Updates on IP news from our global team!

On April 30, 2024, the United States Patent and Trademark Office (USPTO) published a Request for Comments (RFC) regarding the impact of the proliferation of artificial intelligence (AI) on prior art, the knowledge of a person having ordinary skill in the art (PHOSITA), and determinations of patentability made in view of the foregoing. In this article we provide context for the questions asked in the RFC and ask our readers to provide input on a selection of the questions from the RFC via a survey.  

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In LKQ Corp. v. GM Global Tech. Operations LLC, the Court of Appeals for the Federal Circuit (“CAFC”) or “Federal Circuit”) overruled the existing Rosen-Durling test for analyzing obviousness of design patents. That test required that the primary reference must (1) be “basically the same” as the challenged design claim and (2) that any secondary references must be “so related” to the primary reference that features in one would suggest application of those features to the other. In place of the Rosen-Durling test, the Federal Circuit’s new, more flexible approach is more consistent with the statutory scheme for obviousness of utility patents. The LKQ Court noted that, “[a]s with any change, there may be some degree of uncertainty for at least a brief period, [] our elimination of the rigid Rosen-Durling test is compelled by both the statute and Supreme Court precedent.” This decision will likely make obviousness rejections more common, and design patents harder to obtain, as examiners have greater flexibility in establishing primary references and combining the primary references with secondary references. Additionally, this decision will likely make invalidating existing design patents easier as a wider array of prior art will be available to challengers.

In May 2024, the Court of Appeals for the Federal Circuit held in SnapRays v. Lighting Defense Group, that a patent owner’s use of Amazon’s APEX program against an accused infringer gave rise to personal jurisdiction over the patent owner in the district where the accused infringer resided. This case is a reminder to patent owners and accused infringers alike to be strategic in all forms of patent enforcement and defense in the U.S., and to keep in mind not only the advantages but also potential disadvantages of utilizing third-party non-judicial enforcement programs.

Under the Unified Patent Court (UPC) Agreement, a claimant seeking provisional measures based on a non-opted out European patent or a European patent with unitary effect (“unitary patent”) may file an application for provisional measures before the main proceedings have been started (Rule 206 of the Rules of Procedure of the UPC (RPUPC)). More importantly, the claimant may obtain the provisional measures without the defendant being heard to oppose the application, in particular where any delay is likely to cause “irreparable harm” to the applicant or where there is a “demonstrable risk of evidence being destroyed” (Rule 212 RPUPC). One of the more common uses of such applications is to prevent a competitor from promoting an allegedly infringing item at an upcoming trade fair.

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In Virtek Vision International ULC v. Assembly Guidance Systems, Inc. [1], the United States Court of Appeals for the Federal Circuit (CAFC) reversed the Patent Trial and Appeal Board’s (PTAB) determination that various claims of U.S. Patent No. 10,052,734 were unpatentable under AIA 35 U.S.C. § 103. The CAFC concluded that the PTAB erred as a matter of law with respect to how the “motivation to combine” doctrine was applied. In particular, although PTAB’s rationale focused on a “finite number of identified predictable solutions” in satisfaction of criterion supplied by the U.S. Supreme Court in KSR Int'l Co. v. Teleflex Inc. [2], the CAFC asserted that the recognition of finite alternative arrangements by itself is not sufficient to meet the motivation to combine requirement.  

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Recently, important changes have occurred in the domain of intellectual property laws across several Gulf countries, focusing on patents, industrial designs, and trademarks. These amendments are introduced to streamline procedures and enhance the protection of intellectual property rights in their respective countries. The recent developments in intellectual property (IP) regulations across Saudi Arabia, the United Arab Emirates (UAE), and Qatar are briefly outlined here.

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On May 24, 2024, the WIPO member states approved a new treaty titled, “TREATY ON INTELLECTUAL PROPERTY, GENETIC RESOURCES AND ASSOCIATED TRADITIONAL KNOWLEDGE.” The first new WIPO treaty in more than a decade, this approval marks the culmination of efforts that began with a proposal by Columbia in 1999 and continued through lengthy negotiations within WIPO since 2001. Negotiations had been difficult because while some states considered this treaty to be an important step toward protecting local genetic resources and traditional knowledge of indigenous people and communities, other parties considered the proposed requirements to be unduly burdensome on patent applicants and argued the Nagoya Protocol, the current definition of prior art, and existing requirements such as the duty of disclosure in the United States Patent Office already address these concerns. Ultimately, the language of the treaty as approved is a compromise that reflects these differing views.

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