Back in July, I noted that The United States Patent and Trademark Office (USPTO) had issued its 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence. Among other items, the new guidance strongly suggested that when drafting patent claims that incorporate artificial intelligence, practitioners should take care to incorporate the claimed technology into discrete, definable, and practical outputs that impose meaningful limits on the underlying abstract idea. The guidelines emphasized that simply applying artificial intelligence to a new field is not a patentable invention.
Comments to these new guidelines are coming in fast and furious. So much so that on September 17, 2024, the Patent Office extended the comment period on the new patent subject matter eligibility guidelines until October 16, 2024. The Patent Office extended the deadline to ensure that all stakeholders have a sufficient opportunity to submit comments on the guidance update. The Patent Office also stated that this deadline will not be extended again, so if you have comments to contribute to the guidelines, it is important that you submit them before October 16th.
Read the Terms of Service for the AI platform(s) you intend to use
Contact an attorney to create an AI Acceptable Use Policy for your company
Ensure all employees who will be using AI and/or the output of AI read and understand the Acceptable Use Policy, Licenses, and the Terms and Conditions associated with their intended use of a particular AI platform
Use AI to increase productivity
Have concrete goals in mind and adapt AI usage toward those goals
Ensure every employee accessing the AI platform(s) has individually trackable login credentials
Monitor productivity gains and adjust employee incentives based on the increased productivity
Learn the types of modifications of AI output necessary to claim ownership rights in the modified result
Employ systems and procedures for documenting protectable copyrightable material added to AI-generated material employ systems and procedures for protecting AI-generated trade secret information
Understand all regulations and policies governing your intended generation and use of AI output
Don’t:
Create synthetic AI output designed to misrepresent factual information
Use third-party content without a legal right or written authorization
Circumvent third-party policies or security features when generating or using AI
Create sexually suggestive or explicit content
Assume you own any intellectual property rights in unmodified AI output
Use AI outside the limits of your particular AI license
Generate AI output that violates the intellectual property rights of third-parties
Generate AI output that violates the privacy or publicity rights of third-parties
Build tools attractive to children under 13 years of age
Collect data from children under 13 years of age
Use AI to violate the law
Publish AI output without a human review of the AI output for policy compliance
Use AI to advise third parties on specific legal, financial, or medical matters.
Make automated decisions based on AI output that affect a third-party’s safety, security, legal status, credit, employment, housing, financial condition, critical infrastructure, essential services, or contractual relations
UPDATE 8/21/2024 On August 20, 2024, Judge Ada Brown of the Northern District of Texas granted summary judgment in favor of the pro-business plaintiffs, abolishing the FTC’s Non-Compete Rule, 16 C.F.R. § 910.1-.6, ruling that the new noncompete rule “shall not be enforced or otherwise take effect on September 4, 2024, or thereafter.” While this ruling stops the FTC from enforcing the new rule pending appeal, companies are still advised to generate a list of workers with whom they have non-compete agreements and prepare to take the steps below in the event this newest ruling is overturned on appeal
The new rules Under new FTC regulations, as of September 4, 2024, employers are: 1) not allowed to enter into noncompete agreements with workers; 2) not allowed to enforce existing noncompete agreements against current and former workers; and 3) required to give notice of non enforcement to all current and former workers covered by noncompete agreements.
No new noncompete agreements
As of September 4, 2024, the FTC prohibits employers from including noncompete language in their employment contracts, employee handbooks, workplace policies, on their websites, etc. This applies to all workers, whether paid or unpaid, without regard to the worker’s title or the worker’s status under any other State or Federal laws, including, but not limited to, whether the worker is an employee, independent contractor, extern, intern, volunteer, apprentice, or a sole proprietor who provides a service to a person. This new regulation not only prevents employers from forcing workers to sign noncompete agreements, it also prohibits employers from including noncompete language in other agreements or documents. If you are an employer and have not already vetted all of your corporate documents and online presence to remove all aspects of noncompete language you only have a few more weeks to get that accomplished.
No enforcement of existing noncompete agreements
Under the new regulations, the FTC prohibits employers from enforcing, or threatening to enforce, prior noncompete agreements for violations occurring after September 4, 2024. Tw exceptions to the new regulations are that employers will still be able to enforce noncompete agreements against “senior executives” for any breach and against all other workers for breaches occurring prior to September 4, 2024. The FTC defines a senior executive as an employee who earns more than $151,164 annually (annualized base salary plus commissions, performance bonuses, and any other compensation the employee can rely on receiving) and who has the authority to make policy decisions for the entire company.
Notice requirement for existing noncompete clauses
For all current and former workers covered by noncompete language the employer is required, by September 4, 2024, to provide them with clear and conspicuous notice that the worker’s non-compete clause will not be, and cannot legally be, enforced against the worker. The notice must be: 1) hand delivered to the worker; 2) sent via mail to the worker’s last known personal street address; 3)sent via email to an email address belonging to the worker; or 4) by text message to a mobile telephone number belonging to the worker. The following is the model notice language provided by the FTC under the new regulation:
A new rule enforced by the Federal Trade Commission makes it unlawful for us to enforce a non-compete clause. As of [DATE EMPLOYER CHOOSES BUT NO LATER THAN EFFECTIVE DATE OF THE FINAL RULE], [EMPLOYER NAME] will not enforce any non-compete clause against you. This means that as of [DATE EMPLOYER CHOOSES BUT NO LATER THAN EFFECTIVE DATE OF THE FINAL RULE]:
You may seek or accept a job with any company or any person—even if they compete with [EMPLOYER NAME].
