Never Too Late: If you missed the IPKat last week!

If last week passed too quickly to follow all the IP updates, not to worry, this Kat has put together a whistle-stop tour of the news and events you missed:

Patents

A Kat thinking about law and technology.
Photo by Nathan Osman via Pixabay.

Anna Maria Stein updated readers on the USPTO's new Inventorship Guidance for AI-Assisted Inventions. The Guidance will assist examiners to determine whether a natural person’s contribution in AI-assisted inventions is significant enough to be considered an inventor. She also alerted readers to the upcoming public webinar on 5 March 2024 and that the USPTO is seeking public comments on the Guidance by 13 May 2024.

Speaking of artificial intelligence, Katfriend Anna Pokrovskaya shared some of her research on the current debates in the US and the EU about whether AI can be considered a person having ordinary skill in the art when assessing patentability. She outlines some policy recommendations that might ensure a balanced approach that considers the capabilities and limitations of AI systems while also safeguarding the rights and interests of inventors and society at large.

[... As an aside, the above post reminded this Aussie Kat of the comments in the Thaler decision from Justice Beach, sitting as a single judge of the Federal Court of Australia, who noted that the hypothetical construct of the person skilled in the art "is not focusing on the thought processes of an actual human, let alone the subjective thought processes of a human inventor", and therefore "the threshold for inventiveness might rise if the “person skilled in the relevant art” can be taken, in the future, to be assisted by or has access to artificial intelligence or is taken as part of the common general knowledge to have knowledge of developments produced by artificial intelligence in the relevant field." (at [140] and [145]), although the outcome of this case was overturned by the Full Federal Court.]

Rose Hughes highlighted some key changes introduced by the new EPO Guidelines for Examination 2024, which will enter into force on 1 March 2024. The main impact comes from the recent EBA decisions in G2/21 (Evidence standard for inventive step/plausibility) and G 1/22 (Entitlement to priority), as well as disclosure requirements for AI inventions.

Rose Hughes also analysed the recent Board of Appeal decision (T 1252/20) on second medical use claiming. The decision departs from previous case law and clarifies that second medical use claiming is not limited to products having a chemical mode of action, but includes any product that may be defined by its chemical composition, regardless of the mode of action of the product in the body. Whilst a welcome change, Rose points out that some uncertainty remains, especially regarding the dividing line between what is and what is not a device.

Copyright

Katfriend Seun Lari-Williams discussed the implications of the provision of Nigeria’s new Copyright Act which explicitly deems copyright as "movable property" for the purpose of the Constitution. Whilst this reflects the fact that copyright is transferable through assignment and licenses, it could also make copyright subject to fundamental human rights and potential compulsory acquisition. There are also interesting questions about whether the deeming of copyright as "moveable property" is constitutional at all.

Marcel Pemsel examined the decision of the Higher Regional Court of Cologne on whether the provider of domain name system (DNS) resolver and content delivery network (CDN) services can be liable for copyright infringement if it provides its services to the operators of websites with illegal content (in this case, music). The court held that there was no liability for the DNS resolver services, as they were neither necessary nor did it make the access to the IP address easier. However, the CDN services did play an ‘indispensable role’ in making the copyright infringing content available to the public. 

Intellectual Property Generally

Katfriend Thorsten Lauterbach reviewed the book, Teaching Intellectual Property Law: Strategy and Management, edited by Sabine Jacques and Ruth Soetendorp (in which this Kat co-authored a chapter). The book reflects on the experience and techniques of IP law teachers, such as strategies for increasing student engagement, using technology, teaching in a multi-disciplinary way, and improving employability-related skills.

Katfriend Francesca Mazzi provided a book review of the edited volume, Research Handbook on Intellectual Property and Moral Rights, edited by Ysolde Gendreau. This rich volume is distinctive for its attention not just to the relationship between moral rights and copyright, but also industrial property (e.g. patents and trade marks) and the protection of traditional knowledge. The book also discusses the real-life issues experienced by authors facing moral rights dilemmas.