IP News: Can Bayh-Dole Void an Exclusive License?

This in-depth article from IP blog Research Enterprise discusses the implications of a particular provision of the 1980 Bayh-Dole Act in US patent law.

The Bayh-Dole Act concerns US patent ownership in cases when the research that led to the patent was federally-funded, so government contractors and universities pay it particular attention. Before Bayh-Dole was passed, such patents just belonged to the federal government; this allows for organizations such as nonprofits, small businesses, and universities writing up a contract with the federal agency backing them for owning or partially owning that patent themselves.

This article is about a provision in the Bayh-Dole Act that’s never actually been used– so, ominously, there’s no precedent for how it would actually work out if it ever were. The gist is, if a federally-funded inventor invents something important (e.g. the cure for cancer) and then uses their Bayh-Dole contracted patent license to sit on it (i.e. doesn’t then make that patented cancer medicine and sell it), the federal agency that funded them has the legal option to “march in”, investigate and prove that they’re using the patent wrong (as defined under Bayh-Dole), and either require them to authorize others to share the patent rights, or even re-issue or give away that patent license to somebody else instead.

This latest article in a blog that has discussed Bayh-Dole extensively (and in fact includes also a Guide to Bayh-Dole) raises here a few nuanced points about the “goofiness” of some of the provision language, and speculates how “marching in”, if or when it ever actually happens, might collide with other patent law in practice.

Read the full article here!

IP News: Autonomous Weapons Need Autonomous Lawyers

To make your Thursday a little scarier and/or better informed, here’s an interesting article about the future of AI (Artificial Intelligence) technology, automated military technology, and automated law practice.

“With the arrival of autonomous weapons systems (AWS) on the 21st century battlefield,” writes Colonel Walter ‘Frank’ Coppersmith, “the nature of warfare is poised for dramatic change.”

Comparing the impending AI revolution in military technology to the Germans’ shocking and decisive use of coordinated use of aircraft, tanks, and radio at the beginning of World War II, Coppersmith predicts that the ongoing development of AI-enabled weapons will in turn push military leaders to empower the AI’s to make combat and strategic decisions with less and less human input. In view of that, AI is going to need to know how to interpret human law.

He also observes, though, that AI is coming to law practice. There are already AI-driven legal services available, and experts anticipate that much of the clerical and analysis work that lawyers currently labor over will soon be taken over by AI.

In a lengthy article that’s also very informative about AI in law particularly and AI advancements overall, this expert makes a compelling case for early adoption of AI in Air Force legal practice and beyond.

Read the full article here!

IP News: Nintendo sues another ROM website

Last week, video gaming giant Nintendo filed a lawsuit against yet another website offering ROM downloads, RomUniverse.

A ROM image, also called just a ROM in this context, is a computer file consisting of data copied from a read-only memory chip; one application of ROM imaging is copying video game media from cartridges. A computing device can then use a software-based emulator to imitate a compatible video game console, read the ROM image, and allow a user to play on their computer a copy of the video game from the cartridge.

The applications of technology for copying the data from a video game cartridge into a computer file naturally would include everything from salvaging a game one already owns off of unusable media, to archiving old classics for future generations of game developers to study, to bootlegging counterfeits of the very latest craze and selling them far and wide — all of which applications are, technically, equally illegal. Many video game fans in the tech community are disgusted by this state of affairs, and criticize attempts by large video game companies like Nintendo to blanket-ban all video game ROMs and emulation software, even for classic old games they own but aren’t selling, as petty tightfistedness. However, in this instance the case against RomUniverse is clear: they offer copies of newer games, such as those for Nintendo Switch and 3DS, and they also charge money.

Nintendo unequivocally condemns all ROM imaging of video game media as nothing but piracy, regardless of context or intent, and has gained a reputation for aggressive IP litigation. Last year, Nintendo’s lawsuit against ROM websites LoveROMs and LoveRetro resulted in a $12 million settlement in Nintendo’s favor. Against RomUniverse, which offers over 60,000 ROMs for download, Nintendo is seeking $150,000 in damages for each infringed copyright and $2 million for each infringed trademark.

For the TechSpot article regarding this recent development, click here.

SFIPLA Annual Meeting at Indian Springs in Calistoga

The San Francisco Intellectual Property Law Association is once again hosting its annual Seminar over the weekend of September 20 – 22, at the lovely Indian Springs Resort & Spa in Calistoga – Napa Valley, CA.

They are looking forward to hosting three days of networking, learning, and relaxation for IP professionals and their families. CLE credit provided for all educational sessions.

Click here to register.

Confirmed Speakers To Be Announced Shortly!

For more information on this event, please visit the SFIPLA website event page.

Useful Article: How to Register for DMCA Safe Harbor Protection

Heads up!

If you own a website that includes user-generated content such as discussion boards, you could be vulnerable to a lawsuit if anything they post infringes a copyright.

The “Safe Harbor” provisions of the Digital Millennium Copyright Act (DMCA) protect websites like this from liability for user content — but they have to register for that status and follow the relevant guidelines first.

This article explains how DMCA Safe Harbor registration works, why it’s important, and how to make sure you’re covered.

Read it here!

IP News: Supreme Court Strikes Down Ban On Registration of Trademarks Containing “Immoral” or “Scandalous” Matter

Recently in IP Law News: A Supreme Court verdict in the case of Iancu v. Brunetti struck down as unconstitutional the Lanham Act’s longstanding ban on trademark registration of “immoral” or “scandalous” matter.

Justice Elena Kagan indicated in her written opinion on behalf of the court that the statute in question is unconstitutional because it gives preference to one set of ideas over another, favoring “conventional moral standards” against departure from same, in a way that results in  viewpoint-biased and discriminatory trademark examination; a trademark’s allowability for registration shouldn’t be contingent on what scandalizes the Examiner.

This was an expected development following the precedent set by a similar case two years ago, Matal v. Tam, that overturned the Lanham Act’s related prohibition of trademarks that include “disparaging” matter as unconstitutional on First Amendment grounds.

Read the full article here!