By Kevin Seltzer, L’24
The Board of the Penn Intellectual Property Group is kicking off another year of discussing IP Law here on the Useful Arts and Sciences Blog. The summer has brought stories in patent, copyright, and trademark law that foreshadow an exciting year of news across the IP fields.
To start, we will be tracking recent developments in a few cases that stand to potentially have a lasting impact on the patent law landscape. First, the Supreme Court declined to grant certiorari in the contentious American Axle case that sought clarity on the notoriously murky Alice/Mayo framework for analyzing patentable subject matter. In the wake of this decision, Senator Thom Thillis introduced new patent legislation that seeks to address the confusion. Second, in an August decision, the Federal Circuit held that artificial intelligence programs could not be named as inventors on patent applications. The decision puts the ball in Congress’s court to amend the patent act’s requirement that only an “individual” may obtain a patent. Finally, in a high-profile move, Moderna filed suit against Pfizer and BioNTech for infringement of its foundational mRNA patent. This existing mRNA vaccine technology was integral to the unprecedented development speed of the COVID-19 vaccines. The move came as a surprise to some as Moderna had asserted it did not intend to enforce its patents during the pandemic.
In copyright law, the Supreme Court will hear oral argument in October in Andy Warhol Foundation for the Visual Arts v. Goldsmith. The cert petition, which the court granted in late March of this year, asks for clarity in the “transformative” test under the fair use defense. The Court will consider whether to uphold or overturn a Second Circuit decision that found that Andy Warhol’s Prince Series failed to sufficiently “transform” the Lynn Goldsmith photograph upon which the series was based.
Finally, perennial NBA all-star Luka Doncic recently filed a petition for cancellation at the Trademark Office that will raise new issues about the revocability of trademark rights. At issue is a trademark—"Luka Doncic 7”— which Doncic's mother registered for Doncic when the 2019 rookie of the year was still a teenaged rising star in Spain’s professional league. This existing registration has prevented Doncic from obtaining registration on a new mark—simply, “Luka Doncic.” (The star now wears number 77 for the Dallas Mavericks.) Because registration tied to a person’s name requires that person’s consent, the question for the TTAB is whether Doncic can revoke the consent he originally granted to cancel the old mark and register the new mark.
The Useful Arts and Sciences Blog looks forward to covering these stories and other emerging IP issues throughout the year.