You may run your own business—even if it competes with [EMPLOYER NAME].
You may compete with [EMPLOYER NAME] following your employment with [EMPLOYER NAME].
The FTC’s new rule does not affect any other terms or conditions of your employment. For more information about the rule, visit ftc.gov/noncompetes. Complete and accurate translations of the notice in certain languages other than English, including Spanish, Chinese, Arabic, Vietnamese, Tagalog, and Korean, are available at ftc.gov/noncompetes
Conclusion
Employers only have a limited amount of time to comport with these new FTC regulations governing noncompete enforcement before September 4, 2024. While it is imperative that employers make plans to accomplish these changes before the deadline, these new regulations may be subject to change. Employers wanting to delay the implantation of these new rules to the last possible moment should therefore monitor the FTC website for any possible changes to the regulations prior to the deadline.
Comments Off on (UPDATE: Federal Judge Strikes Down New FTC Noncompete Rule) FTC Mandates Employers Send Notices to Current and Former Workers that Their Noncompete Agreements are No Longer Valid
Sooner rather than later So you have invented a new product. When is the best time to speak to a patent lawyer? Do you talk to one as soon as you come up with the idea? When you have the prototype made? Once you start manufacturing? The truth is it is never too soon to talk to a patent lawyer. While it is unlikely you will be filing a patent application on simply an idea, it is a good idea to find out the process for obtaining a patent before you disclose your idea to anyone. Once you disclose your idea outside of an attorney/client relationship or non-disclosure agreement you have only 1 year to file your patent application before your invention goes into the public domain. As it typically takes 4-6 weeks to draft a patent application, you want to make sure you do not show up on a patent lawyer’s doorstep the day before your deadline and expect them to draft and file a patent in one day. While it is possible to draft a patent in one day (don’t ask me how I know), it is much better to leave sufficient time for you to go back-and-forth with your patent lawyer over all of the fine details of the patent application, making sure that not only is everything correct, but that the patent application covers everything you need to cover.
Benefits of early advice Speaking to a patent lawyer early allows you to budget the time and money required to compete the patent process. It also allows you to make sure any necessary disclosures of the invention, to engineers, suppliers, experts, etc., are done under an non-disclosure agreement in a way that does not start your public domain clock running. A patent lawyer can also help you set up an inventor’s notebook to record the trial and failure process that may come in handy down the road to convince a patent examiner with the United States Patent and Trademark Office that your invention is not simply an unpatentable combination of preexisting parts. Another large benefit of developing an early relationship with a patent lawyer is that they can search for other patents and devices that may be similar to yours. I never like giving a client the bad news that their “invention” has already been patented, but it is much better than giving them that information after they have invested hundreds of thousands of dollars in the idea.
What can a patent lawyer do for me? In addition to outlining timelines and budgets for the patent process a patent lawyer can help you decide what to patent and what not to patent. While patenting all of your inventions is a good idea if money is no object, most companies are looking for a return on any investment, including investments in patenting new technology. It is a good idea to sit down with a patent lawyer early to discuss what inventions you have had in the past, what inventions you currently have, and which inventions you anticipate having in the future. Your patent lawyer should also know something about your particular industry. The more your lawyer knows about your competitors and existing technology, the better they will be at advising you where to focus your intellectual property protection dollar. Knowing a competitor’s best alternative to your invention will assist in drafting a patent that is not easy to circumvent.
How do I find a patent lawyer? While search engines are good for finding a lot of things online, they are not always the best for finding a patent lawyer. Many times, search engines show you the patent lawyers who spent the most money on online marketing, rather than the best patent lawyer. Another method of finding a patent lawyer is to look at online reviews. Avvo.com and martindale.com both have rating systems to determine your prospective lawyer’s reputation both with clients and colleagues respectively. As for cost, while the best patent lawyers typically charge more than the worst patent lawyers, cost may have more to do with location and overhead than it has to do with the quality of the service they provide. When choosing which patent lawyers to interview, if possible track down other inventors the patent lawyer has helped and ask them for their opinion of the lawyer. Nothing tells you more about the skill of a patent lawyer better than a former client’s honest assessment of that lawyer’s actual performance. When searching for a patent lawyer is also important that you seek out the individual lawyer, rather than a law firm. A law firm may have a great rating, but unless you are actually working with one of the layers who helped earn that reputation, you could be in for trouble. A little-known fact about patents and patent lawyers is that if you hired fifty different patent lawyers to draft a patent covering your invention no two of those patents would be the same. They would all have different scopes of protection, making them either easier or harder to circumvent. A large part of what makes a patent good or bad is how well the inventor and patent lawyer are able to communicate ideas with one another and address inaccuracies.
