Mid-Year Trends in Intellectual Property Law 2021: Looking Ahead



Practitioners are eagerly monitoring court cases for several IP-related cases in the second half of 2021 that promise to make an impact. These decisions are expected to provide guidance in several areas of intellectual property law, including patent eligibility, creation of AI-generated inventions, and pharmaceutical labeling.

Indeed, a more recent United States Supreme Court decision ruled on the constitutionality of administrative patent judges. In addition to these cases, a new implementation of the Supreme Court’s fair use ruling regarding copyright protections for computer code will be forthcoming, as we await the fate of patent protections for Covid-vaccines. 19 which is at stake at WHO.

This article provides an overview of current cases to watch out for and issues to consider.

Another shot at Supreme Court to clarify patent eligibility

Case law relating to patent eligibility continues to be a difficult area of ​​patent law, and constitutes a powerful first defensive attack in patent infringement litigation. This litigation tool can be further expanded depending on the response of the Supreme Court to the request for certification.

While much of the current §101 case law revolves around general purpose computers or diagnostic methods, the technology in American axle & Manufacturing, Inc. v. Neapco Holdings LLC is different. American axle claims regarding a physical driveshaft assembly, which at first glance appears to be outside the scope of an abstract idea. However, the Federal circuit held claims invalid under § 101 with a 6-6 divided federal circuit refusing in bench see again.

The Supreme Court petition (# 20-891) presents two important questions: 1) What is the appropriate standard for determining whether a patent claim is “referred” to a concept not eligible for patent under Alice Step 1? and 2) Is the eligibility of the patent a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of the art at the time of the patent?

Can computer systems using AI patent their own inventions?

More and more, companies are using AI to invent new methods and new products. But can such inventions be patented given that each patent application must identify at least one “inventor” who is defined as an “individual”, and not as a machine? (Regarding the application of request no. 16/524 350).

The USPTO rejected a recent attempt to name an AI system as an inventor in two patent applications, ruling that an “inventor” is limited to a natural person. Other major patent offices have also found that an AI cannot be referred to as a patent “inventor”, including European, Japanese, Canadian and Australian patent offices.

These decisions leave open the question of what legal protections, if any, are available for inventions and other works created solely by AI systems.

Skinny flip flops Label in the federal circuit

Lean labeling allows generic drugs to be approved and sold for non-patented indications, although other indications still enjoy patent protection. For a while, it looked like this was about to change when the Federal Circuit ruled that documents for a generic drug product promoting its drug as an approved generic version may prove a push to patent despite the skinny label (GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc. (Fed. Cir. No. 18-1976).

The move sparked an uproar in the pharmaceutical industry because it effectively ruled out a common strategy that generic drug companies had used to bring their products to market. But recently, the Federal Circuit overturned its decision and reconsidered the case. We are awaiting his new decision.

The non-reviewable authority exercised by the PTAB judges is deemed unconstitutional

Administrative Patent Judges (APJs) are considered “inferior officers” because they are not appointed by the Senate and appointed by the President (ie senior officers). PAJs make decisions on behalf of the executive, but these decisions were not reviewable by any senior executive officer.

The Supreme Court in United States v. Arthrex Inc. ruled that the non-reviewable nature of the APJ’s decision-making power violates the law requiring that the exercise of executive power by inferior officers be subject to the “direction and supervision” of a senior officer, in this case the director of the PTO. The tribunal overturned the statutory provisions exempting the APJ’s decisions from the supervision of the director and instead requested the discretionary power of review of a director. Thus, the presidents and their direct representatives remain responsible for the exercise of executive power.

It is likely that the PTO will now promulgate regulations clarifying when and how a director will review the decisions of the APJ. The system may be similar to that used by the International Trade Commission, another Article I court ruling on patents. Like APJs, ITC employs Administrative Law Judges (ALJs) to rule on the validity of patents, but these decisions are only preliminary until reviewed by ITC Commissioners. appointed by the president.

Google v. Oracle leaves questions but promotes software development

Although the recent Supreme Court decision Google LLC v Oracle Am., Inc. decision settled a question concerning the protection of copyright in computer software, a host of questions remain unanswered. Google used the Java API to develop a mobile phone interface, but it is not yet clear how or if this case may affect software developers using the same platforms that were initially targeted by Java, for example, desktops and laptops.

It is also unclear whether the use of the original implementation code is critical to the fair use analysis. For example, since Java code is so widely used, is it permissible to use Java declaration code and implement code if, together, their use is for a different purpose? If not, to what extent does the implementation code need to be changed to be considered fair dealing? Is there some type of declarative code that could be considered sufficiently non-functional or creative to benefit from broader copyright protection?

One thing is clear, however: software engineers will use Java (and potentially other computer languages) more freely.

Can Covid-19 patents be monetized?

The World Health Organization and President Biden have indicated that they may waive certain Covid-19 patent rights through the Treaty Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Although America is reopening, the assertion and monetization of Covid-19 patent rights will mainly occur in the future when the pandemic emergency has passed but further booster vaccinations are needed.

Relinquishing these rights now can have an impact on how companies plan for the future and presents a constitutional “revenue” problem.

This column does not necessarily reflect the opinion of the Bureau of National Affairs, Inc. or its owners.

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Author Info

Dr Dorothy R. Auth is the head of Cadwalader’s intellectual property group in New York. She coordinates global intellectual property enforcement, licensing and procurement strategies for clients across various industries including biotechnology, pharmaceuticals and medical devices, as well as consumer products, computers and services. financial.

Howard Wizenfeld is special advisor in the intellectual property group of Cadwalader in New York. He handles complex patent litigation primarily in the areas of electrical engineering, telecommunications and IT, and has handled litigation in the biotechnology, pharmaceuticals and chemicals industries.

Dov Hirsch is a partner in the intellectual property group of Cadwalader in New York. It focuses on intellectual property issues in a wide range of technological fields, including pharmaceuticals, medical devices, wireless telecommunications, battery separators, catalytic converters and software.



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