The United States Patent and Trademark Office (USPTO) has announced several new and improved search tools to strengthen its customer service. The USPTO’s goal is that the improved search tools will make it easier, faster and more reliable for customers to find what they are looking for. The improved search tools include updates to web searching on the USPTO’s website, improved patent searching and improved trademark searching.

Read more here.

The World Intellectual Property Office (WIPO) has released a new tool to assist trademark applicants with formulating goods and services descriptions.

The Goods and Services Assistant allows users to view statistics on how frequently different goods and services descriptions have been allowed in different jurisdictions. It compiles statistical data from the largest national trademark collections in the WIPO Global Brand Database, and includes descriptions that have been accepted at least 30 times in the past 10 years by various trademark offices.

The Goods and Services Assistant includes data from Australia, Canada, EUIPO (European Union Intellectual Property Office), France, Germany, India, Italy, Japan, Malaysia, Madrid (WIPO), New Zealand, Republic of Korea, Singapore, Spain, Switzerland, United Kingdom, and the United States of America.

The new tool is particularly advantageous for Madrid applicants who wish to assess the acceptability of different goods and services descriptions in multiple different jurisdictions at once.

The free tool is accessible at the following link: https://goods-and-services-assistant.branddb.wipo.int/

The U.S. Copyright Office has issued a notice of inquiry (NOI) in the Federal Register on copyright and artificial intelligence (AI) in response to copyright issues raised by the rapid advancement and adoption of generative AI. The U.S. Copyright Office will use the record it assembles to inform legislative goals and regulatory measures.

The NOI seeks input on a number of issues, including “the use of copyrighted works to train AI models, the appropriate levels of transparency and disclosure with respect to the use of copyrighted works, the legal status of AI-generated outputs, and the appropriate treatment of AI-generated outputs that mimic personal attributes of human artists.”

Initial written comments are due on 18 October 2023. Reply comments are due on 15 November 2023. Comments may be submitted on the Office’s website.

See the full USPTO announcement here.

USPTO announcement: https://content.govdelivery.com/accounts/USPTO/bulletins/36dc9ff

Office’s website for comments: https://copyright.gov/policy/artificial-intelligence/?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term

The Federal Circuit has issued a decision that clarifies the interaction between terminal disclaimers, obviousness-type double patenting and patent term adjustment in US patent practice. Obviousness-type double patenting is a US patent doctrine that is directed towards handling patent applications which are “patentably indistinct”. A rejection for obviousness-type double patenting is generally addressed by filing a terminal disclaimer which ensures that the patentably indistinct patents have the same (earliest) expiration date and common ownership.

Obviousness-type double patenting doctrine arises from a period when the expiration of a patent was determined by its date of issuance. The doctrine prevented the improper effective extension of a patent term by filing multiple related applications with overlapping inventive scope. Changes to US patent law have since caused patent terms to be determined by the filing date of the originating application. However, a point of uncertainty has remained about how the relatively new practice of patent term adjustment (PTA) interacts with obviousness-type double patenting and terminal disclaimers. PTA extends the term of patents if delays in prosecution in the patent office exceed a reasonable time period.

The Federal Circuit has issued a decision in IN RE: CELLECT, LLC, in which the appellant had multiple patents arising from a common filing and had not filed terminal disclaimers with respect to the various issued patents. The Federal Circuit concluded that expiry of the earliest patent without terminal disclaimers made any surviving patentably indistinct patents invalid. The appellant Cellect, LLC could not correct this issue because the terminal disclaimer could not be filed after the expiry of the earliest expiring patent.

A consequence of this decision is that holders of families of related patents may risk the invalidation of later-expiring patents (due to PTA) if terminal disclaimers have not been filed prior to the expiry of the first expiring patent.

The full Federal Circuit decision may be found here.

On 18 August 2023, a US district court in Washington, DC held that AI-generated work without human input cannot be copyrighted in the US. Specifically, the court held that copyrightable work requires human authorship. The court’s judgment aligns with the US Copyright Office’s (“USCO”) policy statement which also provides that copyright registration requires human authorship. The USCO also denied the copyright registration of images generated by the AI image generator Midjourney earlier this year.

The court made its decision with respect to the visual art piece titled “A Recent Entrance to Paradise.” The “Creativity Machine,” a computer program, created the piece of its own accord.

