By Donald Zuhn –-
After reflecting upon the events of the past twelve months, Patent Docs presents its 17th annual list of top patent stories. For 2023, we identified ten stories that were covered on Patent Docs last year that we believe had (or are likely to have) a significant impact on patent practitioners and applicants. On Monday and Wednesday last week, we counted down stories #10 to #8 and stories #7 to #5, and today we count down the top four stories of 2023. As with our other lists (2022, 2021, 2020, 2019, 2018, 2017, 2016, 2015, 2014, 2013, 2012, 2011, 2010, 2009, 2008, and 2007), links to our coverage of these stories (as well as a few links to articles on related topics) have been provided in case you missed the articles the first time around or wish to go back and have another look. As always, we love to hear from Patent Docs readers, so if you think we left something off the list or disagree with anything we included, please let us know. In addition, we will be offering a live webinar on the "Top Patent Law Stories of 2023" on January 23, 2024 from 10:00 am to 11:15 am (CT). Details regarding the webinar, which will focus on a few of the most important stories on this year's list, can be found here.
4. Federal Circuit Decides In re Cellect
At the end of August, in In re Cellect, the Federal Circuit decided a question left open during a recent spate of opinions involving the judicially created doctrine of obviousness-type double patenting (ODP): the effect patent term adjustment (PTA) can (or should) have on creating circumstances where ODP will operate to find a patent invalid in the absence of a timely filed terminal disclaimer. The Patent Trial and Appeal Board had issued four Decisions affirming the USPTO reexamination division's invalidation of four Cellect patents, all on the grounds that the provisions of 35 U.S.C. § 154(b)(2)(B) mandated that a terminal disclaimer be filed under circumstances where ODP arose due to extension of patent term as PTA, i.e., that ODP must be determined after application of PTA. The Federal Circuit affirmed the Board's judgment in the re-examinations. As we noted at the time of the decision, there are stratagems existing and to be developed to adapt to the regime established by the Federal Circuit's decision in In re Cellect, which only reinforces the value of the clever draftsman in protecting important technologies under creative applications of the law as the Federal Circuit construed it in In re Cellect.
(On Friday, the Federal Circuit issued an Order denying Cellect's petition for rehearing en banc.)
For information regarding this and other related topics, please see:
• "In re Institut Pasteur (Fed. Cir. 2023)," December 13, 2023
• "Overcoming the Consequences of In re Cellect," October 5, 2023
• "In re Cellect (Fed. Cir. 2023)," August 30, 2023
3. Unified Patent Court Agreement Enters into Force
The Unitary Patent (UP) and Unified Patent Court (UPC) finally arrived in 2023, with the Agreement on a Unified Patent Court (UPCA) coming into force on June 1. Unitary Patents confer uniform patent protection in participating EU member states (i.e., EU member states that have ratified the UPCA), of which there are currently seventeen: Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Slovenia, and Sweden. The UPC is a supranational court where proprietors of Unitary Patents and certain European patents (i.e., those that have not been opted out of the UPC) can seek enforcement and third parties can seek revocation of patents in the above EU member states. Prior to the entry into force of the UPCA, proprietors and applicants were able to file requests to opt out of the UPC for European patents that had already granted and European applications that had published. These requests could be filed beginning on March 1, 2023 during the UPC Sunrise Period. The three-month Sunrise Period was a busy time for proprietors, applicants, and representatives as opt out decisions needed to be made, and in many cases opt out requests had to be filed. Moving forward, proprietors, applicants, and representatives will have to continue to make opt out decisions (at least during the seven year transitional period, which may be extended further) and decide whether to request unitary effect for newly granted European patents.
For information regarding this and other related topics, please see:
• "UPC Postpones Start of Sunrise Period to March 1, 2023," December 12, 2022
2. Supreme Court Decides Amgen v. Sanofi -- Maintains Status Quo on Enablement
In May, The Supreme Court handed down its decision in Amgen v. Sanofi, affirming the Federal Circuit's decision below in a unanimous opinion written by Justice Gorsuch. The opinion relies heavily on its own precedent that was heavily cited by both parties in their briefs and arguments, including O'Reilly v. Morse, 15 How. 62; The Incandescent Lamp Patent, 159 U. S. 465; and Holland Furniture Co. v. Perkins Glue Co., 277 U. S. 245. In the Court's view, the statute plainly requires that "[i]f a patent claims an entire class of processes, machines, manufactures, or compositions of matter, the patent's specification must enable a person skilled in the art to make and use the entire class." The Court does state, however, that "[a]ll this is not to say a specification always must describe with particularity how to make and use every single embodiment within a claimed class." But the enablement requirement specifies, for example, that the specification discloses "some general quality . . . running through" the class that gives it "a peculiar fitness for the particular purpose," as in Incandescent Lamp, and situations where there is some adaptation or testing is needed does not make the disclosure "necessarily inadequate," as in Wood v. Underhill, 5 How. 1, 4– 5. Under Minerals Separation, Ltd. v. Hyde, 242 U. S. 261, 270–271, the opinion states that "[a] specification may call for a reasonable amount of experimentation to make and use a claimed invention, and reasonableness in any case will depend on the nature of the invention and the underlying art."
