Posts in Inventors Information

Public-Use Bar: What Startups Need to Know

Startups often face many competing pressures. Two such pressures that are frequently at odds with each other are the need to adequately protect the intellectual property that will be the basis for future revenue and investment, and the need to bring such revenue and investment into the business to allow for continued technology development and commercialization. Many startups are aware of how the on-sale bar interacts with these pressures and the associated need to file patent applications on any technology prior to offering or placing it on sale. However, fewer startups are aware of the public-use bar and how activities pursued with the goal of growing their businesses may unwittingly invoke it.

Patent Basics: Practice Tips for Achieving Success in Inter Partes Reviews

Inter partes review (IPR) is a legal process conducted before the Patent Trial and Appeal Board (PTAB) to assess patentability based on anticipation or obviousness using prior art publications and patents. Congress established IPR to offer an efficient alternative to litigating patent disputes before the district courts. This article discusses some practice tips for both challenging and defending patents in IPRs before the PTAB.

Google Won’t Reply to SCOTUS Petition Seeking Review of CAFC’s ‘Original Patent’ Standard for Reissue

Yesterday, Google waived its right to respond to a petition for writ of certiorari to the U.S. Supreme Court filed by the inventors of a method for protecting computers from malware. The inventors, Alfonso Cioffi and Allen Rozman (the patent is now assigned to Melanie, Megan and Morgan Rozman), are appealing a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that reversed a district court ruling and $20 million verdict for the inventors. The CAFC held that the Texas district court erred in ruling that four claims across the three patents were not invalid and agreed with Google’s argument that the claims were invalid under the “original patent requirement” because they contained reissue claims not disclosed in the original patent.

USPTO Report on COVID-19 Diagnostics Shows Outsized Impact of Small Entities on R&D

On October 23, the U.S. Patent and Trademark Office’s (USPTO) Office of the Chief Economist (OCE) published a report detailing patent application filing trends at the USPTO related to COVID-19 diagnostics technologies. The OCE found that filing activity surged following the arrival of the novel coronavirus in early 2020, with much of that increase driven by small companies and research institutions. The report found further evidence suggesting that federal funding had a significant impact on driving innovation into COVID-19 diagnostics at small R&D entities.

Solving the Section 101 Conundrum: Examining Stakeholder Workarounds vs. Legislative Reforms

Judicial rulings have muddied the waters of patent eligibility, with judges themselves expressing uncertainty. In the case, Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, U.S. Court of Appeals for the Federal Circuit judge Kimberly Moore openly shared the challenge of applying Section 101 consistently, explaining that “the majority’s blended 101/112 analysis expands § 101, converts factual issues into legal ones and is certain to cause confusion for future cases.” This haze has driven innovators to tread cautiously, often sidelining potential patents for fear of 101 rejections—stifling the American dream of groundbreaking innovation. Stakeholders craft tactics to dodge these pitfalls while lawmakers propose reforms.

Inventor Profiles: Karikó, Weissman Earn Nobel Prize for Modifying mRNA and Paving Way for COVID-19 Vaccines

On October 2, the Nobel Assembly at Karolinska Institutet announced that Hungarian-American biochemist Katalin Karikó and American immunologist Drew Weissman were awarded the 2023 Nobel Prize in Physiology or Medicine for their discoveries related to modified messenger ribonucleic acid (mRNA) for use in vaccines. A critical part of the world’s response to the COVID-19 pandemic, mRNA vaccines were not an effective option until the pioneering work of these two scientists, one of whom faced considerable rejection while laying the foundation that answered one of the world’s greatest public health crises.

What the Patent Eligibility Restoration Act Means for Artificial Intelligence Inventions

PERA is no doubt an ambitious bill. In terms of its design, the proposed legislation attempts to deal with each of the Supreme Court’s decisions in Alice, Mayo and Myriad, plus all of their progeny applications thereafter engendered by the Federal Circuit, the Patent Trial and Appeal Board (PTAB), all the way down to the U.S. Patent and Trademark Office (USPTO) examining corp. In a nutshell, the bill, if passed, would return us to a time when Bilski was the law of the land, which will no doubt be welcomed by many innovators.

