Updates on IP news from our global team!

USPTO Provides Inventorship Guidance on AI-Assisted Inventions

On February 13, 2024, the USPTO published its much-anticipated guidance on inventorship for AI-assisted inventions with immediate effect. This guidance, issued pursuant to President Biden’s Executive Order on AI issued in October 2023, clarifies how the USPTO will analyze inventorship of inventions made by humans with the use or assistance of AI and explains how this may impact other areas of patent practice. The USPTO has also issued examples demonstrating how the new guidelines should be applied in practice and is seeking public comments on the guidance as well as the examples.

Photo Credit: Justus Menke

The U.S. Court of Appeals for the Federal Circuit recently affirmed a district court’s decision of noninfringement of an International Business Machines Corporation patent based on intrinsic evidence supporting a specific claim interpretation. The claims were found to require “pre-fetching” of data for local storage and later “on-demand” retrieval even though this feature was not explicitly recited in those claims, in view of certain language in the specification and the prosecution history of the patent.  Thus, the claims were not infringed. This decision highlights the importance of not only claim language, but also the language in the specification and that used during prosecution.

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In late February, the United States Patent and Trademark Office (USPTO) issued an update to the current guidance to examiners in making obviousness determinations. The five-point guidance emphasizes the flexible approach to determining obviousness in light of the U.S. Supreme Court’s decision in KSR Int'l Co. v. Teleflex Inc. (KSR). The update is based on a review of several cases from the past ten years of post-KSR America Invents Act (AIA) law.

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Photo Credit: Pascal Meier

In RAI Strategic Holdings, Inc. v. Philip Morris Products S.A., the U.S. Court of Appeals for the Federal Circuit recently vacated a PTAB determination that a claim phrase specifying a numerical range lacked written description support under 35 U.S.C. § 112. The Court held that the PTAB’s determination was not supported by substantial evidence. This decision reinforces the existing legal standard that a claimed numerical range may be implicitly supported in the specification considering the knowledge of a person having ordinary skill in the art, rather than being expressly supported by actual written description.  

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Our OBWB team looks forward to connecting with colleagues at INTA 2024 in Atlanta, Georgia. We welcome you to visit us at our hospitality suite in the Georgia World Congress Center. To request a meeting, please email our event coordinator here. 

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