Wen Xie is a U.S. Patent Attorney and Partner with Global IP Counselors. She is a prosecutor with a comprehensive understanding of the patent process in the United States, Europe, and across Asia, and experience overseeing the prosecution of applications around the world. Wen is familiar with actions and procedures from all the major national patent offices, including the US Patent and Trademark Office, the European Patent Office and the China National Intellectual Property Administration. Wen has written over a hundred original patent applications, and has extensive experience with appeals before the Patent Trial and Appeal Board. She represents clients across various technological sectors including the electro-mechanical, medical devices, and computer-operated control technologies.
Wen is highly sought after for her opinion on subject matter eligibility in the United States, particularly with respect to the patentability of software applications and computer-implemented technologies. She has published legal scholarship and speaks frequently on subject matter eligibility under the Alice and Mayo framework.
Highly involved in the innovation community around the world, Wen is a member of the Forbes Business Council and the WINGS WorldQuest Junior Council. Wen is also a leader in the Intellectual Property Owner’s Association, chairing the subcommittee in charge of the Diversity in Innovation Toolkit and working with leaders across the IP arena so that diverse inventors can be thoroughly recognized for their contribution to the innovative ecosphere.
After June 8, 1995, U.S. utility patent terms changed from 17 years from issuance to 20 years from filing to harmonize with the rest of the world under the Uruguay Rounds Agreement Act. For design patents, after the Hague Agreement on May 13, 2015, design patent terms changed to from 14 years from issuance to 15 years from the date of grant/issuance. In the United States, patent term is subject to the following: patent term adjustment (PTAs), patent term extension (PTEs) and terminal disclaimers. While many other countries also have PTAs and PTEs, terminal disclaimer practice exists only in the United States because we are the only country that issues judicially-created, non-statutory double patenting rejections.
The United States Patent and Trademark Office (USPTO) would like public comments on how to update the 2019 Subject Matter Eligibility Guidance. The agency is also seeking comments on how to improve the robustness of the patent system overall. This article/video is in (unofficial) response to both of these requests for comments. The current mess surrounding subject matter eligibility in the United States is an offspring of a much deeper problem in patent law, which is that there is practically no standardization in patent practice. In medicine, U.S. doctors are trained by standardized practices through rotations and residency programs such that when they begin practicing, a doctor graduating in Florida will not practice medicine vastly different from a doctor graduating from medical school in California, for instance. Instead, the idea is that all the graduates will approach medical treatment in a standardized way so that the public has a lot more faith in the medical community.
The Copyright Claims Board (CCB), established by the CASE Act passed in December 2020, is now up and running and taking cases. The CCB is an alternative to federal court. Just like patents, copyrights are bound by federal law. Previously, a copyright owner would have to take their case to federal district court to in order to seek damages or relief. But the CCB allows a claimant to bring a copyright suit before a tribunal at the Copyright Office instead.
Did you know that the examiner bears the initial burden of proving a prima facie case of obviousness? You, the applicant, do not have any duty or burden to prove nonobviousness. Therefore, initially, the applicant has no obligation to present any secondary evidence of nonobviousness. It is only when the examiner has proven a prima facie case of obviousness that the burden shifts to the applicant.