Communication is key Even if you were to run across the best patent lawyer in the world, that patent lawyer may still not be the right patent lawyer for you. The best patent lawyer for you will be a lawyer with whom you have good chemistry. Once you have your list of potential patent lawyers narrowed down, talk to them. Get a feel for how well they communicate with you and how well they understand your needs. Selecting a patent lawyer with whom you communicate well is one of the best things you can do to increase the odds your patent will give you the maximum amount of protection at the lowest cost.
The American Bar Association has just released new Formal Opinion 512 covering the use of artificial intelligence (AI) for lawyers. Over the next decade AI will move from a risky endeavor to a necessary tool in the arsenal of all of the best attorneys. Given that your use of AI as an attorney is a matter of “when” rather than “if,” it is important to inform yourself now of the ethical rules concerning the unfathomably valuable resource that is AI. The fifteen-page opinion covers seven areas of concern: competence; confidentiality; communication; supervision, frivolousness; and billing.
Competence
The ABA states that while you do not have to become an AI expert to use AI in your practice, you must understand the benefits and risks of the particular AI system you intend to use. Alternatively, you may enlist the assistance of someone else who has such knowledge. Given the rapidly advancing nature of AI, you are also required to keep up to date on changes to the system you are using. The primary danger is AI’s known propensity to produce inaccurate, misleading, and/or outright false information. AI may even generate great quotes from fake case citations for cases that do not exist. It is therefore your job as an attorney to closely vet all AI-generated output you intend to use in your practice. The degree of vetting required will vary depending on how you intend to use the output. If you are only using the output to generate potential ideas, the AI output may not require any vetting at all. If you are using the AI-generated content to write a brief to be filed with the court, the output will require the highest form of vetting to ensure the brief is complete, accurate, and compelling. AI-generated content can be intoxicatingly on point, but if you cannot absolutely verify its accuracy, you are putting your clients and your practice at risk by using it. Failure to properly vet AI-generated content runs the risk of violating ABA Model Rules of Professional Conduct 1.1.
Confidentiality
The biggest ethical trap for lawyers using AI is the disclosure of confidential client information. While all lawyers are aware of the duty under ABA Model Rules of Professional Conduct 1.6 to maintain client confidences, many are unaware that when you input information into an AI system that system uses that input to train itself to generate future output. For instance, if you input a proposed confidential settlement agreement into an AI system and asked it to improve the agreement, the system would now have that initial agreement and be able to provide it to others asking the AI system to generate a settlement agreement. That output could easily lead to the disclosure of identifiable client confidences that could lead to you getting slapped with an ethical violation. Even if the AI system never publicly discloses any of the settlement agreement, the fact that it could, could itself put you on the wrong side of an ethics inquiry.
To address this issue it is possible to use a “closed” AI system. A closed AI system uses a trained AI system, but is not accessible by anyone but authorized users. Many law firms implement such systems to address this exact issue, ensuring that nothing input into the system is publicly accessible. It is still important to note, however, that even though the input in such systems is not publicly accessible, it is still available as output to other attorneys within the firm. For instance, if you input a brief with a novel legal argument into your firm’s internal AI-system, that same system may output that same novel legal argument to a colleague with a similar legal issue. You may then find your legal argument getting shut down in court before you even had the chance to flesh it out or argue it yourself. Accordingly, even with these types of internal AI systems great care must be taken to make sure that all output is vetted to remove any material that could possibly lead to the revelation of client confidences by unwitting colleagues. It is also incumbent upon any attorney using any AI system that the attorney be familiar with the security features, information retention policies, terms of use, privacy policy, and other contractual terms and policies governing use of the system.
Communication
To comport with ABA Model Rules of Professional Conduct 1.6 lawyers have a duty to disclose use of AI to clients. First, if a client ever asks about the lawyer’s use of AI, the lawyer must be completely forthcoming. Second, before ever inputting any client confidential information into an AI system of any type the lawyer must obtain prior, informed consent from the client acknowledging that the client understands the particular risks and benefits involved. Third, lawyers must also disclose to clients other uses of AI by the attorney depending on the scope of the representation, the client’s needs and expectations, the criticality of the use in the representation, and the sensitivity of the information. On one end, if you use AI to generate potential trial outcomes and specific damage awards, which the client will use to decide whether or not to file suit, you are obligated to reveal that use of AI to the client. On the other end, if you use AI to increase the efficiently of ordering office supplies that you use to perform general legal work, you are likely not required to disclose that use to your client. Regardless though of whether you are required to disclose a particular use of AI with your client, best practices dictate that the more accurately and comprehensively disclose your use of AI with your client the better and more productive the relationship will be for both you and your client.
Supervision
You are not only obligated to follow all of these rules. You are also obligated to ensure that all attorneys and non-attorneys in your firm under your supervision follow these rules as well.
