INNOVATE is the online magazine by and for AIPLA members from IP law students all the way through retired practitioners. Designed as an online publication, INNOVATE features magazine-like articles on a wide variety of topics in IP law.
In This Section
Tricky Ticket Websites
Written by Jamie Clark on January 12, 2024Picture this scenario: You discover that your favorite artist has announced a long-awaited tour, the must-see musical is coming to your town, or the top mixed martial artist is facing off against their fiercest rival. Excitedly, you go online and enter the artist’s, musical’s, or fighter’s name into the search bar, and to your astonishment and good fortune, the top search results display available tickets! You click on the website and make your purchase, only to later realize that the tickets aren’t officially on sale yet or that you’ve paid significantly more than the going ticket price. Or, to make matters worse, you arrive at the venue and present your tickets, only to be told that your assigned seats don’t exist. What happened? How is this possible? You bought your tickets from the venue’s website, or so you thought.
Tribal Sovereign Immunity and Piracy: From Blackbeard to Copyright
Written by Kehl Van Winkle on January 12, 2024At the height of the “Golden Age of Piracy,” Edward Teach, better known by his infamous moniker Blackbeard, lost his ship, Queen Anne’s Revenge, in a shipwreck off the coast of the South Carolina port of Beaufort. At the time Beaufort was a small, poor, village with people who lived under “constant threat from the Indians of the area.” Over 200 years after the sinking of Queen Anne’s Revenge, a marine salvage company discovered the wreckage of Blackbeard’s lost ship.
Cryptocurrency Regulation: Striking a Balance for Innovation
Written by Misha Solodovnikov on January 12, 2024The world of cryptocurrency and blockchain technology has been nothing short of revolutionary. In just over a decade, we've witnessed the rise of over eleven thousand cryptocurrencies, each with its own unique proposition and potential. This dizzying pace of innovation, however, has outpaced the development of appropriate regulatory measures, leaving the industry in a state of uncertainty and ambiguity.
Japanese Patent Covered a US Server - The IP High Court (IPHC) En Banc Decision
Written by Aki Ryuka on January 12, 2024Whether a Japanese patent covers an overseas server was litigated in Dwango v. FC2 (IPHC, May 26, 2023) (en banc). The patented system included a server and user terminals. Although FC2, Inc. in the US provided streaming media services with real-time user comments from a server in the US to the terminals in Japan, it was held that FC2 infringed Dwango's patent.
The Progress of Technology, by the (Patent) Numbers
Written by Elijah E. Cocks on January 12, 2024Innovation is embedded in the founding framework of the United States. From its ratification in 1788, the U.S. Constitution emphasized the effort “to promote the Progress of Science and useful Arts” that resulted in the formation of the U.S. Patent Office (and the U.S. Copyright Office). More than 230 years later, the U.S. Patent and Trademark Office (USPTO) has recently issued the 1 millionth design patent, and the grant of U.S. utility Patent No. 12,000,000 is right around the corner, expected in Spring 2024.
Decoding Reasonable Expectation of Success in Obviousness Determination
Written by Babak Akhlaghi on January 12, 2024In order for an invention to be patentable under the U.S. patent regime, it must be both novel and non-obvious. Novelty, in this context, refers to whether the invention is considered to be in the "public domain" under the law. The test for novelty is defined in 35 U.S.C. §102. The invention is considered to fail this test if a single prior art reference, such as a previous patent or publication, shows the same invention.
Revisiting Divisional Patent Applications: The Plurality of Inventions Debate in India
Written by Divyendu Verma on January 12, 2024In India, divisional applications can be filed under certain conditions, and these conditions are primarily governed by Section 16 of the Indian Patents Act, 1970.
Patenting Taylor Swift
Written by Tom Waters on June 21, 2023Taylor Swift had a good year in 2022. She dropped a new album and completely took over Billboard’s Top Ten list, the first artist in history to do so. She followed that by announcing a new world tour for 2023, the first in five years, (though Ticketmaster bungled the ticket sales). Still, a very good year. So good, she was almost patented.
I Know it When I Label It: Artificial Intelligence as a Solution to Unpredictable Musical Copyright Litigation
Written by Angelyn Gemmen & S. Sean Tu on June 21, 2023This article suggests that artificial intelligence may help define the current test for copyright infringement. Currently, the test for copyright infringement requires the jury or a judge to determine whether the parties’ works are “substantially similar” to each other. The “substantial similarity” test has been criticized due to its inconsistent nature. Using an AI algorthim to help determine substantial similarity could allow stakeholders to predictably establish copyright infringement. AI would provide a means of determining substantial similarity that is less biased and more fact driven while giving artists the ability to check if their work could be infringing before releasing it to the public.
