USPTO’s New Guidance Clarifies Patent Eligibility for AI Inventions with Practical Examples
Takeaway: The USPTO’s new guidance clarifies patent eligibility for AI inventions with examples emphasizing the need for practical applications and technical improvements, aiding practitioners in effectively navigating Section 101 requirements.
On July 17, 2024, the U.S. Patent and Trademark Office (USPTO) released its 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence. The new guidance helps patent examiners determine the eligibility of AI-related inventions for patent protection, introducing three (3) new examples (Examples 47, 48, and 49) clarifying how AI inventions can meet the requirements of Section 101. These examples emphasize the need for practical applications and technical improvements in AI inventions.
Example 47: Focuses on using artificial neural networks for anomaly detection in network security. Claims that improve network security are eligible, while abstract ideas are not.
Example 48: Involves using deep neural networks for separating speech signals. Claims that enhance practical applications like speech-to-text transcription are eligible.
Example 49: Pertains to using AI for analyzing medical data for fibrosis treatment. Eligibility depends on whether the AI provides a concrete improvement in treatment processes.
The new guidance aims to ensure clarity and consistency in patent eligibility and encourages innovation in AI while maintaining standards. Practitioners should review the new examples and integrate these considerations into their practices to navigate the complexities of patenting AI-related inventions effectively.
Updated NO FAKES Act Reintroduced to Combat Unauthorized AI Deepfakes
Takeaway: An updated NO FAKES Act was reintroduced to combat unauthorized AI-generated deepfakes, mandating removal upon notice and garnering industry support and some criticism for potentially undermining free expression and complicating intellectual property laws.
Four U.S. senators introduced an updated version of the NO FAKES Act to combat the creation and distribution of unauthorized AI-generated replicas of people, known as deepfakes. Senators Chris Coons, Marsha Blackburn, Amy Klobuchar, and Thom Tillis presented the revised bill, which incorporates feedback from key stakeholders to enhance protections and include necessary exceptions. The bill mandates online platforms to remove unauthorized replicas upon notification from the affected individuals, with exceptions for free speech scenarios like parody and criticism.
Senator Coons emphasized the importance of protecting individuals’ likenesses, regardless of their fame, while Senator Blackburn highlighted the significance of the bill in safeguarding artists’ rights. The updated bill received support from industry leaders, including SAG-AFTRA, the Motion Picture Association, OpenAI, Sony Music, and The Walt Disney Co.
Not everyone supports the bill. Brandon Butler from the ReCoalition criticized the NO FAKES Act, arguing it would undermine Section 230 of the Communications Decency Act, complicate intellectual property issues, and potentially harm creativity, consumer privacy, and free expression. Butler urged Congress to consider the broader implications of regulating digital replicas.
Federal Circuit Overturns Trademark Decision, Sets New Guidelines for Certification Mark Fame Assessment
Takeaway: The Federal Circuit overturned a decision allowing a small record label to register a “cognac” trademark, establishing new guidelines for assessing the fame of certification marks independent of associated brand names.
A Federal Circuit ruling overturned a decision by an administrative board, which had permitted a small record label, Cologne & Cognac Entertainment, to register a trademark using the word “cognac.” The appeals court clarified how to determine the fame of “certification marks,” used to indicate product origin.
Judge Alan David Lourie stated that the board made legal errors by not considering the fame of “cognac” independently of brand names like “Hennessy.” The court’s ruling favored the Bureau National Interprofessionnel du Cognac and other industry groups, setting a new standard for assessing fame in certification marks. The case will be reconsidered by the Trademark Trial and Appeal Board.
Google and OpenAI Sued for Using YouTube Videos Without Permission to Train AI Models
Takeaway: Class action lawsuits have been filed against Google and OpenAI, accusing them of unlawfully using transcriptions of YouTube videos to train their AI models without the creators’ consent, seeking damages and injunctive relief.
David Millette has filed separate proposed class actions against Google and OpenAI, alleging that the companies have unlawfully transcribed YouTube videos and used these transcriptions to train their AI models, such as Google’s Gemini and OpenAI’s ChatGPT, without the content creators’ permission.
The complaints claim that Google and OpenAI have unfairly enriched themselves by using millions of YouTube videos as unauthorized training data to enhance their AI products, which imitate human speech patterns. The suits also accuse the companies of profiting from the creators’ content without consent and competing with them through their AI products. Millette seeks to represent nationwide classes of individuals whose videos were used without consent and is pursuing claims for unjust enrichment and unfair competition. The lawsuits demand injunctions to stop the transcription and use of these videos without permission, as well as damages and legal costs.
D.C. Circuit Upholds DMCA Anticircumvention Provision as Constitutional
Takeaway: The D.C. Circuit Court upheld the DMCA’s anticircumvention provision, ruling it aligns with the First Amendment by targeting digital piracy without unconstitutionally restricting fair use or academic research.
A D.C. Circuit panel upheld the Digital Millennium Copyright Act’s anticircumvention provision, ruling that it does not violate the First Amendment. The Court found that the provision, which makes it illegal to bypass digital locks on copyrighted material, serves a legitimate purpose by addressing digital piracy and does not necessarily impede constitutionally protected activities.
The ruling affirms a previous decision dismissing a challenge by researchers Matthew Green and Andrew Huang, who argued that the law burdens free expression and fair use. While the court acknowledged that some unconstitutional applications of the provision might exist, it found the researchers’ claims insufficient to sustain a facial challenge. The panel also rejected claims that the Library of Congress’ exemption process constitutes an unconstitutional speech licensing regime.
Federal Circuit Denies Patent for Coke Zero Sweetener Due to Prior Sales
Takeaway: The Federal Circuit ruled that Celanese cannot patent the sweetener used in Coke Zero because it was sold before the patent filing date, reinforcing the “on sale bar” principle in patent law.
A Federal Circuit panel ruled that Celanese, the company behind the artificial sweetener “Ace-K” used in Coke Zero, cannot patent its formula after it has been sold to customers, even if the recipe was kept secret. The decision is based on the “on sale bar” principle, which prevents patenting ideas that have already been sold, a precedent dating back to the 1800s. The court affirmed a previous U.S. International Trade Commission (ITC) decision that rejected Celanese’s patent infringement claims against competitors. The ruling emphasizes that secret use and prior sales of the product before the patent filing date disqualify it from being patented.
Cislo & Thomas LLP Spotlight
Congratulations to Daniel M. Cislo and Jeffrey G. Sheldon on Best Lawyers Award
Congratulations to Daniel M. Cislo, Esq. and Jeffrey G. Sheldon, Esq. on their inclusion in the 31st Edition of The Best Lawyers in America for their work in IP Litigation, Patent Litigation, Patent Law, and Trademark Law!
Dan and Jeff are both experienced IP attorneys with focus on all aspects of intellectual property, from prosecution and litigation to domestic and international licensing, having handled thousands of patent and trademark applications and hundreds of IP litigation cases.
Great work Dan and Jeff!
