Mark Lemley

Interesting tidbits from a blog post writen by Kathi Vidal, Director of the USPTO today: While the USPTO employes 10,000 employees in Patents, it has only "nearly 1,200" employees in Trademarks. In FY 2023, the USPTO's average pendency from TM application filing to initial examination was 8.5 months. Thus, the agency hired 85 new trademark examining attorneys who each received nine months of introductory training, and two more groups of new (or returning) Trademark Examiners are going through that 9-month training right now. In June 2023 the USPTO began shifting its fraud-related work to its Register Protection Office so TM examiners could focus on reviewing applications. Through April 2024, new TM application filings have been ~3% higher than the first seven months of 2023. In FY 2023, average annual trademark first action pendency was 8.5 months. Presently, average annual first action pendency is 7.85 months and is dropping. The USPTO thinks it is improving. I think it is tasked with an impossible job, and yet, I expect it to do better. What do you think?

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Large Language Models (LLMs) have been and will continue to be the subject of numerous lawsuits - including some quite high-profile ones like the New York Times Company's suit against OpenAI. To understand the basis of these suits, you have to understand how these models how LLMs operate. Catherine Zaller Rowland delivers a great overview of the current legal landscape around LLMs, how they work, and how they can work without getting sued. Definitely worth a read. These programs will only become more mainstream and these suits will set important precedents going forward. #IPLaw #LLM #OpenAI

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On August 31, the California legislature closed for the 2024 session. Here's what happened with the privacy and AI-related bills we've been tracking: Five of the six privacy-related bills passed the legislature: 1️⃣ Opt-Out Preference Signals (AB 3048) – Among other provisions, the bill prohibits a business from developing or maintaining a browser that does not include a setting that enables a consumer to send an opt-out preference signal to businesses with which the consumer interacts. 2️⃣ Kid's Privacy (AB 1949) – Amends the CCPA to provide that a business cannot collect, sell, or share the personal information of a child ages 13 to 17 without the child’s consent or, for children below 13, without a parent or guardian’s consent. 3️⃣ Neural Data / Personal Information & AI systems (SB 1223 & AB 1008) – Amend the CCPA to add neural data as an element of sensitive PI. Also amend the CCPA’s definition of PI to specify that PI can exist in various formats, including “artificial intelligence systems that are capable of outputting personal information.” 4️⃣ Recognition of Prior Opt-Outs in M&A Deals / Kid's Privacy (AB 1824) – Amends the CCPA to require acquiring businesses to honor prior opt-out requests. The bill also contains the kid’s privacy provisions in AB 1949. Four of the seven AI-related bills passed the legislature: 1️⃣ Safe and Secure Innovation for Frontier Artificial Intelligence Act (SB 1047) – The bill regulates the largest artificial intelligence models. It has been the subject of extensive controversy and is a potential candidate for a governor’s veto. 2️⃣ Generative AI Training Data Transparency (AB 2013) - Provides that developers of generative artificial intelligence systems or services must, prior to making their systems or services publicly available to Californians, post on their website documentation regarding the data used to train the system or service. 3️⃣ Definition of AI (AB 2885) - Amends California law to define artificial intelligence as “an engineered or machine-based system that varies in its level of autonomy and that can, for explicit or implicit objectives, infer from the input it receives how to generate outputs that can influence physical or virtual environments.” 4️⃣ California AI Transparency Act (SB 942) – Creates transparency obligations for persons that create, code, or otherwise produce generative artificial intelligence systems that have over one million monthly visitors or users and are publicly accessible within California’s geographic boundaries. 5️⃣ The three AI-related bills that did not pass the legislature were AB 2930 (algorithmic discrimination), AB 3211 (provenance, authenticity and watermarking standards), and AB 1791 (digital content provenance for social media platforms). All of the passed bills now head to the governor for consideration. Article co-authored by Owen Davis and Fred Sager.

