IP Talk with Wolf Greenfield

John Harmon is a shareholder in both the Mechanical and Chemical & Materials Technologies Practices at Wolf Greenfield. He represents clients in industry and academia in a wide range of technologies related to the mechanical, materials, and chemistry fields. One area of particular interest these days is the evolving impact of artificial intelligence (AI) on intellectual property matters.

The United States Patent and Trademark Office (USPTO) recently issued its “Inventorship Guidance for AI-Assisted Inventions.” This guidance is pursuant to President Biden's Executive Order last fall on the “safe, secure, and trustworthy development and use of AI.”

In this edition of IP Talk with Wolf Greenfield, John Harmon offers perspective on these early days of AI application.

01:06 - A summary of the latest guidance from the USPTO

06:05 - An overview of the Thaler v. Vidal case

06:53 - What further action might be taken in the future to address the President's concerns?

09:01 - What constitutes an "invention" and how does AI muddy the waters?

11:59 - File earlier rather than later

12:52 - Simply applying AI to a problem doesn’t constitute patentable subject matter

14:29 - The issues that need to be considered when AI and robotics are used together

16:13 - Suggestions for moving forward with AI

###

Rob Sahr is a shareholder in Wolf Greenfield’s Biotechnology Practice. He develops strategies for life science companies to maximize exclusivity for therapeutic and diagnostic products. Rob has also assisted federal grant recipients and contractors with Bayh-Dole compliance.

Originally passed at the end of 1980, the Bayh–Dole Act permits ownership by contractors of inventions arising from federal government-funded research. In recent months, the Biden Administration has seemed intent on more aggressively exercising “march-in rights” under the Act to promote affordability of taxpayer-funded inventions.

In this edition of IP Talk with Wolf Greenfield, Rob provides insight on recent developments regarding Bayh-Dole compliance. Here are the highlights.

00:59 - On the contentiousness of Bayh-Dole

03:06 - What is a subject invention and why are they the source of so much confusion?

04:59 - Defining “march-in rights” and how are they different from “taking title”

06:16 - The four requirements of march-in rights

07:04 - Explaining “timely disclosure” and its importance

08:34 - Implications of the recent University of South Florida case

10:28 - Enforcing the requirements around utilization reports and how the Presidential election might factor into the equation

###

Scott McKeown is a shareholder in Wolf Greenfield’s Post-Grant Proceedings Practice. Based in the firm’s Washington, DC office, Scott focuses his practice on high-stakes matters before the US Patent Trial & Appeal Board, Court of Appeals for the Federal Circuit, and related patent litigation matters. Recognized as one of the top PTAB trial attorneys in the US, Scott is also a frequent speaker and author on various intellectual property topics and his award-winning blog can be followed at PatentsPostGrant.com.

In this edition of IP Talk with Wolf Greenfield, Scott offers his insight on some of the biggest PTAB developments over the past year and things to watch in 2024. Here are the highlights.

01:07 - Scott gives an overview of 2023 PTAB changes and explains how they have changed the practice

03:32 - PTAB developments that Scott is monitoring this year

05:41 - Scott offers some helpful tips for in-house counsel in light of the Federal Circuit’s In re Cellect ruling

07:31 - Exciting times ahead for Wolf Greenfield’s Washington, DC office

###

We’re pleased to feature May Rohrbach in this episode of Wolf Greenfield’s Alumni Spotlight series. May was previously a patent agent in Wolf Greenfield’s Electrical & Computer Technologies Practice. She was also part of the firm’s technology specialist intern program.

Now, May serves as a QA Engineer II at Blink, an Amazon Company. Blink delivers affordable, innovative, and easy-to-use smart home security devices.

Here are some highlights from May’s turn in the Alumni Spotlight on IP Talk with Wolf Greenfield.