Frivolousness
This section of the opinion reminds attorneys that courts have and will continue to reprimand attorneys who submit documents to the court that contain AI hallucinations, including fake cases, citations, and facts. If you do not vet all AI-output with a fine-tooth comb before submitting it to the court, it is only a matter of time before you find yourself reprimanded by the court and explaining to your state’s ethics board why you did not follow this advice.
Billing
If you bill by the hour and it takes you an average of ten hours to draft a brief you cannot charge ten hours if you use AI to cut your brief-writing time down to two hours. You cannot only bill hourly for the hours you actually worked. If you bill using flat fees or contingency arrangements you may be able to continue billing at your current rates even if AI significantly reduces the hours you spend on a particular project. No matter what though, any fee charged that involved little or no work on your behalf is an unreasonable fee. While you may charge a client directly for the cost of AI, there are several caveats. You must agree to such fees upfront, you cannot charge for AI that is wholly-integrated into the general services provided by the lawyer i.e. (AI grammar correction in word processing systems), you cannot charge more than the reasonable cost of the system to the attorney, and none of the AI charges may be duplicative of other charges. You also cannot charge clients for the time you spend getting up to speed with the use of general AI systems that you intend to use for other clients. If a client requests the use of a new specific AI tool which the lawyer must spend time learning and/or the AI tool has a per use cost, the lawyer may bill the client for those items provided the client has agreed upfront in writing.
Conclusion
The bottom line is that there should be no surprises in this new opinion. The opinion merely applies the existing rules to the current burgeoning technology. Stay apprised of the current ethical rules and the technology you are using in your practice and the application of the rules to the technology should not pose any monumental hurdles.
The United States Patent and Trademark Office (USPTO) has just released its 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence (AI). These new guidelines took effect July 14, 2024. The USPTO issued this guidance update on patent subject matter eligibility to address innovation in critical and emerging technologies, especially AI.
The new guidance leaves intact the current Alice/Mayo test for patent subject matter eligibility. Under Alice/Mayo, if the claim is found to be directed to a judicial exception (such as an abstract idea) the analysis shifts to evaluate whether the additional claimed elements amount to “significantly more” than the recited judicial exception itself. The new guidance is primarily directed at the first prong of this test. In determining whether a claim is directed to a judicial exception, the Patent office undertakes another two-part test: (1) whether a claim recites an abstract idea or other judicial exception; and (2) if so, whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. If either of these apply, the claim is not “directed to” the judicial exception and is therefore otherwise patent eligible.
In determining whether the claim integrates the judicial exception into a practical application the USPTO will: (1) identify whether there are any additional elements recited in the claim beyond the judicial exception(s), and (2) evaluate those additional elements individually and in combination to determine whether they integrate the exception into a practical application of that exception. One way to demonstrate integration of the judicial exception into a practical application is to show that the claimed invention improves the functioning of a computer or improves another technology or technical field. The improvement must be to the technology itself, as opposed to merely improving the judicial exception. In short, a claim to a technological solution to a technological problem meaningfully limits the claim by going beyond generally linking the use of the judicial exception to a particular technological environment, and thus transforms the claim into patent eligible subject matter. Therefore, when drafting a claim involving AI, the claim must cover a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome.
As stated in the new guidance:“A key point of distinction to be made for AI inventions is between a claim that reflects an improvement to a computer or other technology described in the specification (which is eligible) and a claim in which the additional elements amount to no more than (1) a recitation of the words “apply it” (or an equivalent) or are no more than instructions to implement a judicial exception on a computer, or (2) a general linking of the use of a judicial exception to a particular technological environment or field of use (which is ineligible). “An important consideration in determining whether a claim improves technology is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome.” AI inventions may provide a particular way to achieve a desired outcome when they claim, for example, a specific application of AI to a particular technological field ( i.e., a particular solution to a problem).In these situations, the claim is not merely to the idea of a solution or outcome and amounts to more than merely “applying” the judicial exception or generally linking the judicial exception to a field of use or technological environment. In other words, the claim reflects an improvement in a computer or other technology.
A good way to integrate a judicial exception into a practical application is not to draft a patent claim that merely applies an abstract idea to an entire technology, but to draft a claim that applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception. Merely applying the exception to a system, in an effort to monopolize or preempt the judicial exception, is insufficient.
Patentability of inventions created by artificial intelligence
When the topic shifts from patenting AI technology to AI-created technology, the analysis shifts from subject matter eligibility to inventorship. Inventions created solely by AI are not patentable, since there is no human inventor. AI-assisted inventions are patentable, however, where one or more humans made a “significant contribution” to the claimed invention.
Practice Takeaway
While the new guidance may not necessarily clarify the previous guidance, the new guidance does offer several examples to distinguish between what AI technologies the USPTO believes are patentable and which are not. The key takeaway from the new guidance is that when drafting patent claim that incorporate artificial intelligence, practitioners must take great care to incorporate the claimed technology into discrete, definable, and practical outputs that impose meaningful limits on the underlying abstract idea.
The New York Times (NYT) has sued Defendants Microsoft and various OpenAI companies for allegedly using its copyrighted material to train their Copilot and ChatGPT products respectfully. The lawsuit includes claims of copyright infringement (direct, vicarious, and contributory), removal of copyright management information, unfair competition by misappropriation, and trademark dilution.
