Welcome to this edition of IP Five in 5 – where we cover the top five IP news stories in 5 minutes or less. This week’s edition highlights include the USPTO clarifying patent rules for computer-generated design claims, the European Patent Office declaring the Moderna patent invalid, and more.
Patent Spotlight
USPTO Clarifies Patent Rules for Computer-Generated Design Claims
On November 16, the USPTO issued guidance on the patentability of design claims involving computer-generated electronic images. Addressing 35 U.S.C. 171 clarifies eligibility for digital designs displayed on screens, monitors, or VR/AR goggles. The updated guidelines aim to resolve concerns raised during public comment, specifying acceptable and unacceptable language for computer-generated icons and GUIs.
Source: Bloomberg Law
Moderna Faces Setback as European Patent Office Invalidates mRNA Patent
On November 21, the European Patent Office invalidated Moderna’s contested mRNA patent, favoring BioNTech and Pfizer in a vaccine patent dispute. Moderna plans to appeal. Wall Street saw a 2.3% premarket drop in Moderna’s shares. BioNTech welcomed the decision, asserting Moderna’s patents fail to meet requirements.
Source: Reuters
USPTO to Introduce Specialized Design Patent Bar in 2024
Starting January 2, 2024, the US Patent and Trademark Office (USPTO) will introduce a significant change: a separate design patent bar. This rule permits practitioners to specialize in design patent proceedings without a science or engineering background, aligning criteria with examiners, increasing representation, and improving the quality of design patent practitioners.
Source: Lexology
Trademark Spotlight
Federal Circuit Upholds TTAB Decision in ‘Ranger Trek’ Trademark Dispute
On November 15, the Federal Circuit affirmed the TTAB’s decision in the “Ranger Trek” trademark dispute between Trek Bicycle Corp. and a newcomer. The case involves a dispute between two trekking-themed trademarks, “Trek” and “Ranger Trek,” employing a complex thirteen-factor test, a specific method for this evaluation to assess potential similarities. The Federal Circuit upheld the TTAB’s determination that the marks were distinct, considering factors like commercial impression, fame, and conceptual strength.
Source: Lexology
Copyright Spotlight
OpenAI and Microsoft Accused of Copyright Infringement
On November 21, OpenAI and Microsoft faced a copyright lawsuit in Manhattan federal court. The lawsuit by author Julian Sancton alleges that OpenAI and Microsoft unlawfully used nonfiction books, including their own, to train their AI models like ChatGPT. The proposed class action asserts the “rampant theft of copyrighted works,” seeking damages and a court order to halt the alleged infringement. Both companies have previously denied similar allegations.
Source: Reuters