00:47 - An overview of May’s current responsibilities

01:45 - How May’s current position differs from being at a law firm

03:03 - May’s role at Wolf Greenfield prepared her for her current position at Blink

04:08 - Her favorite Wolf Greenfield memories

05:11 - May’s favorite book

05:57 - Dream destination

2024 is upon us and it’s going to be another busy year for intellectual property law. In this episode of IP Talk with Wolf Greenfield, you’ll hear Wolf Greenfield attorneys from a variety of practice areas offering their insights on what to expect in the months ahead. Here are some of the highlights.

01:06 - Jeff Hsi commented on the impact the Amgen v. Sanofi decision may have on the biotech and pharmaceutical industries in 2024.

01:59 - Jonathan Roses with thoughts on the In re Cellect case.

03:11 - Following the Columbia Sportswear case, Jen Wang discusses the importance of choosing a good title in a design patent application.

04:04 - John Harmon on artificial intelligence (AI) and the importance of filing patent applications in a timely manner.

04:57 - In the wake of the Supreme Court’s decision in the Jack Daniels case, John Strand’s thoughts on the line between free expression under the First Amendment and trademark law.

05:56 - John Welch previews the Vidal v. Elster trademark case to be decided by the Supreme Court in 2024.

06:43 - Scott McKeown on the Patent Trial and Appeal Board’s (PTAB) much anticipated updated rules package.

07:32 - Zach Piccolomini expects a great deal of focus on the new Unified Patent Court (UPC) and European unitary patent.

08:27 - Ed Russavage offers some thoughts on how President Biden’s Executive Order on Artificial Intelligence may impact IP, including some patent and copyright issues.

09:24 - With a number of cases challenging the drug pricing scheme in the Inflation Reduction Act, Dan Young comments on the possible implications for a company’s patent strategy.

10:11 - Rob Sahr on the Biden Administration’s Executive Order stating that “when new technologies and products are developed with support from the US Government, they will be manufactured in the United States whenever feasible and consistent with applicable law.”

11:32 - Libbie DiMarco says 2024 may see a rise in Section 337 non-patent claims before the ITC.

###

Libbie DiMarco is a shareholder at Wolf Greenfield and, along with Dan Young, co-chair of the firm's Washington, DC office. Libbie is an intellectual property litigator focusing her practice primarily on complex patent litigation in Federal District Court and before the US International Trade Commission (ITC).

In this episode of IP Talk with Wolf Greenfield, Libbie highlights the impressive growth already taking place in the DC office and looks ahead to 2024. Here are the highlights.

01:02 - The reasons that led to Wolf Greenfield opening a Washington, DC office

02:13 - Growth in the DC office has been impressive

03:42 - Co-chairing the office with Dan Young

04:41 - 2023 developments at the ITC

06:03 - Advice for navigating the latest changes at the ITC

06:52 - Best practices for indemnification

###

Bryan Conley is a shareholder and experienced litigator at Wolf Greenfield who focuses his practice on intellectual property matters at the agency, trial, and appellate levels. He regularly represents high profile technology clients at trial concerning their most challenging patent matters.

One area of intense interest lately has been Section 337 investigations. These investigations into unfair import practices are conducted by the US International Trade Commission and most often involve claims regarding intellectual property rights, including allegations of patent infringement and trademark infringement by imported goods.

In this episode of IP Talk with Wolf Greenfield, Bryan offers a detailed look at Section 337. Here are some of the highlights.

00:56 - Bryan provides an overview of Section 337 investigations

02:41 - Factors driving the increase in questions related to public interest

05:27 - Examples of public interest factors that the Commission considers

06:28 - The role of the Administrative Law Judge (ALJ)

07:38 - Bryan explains why the ITC is more willing to delegate public interest fact finding to the ALJ when standard essential patents (SEPs) are involved

08:52 - Why it’s critical for private parties to create a public interest record and what should be included in that record

10:32 - Recent impactful public interest Section 337 cases

12:39 - It’s important for respondents to act quickly to highlight the significance of public interest factors after a complaint is filed

13:57 - The top four statutory factors that are important when developing a public interest strategy and related arguments

15:23 - Bryan describes “tailoring”

16:31 - Final suggestions on preparing for and dealing with public interest Section 337 issues

We’re pleased to feature Eric Amundsen in this episode of Wolf Greenfield’s Alumni Spotlight series. Eric was previously a shareholder in Wolf Greenfield’s Mechanical Technologies Practice. He worked at the firm for over 22 years.