Prosecution History Estoppel: Differences in Regulations between U.S., China, and Taiwan and Suggested Strategies
Written by George Jui-Hsien Huang on June 21, 2023While prosecution history estoppel (“PHE”) is common in patent infringement litigation in many countries, each country has different regulations and court practices in regard to claim interpretation in view of the prosecution history, limitations of PHE on the doctrine of equivalents (“DOE”), and the effects of the prosecution history of related cases, etc. We discuss in this article how PHE operates and how it is applied in the U.S., China, and Taiwan, and offer our suggestions.
The Quantum Frontier: Disrupting AI and Igniting a Patent Race
Written by Diego F. Freire on June 21, 2023The contemporary computer processor — at only half the size of a penny — possesses the extraordinary capacity to carry out 11 trillion operations per second, with the assistance of an impressive assembly of 16 billion transistors. This feat starkly contrasts the early days of transistor-based machines, such as the Manchester Transistor Computer, which had an estimated 100,000 operations per second, using 92 transistors and having a dimension of a large refrigerator.
IP Aspects of Augmented Reality and Virtual Reality Technologies
Written by Ryan N. Phelan, Barrett Spraggins, David Pointer, & George Raynal on June 21, 2023Presented during AIPLA’s 2022 Annual Meeting to the Augmented Reality/Virtual Reality Subcommittee.
Four U.S. Utility Patent Infringement Defenses the Average Bear Overlooks
Written by John D. Vandenberg on January 13, 2023What’s better than winning a patent lawsuit for an accused infringer? Winning on a theory the average bear patent litigator would have missed!
IP in Russia: “dura lex, sed lex” is still
Written by Kirill Osipov on January 13, 2023The author describes how Russian courts are treating IP rights of foreign entities and concludes that the current political climate has not affected how those IP rights are enforced.
The International Trade Commission, Though Designed to Protect Domestic Industry, Frequently Threatens It
Written by Joe Galvin on January 13, 2023The International Trade Commission (ITC) has power under Section 337 of the Tariff Act to investigate whether goods are being imported unfairly and are affecting a domestic industry. One type of unfair import is a good that infringes U.S. intellectual property rights, including patents. Section 337 can therefore be a useful tool for protecting American industry against infringing imports. But, increasingly, the ITC has become a means for certain non-practicing entities (or “NPEs”), often referred to as “patent trolls,” to exploit the ITC for financial gain—and to do so in a way that perversely threatens the very domestic industry the ITC was designed to protect.
IP Deadlines under Martial Law in Ukraine
Written by Slobodan Petosevic on January 13, 2023Until early April 2022 it was not clear exactly how IP deadlines would be affected by the martial law in Ukraine. The martial law, which was first introduced in Ukraine on February 24, 2022, has been extended several times and remains effective as of the writing of this article.
How to Invalidate a Patent in Ukraine – a Quick Guide
Written by Taras Manolov on June 7, 2022The amendments to the Ukrainian Patent Law, effective as of August 16, 2020, introduced new administrative procedures which allow third parties to invalidate patents and utility models.
Should a PHOSITA be defined by the specification or by the claims?
Written by Pu-Cheng (Leo) Huang on June 7, 2022An inventor cannot obtain a patent for an invention that is obvious to a “person having skill in the art” (“PHOSITA”) but courts continue to struggle with the question of whether the relevant person should be identified in light of the invention disclosed in the specification or the invention claimed. In a recent IPR decision, the PTAB adopted the former approach. Axonics Modulation Technologies, Inc. v. Medtronic, Inc., IPR2020-00715, (PTAB Sep. 13, 2021). However, the Supreme Court and the MPEP suggested that “it is to the claims of every patent that we must turn when we are seeking to determine what the invention is.” This Article considers the PTAB’s analysis and suggests the claims should be the proper measure for determining who is a PHOSITA.
Entering the National Phase of Patent Applications in India under the Patent Cooperation Treaty
Written by Dr. Mohaan Dewan on June 7, 2022The Patent Cooperation Treaty (PCT), administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO), assists applicants in seeking patent protection for an invention simultaneously in a large number of countries by filing a single “international” (or “PCT”) patent application, and complying with the PCT formality requirements and procedures. This phase is termed the “international” phase. The granting of patents remains under the control of the national or regional patent Offices in what is termed the “national phase.” For obtaining patent protection in India, applicants need to enter the PCT national phase in India by complying with the specific provisions of the Indian Patents Act. Unlike most jurisdictions, the Indian Patent Office (IPO) does not allow any amendments at the time of national phase entry. Although amendments may be made after the national phase entry, there are limitations on the types of amendments that are allowed.
Strategies in Response to Patent Eligibility Requirements for Computer Software Patents in the United States, Taiwan, Japan, China and Europe
Written by George Huang on June 7, 2022Eligibility is the first challenge applicants would face during patent prosecution, especially for a computer software related application. While there is little difference in the majority of patent regulations among each jurisdiction due to international harmonization, significant differences exist regarding eligibility of computer software related applications. This article describes computer software patent eligibility requirements for TIPO, JPO, USPTO, CNIPA and EPO, analyzes and compares examination in each office using a single case example, and discusses corresponding prosecution strategies.
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