In celebration of World Intellectual Property Day, Nixon Peabody Intellectual Property practice members share insights on the emerging IP prosecution, litigation, and transaction issues impacting academic institutions, businesses, and innovators.
Linda Huber, Technology Transfer Team Co-Leader
The IP world is waiting for SCOTUS interpretation on “make and use” versus “full scope” as they apply to the patent enablement requirement. Until then, we recommend delving into invention when drafting new applications to provide details and examples with an eye toward meeting the “full scope” of the claimed embodiments.
Seth Levy and Vince Capati, Accelerators & Incubators Team Co-Leaders
Disruptive IP will enable small- and mid-size institutions to foster innovation in new and unexpected ways. We see this now as accelerators/incubators leverage creative IP-ownership models to develop technology from academic and research centers.
Nicole Kling, Agribusiness Team Co-Leader
The world of patent-eligible subject matter is ever-evolving. For example, the recent Chromadex decision offers further guidance on claim construction for inventions relating to natural products or phenomena.
Ellie Heisler, Sports & Sporting Goods Team Co-Leader
AI-powered tools and their adoption will have massive legal implications for copyright ownership, right of publicity, approvals and compliance with the FTC endorsement guides, union rules and regulations, and beyond.
For example, such tools allow filmmakers and marketers to replace real-life actors and content creators with AI versions of their voice, eliminating the need for voiceover, dubbing, and in-person production.
Shawn Hansen, Intellectual Property Partner
Clients and IP attorneys often overlook claims for false advertising and unfair competition that may arise from the same body of operative facts in IP disputes between competitors.
A competitor’s commercial advertising or other promotional activity is a common way that IP owners learn of claims for infringement of patents and trademarks. It can easily get lost that the advertising or promotion itself may also be actionable under the Lanham Act, and related interactions with customers may be actionable under state unfair competition laws.
Complementing patent and trademark infringement claims with false advertising and unfair competition claims can enhance settlement bargaining power and the remedies available in competitor IP disputes.