Patent trends to watch in 2024
Patent eligibility, particularly under Section 101 in Title 35 of the United States Code, continues to be a rapidly evolving and contentious area of law. As we look towards 2024, several potential developments may shape the landscape of patentable subject matter.
In recent years, there have been calls for clarification or guidance from the US Supreme Court and/or US Court of Appeals for the Federal Circuit with regard to patent eligibility standards. But neither the Supreme Court nor Federal Circuit seem to have a strong interest to deal with this issue.
Federal Circuit judges have called for guidance from the Supreme Court. The Supreme Court, however, continued to turn down patent eligibility petitions in 2023, often against the recommendation of the Solicitor General, from whom the Supreme Court sought guidance. It remains to be seen whether the US Supreme Court will provide further direction on patent eligibility issue in 2024.
Congressional efforts to reform patent eligibility, such as the Patent Eligibility Restoration Act of 2023, face an uphill battle but could gain traction depending on political dynamics.
Efforts by the United States Patent and Trademark Office (USPTO) to provide clearer guidance to examiners on applying Section 101 are also ongoing and a new set of patent eligibility guidelines could be published in 2024 which could impact eligibility determinations.
On October 30, 2023, US President Joe Biden issued an Executive Order on Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence (AI). The Executive Order requires the USPTO to provide guidance to patent examiners on issues of “inventorship and the use of AI” and, potentially, issues of patent eligibility. As a result, the USPTO is likely to issue more favourable patent eligibility guidelines for AI-driven innovations in 2024.
AI and its impact on patent practice and law
As 2023 wound down, excitement increased for the future of AI in 2024. AI is rapidly transforming every industry, and patents in AI applications will continue to increase. Areas to watch are new patent applications related to machine learning, natural language processing, and computer vision, particularly in areas like autonomous vehicles, robotics, personalised medicine, and AI-powered tools that enhance productivity and creativity.
Additionally, AI-powered patent analysis tools will become increasingly sophisticated, impacting patent prosecution strategies and patent litigation tactics.
Continued debates around patent eligibility, inventorship, and ownership for AI-generated inventions should be expected, with cases likely testing the boundaries of the role of the human inventor in the AI era.
As a result of President Biden’s first Executive Order on AI, the USPTO is likely to issue guidelines to make it easier to recognise humans as the actual inventors, even as these human inventors use AI as a tool in their invention process.
The shifting landscape of patent pools
As we enter 2024, the landscape of patent pools is poised for interesting shifts. The rise of electric and autonomous vehicles is driving the pooling of key technologies, with initiatives targeting automotive standard-essential patents (SEPs).
We are likely to see the continuation of this trend in 2024 as more automotive-related SEP holders and car manufacturers will join or subscribe to, respectively, the licensing programs offered by patent pools. Furthermore, we are likely to see increased formation of pools in new technologies beyond the traditional focus in telecommunications and audio/video compression. For example, patent pools focusing on biotechnology and green technologies may start to gain traction in 2024.
Changes in patent laws and international agreements can significantly influence the attractiveness and viability of patent pools. 2024 could see global IP reforms in relevant areas impacting pool formation and operation.
Enablement and written description requirements for biological compound claims may become rigid
On May 18, 2023, the US Supreme Court issued a unanimous decision in Amgen v Sanofi, affirming the Federal Circuit’s holding that Amgen’s functional patent claims were invalid for the specification and fails to enable the “full scope” of the invention as defined by its claims.
Also, taking into account an earlier decision by Federal Circuit in Juno v Kite regarding the written description requirement, life science companies will likely see more difficulties to claim the entire genus of antibodies that preform a particular function going forward.
Although Amgen’s patent disclosure identified the amino acid sequences of 26 antibodies that perform two claimed functions, the claims cover potentially millions more undisclosed antibodies that perform these same functions.
Amgen argued that its claims are nevertheless enabled because scientists can make and use every functional antibody if people simply follow the two given approaches. The Supreme Court, however, concluded that the approaches amount to little more than two research assignments or a random trial-and-error method for finding functional antibodies, and thereby would not enable others to make and use the undisclosed antibodies.