For information regarding this and other related topics, please see:
• "In the Wake of the Supreme Court's Amgen v. Sanofi decision: What’s Next for Biotechnology Claims?" October 2, 2023
• "Baxalta Inc. v. Genentech, Inc. (Fed. Cir. 2023)," September 24, 2023
• "Medytox, Inc. v. Galderma S.A. (Fed. Cir. 2023)," July 9, 2023
• "Supreme Court Decides Amgen v. Sanofi; Status Quo Extended," May 18, 2023
• "Amicus Briefing in Amgen v. Sanofi: The Rest of the Story - Part III," May 14, 2023
• "Amicus Briefing in Amgen v. Sanofi: The Rest of the Story - Part II," May 11, 2023
• "Amicus Briefing in Amgen v. Sanofi: The Rest of the Story," May 8, 2023
• "The Supreme Court Grapples with Patent Enablement," April 3, 2023
• "Esteemed Scientists File Amicus Brief in Amgen v. Sanofi on Respondents' Behalf," March 29, 2023
• "Another Group of Law Professors File Amicus Brief in Amgen v. Sanofi," March 27, 2023
• "U.S. Government Files Amicus Brief in Amgen v. Sanofi," March 26, 2023
• "AbbVie Files Amicus Brief in Amgen v. Sanofi," March 21, 2023
• "GlaxoSmithKline Files Amicus Brief in Amgen v. Sanofi," March 19, 2023
• "Patent Law Academics File Amicus Brief in Amgen v. Sanofi," March 14, 2023
• "Amgen Files Reply Brief in Amgen v. Sanofi," March 12, 2023
• "Sanofi and Regeneron File Respondents' Brief on Amgen v. Sanofi," February 19, 2023
• "Amgen Files Its Principal Brief in Amgen v. Sanofi," February 5, 2023
1. Legal and Patent Communities (Along with Everyone Else) Navigate Rapid Advancements in Artificial Intelligence
The 2023 story of the year -- and not just in patent law or even in the law in general, but in almost every industry and sector of the economy -- was the rise of Artificial Intelligence (AI). Numerous publications have tabbed AI as the top story of 2023, so Patent Docs joins quite a large group. In patent law, practitioners investigated how large language models like OpenAI's ChatGPT can impact patent prosecution in the near future. And in February, the U.S. Patent and Trademark Office published a Federal Register notice requesting public comments regarding the current state of AI and Emerging Technologies (ET), and associated inventorship issues that may arise with the advance of such technologies. The latter request concerned a request from Dr. Stephen Thaler, a computer scientist and inventor, that the Supreme Court consider the question of whether the Patent Act restricts the definition of an "inventor" to human beings.
With regard to the impact of AI in the law in general, a New York personal injury case rocketed into infamy in 2023, when two lawyers filed a brief in the Southern District of New York that had been written at least in part by ChatGPT. After opposing counsel and the judge determined that the brief cited to case law that did not exist and the quotes from these fictitious cases were fabrications by ChatGPT, the court imposed sanctions under Rule 11 for purposes of deterrence. Perhaps in response to this case, we reported on a number of judges who issued standing orders last year on how AI can and cannot be used in proceedings before them.
In other AI developments, President Biden signed an executive order in October governing the development, testing, and use of AI. Formally titled, "Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence," the order sets forth guiding principles and actions to be taken by federal agencies. These actions include research, coordination with industry, academia, and the international community, promulgation of regulations, publication of reference materials, and establishment of a White House Artificial Intelligence Council to assist the administration with all of the above. And in December, after two-and-a-half years of negotiation, the European Parliament and the European Council reached a provisional understanding of how AI should be regulated within the European Union (EU). The goal is to promote the investment in and use of safe AI that honors fundamental human rights.
For information regarding this and other related topics, please see:
• "European Union Agrees to Terms of Artificial Intelligence Act," December 10, 2023
• "College Football's Latest Controversy: NCAA IP-Like "Sign Stealing" Rules Not Ready for Big Data or AI," November 24, 2023
• "An Analogy for the Current Wave of AI Copyright Lawsuits," November 12, 2023
• "Early Responses to Proposed AI Regulation," November 5, 2023
• "Biden Administration Signs Executive Order on Artificial Intelligence," October 31, 2023
• "Judges Issue Standing Orders Regarding the Use of Artificial Intelligence," August 13, 2023
• "The Quest for an 'Artificial Intelligence' Inventor," May 23, 2023
• "ChatGPT Throws Wrench into Europe's Attempts to Regulate AI," April 30, 2023
• "The Copyright Office Issues Guidance Regarding Works Produced by Generative AI," April 16, 2023
• "Will Artificial Intelligence Force Us to be Less Dumb about How We Evaluate Humans?" April 9, 2023
• "Petition for Writ of Certiorari filed in DABUS AI-as-Inventor Case," April 6, 2023
• "The AI-Assisted Patent Attorney," February 27, 2023
• "USPTO Requests Public Comments on Artificial Intelligence and Inventorship," February 14, 2023
• "Can ChatGPT Draft Patent Applications?" February 6, 2023
• "The Existence of ChatGPT Does Not Justify Attempts to Equate Human and Machine Cognition," January 11, 2023
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