In its complaint, NYT argues the Defendants violated its copyright by publicly displaying NYT material (“Works”) in the form of GPT output and in synthetic search results. NYT also claims that in response to inquiries, ChatGPT’s API returned “hallucinations.” Hallucinations are article titles and hyperlinks purportedly promulgated by NYT but which do not, in fact, exist. Another issue is Defendants allegedly built AI training datasets containing millions of copies of Times Works garnered by scraping Works from NYT websites and reproducing Works from third-party datasets, NYT argues that by storing, processing, and reproducing the training datasets containing millions of copies of Works to train the GPT models on Microsoft’s supercomputing platform, and by disseminating generative output containing copies and derivatives of Works through the ChatGPT and Bing Chat offerings, Defendants has infringed NYT’s copyrights.
In response to this lawsuit, Defendants have requested to see copies of any documents NYT used to create the Works. The reasoning is that under the law NYT may only claim copyright over those portions of the Works that are original to the author and owned by NYT. More precisely, NYT cannot claim ownership over any portions of the Works that were AI-generated, copied from other authors, and/or in the public domain. While NYT may claim copyright in derivative works created from pre-existing material, the extent of that protection extends only to NYT’s contributions that are non-trivial and original.
Defendants have a point. NYT’s copyright registrations could be invalidated if, hypothetically: 1) some of the Works include non-copyrightable material; 2) that inaccurate information was knowingly withheld from the Copyright Office;and 3) the Copyright Office would not have granted the registration if the correct information had been provided (17 U.S. Code § 411). In reality, even assuming some hypothetical non-copyrightable information was included and not revealed to the Copyright Office, proving that NYT knowingly withheld such information from the Copyright Office would be very difficult. On a more practical note, even if NYT did not knowingly withhold such information, any revelation that NYT secretly uses third-party or AI-generated material in its news stories could be critically damaging the NYT’s reputation. In such a hypothetical, NYT might be inclined to drop the lawsuit, rather than disclose this information publicly. So while the discovery request may not have much teeth from a technical standpoint, it may have a large impact from a practical standpoint.
Not surprisingly, NYT has objected to the Defendants’ discovery requests, arguing that they are overboard, vague, and that the requested material is protected by the reporter’s privilege under the First Amendment. Defendants responded stating that the requests are narrowly tailored, do not request source identities, that the information is not reasonably obtainable from other sources, and that the information is critical in determining whether NYT is asserting copyright over material that is non-expressive, non-human authored, created by third-parties, and/or in the public domain.
It is unclear at this point whether the court will compel NYT to turn over the requested documents. What is clear is that if you are going to try to sue someone for using your copyrighted work to train its AI, it is critically important that the copyrighted work you are asserting is actually yours and does not contain any non-expressive, non-human authored, third-party, and/or public domain material. This is especially important to identify when filing for copyright registration in your works. When filing a copyright registration on any work that contains any pre-existing material it is critical to create a chart and record of each pre-exiting and AI-generated element that went into the creation, along with a file containing copies, and/or the names, of each pre-existing and AI-generated work (taking care not to infringe any third-party copyrights in the process). For large operations generating hundreds or thousands of copyrighted works a day this additional documentation could be quite onerous. In addition to protecting your copyright registrations from invalidity, this extra record-keeping fosters an environment that incentivizes authors to avoid improperly using third-party material. More importantly, this type of detailed documentation may encourage the infringer to acquiesce to a quicker settlement on better terms.
History of the Meeple There has been a recent uproar in the board gaming community over ownership of the beloved term “meeple.” Most board gamers believed the word was a generic term for the classic small wooden people used in board games all over the world. The first use of a humanoid silhouette as a game token appears to be the use of a humanoid bust in the 1982 game Survive! The first game to use a full body humanoid silhouette token appears to be in the 1984 Ravensburger game Under Cover. https://en.wikipedia.org/wiki/Top_Secret_Spies The Under Cover meeple were much larger and had a different shape than the modern, tiny, sloped-shouldered meeple. The 1998 game Europa 1945-2030 used smaller meeple, much closer in design to the modern meeple we know today. https://therewillbe.games/articles-essays/8552-what-is-a-meeple-history-of-the-iconic-board-game-piece
Invention of the Modern Meeple Bernd Brunnhofer is credited with creating the modern meeple design, first used in the 2000 game Carcassonne published by his employer German board game publisher Hans im Glück. Although Hans im Glück was the first to use a modern meeple in a game, the meeple was not called “meeple” at the time. The term meeple does not appear to have been used until American Alison Hansel coined the term while playing a game of Carcassone in 2000, Ms. Hansel first uttered the portmanteau “meeple,” while referencing “my people” during the game. Later that year she posted her new word to an online game forum and the term took off. The rest is history.
Meeple Becomes Generic Since 2000, the term “meeple” has been used generically throughout the industry, being incorporated into titles of dozens of board games, with generic meeples being used in thousands more all over the world. The term is so ubiquitous that several United States trademark registrations have formally disclaimed the term “meeple,” legally recognizing that third-parties have a legitimate need to use the term “meeple” to describe and market their own goods and services.
