This week in IP: RBG’s IP legacy, DABUS UK appeal fails, WIPO launches litigation database

The passing of Justice Ruth Bader Ginsburg, the second woman ever to serve on the US Supreme Court, has left women and men in intellectual property mourning and reflecting on her legacy.

Private practice partners tell Managing IP that Ginsburg’s words of wisdom, fight for civil rights and her role as a trailblazer have inspired them to break down barriers in their own career and continue fighting for gender and other forms of equality.

Mel Bostwick, partner at Orrick in Washington DC, says Ginsburg was a beacon, particularly for women in the legal field. “The challenge for us is to find that light elsewhere now that she’s gone.”

Read more here.

Other Managing IP stories we published this week include:

Counsel divided on impact of Avanci case dismissal

Brand specialists reveal how they weed out fake views

In-house: e-person inventors are ‘beyond imagination’

Generics say French Eli Lilly decision not worth its salt

How COVID has hit US and European litigation

Tech companies promote benefits of Open Covid Pledge

The England and Wales High Court dismissed an appeal from an artificial intelligence expert on Monday, September 21, to have a machine listed as the inventor on the patents for two products.  

Stephen Thaler, the inventor of the ‘creativity machine’ called DABUS, argued that a food container and an emergency warning light had been invented by his AI-enabled machine.

On the patent forms filed last year, Thaler attributed inventorship of these ideas to the AI machine.

The UKIPO decided that since DABUS was a machine and not a natural person, it could not be regarded as an inventor for the purposes of Sections 7 and 13 of the Patents Act.

In his judgment, Mr Justice Marcus Smith upheld the office’s decision, and wrote: “Dr Thaler's contention that he is entitled to the grant of patents pursuant to the applications because he falls within one of class (b) or class (c) is hopeless and must fail.

“Even if I accepted that DABUS was capable of being an inventor – which, for the reasons I have given, I do not – Dr Thaler's application would be hopeless, because DABUS would – by reason of its status as a thing and not a person – be incapable of conveying any property to Dr Thaler.”

This ruling comes as the latest in a series of rejections of Thaler’s inventorship arguments. The EPO dismissed the DABUS-related applications at the start of this year, and the USPTO rejected a parallel application in April, arguing that Title 35 of the US Code consistently refers to inventors as natural persons.

On Thursday, September 24, WIPO launched a free database of leading judicial decisions related to IP law from around the world.

The database, called WIPO Lex-Judgments, curates decisions that have been directly selected by certain member state courts and national authorities because of their significant impact or precedential value.

The catalogue includes searchable and bibliographic details for all indexed judgments, which include subject matter, issuing authority, type of proceeding, relevant legislation, keyword and summary, as well as the full text of the judgment in its original language.

In a press release, WIPO announced that the database had been established to give users a greater overall understanding of how different courts are handling important IP issues.

“WIPO Lex-Judgments will provide an important support for the adjudication of IP disputes in a globalised world where courts and policy makers, challenged by the dynamic nature of the IP discipline, can use the information gained in their own search for domestic judicial and policy solutions,” said departing WIPO director general Francis Gurry.

In July, Managing IP interviewed Gurry, who is set to leave the office next week.  

The database also provides information on the judicial structures for IP disputes in participating member states.

The European Council announced on Monday, September 21, that it had adopted a set of conclusions designed to ensure a strong post-COVID economic recovery within the EU single market, which included a renewed commitment to IP.

In a note, which laid out the conclusions that the European Council has now adopted, the council’s general secretariat set out that the EU Intellectual Property Action Plan could contribute, among other things, to incentivising R&D investments and fostering key technologies in the bloc.

The note also suggested that the council should adopt a “Think Small First” principle that would enable growth investments through the facilitation of IP-driven investments for SMEs.

IP Europe, a coalition of R&D-intensive organisations, welcomed the news. Francisco Mingorance, executive secretary of IP Europe, said: “Europe needs to support innovators and explicitly recognise the value of effective IPR protection and enforcement for innovative European businesses of all sizes.

“When it comes to strengthening technological sovereignty and maintaining European leadership in strategic technologies, such as 5G and 6G, comprehensive and predictable IP protection is vitally important.”

In July, Managing IP reported on how the EU’s IP Action Plan would probably spark ‘controversial’ discussions.

The USPTO announced on Monday, September 21, that its chief policy officer had been selected to serve as the 14^th register of copyrights.

Shira Perlmutter, who has been the USPTO’s chief policy officer and director for international affairs for eight years, will replace Maria Strong, who had been the acting register since January 2020.

Before joining the USPTO in January 2012, Perlmutter served as executive vice president for global legal policy at the International Federation of Phonographic Industry, and before that as vice president and associate general counsel for IP policy at Time Warner.

“The Library of Congress has made an outstanding choice,” said Andrei Iancu, USPTO director. “I and the entire USPTO team congratulate Shira and wish her much success in her new and critically important role.

“As one of the nation’s most preeminent copyright experts, Shira is extremely well qualified to lead the Copyright Office.”

It was not announced when Perlmutter would officially start in her new position.

Qualcomm is narrowly ahead of Huawei in the bid to accumulate standard essential patents for the Wi-Fi 6 standard, according to a report by Japanese IP services company NGB.

The report, published yesterday, September 24, shows that Qualcomm has 115 Wi-Fi 6 SEP families, two more than its Chinese rival Huawei. Intel comes third with 95 families, followed by LG Electronics (88) and US chip maker Newracom (63).

NGB analysed the landscape for patents deemed essential to Wi-Fi 6, otherwise known as IEEE 802.11ax. It shows that Qualcomm has made more than 400 contributions to the standard overall, with Huawei making over 300.

Yuji Orita, general manager at NGB, told Managing IP that it is a world-first report on the current status of Wi-Fi 6 SEPs based on manually searching technical essentiality.