Posts in Inventors Information

Why Does the USPTO Keep Extending the Deadline for Comments on Robust and Reliable Patents?

The U.S. Patent and Trademark Office (USPTO) announced on Tuesday that it is once again extending the deadline for submissions on its “Request for Comments on USPTO Initiatives to Ensure the Robustness and Reliability of Patent Rights.” The Office originally published the Federal Register Notice on October 4, 2022, with a deadline of January 3. That deadline was then extended to February 1 in November, with a note that “this will be the only extension of the comment period.” But on Tuesday, the Office said it will extend the deadline a second time “to ensure that all stakeholders have a sufficient opportunity to submit comments on the questions presented in the October 4, 2022, notice.” The announcement also asserted that “this will be the last extension of the comment period.”

A Follow Up on ‘Patent Durability’: A Way to Ensure Just Compensation for Inventors

Inventions are secrets, at least until they are divulged to others. It would be lovely if an inventor could simply tell their secret to the world and receive just compensation in exchange. However, human nature tells us that people are reluctant to pay for something they are using unless someone makes them pay for it. When an inventor files a patent application, the secret of their invention is instantly shared with the world via public disclosure. As a result of the speed with which the inventor’s secret is shared with the world, receiving just compensation from users of that secret is particularly difficult.

USPTO Asks Whether AI Inventorship Uncertainty Requires Change

The United States Patent and Trademark Office (USPTO) is requesting public comments on artificial intelligence (AI) and inventorship via a Federal Register Notice published today, February 14. The Office has sought comment on the topic before, but not since its decision to deny patent protection to inventions created by Stephen Thaler’s artificial intelligence (AI) machine, DABUS. That decision was upheld by the district court and U.S. Court of Appeals for the Federal Circuit (CAFC) on appeal, but the CAFC in its decision left open the possibility that inventions made by human beings with the assistance of AI may be eligible for patent protection.

Does Hyatt v. Hirshfeld Mean That More than One-Third of Patents on the Top Pharmaceuticals are Presumed Invalid?

Case law has defined prosecution laches as an affirmative defense against an infringement assertion. Specifically, the case law indicates a patent that is being asserted is unenforceable when the patentee caused an unreasonable and unexplained delay in prosecution of the patent. Symbol Tech v Lemelson Medical, No. 04-1451 (Fed. Cir. 2005). There is relatively little case law on the specifics of laches. However, in 2021, the Federal Circuit said: “we now hold that, in the context of a § 145 action, the PTO must generally prove intervening rights to establish prejudice, but an unreasonable and unexplained prosecution delay of six years or more raises a presumption of prejudice”. Gil Hyatt v. Hirshfeld (Fed. Cir. 2021). What does this – or might this – mean beyond the Hyatt case?

In Response to Questions Signaling Major Changes to Patent System, Commenters Ask USPTO: ‘Where’s Your Data?’

Yesterday, February 1, was the deadline for submissions to the U.S. Patent and Trademark Office (USPTO) on its call for responses to a number of questions purportedly aimed at making U.S. patents more “robust and reliable.” But many commenters have weighed in to question why the Office is relying on data driven by advocacy groups to explore potentially major adjustments to the U.S. patent system when, as the expert agency on patents, it has not yet undertaken a data-driven study itself to confirm the need for such changes. The key data being questioned is that of  the Initiative for Medicines, Access & Knowledge (I-MAK), an advocacy organization that has become a “principal, go-to source” for data on the number of patents and patent applications covering pharmaceutical innovations. Some of the questions raised in the USPTO’s Request for Comments (RFC) seem to be based on many of the premises of the I-MAK data.

Revolution Rope Inventor Tells Justices She Deserves Her Day in Article III Court

The inventor of a novel jump rope system (the Revolution Rope), Molly Metz, argued in a reply brief to the U.S. Supreme Court filed on behalf of her company, Jump Rope Systems, LLC, on Tuesday that her case against Rogue Fitness is justiciable and the company has standing despite the cancellation of her patent claims by the U.S. Patent and Trademark Office (USPTO). Jump Rope Systems filed the brief in reply to Rogue Fitness’s brief in opposition, which was filed on January 19. Metz and Jump Rope Systems originally sued Rogue Fitness in 2018. But after Rogue filed a petition for inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) ruled that Jump Rope Systems’ two patents (US 7,789,809 B2 and US 8,136.208 B2) related to jump rope handle technology were unpatentable.

The USPTO Claims it Wants to Ensure ‘Robust and Reliable’ Patents – But Its Questions Imply Another Assault on Patent Owners

Last October, the United States Patent and Trademark Office (USPTO) issued a Request for Comments on USPTO Initiatives To Ensure the Robustness and Reliability of Patent Rights. Responses to this request are due by this Thursday, February 2, 2023. Patent owners, especially small businesses and independent inventors, need two things of the patent system: 1) Reliability/believability. We need patents that are respected when they are issued. We do not want any doubt about their validity. 2) Flexibility. We use many different strategies during patent prosecution. Many of our strategies reflect the startup-nature of our inventions, where we are constantly working on the product-market-fit. We may need several bites at the apple to effectively protect our invention. The Request for Comments suggests several different changes to patent prosecution, none of which address small companies’ needs.