The Cease-and-Desist letter All was well and good in the world of meeple. That is, up until 2024. In early 2024, board game publisher Cotsworld Games launched a crowdfunding campaign on Gamefound for its newest game “Meeple, Inc.” Soon after the launch, Hans im Glück sent Cotsworld a cease-and-desist letter, asserting ownership rights in the word “meeple” and demanding Cotsworld remove all references to “meeple” from its game. Although Cotsworld quickly removed the term from its game and simply proceeded on with its crowdfunding, the board game community was understandably up in arms.
How could a company simply remove a word that millions of people have used generically for decades? Well, the answer is complicated. In the United States no one has a federally registered the word “meeple” for board games. It is not that no one has ever thought of it, it is just that in the United States you are not allowed to register words that are descriptive of, or generic for, the associated product. So while you could possibly obtain a federally registered trademark on “meeple” for rolling pins, you would not be able to obtain a federally registered trademark on “meeple” for the classic small wooden people used in board games all over the world.
U.S. Trademark Rights in “Meeple” There are other United States trademark registration that have issued and which contain the word “MEEPLE.” A company called Meeple Madness, Inc. out of Georgia has a federal trademark registration on a design that includes the word “meeple” with the “A” replaced by the figure of a meeple, as used in association with online and offline retail store services featuring tabletop games and accessories. Another company, Gamelyn Games LLC out of Arizona, has a federal trademark registration on the word “ITEMEEPLES” as used in association with component parts for playing table top board games, namely, game piece figures and game piece figures which include holes for mounting accessories on the figures. Others have tried and been denied federal trademark registrations containing forms of the word “meeple” based upon their confusing similarity to these two and other federal registrations. Other registrations covering forms of the word “meeple” have been granted for items other than games. Meeple Loot, LLC owns a design mark for a chest full of meeple that says “Meeple Loot” on the front, as used in association with clothing, but that registration specifically disclaims the word “meeple” as being descriptive and therefore not protectable on its own.
The New McBrine/Thompson Application There have been more recent applications, including one for the word “meeple” by itself as used in association with shirts and games. This application was filed by Marian McBrine and Corey Thompson. Interestingly, in filing their trademark application, on May 30, 2024, Ms. McBrine and Mr. Thompson appear to have both signed and submitted a legal document to the United States Patent and Trademark Office stating:
“To the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive.”
and
“To the best of the signatory’s knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, the allegations and other factual contentions made above have evidentiary support.”
and
“The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.”
Given the background of Ms. McBrine and Mr. Thompson in the board game industry, it is difficult to believe either Ms. McBrine or Mr. Thompson, after making a reasonable inquiry into the facts, could plausibly argue they believe no one else in the United States has a right to use “meeple” in association with board games. While I have to admit I have never seen anyone ever go to prison for willfully making a false statement on a federal trademark application, I also have never seen anyone with such extensive knowledge in the industry sign this document asserting they have exclusive rights in such a ubiquitous and descriptive word.
So what about Hans im Glück? Thankfully this publisher has no registered trademark rights to “meeple” as used with board games or meeple in the United States. That is not to say Hans im Glück will never attempt to assert common law rights or apply for a United States trademark registration in the future, but for now, its potential for enforcement of any rights to the word “meeple” in the United States for meeple or board games appears weak. So in the United States, not only can no one currently prevent you from using the term “meeple” to sell board games and meeple, but it appears that will remain the case for quite some time. In the European Union, however, it is a little different story.
Hans im Glück’s Rights to “Meeple” Outside the U.S. What trademark rights does Hans im Glück have in the word “meeple” in Europe? In terms of registrations, it has a German 302021101641 national trademark registration on the word “meeple” in association with nine classifications of goods and services, including toys and games. It also has EU 016791741 and UK UK00916791741 trademark registrations for “meeple” as used in association with six classifications of goods. None of these classigfications, however, include board games or physical meeple.
For the “meeple” silhouette, Hans im Glück has UK UK00916791725 and EU 016791725 trademark registrations for a single front-facing silhouette, as used in association with six classifications of goods, none of which include board games or physical meeple and a pending German 3020211018214 trademark application for a single front-facing silhouette, as used in association with “Other unidentifiable personifications, other fantastic beings of human appearance.”
What does this all mean? What rights do those registrations give Hans im Glück? Well, outside of the EU and UK, none. Its only rights to the word “meeple” outside the EU and UK would rely on either common law rights or specific trademark rights granted by individual countries. Can Hans im Glück enforce its rights inside of the EU? As only the German trademark registrations cover board games and meeple, it will be difficult for Hans im Glück to assert rights to the word “meeple” for board games and meeple outside of Germany. Within Germany, however, it may be possible to cancel Hans im Glück’s trademark registration to the extent it applies to board games.