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The USPTO has released a crucial update on #patent #subjectmattereligibility, focusing on artificial intelligence (#AI) inventions. This guidance, effective July 17, 2024, aims to provide clarity and consistency in evaluating AI-related patent applications under 35 U.S.C. § 101. Key takeaways for in-house patent counsel: 1. Enhanced Clarity: The guidance offers additional insights on applying subject matter eligibility criteria to AI inventions, building on previous guidelines. 2. New Examples: Three new examples demonstrate the application of the guidance across various technologies, helping practitioners navigate complex AI patent scenarios. 3. Federal Circuit Alignment: The update incorporates discussions of relevant Federal Circuit decisions on subject matter eligibility. 4. Public Feedback Opportunity: The USPTO is accepting comments on the guidance and examples until September 16, 2024. 5. Broader AI Initiative: This update is part of a larger USPTO effort addressing AI's impact on intellectual property, including recent inventorship guidance for AI-assisted inventions. For in-house counsel, this guidance presents an opportunity to refine AI patent strategies, potentially increasing the likelihood of securing protection for AI innovations. It's crucial to review the full guidance and examples available on the USPTO's AI-related resources webpage. #PatentLaw #ArtificialIntelligence #IPStrategy Thoughts on how this might impact your AI patent portfolio? Let's discuss in the comments! Citations: [1] https://lnkd.in/eUbkGXvG

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On April 3, 2024, the United States Patent and Trademark Office (USPTO) published a 266-page Notice of Proposed Rulemaking (NPRM) on “Setting and Adjusting Patent Fees during Fiscal Year 2025” (89 FR 23226), with proposed selective and in some cases extraordinary increases in fees for the fiscal years 2025-2029. These proposed increases in fees for patent activities have been controversial among stakeholders.

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Great summary by Tangibly Inc's Chris Buntel of the recent ALIFAX v. ALCOR Scientific decision. Some snippets: 📌 The Federal Circuit said that “Alifax not only failed to describe the alleged signal acquisition trade secret with sufficient detail but also failed to identify its proper scope.” 📌 Alifax alleged that the signal acquisition trade secret is “how to acquire photometric signals from a blood sample.”…. But this definition only provides a high-level summary of the purpose of the alleged trade secret without describing it in detail.” 📌 The trade secret owner’s “burden is to describe the trade secret in sufficient detail to show that each element of a trade secret are met”, which Alifax did not do. The Alifax case is but the latest in a series of court holdings requiring trade secret owners to be increasingly specific about what their misappropriated trade secret actually is. 

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What did you learn from this year’s AIPLA annual meeting? 🤔 From Thursday’s opening plenary with USPTO Director Kathy Vidal’s remarks on AI, to the increasing number of exhibitors offering new AI-focused products, this year’s meeting really put the “AI” in “AIPLA.” 🤖 This included a thought-provoking presentation on using AI tools responsibly and ethically. 😇 Some of my thoughts/takeaways from the presentation (not putting words in the speakers’ mouths 🤐): While genAI-assisted patent drafting is in its infancy and may not be suitable in many situations currently, there may come a time in the (potentially near) future when using genAI to assist in drafting is not only acceptable but ethically required. ✅ Like how use of cloud computing by attorneys was once considered too risky but now is basically expected. ☁️🖥️ In the meantime, it’s crucial to keep up with this evolving technology to make sure that practitioners are using (or not using) AI tools responsibly. 📓 That said, while AI was on the back of the minds of many people in attendance, the conference was far from AI-centric and had plenty of discussion on non-Ai topics. 🗣️ For example, one panel featured a discussion about the LKQ decision, which has the potential to greatly impact how patentability of designs is analyzed in the US and/or how often design patents are rejected/invalidated under 35 USC 103. ❌ As someone who has taken an extra interest in design patents this year, it was really interesting to hear what others think about these design updates. ⚜️ Historically, design patents were rarely found obvious under 103 due to the fairly strict Rosen-Durling analysis, but the more flexible test using the Graham factors like what is used for utility inventions might make obviousness findings more common in design world going forward. 😵 On top of the excellent panels, it was great extending connections with people I met on LinkedIn to the real world as well as meeting new people at the conference! 🔗 If anyone looking to expand their network wants to connect (whether you made it to the conference or not), feel free to reach out! 🛜 #AIPLA #AI #IP #patents #USPTO

