently automates routine tasks that were previously performed by people, eliminating tedious work, making business processes more efficient, and creating new capabilities and ... Read More ›

A distinctive trademark in a competitive marketplace can often be one of a company’s most valuable assets. This is because it does not only indicate the source of a good or service, but it also differentiates that good or service(s) from that of other competitors. Separate and apart from its value as a source indicator, trademarks can also be used as collateral to secure loans and can also form the basis of corporate acquisition strategies.

Like the valuable asset they are, trademark rights should and can be protected. Resultingly, common law, state law, and federal law provide a means ... Read More ›

The April 16^th, 2022, New York Times editorial entitled “Save America’s Patent System” recommends that the US Patent and Trademark Office (USPTO) be improved through collaboration with other agencies such as the Food and Drug Administration (FDA). The editorial identified that “[e]xisting regulations allow medical device makers to sidestep burdensome regulatory approvals if their newer products are deemed similar to ones that already exist.”

However, the editorial board of the New York Times recognized that the lack of collaboration between the FDA and the USPTO ... Read More ›

Earlier this year, based on a suggestion from the Congress of the United States, the United States Patent and Trademark Office (“USPTO”) implemented the Deferred Subject Matter Eligibility Pilot Program (“Pilot Program”). During the duration of the Pilot Program, the USPTO will be evaluating the effects of permitting applicants to defer responding to Subject Matter Eligibility Rejections, i.e., 35 U.S.C. §101 rejections. The Pilot Program began in February of this year and runs through the end of July, and will likely have a large impact in art units focused on Artificial ... Read More ›

A recent Federal Circuit decision in Larry G. Junker v. Medical Components, Inc., Martech Medical Products, Inc., 2021-1649, 2022 U.S. App. LEXIS 3647 (Fed. Cir. Feb. 10, 2022) serves as a reminder for businesses to carefully watch commercial activity with respect to the bar date for patent applications.

The subject of the appeal is Mr. Junker’s design patent claiming an ornamental design for a handle for an introducer sheath shown below with solid lines.

Mr. Junker accused the defendants of infringing the patented design. In response, the defendants countered in-part that the ... Read More ›