The owner of the “Creativity Machine” is Dr. Stephen Thaler. Dr. Thaler is also known for his lawsuits aimed at allowing AI to be named as an inventor of a patent. Dr. Thaler has succeeded in some jurisdictions, for example South Africa and Australia, and lost in other jurisdictions, for example the US, the UK, and New Zealand.

See here for the full court judgment.

See here, here, and here for more developments in AI being named as an inventor of a patent.

The Convention Abolishing the Requirement of Legalization for Foreign Public Documents (the “Apostille Convention”) will come into effect in Canada on 11 January 2024.

Canada’s accession to the Apostille Convention is significant as it will greatly simplify the process for having Canadian public documents legally certified for use in many countries. The current burdensome process of authentication and legalization in Canada will soon be replaced by the issuance of a single certificate of authenticity or “apostille”, provided the destination country is one of the 125 countries that are contracting states to the Apostille Convention. It is anticipated that this will save significant time and expense in the IP context, where documents for use in foreign filings frequently require authentication and legalization.

In general, documents that are currently required to be legalized will be eligible for an apostille after the Apostille Convention comes into force. So far, four provinces (including the Ministry of the Attorney General of British Columbia) and the Department of Foreign Affairs, Trade and Development have been designated as competent authorities to issue apostilles in Canada. More information about the specific process required to obtain an apostille in Canada is anticipated later this year.

More information is available here: https://www.canada.ca/en/global-affairs/news/2023/05/canada-joins-apostille-convention-to-facilitate-use-of-public-documents-abroad.html 

Last month, the Federal Court held that Duracell had used certain of Energizer’s trademarks in a manner that was likely to depreciate the value of the goodwill attached to those trademarks, in contravention of section 22 of the Trademarks Act.

Energizer owns registered trademarks for ENERGIZER, ENERGIZER MAX, RABBIT & Design, and ENERGIZER BUNNY & Design.

Between 2014 and 2017, Duracell affixed stickers to packages of its AA and hearing aid batteries. The stickers variously read “15% longer lasting vs. Energizer on size 10, 13, and 312” [Energizer HA Sticker], “Up to 20% longer lasting vs. the bunny brand on sizes 10, 13 & 312” [Bunny Brand HA Sticker]. “Up to 15% longer lasting vs. Energizer Max” [Energizer Max AA Sticker], and “up to 15% longer lasting vs. the next leading competitive brand” [Next Leading Competitive Brand Sticker].

Energizer was able to show likely depreciation of goodwill in its ENERGIZER and ENERGIZER MAX trademarks as a result of the Energizer HA Sticker and the Energizer Max AA Sticker. However, the Court determined that there was insufficient linkage between Energizer’s trademarks and the Bunny Brand HA Sticker and the Next Leading Competitive Brand Sticker to support a section 22 claim.  The Court further held that the performance claims of all of the stickers were not false or misleading and therefore did not contravene sections 7(a) and 7(d) of the Trademarks Act and section 52 of the Competition Act.

Energizer was awarded a permanent injunction restraining Duracell from using the Energizer HA Sticker, the Energizer Max AA Sticker and Energizer’s trademarks on battery packages, and $179,000 in damages.

The full decision is reported here.

Following proposals and consultations spanning a period of two years, the Canadian Intellectual Property Office has announced an increase of most of its fees.  The final Copyright Regulations, Industrial Design Regulations, Integrated Circuit Topography Regulations, Patent Rules, and Trademarks Regulations were published in the Canada Gazette, Part II on June 21, 2023 with a coming into force date of January 1, 2024.

In accordance with the Services Fees Act, most of the CIPO fees are adjusted annually based on the Consumer Price Index. In addition to the annual fee adjustment, on January 1, 2024, most of the CIPO fees will have a one-time 25% increase.  The increase does not apply to “small entity” patent fees.  The definition of “small entity” has also been amended in the Patent Rules to include an entity that employs less than 100 employees instead of 50 or fewer employees.

Some applicants have begun receiving correspondence from the CIPO reflecting only the annual adjusted fees.  Correspondence will not be withdrawn and resent showing the 25% increase and stakeholders will have to be diligent and pay the correct fees in January 2024.

For more information regarding the new CIPO’s fees, please see https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/what-you-need-know-about-upcoming-changes-cipos-fees

The World Intellectual Property Office (“WIPO”) has announced the 2023 winners of the WIPO Global Awards program. The WIPO Global Awards program celebrates the use of intellectual property as a catalyst for economic, social and cultural impact.

You can learn more about the winners and the WIPO Global Awards Program here.