Insights

The Federal Circuit in Sanho Corp. v. Kaijet Technology International Limited, Inc., No. 2023-1336 (Fed. Cir. July 31, 2024) recently addressed the prior art exception of a “public disclosure” under 35 USC § 102(b)(2)(B).  Affirming a decision of the U.S. Patent Trial and Appeals Board (“PTAB”), the court held that “publicly disclosed” is only satisfied if the invention was made available to the public, and a non-confidential but otherwise private sale of an invention is not a sufficient “public disclosure”.  This case provides a cautionary tale that disclosing or selling an invention before filing a patent application is fraught with risk.

On June 7, 2023, the U.S. Senate Committee on the Judiciary, Subcommittee on Intellectual Property hosted a hearing titled “Artificial Intelligence and Intellectual Property – Part I: Patents, Innovation, and Competition.” It’s clear the Judiciary Committee is going to play an active role in the debate on how to regulate artificial intelligence (AI), with many more hearings to come, as this hearing came shortly after the Judiciary Subcommittee on Privacy, Technology, and the Law held a hearing on “Oversight of A.I.: Rules for Artificial Intelligence.”

In March 2023, the USPTO and its Council for Inclusive Innovation announced the First-Time Filer Expedited Examination Pilot Program.  This new program benefits those individuals or small businesses that are first-time filers for patent rights and qualify as “micro entities.”  Through the program, these micro entities receive an expedited first Office action, which the USPTO hopes will lower time-based barriers for inventors that acted as barriers to commercialization or may have otherwise precluded inventors’ use of the patent system.