World Intellectual Property Organization Adopts Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge; WilmerHale, August 26, 2024

• • • Daniel S. Volchok, Thomas G. Saunders, Laura E. Powell, WilmerHale; World Intellectual Property Organization Adopts Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge

"Following nearly twenty-five years of negotiations, members of the World Intellectual Property Organization (WIPO) recently adopted a treaty implementing the new requirement for international patent applicants to disclose in their applications any Indigenous Peoples and/or communities that provided traditional knowledge on which the applicant drew in creating the invention sought to be patented.1 The treaty was adopted at WIPO’s “Diplomatic Conference to Conclude an International Legal Instrument Relating to Intellectual Property, Genetic Resources, and Traditional Knowledge Associated with Genetic Resources,” which was held May 13–24.2 The goal of the treaty, known as the WIPO Treaty on Intellectual Property, Genetic Resources and Associated Traditional Knowledge, is to “prevent patents from being granted erroneously for inventions that are not novel or inventive with regard to genetic resources and traditional knowledge associated with genetic resources.”3 This treaty—the first treaty of its kind, linking intellectual property and Indigenous Peoples—also aims to “enhance the efficacy, transparency and quality of the patent system with regard to genetic resources and traditional knowledge associated with genetic resources.”4 

Once the treaty is ratified, patent applicants will have new (but nonretroactive) disclosure requirements for international patent applications."

USPTO Seeks Public Comment on the Impact of Artificial Intelligence on Patentability; JDSupra, June 17, 2024

Ivy Clarice Estoesta, Roozbeh Gorgin , JDSupra; USPTO Seeks Public Comment on the Impact of Artificial Intelligence on Patentability

"The relentless march of technological progress presents a unique challenge for the intellectual property (IP) landscape. Earlier this year, the United States Patent and Trademark Office (USPTO) issued a Request for Comments (RFC) on inventorship guidance for AI-assisted inventions. See 89 FR 10043, available here (last visited June 10, 2024). Many responses to that inquiry, which closes on June 20, 2024, have encouraged the USPTO to investigate how AI impacts obviousness determinations. Not surprisingly, the USPTO recently issued a RFC seeking public input on the potential impact of Artificial Intelligence (AI) on prior art, the knowledge of a person having ordinary skill in the art (PHOSITA), and determinations of patentability. See89 FR 34217, p. 34217, available here (last visited June 10, 2024). This client alert summarizes that RFC and delves into the complexities surrounding AI and patents, exploring the implications for patent applications, patent owners, patent practitioners, and the future of IP law."

Can You Trademark a Potato? Take Our Food-Branding Quiz.; The New York Times, June 4, 2024

Nick Robins-Early , The New York Times; Can You Trademark a Potato? Take Our Food-Branding Quiz.

America is saturated with food trademarks. The Cronut? Trademarked. Pop-Tarts? Trademarked. Even grapes that taste like cotton candy, and the mash-up of gai lan and broccoli called Broccolini are legally protected.

Yet the celebrity chef David Chang was widely criticized this spring for pressuring small manufacturers to stop using the term “chile crunch.” His business holds the trademark for the spicy condiment, but many people wondered: How can a name common to so many cuisines be owned by one company?

The answers to that question and many more lie in the byzantine deliberations of the U.S. Patent and Trademark Office, in Alexandria, Va. It has registered more than 200,000 food and agricultural trademarks, which means that the name or product — the brand, essentially — is unique enough that no one else is allowed to use it for a similar item. (Recipes can’t be trademarked, but some can be ruled trade secrets, like the formula for Dr Pepper or KFC’s 11 herbs and spices.)

The process of deciding what merits a trademark can be downright Talmudic, starting with the hierarchy of trademark types. The easiest to secure and protect are the completely made-up words that the office calls “fanciful,” like Häagen-Dazs. Next are “arbitrary" names — real words that have nothing to do with the products they identify, like Apple for computers. Harder-to-trademark categories include “suggestive” names, which contain a hint of what the product is, like SweeTarts, and plainly “descriptive” ones, like All-Bran.

There are precise legal requirements to meet, but also room for subjective interpretation. Public perception is the barometer. If a name seems confusing, misleading or too common, it won’t get a trademark. “Our job is to figure out what the American consumer is thinking,” said Amy Cotton, the deputy commissioner for trademark examination.

As a consumer, how good are you at gauging what deserves a trademark?"

AI/IP Issues Part 2: What Current Litigation Can Tell Us About Where IP in AI Is Heading; LexisNexis, Wednesday, July 24, 2024 1 PM EDT, 10 AM PDT

LexisNexis ; AI/IP Issues Part 2: What Current Litigation Can Tell Us About Where IP in AI Is Heading

"Recent litigation involving generative artificial intelligence (AI) and intellectual property highlights emerging issues that companies need to understand. This webcast explores the litigation trends around patent eligibility and novelty issues, copyright and the fair use defense, and trade secret misappropriation to understand how these cases can help in-house counsel develop internal policies to best protect the company’s intellectual property. Additionally, these current cases can help corporate counsel anticipate challenges and make informed decisions when adopting AI.  

