February 2025

McCoy Russell has volunteered to host one of INTA’s North America Roundtables this spring. Taking place Wednesday April 9 from 12 PM – 2 PM, this roundtable centers around Green Branding and Sustainability Claims: Navigating Trademarks in an Eco-Conscious World.

Register at INTA’s event site here – https://members.inta.org/events/event-details/?id=bc278dfe-53de-ef11-95f5-6045bd7a9164&index=39&reload=timezone.

In hosting, it was noted that Portland has generally had very low registrants for recent INTA Roundtables.   Let’s keep supporting these roundtables locally.  We welcome participation from all, new practitioners as well as seasoned practitioners.  Please let all know who may be interested in attending.  We look forward to an engaging discussion.

McCoy Russell has received yet another complete appeal reversal in the area of IT security in computer related products. Our team, led to success by John Russell, effectively navigated through the USPTO’s improper rejections. Our arguments showed that the evidence presented by the examiners failed to support the rejections and the PTAB reversed all grounds in Appeal 2024-002527.

This case is another example of McCoy Russell’s effectiveness with its strategic approach to patent prosecution.

The European Patent Office (EPO) embarked on an ambitious program to transform and improve the way users interact with the EPO. Taking advantage of the EPO’s fully digitalized and paperless patent granting process (PGP), McCoy Russell communicates electronically with the EPO concerning PCT applications. This provides instant receipt of communications and eliminates paper mail altogether from the EPO. The EPO is currently 75% paperless and will be 100% paperless by April 2027.

As a firm that has taken active steps to reduce unnecessary consumption of resources and reduce delay, McCoy Russell supports the EPO for its undertakings.

McCoy Russell is pleased to be a sponsor for AUTM’s 2025 Annual Meeting in Washington, D.C. which brings together technology transfer professionals from around the world come together to connect, collaborate, and learn from inspiring programming and their colleagues. Partner Justin Wagner will be in attendance and looks forward to connecting with other professionals and strengthening established partnerships.

The commercialization of emerging technologies continues to rapidly change, Justin looks forward to discussing a wide range of new best practices to address and embrace these technologies at AUTM’s Annual Meeting.

Howard Lutnick, CEO of Cantor Fitzgerald and nominee for U.S. Commerce Secretary, brings an unconventional background to the role. Unlike previous Commerce Secretaries, who typically come from corporate or political circles, Lutnick is a named inventor with over 400 active or expired U.S. patents to his name. His deep involvement in intellectual property raises both optimism and questions about the future of U.S. patent policy.

If confirmed, Lutnick will oversee the U.S. Patent and Trademark Office (USPTO) which shapes patent enforcement and innovation. Supporters believe his expertise could strengthen intellectual property laws and drive much-needed reforms benefiting inventors and businesses. One item he wishes to tackle is the examination backlog at the USPTO, though a specific plan has yet to be revealed.

As Lutnick faces Senate confirmation, McCoy Russell looks forward to learning more about the strategy to tackle the backlog and at the USPTO. Startups and inventors often hope to benefit from quicker approvals, supporting faster commercialization of their ideas.

The advancement and integration of artificial intelligence (AI) technology, particularly generative AI tools such as ChatGPT and Stable Diffusion, have revolutionized content creation. However, rapid evolution and widespread use has raised significant legal and ethical questions in the field of intellectual property (IP), particularly regarding the copyright status of AI-generated content (AIGC). Key concerns include whether AIGC is copyrightable, who qualifies as its author, who owns its copyright, and whether AI service providers can be held liable for copyright infringement. McCoy Russell explores these concerns along with recent guidance from the U.S. Copyright Office (USCO). We recognize that different countries are facing the AI copyright question with different results.

AI-Generated Content: Can It Be Copyrighted?

The U.S. Copyright Office has taken a stance: AI-generated works are not eligible for copyright protection unless there is evident human creative input. The use of AI to assist in creation or inclusion of AI-generated material does not bar copyright protection.  As such, when an individual applies for copyright on a work containing AI-generated elements, it may be required to identify which portions were created by AI and acknowledge that those sections are not subject to copyright protection.

Who Is the Author of AI-Generated Content?

Copyright law traditionally requires human authorship, and the USCO maintains that a human must have played a substantive creative role in the work’s production. The agency emphasizes that human involvement, such as selecting, arranging, or modifying AI-generated content, is necessary for copyright eligibility. Without such input, the work remains uncopyrightable.

Who Owns the Copyright to AI-Generated Content?

Under U.S. law (17 U.S. Code §201), copyright automatically belongs to the author upon the work’s creation. However, courts have consistently ruled that copyright requires human authorship. This principle was reinforced in the 2018 “monkey selfie” case, Naruto v. Slater, where a court ruled that a non-human entity could not own copyright. Similarly, in Thaler v. Perlmutter (2023), the U.S. District Court for the District of Columbia rejected a claim for copyright in an AI-generated work that had no human involvement. These rulings, combined with guidance from the USCO, clarify that neither AI developers, AI tools themselves, nor users providing prompts can claim ownership over AI-generated works. As a result, it is considered that AIGC may arguably be considered part of the public domain and not protected by copyright.

Are AI Service Providers Liable for Copyright Infringement?

The July 2024 Copyright and AI report provides recommendations on liability concerning AI-generated content. It suggests that AI service providers should not be held liable for creating unauthorized digital replicas but could face secondary liability for distributing them. The report proposes a safe harbor defense for online service providers who promptly remove unauthorized replicas upon notification. Additionally, it supports a licensing framework that allows individuals to monetize digital replica rights, ensuring a balance between copyright enforcement and free speech considerations. Of note are comments where the report does not advocate for federal preemption of state laws but instead recommends a federal “floor” that states can build upon to enhance protections.

The USCO is expected to release further guidance on the intersection of AI and copyright throughout 2025. Legal and regulatory processes will need to adapt to address the growing complexities of AI-driven content creation. McCoy Russell is actively monitoring these developments in the US and in other jurisdictions and will continue to provide insights into the shifting landscape to support the development of its clients IP portfolios.

As a small firm looking to make their mark in intellectual property law, McCoy Russell continues its recognition by Juristat as a top performing patent firm in technology center 3600 and 3700. The firm is proud to hold the top performance in Technology Center 3700 for 5 years in a row. This feat recognizes not only the success of our patent prosecution strategies, but the consistent quality of our patent applications.

The core of our firm’s consistency in quality is McCoy Russell’s firm culture, which focused on a collaborative environment that strives for excellence. The firm further has collaborative review system built into the firm’s processes that has been honed and refined over the years. McCoy Russell’s review process engages patent practitioners in the firm at all levels of experience.  Every application drafted by the firm undergoes at least two, and usually three, levels of review – even if drafted by a senior patent attorney with more than 20 years of experience. This process is ever-adapting in order to keep up with the latest challenges and opportunities of the ever-changing patent prosecution landscape.

Further, McCoy Russell continues developing its own in-house AI/ML tools via Ironcrow AI since the firm’s inception to support its intellectual property practice, and further elevate its performance.

The results speak for itself. McCoy Russell’s demonstrates its dedication to innovation, applying pioneering solutions and technologies to maximize the potential of our highly-skilled staff to the benefit of our clients.