Posts in Inventors Information

John Squires was officially sworn in as the 60th U.S. Patent and Trademark Office (USPTO) Director on Tuesday, September 23, and today issued the first patents of his term, both in technology sectors that often face increased scrutiny about patent eligibility during patent prosecution and in the courts. The two issued patents were directed to distributed ledger/crypto and medical diagnostics technologies.

Representatives of 36 conservative organizations sent a letter yesterday to Secretary of Commerce Howard Lutnick, appealing to him as an inventor to walk back his proposal to charge a 1%-5% patent “tax” on the value of granted U.S. patents. Lutnick’s proposal was first reported by the Wall Street Journal in July. While few details have been revealed about the plan still, it has drawn harsh criticism, including by IPWatchdog’s Founder and CEO Gene Quinn, whose article was quoted in the conservative groups’ letter. Quinn called the idea “catastrophically stupid” and “fraught with peril.”

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.

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.

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.

Under current law, only natural persons can be inventors on a patent. But as AI systems become more sophisticated and domain-specific, questions emerge about whether the creators of such AI might contribute to the conception of inventions generated with their tools. Consider this scenario: a scientific researcher uses a highly specialized AI model (designed for, say, molecular drug design) to discover a new pharmaceutical compound. The human runs the model, evaluates outputs, and files a patent application claiming the new compound. Is the AI’s developer – who trained and fine-tuned the model to solve such molecular design problems – a silent joint inventor of that compound?

The U.S. Patent and Trademark Office (USPTO) today held a “USPTO Hour” webinar in which it shared the results thus far of its 2022 pilot program, the “Deferred Subject Matter Eligibility Response (DSMER) Pilot.” The DSMER Pilot was announced in January 2022 in response to a 2021 letter sent to the Office by Senators Thom Tillis (R-NC) and Tom Cotton (R-AR) asking then-interim Director Drew Hirshfeld to “initiate a pilot program directing examiners to apply a sequenced approach to patent examination,” rather than the traditional “compact approach.”

In January 2025, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential ruling in Lynk Labs, Inc. v. Samsung Electronics Co., Ltd. affirming a decision by the Patent Trial and Appeal Board (PTAB) that had invalidated the patent claims of U.S. Patent No. 10,687,400 to Lynk Labs… Two statutes were in play: U.S.C. 311(b) and U.S.C. 102(e); both the pre-America Invent Act (AIA) versions.

Two patent applicants struck out at the U.S. Court of Appeals for the Federal Circuit  (CAFC) Thursday when the court affirmed a Patent Trial and Appeal Board (PTAB) decision upholding a U.S. Patent and Trademark Office (USPTO) examiner’s rejection of their application for a diagnostic testing patent. Patent application No. 12/925,221 is directed to “collect[ing] a sample of a volatile material (e.g., breath or urine) produced by a living entity (e.g., person or animal) and then analyz[ing] the sample using a mass spectrometer to create a digital health record with information such as the living entity’s age or weight” in order to diagnose certain conditions.

In a precedential opinion issued on Monday, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated and remanded a Patent Trial and Appeal Board (PTAB) decision that awarded priority to the Broad Institute in the high-profile CRISPR-Cas9 patent dispute. The court held that the PTAB applied the wrong standard by requiring the Regents of the University of California, the University of Vienna and Emmanuelle Charpentier (“the Regents”) to show their invention was known to work. The CAFC reaffirmed that conception doesn’t require certainty of success and remanded for reevaluation under the correct framework.

There’s always been a lot of confusion over whether you can patent video games. So, can you? The short answer is yes. In fact, there’s so much high tech that goes into modern video games that I couldn’t possibly fit it all into one article. I’ll still provide some examples in just a second, but first, let’s dispatch with what’s not patentable.

Last night, on the same day the Patent Eligibility Restoration Act of 2025 was introduced in both the Senate and House of Representatives, Senators Chris Coons (D-DE), Thom Tillis (R-NC), Dick Durbin (D-Il.), and Mazie Hirono (D-HI) also reintroduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act, which would significantly reform Patent Trial and Appeal Board (PTAB) practice.

Last Tuesday, the U.S. Court of Appeals for the D.C. Circuit issued an opinion in Thaler v. Perlmutter affirming the denial of a copyright application filed by artificial intelligence (AI) developer Dr. Stephen Thaler to an image created by one of Thaler’s generative AI systems. Although the appellate court did not categorically reject registrability of all AI-generated works, the D.C. Circuit agreed with the agency that the Copyright Act of 1976 requires all eligible work to be authored in the first instance by a human being.