Posts in USPTO

Just before Labor Day weekend, President Donald Trump issued an Executive Order excluding employees in the patents unit and Office of the Chief Information Officer (OCIO) of the U.S. Patent and Trademark Office (USPTO) from joining the Patent Office Professional Association (POPA), which represents patent examiners, or the National Treasury Employees Union Chapter 243 (NTEU 243), which represents non-professional employees.

On Friday, August 29, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Hyatt v. Stewart affirming the U.S. District Court for the District of Columbia’s ruling on remand that inventor Gil Hyatt’s efforts to obtain patent rights from four patent applications filed in 1995 were barred by prosecution laches. Ruling that the U.S. Patent and Trademark Office’s affirmative defense was available in Hyatt’s civil action to obtain patent rights under 35 U.S.C. § 145 under the law of the case, the Federal Circuit also rejected arguments that federal jurisdiction under Section 145 extended to the entirety of the Board’s decision, including parts of those rulings in which the Board reversed examiner rejections.

The dramatic ending of Ridley Scott’s 1991 crime drama, Thelma & Louise, is oft cited as an analogy for the thin line between patent claims being narrow enough to withstand validity challenges but broad enough to maintain infringement value. This tension frames a dance between parties throughout litigation in large part because claim terms are generally not written in ordinary English and need to be translated. But what if we drafted claims with litigation in mind? What if we drafted patents for the people reading and interpreting them rather than suffering unnecessary linguistic sacrifices during prosecution to appease examiners who are just trying to do their jobs?

Yesterday, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Global Health Solutions LLC v. Selner affirming the Patent Trial and Appeal Board (PTAB) in the first appeal of a derivation proceeding under the America Invents Act (AIA) litigated at the Board. Although the Federal Circuit corrected the PTAB on the proper analysis for derivation proceedings in light of the AIA’s related first-to-file provisions, the appellate court found no reversible error in the Board’s determination that Marc Selner could not have derived the invention at issue from GHS’ inventor because Selner proved an earlier conception of the invention.

A split panel of the U.S. Court of Appeals for the Federal Circuit (CAFC) on Tuesday vacated and remanded a Trademark Trial and Appeal Board (TTAB) decision that affirmed the rejection of Erik Brunetti’s applications to register the mark FUCK for various goods and services. The precedential decision was authored by Judge Dyk and Judge Lourie dissented.

Fashion company Vetements Group AG filed a petition for a writ of certiorari that was docketed on August 19 asking the U.S. Supreme Court to review a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that upheld the rejection of its trademark applications for the non-English mark VETEMENTS under the doctrine of foreign equivalents. According to the petition, the case presents fundamental questions about whether foreign-language marks should be evaluated based on consumer perception or English translation.

Filing a patent application is one of the most important steps an inventor can take. It protects your priority rights, signals credibility to investors, and can form the foundation of a business. But it’s also one of the easiest steps to get wrong. During my 15 years as a patent examiner at the U.S. Patent and Trademark Office (USPTO), I reviewed thousands of applications. Time and again, I saw filings that were doomed before they even reached my desk. Not because the idea lacked merit, but because inventors rushed ahead without preparing properly.

In the latest Director Discretionary Denial decisions to issue from the U.S. Patent and Trademark Office (USPTO), Acting Deputy Chief Administrative Patent Judge Kalyan K. Deshpande denied institution in six inter partes reviews (IPRs) brought by Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc against GenghisComm Holdings, LLC over mobile communications patents—some of which are only three years old. USPTO Acting Director Coke Morgan Stewart recused herself from the decisions due to a conflict and delegated her authority to Deshpande via a Notice of Delegation.

The U.S. General Services Administration (GSA) today announced an agreement with Google for the “Gemini for Government” platformto provide federal agencies with access to Google’s artificial intelligence and cloud services at discounted rates.Gemini is Google’s flagship generative AI chatbot, supporting text, image, video, and code generation across multiple platforms, including Gmail, Docs, Sheets, and Meet. Under the GSA agreement, which is valid through 2026, agencies can access Google’s AI-optimized and accredited commercial cloud services, Gemini models, and agentic capabilities.

About half of the patents adjudicated in district courts and at the Patent Trial and Appeal Board (PTAB) are found invalid. It is shown here, however, that patent invalidity rates found in adjudication will necessarily range around the 50% point regardless of the underlying validity of the stock of all issued patents. Unfortunately, there are those who infer a fallacy from such adjudication statistics: that about half of all issued patents are also invalid.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed a Patent Trial and Appeal Board (PTAB) ruling that claims of DexCom, Inc.’s patent for implantable glucose sensors were unpatentable as obvious. The CAFC opinion was authored by Judge Nina Y. Wang of the United States District Court for the District of Colorado, sitting by designation.

Back in April, IPWatchdog Founder and CEO Gene Quinn interviewed me on his podcast, IPWatchdog Unleashed, where we discussed 10 things U.S. Patent and Trademark Office (USPTO) Acting Director Coke Morgan Stewart could do to fix the Patent Trial and Appeal Board (PTAB) with the stroke of a pen. Gene summarized those suggestions here. Admirably, Acting Director Stewart had already been busy with reforms, and some of the suggestions I made have since come to pass. This article identifies those and follows up on suggestions still to be adopted. Here are the 10 suggestions, with the current status of each.

The World Intellectual Property Organization (WIPO) has embarked upon a three-year plan to focus on and discuss standard essential patents (SEPs).To forward this laudable goal, WIPO will host a free SEP symposium in Geneva on September 18-19, which will be live streamed online… WIPO bringing the SEP community together for an IP conversation was the predicate for our IPWatchdog Unleashed podcast this week. I spoke with András Jókúti, who is the Director of the Patent and Technology Law Division at WIPO. Our conversation provided insights into WIPO’s approach to SEPs, the challenges at hand, why WIPO is attempting to navigate this complex terrain, the need for increased transparency and much more.

Today, the U.S. Court of Appeals for the Federal Circuit issued a ruling in American Science and Engineering, Inc. v. Stewart vacating a final written decision by the Patent Trial and Appeal Board (PTAB) that invalidated several of American Science and Engineering’s (AS&E) patent claims covering inspection systems using pencil-beam radiation sources. The appellate court faulted the PTAB for not properly articulating how the asserted prior art’s scatter detectors can detect radiation from the claimed pencil-beam configuration.

In the latest development on U.S. Patent and Trademark Office (USPTO) Director Coke Morgan Stewart’s “settled expectations” doctrine, Stewart today denied iRhythm Technologies, Inc.’s request for Director Review of her own decision to discretionarily deny institution of iRhythm’s petitions for inter partes review challenging a number of patents owned by Welch Allyn, Inc.