Here’s the latest.

USPTO Says AI Can’t be A Named Inventor

Reported by Ian Lopez and Susan Decker on

The U.S. Patent and Trademark Office said that U.S. law bars artificial intelligence from being listed as an inventor. Interpreting the term ‘inventor’ in patent law “to encompass machines would contradict the plain reading of the patent statutes that refer to persons and individuals,” the agency said. The patent office’s decision came in its rejection of an application from the Artificial Inventor Project.

Federal Circuit Proposes Tweaks

Reported by Perry Cooper on

The Federal Circuit proposed changes to its Rules of Practice. The proposed amendments on briefing specify that parties should attach the decision they are appealing. Patent cases should include the full text of the patent at issue. A proposed new rule would consolidate all privacy and confidentiality guidelines and clarify requirements for advising the court of confidential material.

The Federal Circuit Explains when Winning Isn’t Prevailing

Reported by Daniel H. Shulman on

In this article, Daniel Shulman explains the results in two recent Federal Circuit decisions: O.F. Mossberg & Sons, Inc. v. Timney Triggers, LLC and Dragon Intellectual Prop., LLC v. DISH Network LLC. Both winning parties asked for attorneys’ fees available to a “prevailing party.” But, the Federal Circuit denied attorneys’ fees to Timney in Mossberg, but allowed them to DISH in Dragon. Shulman attributes the different results to mastery of civil procedure:

“The two cases tell a cautionary tale. Whether knowingly or not, Mossberg avoided exposure to attorneys’ fees by filing a voluntary dismissal before the district court could lift the stay. That tactic could carry enormous weight as precedent. By statute, once the most common types of post-grant proceedings are begun in the PTO, the district court is required to issue a stay. 35 U.S.C. § 315(a)(2) (requiring a stay in inter partes review proceedings). A party that loses in the PTO is counseled to immediately file a voluntary dismissal under Rule 41 before the stay is lifted. Patent holders whose patents are under review in the PTO should avoid stipulating to any entry of judgment or lifting of the stay.”

For more on these cases see our coverage of O.F. Mossberg & Sons, Inc. v. Timney Triggers, LLC and Dragon Intellectual Prop., LLC v. DISH Network LLC