Today, Eric serves as a senior energy transition consultant at Geosyntec Consultants, where he focuses on energy transition, life cycle assessment, sustainability, and environmental policy. Eric assists organizations by addressing their energy transition and Environmental, Social, and Governance (ESG) goals. He helps identify, manage, and report on the opportunities and risks associated with the shift to a lower-carbon economy.

Here are some highlights from Eric’s turn in the Alumni Spotlight on IP Talk with Wolf Greenfield.

00:46 - Eric describes his current responsibilities with Geosyntec

01:52 - Progress being made in decarbonization

02:56 - The joy of “figuring things out”

03:44 - Making the transition from attorney to energy transition consultant

04:14 - How Wolf Greenfield prepared Eric for his role at Geosyntec

05:04 - What sets Wolf Greenfield apart from other law firms

06:13 - Dream destinations

07:05 - Favorite get-away spots

Getting a new product to market is a time-consuming and difficult task that few achieve. Yet, the husband and wife team of Greg Besner and Leslie Hsu have done just that with their Sunflow brand of beach chairs and accessories. Greg is a serial entrepreneur and Leslie is a fashion designer. Their journey was filled with challenges, from idea conception through design to product launch - with a successful appearance on ABC’s Shark Tank along the way.

In this episode of IP Talk with Wolf Greenfield, Greg and Leslie discuss their story with Neil Ferraro, chair of Wolf Greenfield’s Mechanical Technologies Practice, and Paul Metaxatos, co-founder and principal of Motiv, a Boston-based consultancy that designs products and develops brands for companies of all sizes. Here are a few of the highlights:

01:43 - Leslie explains where the idea for Sunflow originated

03:59 - Neil describes Greg and Leslie as problem solvers

05:21 - Paul explains Visual Brand Language (VBL) as an important product differentiator

06:20 - Greg on the features that make Sunflow unique

08:55 - Executing with excellence

09:53 - The importance of developers, designers, and patent attorneys working as a team to develop and protect ownable aspects of a new product

11:30 - Making practical decisions along the way to ensure the iconic new product

16:20 - Greg explains the value of having proper patent protection

19:19 - The Shark Tank experience

21:03 - What’s ahead for Sunflow?

25:19 - Paul believes Sunflow is taking a page from Tesla’s playbook

27:20 - Neil stresses the importance of making sure innovations in the pipeline are patented before disclosure or release

Jas Lee is a shareholder in Wolf Greenfield’s Chemical & Materials Technologies practice. She works with clients on IP strategy development and execution. Jas particularly enjoys helping start-up companies identify their most valuable IP and best strategies to protect them. Additionally, Jas serves as chair of Wolf Greenfield’s Diversity Committee. And if this isn’t all enough, Jas is a competitive tri-athlete.

In this episode of IP Talk withWolf Greenfield, Jas discusses her work at Wolf Greenfield and her training as a triathlete for Team USA. Here are a few of the highlights:

00:51 - Jas Lee’s current responsibilities and focus areas

02:05 - Jas loves working with start-ups

02:39 - Achievements of Wolf Greenfield’s diversity committee

03:54 - Getting involved in triathloning

06:38 - Jas was a member of Team USA for the 2023 World Triathlon Sprint & Relay World Championships in Germany

08:37 - Making the transition from weekend triathlete to competing with Team USA

09:36 - The competitions ahead

10:10 - Balancing training and competition schedules with work and family responsibilities

11:11 - How training helps clear the mind