Attend to discover insights into the following trends:

• Patent litigation reveals uncertainties around patent eligibility and novelty where inventions and/or inventors involve generative AI. 
• Trade secret litigation is trending up as companies have started to maximize technology protection with trade secrets and recent jury awards have made it a valuable form of intellectual property protection.  
• Copyright cases are testing the boundaries of fair use related to generative AI."

Intellectual property: Protecting traditional knowledge from Western plunder; Frontine, May 15, 2024

 DEUTSCHE WELLE, Frontline; Intellectual property: Protecting traditional knowledge from Western plunder

"Stopping the loss of heritage and knowledge

“The problem? When a patent for traditional knowledge is granted to a third party, that party formally becomes the owner of such knowledge,” said Sattigeri. “The nation loses its heritage and its own traditional knowledge.” But now, that could be changing. In May 2024, WIPO’s 193 member states will meet and potentially ratify the first step of a legal instrument aimed at creating greater protections for these assets.

WIPO has broken them down into three areas seen as vulnerable under the current system: genetic resources, traditional knowledge, and traditional cultural expression. Genetic resources are biological materials like plants and animals that contain genetic information, while traditional knowledge encompasses generational wisdom within communities, which is usually passed down orally. This could include knowledge about biodiversity, food, agriculture, healthcare, and more. Traditional cultural expression includes artistic creations reflecting a group’s heritage and identity, like music, art, and design.

“It changes the classic understanding of intellectual property,” said Dornis. “It might break the system that [says that] many things are unprotected.”"

Japan's universities fail to make the most of intellectual property; Nikkei Asia, March 9, 2024

KENJIRO SUZUKI, Nikkei Asia; Japan's universities fail to make the most of intellectual property

"Due to lack of support, patents earn only 2% compared to U.S. schools"

Pitt ranks in top 20 for patents granted to universities worldwide; PittWire, February 15, 2024

Mike Yeomans, PittWire; Pitt ranks in top 20 for patents granted to universities worldwide

"The University of Pittsburgh has ranked No. 19 of the Top 100 Worldwide Universities Granted Utility Patents in 2023, according to a list published by the National Academy of Inventors (NAI).

Released annually by the NAI since 2013, the Top 100 Worldwide Universities List spotlights the universities holding U.S. utility patents to showcase the important research and innovation taking place within academic institutions.

Pitt innovators were issued 114 U.S. patents in calendar year 2023, compared to 105 in 2022."n

AI and inventorship guidance: Incentivizing human ingenuity and investment in AI-assisted inventions; United States Patent and Trademark Office (USPTO), February 12, 2024

Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, United States Patent and Trademark Office (USPTO) ; Director's Blog: the latest from USPTO leadership

AI and inventorship guidance: Incentivizing human ingenuity and investment in AI-assisted inventions

"Today, based on the exceptional public feedback we’ve received, we announced our Inventorship Guidance for AI-Assisted Inventions in the Federal Register – the first of these directives. The guidance, which is effective on February 13, 2024, provides instructions to examiners and stakeholders on how to determine whether the human contribution to an innovation is significant enough to qualify for a patent when AI also contributed. The guidance embraces the use of AI in innovation and provides that AI-assisted inventions are not categorically unpatentable. The guidance instructs examiners on how to determine the correct inventor(s) to be named in a patent or patent application for inventions created by humans with the assistance of one or more AI systems. Additionally, we’ve posted specific examples of hypothetical situations and how the guidance would apply to those situations to further assist our examiners and applicants in their understanding."

Addressing the epidemic of high drug prices; Harvard Law Today, January 5, 2024

 Jeff Neal, Harvard Law Today; Addressing the epidemic of high drug prices

"The Biden administration is once again targeting high drug prices paid by Americans. This time, officials are focused on prescription medications developed with federal tax dollars. The United States government, through the National Institutes of Health (NIH), awards billions of dollars of research grants to university scientists each year to fund biomedical research, which is often patented. The universities in turn grant exclusive licenses to companies to produce and sell the resulting drugs to patients in need. But what happens if a drug company fails to make a medication available, or sets its price so high that it is out of reach for a significant percentage of patients?

To tackle this problem, the Biden administration recently released a “proposed framework” that specifies when and how the NIH can “march in” and award the rights to produce a patented drug to a third party if the patent licensee does not make it available to the public on “reasonable terms.” The plan is based on a provision included in the Bayh-Dole Act, a 1980 federal law which was designed to stimulate innovation by encouraging universities to obtain and license patents for inventions resulting from federally funded research.