Is Hans im Glück’s Meeple Trademark Registration in Germany Vulnerable to Cancellation? In Germany, you may apply to invalidate and cancel a trade mark registration if there are absolute grounds for refusal. Absolute grounds for refusal in Germany include:
lack of distinctiveness
descriptive terms that must be kept freely available for general use
danger of deceiving the public
an emblem of state included in the trade mark
offence against public policy or accepted principles of morality
To cancel a trademark you are required to file your application for a declaration of invalidity in writing and include the facts and evidence in support of the statement of grounds for invalidity. The fee for the application is 400 euros.
Conclusion Hans im Glück holds no trademark registrations that would prevent you from using “meeple” on board games or meeple in the United States. That does not mean that Hans im Glück would not sue you for trademark infringement hoping you would back down, rather than try to fight in court. While that strategy might would with small publishers, it will not work with deeper-pocketed large publishers who have the money to prove the term “meeple” for meeple is generic in the United States. Hans im Glück does have some registrations abroad though. While its EU and UK registrations for “meeple” do not cover board games, it may still try to assert that right in the future. However, for the same reason Hans im Glück was unable to obtain “meeple” trademark registrations on board games or meeple in the the EU and UK, it would be unlikely to successfully assert such rights in court. In Germany, however, Hans im Glück does hold a national trademark registration on the word “meeple” in association with toys and games. While it appears this registration may be vulnerable to an application for cancellation it is unclear who, if anyone, will take on that fight. Until then, it is likely best to avoid using the word “meeple” to promote your board games and meeple in Germany.
What is a trademark? A trademark is something used by consumers to identify the supplier of a particular product or service. Trademarks are a type of “intellectual property,” but are very different from other types of intellectual property like patents and copyrights.
Here are just a few of the unusual facts about trademarks (although the following refers only to products, trademarks may also apply to services):
1. For many companies, their most valuable asset are their trademarks. The value of Apple’s trademark has been estimated to be in excess of half a trillion dollars.
2. Unlike with patents and copyrights, in-gross transfers of trademarks are not allowed. You may only transfer trademark rights if you also transfer the goodwill associated with the business the trademark represents.
3. For the protection of consumers, you may lose your trademark if you license the trademark to someone without monitoring the nature and the quality of the goods they offer under that trademark.
4. Whereas congressional power to regulate patents and copyright derives from the specific Intellectual Property clause in the Constitution, courts have to rely on the Commerce Clause to find congressional power to regulate trademarks.
5. Unlike patents and copyrights that will naturally expire after a fixed amount of time, trademarks can potentially last forever
6. If you fail to enforce your trademark, it may become generic, meaning anyone can use it. Very valuable trademarks like escalator, aspirin, and yo-yo all became generic due to their owners’ failure to stop people from using the trademarks to describe the general class of products
7. In addition to words and logos, you may also trademark colors, sounds, and scents
8. You may not trademark the functional aspects of your product
9. You may obtain a trademark on made-up words (eBay), arbitrary words (Royal, but applied to something unrelated, like gelatin), suggestive words (NoDoz), and even descriptive words if the public has come to associate the word with a single producer (American Airlines) You may not obtain a trademark on merely descriptive words that have not acquired distinctiveness (red for apples) or on generic words (apple for apples)
10. You only obtain trademark rights by actually using the trademark to promote your goods or services
11. Trademarks must always be used as an adjective modifying a noun, never as the noun itself.
12. Use of the TM symbol does not require any paperwork. It merely suggests the owner is asserting trademark rights in the word. The TM is not an indication that the word is a valid or enforceable trademark.
13. Use of the ® symbol is strictly regulated and only available for federally registered trademarks. Use of the ® on unregistered marks can lead to severe penalties.
14. When you obtain trademark rights you only obtain trademark rights association with the product your trademark is promoting 15. If your trademark is famous, you may be able to use it to stop others from diluting the value of your trademark by using it on other products.
16. Two companies may own the same trademark for different products (Apple for computers and Apple for power tools).
17. Once you have a trademark, you will lose that trademark if you stop using it to promote your goods and/or services
18. Once you start using your trademark to promote your product, you have what is known as a “common law” trademark
19. Common law trademark rights extend only to the extent of their market penetration.
20. You may obtain trademark protection throughout a state with a state trademark registration
21. You may obtain trademark protection throughout the country with a federal trademark registration
22. You may obtain international protection through various international trademark registrations
The reason we have trademarks is to allow consumers to associate certain goods with the companies that provide them and to prevent competitors from trying to confuse consumers on a product’s source or origin. To avoid a potential trademark infringement lawsuit and to build equity in your trademark it is a good idea to enlist a specialized “intellectual property lawyer” to discuss potential trademarks and to vet and register the trademarks you eventually choose.
Design patents are different than utility patents. Design patents protect the overall appearance, visual impressions, artistry, and style of ornamental subject matter. Like copyright, design patents cannot protect the functional aspects of any new product, only the aesthetics. This is opposed to utility patents, the type of patents people are usually talking about when they talk about patents, do protect function, unexpected properties, and utility of new products and methods. Whereas utility patents protect functional aspects of inventions, design patents are more like copyright, protecting the “look” of new designs.