Similarly, in Juno, the Federal Circuit held that the only disclosure of two exemplary scFvs (a single-chain antibody) for binding two different targets cannot meet the written description requirement because a skilled artisan would not understand how an enormous number (millions of billions) of scFv candidates are capable of binding to any targets as the claims require.
It is not uncommon for life science companies to claim the functional genus of a biological compound. In the future, inventors may need to provide more representative species to support a claim to the functionally defined genus or write more specific claims. In addition, it is not sufficient to only disclose a method and proceed through a trial-and-error process to discover what is purported to be protected.
Design patent protections for computer icons and GUIs are more predictable
On November 17, 2023, the USPTO released its Supplemental Guidance for Examination of Design Patent Applications Related to Computer-Generated Electronic Images, Including Computer-Generated Icons and Graphical User Interfaces (Supplemental Guidance).
The Supplemental Guidance does not expand the USPTO’s interpretation of the phrase “design for an article of manufacture” set forth in 35 USC § 171 but opts to reaffirm its prior interpretation with additional examples of titles and claim language considered to constitute statutory and non-statutory subject matter for a design including a computer-generated electronic image.
The USPTO interpreted the phrase “design for an article of manufacture” to include designs for computer-generated icons in its own 1992 decision in Ex parte Strijland, and will further expand to include graphical user interfaces (GUIs) in its Manual of Patent Examining Procedure Section 1504.01(a)(I) in the next few years.
The USPTO considers a computer icon or a GUI shown on a display panel, or a portion thereof, as an integral and active component in the operation of a programmed computer displaying the computer icon or the GUI, which, if properly presented and claimed, constitutes statutory subject matter under 35 USC § 171.
In the Supplemental Guidance, the USPTO reaffirmed the interpretation and further provided the justification for its two-prong screen rules:
- The title and claim language must adequately describe a design for an article of manufacture under Section 171.
- A display panel, or portion thereof, must be shown in the drawings.
The USPTO adheres to its prior conclusion that the relevant article of manufacture is the “computer screen, monitor, other display panel, or portion thereof,” but remains to be seen how the PTO will interpret and apply the phrase “integral and active component.”
The rationale and examples are helpful for applicants and attorneys to obtain more predictable outcomes related to the design patent claims directed to computer icons and GUIs. We expect the growth of design patent applications including computer icons or GUIs this year.
Patent litigations see decrease while NPEs tend to be active
New patent case filings in the US declined significantly in 2023, compared to the average number from 2014 through 2022. This year, it is projected there will be 25% fewer new patent case filing than this historical average (According to LexMachina, the projected new patent filings are 3,131, and the average new patent filings from 2014 to 2022 were 4,260).
Contrary to the decrease of patent case filings, the number of patent cases filed by non-practising entities (NPEs) is steadily high, responsible for around 58% patent litigation filings in 2023.
According to the Docket Navigator, the Eastern District of Texas (EDTX) has become the most popular venue for patent cases, and the Western District of Texas (WDTX) closely follows. Chief Judge Garcia’s July 2022 order requiring the random assignment of patent litigations among 12 WDTX judges seems to be an inflection factor.
NPEs continue to gamble in the WDTX and EDTX, accounting for nearly 91% and 84% of all respective filings. The District Court of Delaware places third, and more than 60% of the cases filed there were by non-NPEs.
This is likely because of the disclosure requirements regarding financing. EDTX Judge Gilstrap has displaced WDTX Judge Albright as the most popular judge for patent case filings, but the two judges are almost tied for the number of patent cases filed by NPEs. We expect this trend to continue in 2024.
With regard to disputes at the Patent Trial and Appeal Board (PTAB) of the USPTO, the petition filings are projected to be down by about 15% in 2023, mainly due to the Advance Notice of Proposed Rulemaking (ANPRM) under currently review (ANPRM may potentially reform the PTAB’s discretionary institution practices, petition word limits, and settlement practices for America Invents Act (“AIA”) proceedings).
More than 50% of the petitions that challenged the patents were controlled by NPEs, and inter partes review (IPR) remained the most popular AIA proceeding, claiming 86.2% of all 2023 post-grant proceedings. These filing trends may continue in 2024.
Shaobin Zhu is a partner at Morgan Lewis.