According to Harvard Law School intellectual property expert Ruth Okediji LL.M. ’91, S.J.D. ’96, although the Biden administration’s proposed framework for using government march-in rights to lower drug costs is an important development, whether it will be successfully implemented and result in meaningful drug price reductions remains to be seen. Harvard Law Today recently spoke to Okediji, the Jeremiah Smith, Jr. Professor of Law and faculty director of Global Access in Action(GAiA) at the Berkman Klein Center, about the new proposal and the legal challenges it might face."

Rory Cooper honored at White House by President Biden; University Times, University of Pittsburgh, November 2, 2023

University Times, University of Pittsburgh; Rory Cooper honored at White House by President Biden

"Rory Cooper, who has been given a slew of awards over the years for his work in rehabilitation sciences, found himself at the White House last week, where President Joe Biden bestowed on him the nation’s highest honor for technological achievement.

Cooper is founding director of Pitt’s Human Engineering Research Laboratories and, since 2021, assistant vice chancellor for research for STEM-health sciences collaborations.

He was among several people Biden presented the National Medal of Technology and Innovation to on Oct. 24. On Oct. 26, Cooper, who holds nine U.S. patents and has nine more pending, also was inducted into the 50th class of the National Inventors Hall of Fame at a gala in Washington, D.C."

What 70% of Americans Don’t Understand About Intellectual Property; Stites & Harbison, October 26, 2023

Mandy Wilson Decker, Stites & Harbison; What 70% of Americans Don’t Understand About Intellectual Property

"The United States Intellectual Property Alliance (USIPA) recently published the results of its US Intellectual Property Awareness & Attitudes Survey. Among its findings, the survey results revealed that 70% of Americans are unable to distinguish between mechanisms – patents, trademarks, copyrights, and trade secrets – for protecting Intellectual Property (IP).

Given these results, it's worth exploring the principal mechanisms for protecting IP, which each possess some distinctive features."

Learn about government resources for protecting your intellectual property; United States Patent and Trademark Office (USPTO), September 1, 2023

United States Patent and Trademark Office (USPTO); Learn about government resources for protecting your intellectual property

"Join us at our next Patent Pro Bono Program: Pathways to inclusive innovation event on October 11 from 12:30-5:30 p.m. ET, virtually or in person at the United States Patent and Trademark Office (USPTO) headquarters in Alexandria, Virginia. 

During this event, leaders in the intellectual property (IP) and small business community will share their stories and tips on how to protect your IP via patents and trademarks. We welcome all current and aspiring entrepreneurs interested in learning more about:

• Succeeding in business
• Identifying and protecting IP
• Securing options for funding
• Expanding business networks

A detailed agenda with speakers is listed on our event page.

Registration is required for in-person and online attendees. Seats for in-person attendance are limited, so register now to secure your spot. 

For questions about this event, please contact probono@uspto.gov"

Introduction to Intellectual Property; West Virginia Libraries (WVU) , Tuesday, August 29, 2023

West Virginia Libraries (WVU) ; Introduction to Intellectual Property

"Curious about Trademarks, Copyrights, Patents, & Trade Secrets? Join us for an overview of intellectual property.

 Intellectual Property by Marian Armour-Gemmen"

How a Drug Maker Profited by Slow-Walking a Promising H.I.V. Therapy; The New York Times, July 22, 2023

Rebecca Robbins and Sheryl Gay Stolberg, The New York Times; How a Drug Maker Profited by Slow-Walking a Promising H.I.V. Therapy

"Gilead, one of the world’s largest drugmakers, appeared to be embracing a well-worn industry tactic: gaming the U.S. patent system to protect lucrative monopolies on best-selling drugs...

Gilead ended up introducing a version of the new treatment in 2015, nearly a decade after it might have become available if the company had not paused development in 2004. Its patents now extend until at least 2031.

The delayed release of the new treatment is now the subject of state and federal lawsuits in which some 26,000 patients who took Gilead’s older H.I.V. drugs claim that the company unnecessarily exposed them to kidney and bone problems."

Generative AI’s Intellectual Property Problem Heats Up AIs producing art or inventions have to navigate a hostile legal landscape, and a consensus is far away; IEEE Spectrum, June 13, 2023

RAHUL RAO, IEEE Spectrum; 

Generative AI’s Intellectual Property Problem Heats Up  AIs producing art or inventions have to navigate a hostile legal landscape, and a consensus is far away

"Walsh and Alexandra George, a patent law scholar at the University of New South Wales, suggested future-proofing the patent system by sorting AI-generated inventions into a category they named “AI-IP.” Patents under AI-IP would last for less time than traditional patents and possibly give a share to AI model developers or training data owners.

But, especially in a future where AI becomes ubiqutious, any categorization method likely runs against a question, one with no consensus answer: What, if anything, separates a human creation from an AI creation?"