Meeting Marvels: The Value and Necessity of Invention Disclosure Meetings

The single best tool available to increase patent value and decrease patent costs is not directed to application drafting or patent prosecution or law firm selection. Instead, it occurs much earlier in the process. The best tool is meeting with inventors. When I was outside counsel and I received a new application to draft, the very first thing I did was set up a meeting with the inventors. As in-house counsel, when I receive a new invention submission, I do the same. It does not matter if the invention is simple, non-enabling, or incomplete. It does not matter if the inventor is familiar, experienced, or knowledgeable. It does not matter if we meet in person, by phone, or by video. For every invention, we meet.

House Judiciary Chief IP Counsel Tells IPWatchdog LIVE Attendees Eligibility Companion Bill to Be Introduced Soon

On day two of IPWatchdog LIVE, J. John Lee, Chief Counsel for Intellectual Property for the U.S. House of Representatives, Committee on the Judiciary, told those who are skeptical of the chances for Senators’ Tillis and Coons’ Patent Eligibility Restoration Act (PERA) to move forward that a House version of the bill is likely to be introduced in the near future. Lee, who is principal advisor on IP issues and helms the Subcommittee on Courts, Intellectual Property, and the Internet, was speaking on a panel titled “Politics, Policy and Legislation at the Intersection of Intellectual Property,” which also featured David Jones of the High-Tech Inventors Alliance; Joe Matal of Haynes Boone, LLP and former U.S. Patent and Trademark Office (USPTO) Acting Director and Acting Solicitor; and Eli Mazour of Harrity & Harrity.

Be Proactive, Not Reactive: Recognizing Patentable Inventions for Academic Researchers

Breakthrough discoveries often receive the spotlight and intellectual property (IP) protection. Unfortunately, lesser, yet nonetheless valuable, contributions often go unrecognized and unprotected. Determining when to contact your institution’s Technology Transfer Office in order for them to assess research projects for IP protection is vital. Reaching out to Tech Transfer early and often will help researchers protect their accomplishments and receive the recognition they deserve.

CIPU Report Identifies Key Criteria Driving Strong Entrepreneurship & Innovation Programs at U.S. Universities

The Center for Intellectual Property Understanding (CIPU) has released a report that gauges the level of intellectual property (IP) engagement at the largest U.S. university entrepreneurship and innovation (E&I) programs. The nonprofit organization found that E&I programs at U.S. universities are increasingly incorporating IP into students’ business education. The report’s goal was in part to evaluate whether the observed increase in entrepreneurship in the United States is improving engagement with or is a result of intellectual property. CIPU wrote, “understanding the level of IP engagement among students enrolled at these schools provides insight into ways to increase support for the nation’s would be entrepreneurs.”

Passing PERA Assures Patent Eligibility for All Useful Inventions

Confusion and misunderstanding among some independent inventors might slow or stall progress of the excellent eligibility reform bill recently introduced by Senators Chris Coons (D-DE) and Thom Tillis (R-NC). Titled the Patent Eligibility Restoration Act (PERA), the legislation would overturn Supreme Court and Federal Circuit decisions that scrambled settled law, excluding many worthy classes of inventions, such as medical diagnostic methods and advanced computer applications.

CAFC’s Joint Inventorship Analysis Challenged in SCOTUS Petition

HIP, Inc. recently filed a petition for writ of certiorari with the U.S. Supreme Court asking the Justices to review a May 2023 U.S. Court of Appeals for the Federal Circuit (CAFC) decision holding an inventor’s contribution to a patent for methods of pre-cooking bacon and meat pieces did not satisfy the joint inventorship test because the contribution was “insignificant in quality.”

Blatant Mischaracterizations of PERA Hurt Those the Bill Could Help Most

It is time to set the record straight. For reasons I don’t understand, many inventors are just not being truthful about the provisions of patent reform bills now pending in Congress. In fact, some in the independent inventor community are attempting to rally support to kill the overwhelmingly pro-patent, pro-innovation, patent eligibility bill now pending. This is an enormous mistake that will have tragic consequences unless those who have the most to lose become willing to accept a win, even if that win does not provide them with 100% of what they want.

Blue Gentian v. Tristar Underscores the Importance of Naming the Correct Inventors on a Patent

Careless naming of inventors on a patent application can create confusion and add complexity to an already intricate process. The recent case of Blue Gentian, LLC v. Tristar Prod., Inc. is a great example where failure to properly list a co-inventor resulted in the only named inventor losing their patent rights…. To avoid a case similar to Blue Gentian v. Tristar, identify all inventors carefully and have them sign an assignment agreement, which transfers their rights to a single entity, such as an individual or the company that’s going to exploit the patent.