Opinion: Restoring The Road Less Traveled – American Invention at a Crossroad

As Robert Frost poetically noted, two roads diverged in the woods he was exploring. One road was well trod, easy to traverse, and the other less traveled, difficult and getting weedy. Sadly, although Americans pride themselves on innovation, American innovation, particularly inventorship, is now the difficult road. Bad decisions made in previous forks in the road have gradually undermined the innovative spirit in our nation, but some inventors in Washington, DC, next week want to change course before we automatically go down the well-trod path.

An Alternative to Claim Mirroring in Initial Patent Application Filing

While working as a patent examiner at the U.S. Patent and Trademark Office (USPTO) in Art Unit 2121 (artificial intelligence, or AI) I noticed that the typical patent application that I examined had seven method claims, seven apparatus claims, and six computer-readable medium (CRM) claims. In the typical application, the method and apparatus claims were mirrors of each other, and the first five CRM claims were mirrors of claims 1-5 and the last CRM claim combined the subject matter of claims 6 and 7. While examining a typical patent application, I only had to find prior art that taught these seven unique claims to reject the entire patent application. This led me to ponder why applicants are wasting the 13 other claims included with the standard filing fee with mirrored claims. Though best practice is to have multiple statutory categories with mirror claims by the time of allowance for enforceability reasons, there is a potential advantage for the applicant to file fewer mirror claims initially.

Darrell Issa Doesn’t Understand That He is the Problem

US Inventor is publicly opposing the appointment of Representative Darrell Issa (R – CA) to Chair the IP Subcommittee due to Issa’s record of IP reforms that are harmful to independent inventors and startups. To accomplish these IP reforms, Issa squelches the voices of independent inventors and startups while amplifying the voices of Big Tech and Chinese Communist Party (CCP) controlled multinationals. Now, in a recent statement, Issa argues that his IP reforms have made the patent system more fair for everyone, even as the facts show he is completely wrong. Issa is unfit to be IP Subcommittee Chair.

New USPTO Tool Aims to Help IP Newbies Identify Their Rights

At the U.S. Patent and Trademark Office’s (USPTO) Women’s Entrepreneurship (WE) event in Naples, Florida, on Wednesday, January 18, USPTO Director Kathi Vidal announced that the Office has a new tool, called the Intellectual Property (IP) Identifier, intended to assist those “less familiar with IP” in identifying what IP they have and what rights they need to protect it. The tool also provides basic information on patents, trademarks, trade secrets and copyright. Vidal said in a press release Wednesday that anyone “considering starting a business or trying to grow one” should use the tool and that “it’s another example of our work to bring more people into the innovation ecosystem to increase American competitiveness, grow the economy, and solve world problems.” 

Issa is Not a Fit for IP Subcommittee Chairman

The House of Representatives’ Judiciary Committee—Subcommittee on the Courts, Intellectual Property and the Internet (IP Subcommittee) writes patent law and is responsible for other patent-related initiatives. A country’s patent laws directly affect its innovation economy. In a free-market economy, patent laws can boost or destroy incentives to invent and commercialize new things. As a result, patent law influences economic and job growth, social mobility, technological advances and national security. The 118th congress has begun. Currently, the Republican Steering Committee is selecting the Chairs for the various committees and filling the ranks with members. The next step is for the Chairs of the various committees to select their subcommittee chairs. In the case of the IP Subcommittee, Jim Jordan is the Chair of the Judiciary Committee, so he selects the IP Subcommittee Chair. Representative Darrell Issa (R-CA) is the most likely candidate to be selected.

RALIA Is Economic Suicide: A Reply to the Critics

Paul Morinville, Founder of US Inventor, recently published a response to my column criticizing RALIA, a bill in Congress that would abolish the Patent Trial and Appeal Board (PTAB). I offer a few observations in reply. I argued in “The Made in China Act,” November 16, 2022, that juries are not an effective or reliable check on patent validity and that eliminating contested validity reviews at the United States Patent and Trademark Office (USPTO) would be a disaster for U.S. manufacturing. As if determined to prove my point, the VLSI patent-assertion group recently obtained yet another monster infringement verdict against Intel based on a patent that probably shouldn’t have issued.

In Plastipak Decision, CAFC Fails to Resolve Precedential Inconsistency in Inventorship Determination

In Plastipak Packaging Inc. v. Premium Waters Inc., Appeal No. 2021-2244, decided December 19, 2022, the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) newest judge threw a curveball on the topic of inventorship. Judge Leonard Stark wrote the precedential opinion, joined by Judges Newman and Stoll, and ultimately reversed and remanded the U.S. District Court for the Western District of Wisconsin’s grant of summary judgment in favor of Premium Waters, Inc. Plastipak’s 12 patents in suit generally had to deal with unfinished plastic bottles as used during manufacturing.

AI Year in Review: A Busy 2022 for AI and IP Promises Even More in 2023

In general, the adoption of artificial intelligence (AI) and machine learning technologies has the potential to impact society in many ways. These technologies can automate tasks and make them more efficient, which can lead to job displacement and other economic impacts. They can also be used to make decisions that affect people’s lives, such as in the criminal justice system or in hiring, which raises ethical concerns. Additionally, the development and use of AI and machine learning technologies can raise issues related to privacy and security. What could be a more fitting way to open a 2022 year-in-review article on AI and machine learning than by asking OpenAI’s newly beta-released ChatGPT tool to contribute? The above paragraph was generated using ChatGPT’s conversational, chat-based dialog input. The initial request of ChatGPT was the prompt: “Explain the social impacts of artificial intelligence and machine learning technologies over the past year.”