January Insights

Updates on IP news from our global team!

Emotional Perception AI v UKIPO:

Is There a Change in The UK Intellectual Property Office’s Assessment of AI?

The UK Intellectual Property Office (UKIPO) has been more strict on eligibility requirements for computer-implemented inventions, including claims directed to artificial intelligence (AI), than the European Patent Office (EPO). However, a recent ruling in the High Court of England and Wales suggests that this could be about to change.

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An Accelerated Pathway Program

for Semiconductor Patents

Photo Credit: Vishnu Mohanan

The United States Patent and Trademark Office (USPTO) is implementing the Semiconductor Technology Pilot Program to expedite the examination of patent applications related to semiconductor manufacturing, research, and development. Under this program, which supports the CHIPS Act enacted by Congress in 2022, applications will be advanced out of turn for examination until a First Office Action is issued.

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Decoding Patents: Navigating the Implications of Foreign Prosecution Estoppel and Choice of POSITA

The recent decision by the United States Court of Appeals for the Federal Circuit (CAFC) in K-fee System GmbH v. Nespresso USA, Inc. involved important questions of claim construction and patent prosecution estoppel. Aligning with the ordinary understanding of the average person, the court interpreted the term "barcode" based on visual appearance rather than strict data encoding. However, did the Federal Circuit err in its claim construction by focusing on the wrong “person” of ordinary skill in the art (POSITA) when they construed “barcode” based on appearance rather than functionality? Notably, the court considered statements from the patent owner in foreign patent prosecution while construing the term, a consideration that seems to challenge established CAFC precedent.

This departure raises concerns about the potential impact on existing standards. As such, the ruling potentially expands the scope of prosecution history estoppel globally, prompting practitioners to take into account statements made in foreign prosecution of related patents during litigation proceedings in the United States. Ultimately, the decision navigates the delicate equilibrium between adaptability and precision in patent law, influencing the landscape of intellectual property protection.

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When Inventors Become Co-clients:

Best Practices for Inventor Communications in Prosecuting Patent Applications

Photo Credit: Dylan Gillis

Preparing a patent application requires careful communication between patent practitioners and inventors employed by a particular client. For a given invention, patent lawyers and patent agents must confirm many important technological concepts with the inventors in order to describe the invention and draft a specification that meets various patentability requirements. On the other hand, reckless communication may find the inventor becoming a co-client as discussed in a recent district court case.

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Congratulations to Motasem Abu Ghazaleh, OBWB's Global Trademark Manager, on his election to the board of directors of the Gulf Brand Protection Group (BPG). OBWB's presence on the board will further strengthen BPG's ability to advocate for and protect intellectual property rights in the Gulf. READ MORE

OBWB Partner, Han-Mei Tso, was a guest speaker at the December 2023 Symposium on China-U.S. IP Practice organized by CNIPA and the CNIPA-U.S. Bar Liaison Council. She gave two presentations at the event: Strategy for Chinese SMEs to Deal With IP Disputes on U.S. E-commerce Platforms; and, The USPTO’s Efforts Against Bad-Faith TM Registrations.