MONTHLY INSIGHTS | JANUARY 2022
Unified Patent Court Is Established
The Unified Patent Court is now established. Judges can now be hired and the sunrise period for opting out may start soon. READ MORE
Intelligently Protecting AI:
The Do’s and Don’ts Under U.S. Patent Law
Artificial intelligence (AI) is a broad spectrum of technologies in both software and hardware. We provide a brief overview of patenting AI inventions in the U.S. patent system as well as practical advice on obtaining future protection of AI inventions. READ MORE
PTAB’s Fintiv Factors Mischief Unsurprisingly Causes Additional Mischief
Under the NHK-Fintiv rule, the USPTO’s Patent Trial and Appeal Board considers and balances certain factors when deciding whether to exercise its discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review due to parallel district court litigation, without consideration of the substantive merits of the petitioner’s patent invalidity challenge.
A patent owner who has benefitted from a so-called Fintiv denial of a litigation adversary’s IPR petition has now complained that institution of an IPR based on the merits of an identical petition filed by a stranger to the litigation – to whose petition the Fintiv factors simply do not apply -- somehow violates public policy regarding the American patent system. PTAB mischief begets more PTAB mischief, and no one should be surprised. READ MORE
A New Pilot Program for a New Year:  
The USPTO Ushers in the Deferred Subject Matter Eligibility Response (DSMER) Pilot Program
In an effort to provide flexibility with respect to the timing of addressing subject matter eligibility (SME) rejections, and in response to congressional pressure, the USPTO has launched a new pilot program known as the Deferred Subject Matter Eligibility Response (DSMER) pilot program. The new pilot program allows an applicant to defer responding to SME rejections for a limited period of time, in the hope that first addressing other patentability rejections will obviate the SME rejections. READ MORE
OBWB SPONSORS #AIPLAMW22
Osha Bergman Watanabe & Burton is pleased to participate at AIPLA's Mid-Winter Institute as a Pearl Sponsor. Patent Attorney Francesca Giovannini (from OBWB's Paris office) is a panelist for the session, "Deep Dive: Unified Patent Court" on February 3rd.
新春愉快
Happy Chinese New Year. Wishing you happiness, health and prosperity in the Year of the Tiger.