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.
Staci Trager, Fashion & Apparel Team Co-Leader
Companies need to take a critical look at their ESG policies. If they do not have policies, create them.
We are seeing a rising demand by consumers that brands have—and live—their ESG values, combined with enhanced regulation around ESG claims, and increased litigation by the plaintiffs’ bar around ESG terminology and pricing.
Erica Van Loon and Eliana Torres, IP in the Metaverse Team Co-Leaders
As emerging technologies become increasingly accessible to the general public, the right of publicity is often overlooked.
New forms of creative works can be generated using personal data that includes an individual’s image and likeness. This could result in outputs that are easily recognizable as resembling a specific individual.
Similarly, the rise of innovative and artistic technologies such as NFTs often does not take the right of publicity into account. As a result, the use of these technologies can lead to the exploitation of personal identity for commercial gain without the individual’s consent.
The growing trend toward emerging technologies highlights the need for greater consideration and protection of the right of publicity. It is important to recognize and address these concerns to ensure that individuals’ rights are respected in the digital age.
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.