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The government has imposed licensing requirements for exports to *all destinations worldwide* of certain gate all-around field effect transistor technology, quantum computing items, advanced semiconductor manufacturing equipment, additive manufacturing equipment, and aerospace coating systems technology. The new measures are notable for their restrictive application to all destinations in the world and their institution of a new license exception that allows for exports of the newly controlled items to specified “like-minded” countries that have instituted comparable export controls that are harmonized with U.S. controls. My colleagues Anthony Rapa, Alan kashdan, and Brendan Saslow offer five key takeaways on the new rule. #internationaltrade #exportcontrols #crossbordertrade

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BREAKING NEWS: Latest status report on copyright lawsuits v AI companies. 📰 4 new lawsuits = 24 total lawsuits May 8 hybrid hearing on MTD in Andersen v Stability AI: you can attend via Zoom 🏎️ Link in article below 👇🏽 Judge Tigar cancels hearing on MTD in Doe 1 v Microsoft. Who does that favor?

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The brain is the new privacy frontier: Responding to developing technologies in the neurotech space, a number of American states have amended their privacy laws to include "neural data" in their definition of sensitive personal information. Some require opt-in consent for its collection, others simply the possibility for a data subject to opt out. Some have included employees' neural data in the definition, others not - with varying implications for privacy protection:

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ICYMI: check out the latest article on AI Practice in light of all the USPTO's actions, including the AI Inventorship Guidance, the 112 Guidance, the Means-Plus-Function Guidance plus all the new FEES https://lnkd.in/e5CiXmEA

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I found this Littler article regarding the Supreme Court’s decision in Loper Bright and its impact on potential federal legislation regarding AI. It's interesting in light of advanced efforts at the state level (e.g., in Colorado and, to an extent, California) that would seemingly withstand some of the non-delegation concerns raised in Loper Bright. Worth a read. https://lnkd.in/dj_E2ipA #ai #artificialintelligence #ailaw #loperbright #technology #techlaw #tech #regulation #policy #sb1047

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Excellent discussion by Roy Wepner, Esq. explaining why a majority of Federal Circuit judges in a recent #patent case (Dragon IP vs. DISH Network) erred by imposing a bright-line rule barring recovery of attorneys' fees for expenditures made in IPR (inter partes review) proceedings within the USPTO. This bright-line rule reads as follows: "In cases where a party voluntarily elects to pursue an invalidity challenge through IPR proceedings, we see no basis for awarding IPR fees under [35 U.S.C.] § 285." Mr. Wepner provides insightful analysis as to why the majority's decision in the Dragon IP case creates a precedential conflict with a 1988 Federal Circuit decision. Additionally, a dissenting DISTRICT COURT judge, sitting by designation on the Dragon IP panel, got it absolutely right in explaining why "[t]o categorically preclude recovery of IPR fees in this circumstance is inconsistent with § 285 or the intent of IPR itself."

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The rapid advancement of artificial intelligence (AI) has introduced new and complex challenges to copyright law in recent years. One of the most pressing issues in this realm is the use of AI to create “deepfakes,” hyper-realistic AI-generated media that convincingly impersonate real people with astonishing accuracy. ZVMLaw's latest blog post discusses a recent report issued by the U.S. Copyright Office on copyright issues relating to "deepfakes." https://lnkd.in/eFgCRizx

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🎤 The USPTO recently published a request for comment on how AI impacts prior art, obviousness, and patentability. Advancements in AI have the potential to transform the landscape for innovation and present novel challenges and opportunities for IP policy. Comments will help the USPTO decide whether these issues require guidance. Director Todd Hopfinger spoke with Managing IP and noted, "A lot of people are raising concerns about the value of patent portfolios because of AI-generated prior art...This has been a huge disruptor, so clients are grappling with some of these issues. Many clients are interested in doing more prior art searches up front." Read more: https://lnkd.in/eVE5H3s2 #USPTO #ArtificialIntelligence #AI #PatentLaw

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📅 On July 23, associate D. Sean West will review legal developments related to generative AI during a Washington State Bar Association IP licensing webinar. Join him and other faculty for legal updates and licensing strategies related to generative AI, patent licensing M&A, blockchain patent updates, the recent FTC non-compete rule, and more. Register: https://bit.ly/4f1zYXO. #GenerativeAI #IntellectualProperty #IPlicensing

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