Despite their differences, design patents and utility patents must both meet the nonobviousness requirement of 35 U.S.C. § 103. This means you cannot obtain a patent, design or utility, on something that is merely an obvious modification of an already existing product. Last week the obviousness test for design patents was: 1) is there something in existence (the “Rosen” reference) the design characteristics of which are basically the same as the claimed design; and 2) if a Rosen reference is found, can secondary existing designs be used to modify it to create a combined design that has the same overall visual appearance as the new design sought to be patented. When combining these secondary designs they had to be “so related [to the Rosen reference] that the appearance of certain ornamental features in one would suggest the application of those features to the other.” This was the Rosen-Durling test. That was last week. This week, there is a new test in town.
The Graham Factors
In a blow to General Motors and other current and aspiring design patent holders and patent lawyers the United States Court of Appeals for the Federal Circuit has just ruled in LKQ CORPORATION v. GM GLOBAL TECHNOLOGY OPERATIONS LLC that the Rosen-Durling test is out and the tried and true Graham v. John Deere Co. of Kansas City, 383 US 1 (S. Ct. 1966) test is in… mostly. The “Graham factors” test used to assess obviousness in utility patents, now applies to design patents as well. The test includes four factors: 1) the scope and content of the prior art; 2) the differences between the prior art and the patent claims at issue; 3) the level of ordinary skill in the pertinent art; and 4) secondary considerations such as commercial success, long-felt but unresolved need, failure of others, industry praise, copying etc. The ultimate question, however, remains as to whether differences between the prior art and the claimed invention are such that they would, as a whole, have been obvious to a person of ordinary skill in the pertinent art at the time of the invention. The LKQ court went on to discuss application of the various Graham factors to design patents in detail:
Scope and Content of the Prior Art
Prior art includes any publicly available information. For purposes of considering obviousness in design patent matters, existing information only qualifies as prior art when it is “analogous to the claimed invention” when seen from the perspective of a person of ordinary skill in the art. In limiting the scope of prior art to analogous art, the LKQ court explained that a person of ordinary skill “could not possibly be aware of every teaching in every art.”
The obviousness determination will include a primary reference and may include one or more secondary references. The primary reference will likely be the prior art design most visually similar to the claimed design. Both the primary and secondary references must be art analogous to the claimed invention. The more visually similar the primary reference design is to the claimed design, the less likely the Patent Office will be to grant a design patent on the claimed design.
Differences Between the Prior Art and the Design Claim at Issue
The LKQ court explicitly overruled the threshold Rosen-Durling “similarity” requirement and replaced it with the second Graham factor: whether one of ordinary skill in the art would have combined the prior art to create the same overall visual appearance as the claimed design. In determining the differences between the prior art and the claimed design, the Patent Office must consider the differences in the visual appearance of claimed design as a whole, rather than examining individual design elements on their own. This consideration of the differences in visual appearance is again from the perspective of an ordinary designer in the field of the claimed design.
The Level of Ordinary Skill in the Pertinent Art
As it pertains to design patents, the level of ordinary skill in the art is the skill of a designer of ordinary skill who designs articles of the claimed design type.
Secondary Considerations
The LKQ court specifically refused to decide whether secondary considerations such as commercial success, long-felt but unresolved need, failure of others, industry praise, copying etc. apply to the obviousness analysis in the context of design patents. It therefore remains unclear to what extent, if any, secondary considerations factor into the obvious analysis as applied to design patents.
Assessing the Graham Factors
After ascertaining the knowledge of an ordinary designer in the relevant field, the scope and content of the prior art, and the differences between the prior art and the claimed design, the Patent Office must determine to what extent the ordinary designer would have been motivated to modify the prior art design to create the same overall visual appearance as the claimed design. As before, this inquiry focuses on the visual impression of the claimed design as a whole and not on any individual features.
If the primary reference alone does not render the claimed design obvious, the Patent Office may consider secondary references. While the primary and secondary references must both be analogous art to the patented design, they need not be “so related” to one another that features in one would suggest application of those features in the other. As noted in KSR, the motivation to combine the primary and secondary references does not have to come from the references themselves. The Patent Office must, however, provide rational support in the record as to why an ordinary designer in that field would have used features in a secondary reference to modify the primary reference to create the same overall appearance as the claimed design. The more different the primary reference looks as compared to a secondary reference, the harder it will be for the Patent Office to establish a motivation in the person to alter the primary reference in light of the secondary reference without hindsight of the claimed design.
Conclusion
Given the significance of this new ruling, design patent owners and applicants cannot help but be affected. Not only will it likely be more difficult to obtain design patents moving forward, it is likely that many existing design patents will fail to survive a legal challenge of the basis of obviousness. As a result, if you have obtained, or are thinking about obtaining, a design patent, you would be well-advised to discuss the ramifications of this important ruling with your patent lawyer sooner rather than later.
I am a patent attorney, but the ramblings to your left are not legal advice. Peculiarities of the law, the facts, the client and the lawyer (mostly), make every case unique. If you feel this blog speaks to you, you must seek professional help (heck, why not talk to a patent lawyer while you are at it).
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