Colleagues want a 95-year-old judge to retire. She’s suing them instead.; The Washington Post, June 5, 2023

Rachel Weiner , The Washington Post; Colleagues want a 95-year-old judge to retire. She’s suing them instead.

"Newman’s refusal to quit on anyone else’s terms served her early in her career. Three decades after her mother marched for the right to vote, Newman decided she would be a doctor. No medical school accepted her. She went to graduate school at Yale for chemistry instead; no chemical firm would hire her except American Cyanamid. She was the only female research scientist there, and her bosses tried to force her into becoming a librarian until she threatened to walk out.

She would later receive her own patents for colorful, dirt-resistant synthetic fabric she helped invent. But after three years, Newman took her savings and bought a ticket on a boat to Paris, where she supported herself by mixing drinks on the Île Saint-Louis.

Six months later, “totally destitute,” Newman came back to the United States and found “a job that I knew no respectable scientist would take, and that was writing patent applications,” she told female law students at New York University in 2013. Soon, she was a patent lawyer. The next time she went to Paris, it was as a science policy specialist for the United Nations, again the only woman in her professional association. On her office desk sits a mug from a bar she could not enter during her time at NYU Law — it reads “Good ale, raw onions, and no ladies.”"

10 things to know about copyright and software; Lexology, June 20, 2023

Gowling WLG - Matt Hervey , Lexology; 10 things to know about copyright and software

"8. Other people can copy what your software does …

You can enforce your copyright against someone copying your code, not copying what your software does. Copyright protection only applies to "expression" not ideas and principles. Under UK and EU law, if someone has lawful access to your software (e.g. someone you have licensed to use it) they are entitled to study and test the way it functions to figure out (and copy) the ideas and principles underlying the software. In fact, any contractual provision to the contrary is null and void.

9. … so consider patent protection

Unlike copyright, patents grant you a 20-year monopoly over what your software does: you can stop other people doing the same thing and it does not matter whether they copied you or came up with the same idea independently. Getting patents for software is not straightforward and needs specialist advice on what is possible. You may also want to check if other people have patents covering what you want to do. Our Patents team can advise you on any challenges you face in a number of jurisdictions.

10. … and trade secrets 

Where patent protection is not possible or desirable, keeping the code and workings of your software secret may be the best option. Restrict access to source code (and AI-related assets such as training data, hyperparameters, models and outputs) with password protection, firewalls, access logs, etc. Use APIs to restrict third-party access to source or compiled code and considering restricting the throughput of access to your API (the performance of AI models can be partially reverse engineered quickly given unrestricted access to inputs and outputs).

Put in place training, policies and contractual terms with employees, contractors and collaborators for the protection, use and potential disclosure of trade secrets. Bake this into you IP strategy and procedures to benefit from the enforcement options for trade secrets and confidential information. Having good procedures helps to protect both your own secrets and third-party secrets entrusted to you … and to stop employees and contractors bringing unwanted third-party secrets into your business."

If AI invents a new medicine, who gets the patent?; Stat, June 8, 2023

Brittany Trang, Stat; If AI invents a new medicine, who gets the patent?

"Pharmaceutical and biotech companies are increasingly using artificial intelligence to discover and make drugs and therapeutics. Congress on Wednesday asked the question: Does that mean AI can be an inventor on a patent?"

IP Challenges and Risks Unique to AI – Part I; National Law Review, May 14, 2023

David W. Leibovitch, The National Law Review; IP Challenges and Risks Unique to AI – Part I

"Patents must also sufficiently describe the invention so as to enable a person of ordinary skill in the art to carry out the invention. This is uniquely challenging for AI inventions, due to the “black box” nature of some AI engines. There is potential for near-term evolution in this area of patent law. How can businesses ensure that patent applications filed today will meet future standards? Companies should be aware of these potential shifts and adapt their IP strategies accordingly.

Copyrighting AI-generated content is also topical. Presently, whether AI-generated subject matter is copyrightable may bear on the level of human contribution. Moreover, determining who owns the copyright may depend on contractual provisions (e.g., website terms of service)."

Patents, spy balloons and outcompeting China: What our leaders are missing; The Hill, March 12, 2023

PAUL R. MICHEL AND MATTHEW J. DOWD, The Hill; Patents, spy balloons and outcompeting China: What our leaders are missing

"For all of U.S. history, patents have provided the needed incentives. Without reliable patent protection, few corporate decision-makers or venture capital leaders would make the investments to support the breakthroughs.

And now, more breakthroughs are exactly what America needs to counter China’s accelerating technology surge. Think computer chips, genetic and personalized medicine, clean energy, artificial intelligence and other advanced technologies of the 21st century.

But we’re starting to lag behind China, which is devoting untold resources toward becoming the global leader. A recent Harvard Kennedy School report warned that China is set to overtake the United States, if U.S. policy does not change."