Intellectual Property Report
Beyond Chatbot Policies: The Case for AI Governance
Parker Hancock
GenAI is rapidly developing beyond chatbots into complex AI systems. This second wave of GenAI-powered systems can drive significant business decisions, enhancing customer experiences, and streamlining operations. This evolution marks a pivotal shift in how businesses utilize technology, moving from basic automation to deep, strategic integration that touches every aspect of an organization's operations. However, as these technologies become more embedded in the core functions of businesses, they also introduce a myriad of regulatory, ethical, and operational challenges.
To read the full article, click here.
Two Sides of One Coin: Utilizing and Preventing Declaratory Judgment Actions
Chelsea Zhang
Declaratory judgment can be a useful tactic for parties to proactively defend against anticipated patent infringement lawsuits in federal district courts. But how far in advance should parties be allowed to file declaratory judgments before abusing the remedy by bringing frivolous or hypothetical suits? The courts have attempted to balance this issue by limiting their jurisdiction to hearing declaratory judgments actions only in cases where an actual “case or controversy” or “reasonable apprehension” of suit exists.
To read the full article, click here.
This Month: Our Take on AI
Joseph Cahill
USPTO Guidance: The USPTO issued guidance that AI-assisted inventions can be patented as long as humans make significant contributions, emphasizing the importance of human inventorship in AI systems. The issued guidance cites the Pannu factors describing that an inventor must "(1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.” Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998). In issuing the guidance, the USPTO effectively reiterated its position in the DABUS decision. Partner Maggie Welsh wrote about this development here: "USPTO Provides Guidance on Inventorship of AI-Assisted Inventions."
More AI Law/Regulation on the Horizon: Developments on the domestic and international front indicate that 2024 will be a year when we get more AI regulations and laws. First, the results of the White House EO issued on October 30, 2023, are starting to be seen. The EO mandates that agencies take various actions, such as releasing guidance (see the USPTO guidance discussed above) on AI. On January 29, 2024, the White House updated its “Fact Sheet” related to the EO, detailing the actions taken by government agencies thus far. I write about the details of this update here: "White House AI Executive Order - Completed Agency Actions." We will see more agency actions throughout this year, which should help provide clarity on AI regulation.
Appeal from Copyright Office Decision: Stephen Thaler submitted an appeal brief to the DC Court of Appeals. The brief challenges the district court's decision that affirmed the denial of copyright in his AI-Generated Work, a musical composition created by the DABUS AI model. The brief argues that the district court erred in applying a Human Authorship Requirement to the Copyright Act, which does not explicitly or implicitly exclude non-human authors from protection. Nick Palmieri writes more about this development here: "Appeal Filed from Copyright Office's Refusal to Register AI Generated Work."
To read more on our our Team's insights on AI and the impact on our world, click here.
Top Rankings in LexMachina’s Patent Litigation Report 2024
Baker Botts' Intellectual Property Department’s Patent Litigation team has obtained top rankings in LexMachina’s Patent Litigation Report 2024. The report shows that the number of trials our team appeared in before the Patent Trial and Appeal Board (PTAB) was first among all general practice firms between 2021-2023, for a total of 217 PTAB trials. Additionally, our patent litigation practice was named one of the most active firms in defensive cases from 2021-2023 with a total of 131 cases, across all the major venues for patent litigation.
To read more, click here.
BAC NY Happy Hour Event
March 20, 2024
The Baker Botts Branding, Advertising, and Copyright (BAC) Team is hosting a private reception following the INTA "Business of AI" Conference to be held at the Gaming Lounge at Moxy NYC Downtown on Wednesday, March 20, 2024.
There, attendees will continue (or start) a conversation on hot topics in AI and the intersection between AI, IP rights, and brand management while enjoying drinks, light bites, and recreational games like Skee-Ball, shuffleboard, and more.
Questions: please contact Elizabeth Van Wagner.
February 2024 Intellectual Property Report Recap
In case you missed it, here is a video recap of our February 2024 Intellectual Property Report that looked at:
- Latte Prior Art: Federal Circuit Holds the Plain Meaning of Espresso Pod 'Barcode' is Defined by its Visual Appearance
- Red Light: Stop and Consider Before Marking Your Software-Based Patent
- Federal Judge Issues Scathing Rebuke of Patent Trolls
- Post-Grant Proceedings in the U.S. – A Strategic Comparative Analysis of IPRs, PGRs, and EPRs
- Blog: Our Take on AI
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