Wen Xie is a U.S. Patent Attorney and Partner at 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.
The Federal Circuit basically confirmed in In re Cellect that terminal disclaimers can knock out patent term adjustment (PTA). If you have patent term extension (PTE) and you filed a terminal disclaimer to overcome an obviousness-type double patenting (ODP) rejection, you can get the PTE term tacked onto the disclaimed date. However, in the case of PTA, the court says that PTA term gets added to the life of the patent first and then the terminal disclaimer goes into effect so that you have disclaimed the PTA term and any extended term such that the two patents now expire on the same date regardless of the PTA. In effect, terminal disclaimers may knock out PTA term.
The President’s recent Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence instructs the U.S. Patent and Trademark Office (USPTO) Director and Copyright Registrar to collaboratively issue recommendations to the President on further actions for advancing AI innovation through intellectual property, particularly with respect to AI inventorship and AI authorship. But the two offices currently regard AI differently in terms of assessing the creative and conceiving capabilities of machines, which poses a potential contradiction in how intellectual property law treats AI.
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.
The technological improvement test is used by the U.S. Patent and Trademark Office (USPTO) and the U.S. Court of Appeals for the Federal Circuit to determine the issue of subject matter eligibility. Of all the tests for a showing of something more or practical application – machine transformation, machine implementation, data transformation – technological improvement is probably the most popular and oft-used by applicants because it has the clearest standards. As you probably already know, the technological improvement test used by the USPTO looks for a technological problem for which there is a technological solution and the claims recite a technological improvement therefor.
The issue of AI inventorship in the United States remains at large following the Supreme Court’s denial of cert in Thaler v. Vidal, meaning that the U.S. Patent and Trademark Office (USPTO) finding that AI cannot be considered a named inventor to a patent application remains the law of the land. Now that the agency is seeking public comments on the issue of AI inventorship, I reached out to Dr. Thaler to get his comments on the current AI inventorship debate within the patent space.
Petitions are sort of like pleading practice before the Office over issues that do not necessarily have to do with the patentability of your claims. The Office of Petitions will receive your petition where it will be decided on not the examiner, but an administrator in the petitions office. As a rule of thumb, objections from the Office are petitionable and rejections from the Office are appealable. Rejections under Sections 101, 102 and 103 involve questions of law and therefore have to be appealed to the Patent Trial and Appeal Board (PTAB) as an ex parte appeal. But for everything else, if you have a dispute with the examiner that’s not going anywhere and the examiner isn’t withdrawing the objection – you petition those matters.
The Federal Circuit’s decision in Juno v. Kite undermines effective prosecution practice and ultimately patent enforcement. The Juno panel held that to satisfy the written description requirement, a patent needs to demonstrate to a skilled artisan that the inventors possessed and disclosed in their filing the full scope of every genus being claimed. By denying rehearing to the Federal Circuit’s 2021 decision on the scope of the written description requirement, Juno v. Kite demonstrates how once again, the courts never consider anything from a prosecutor’s point of view. Here’s why Juno v. Kite is bad for patent prosecution practice.
Why should U.S. attorneys bother with learning European Patent (EP) practice? Because every once in a while, your client is going to ask you about IP portfolio management in other countries, whether you have a client that is already a multinational entity or thinking about expanding across borders. It’s not uncommon for a client to ask you about practicing before the European Patent Office (EPO) versus, for example, one of the Asian or Latin American patent offices, in which case they will more likely talk directly to a foreign associate. The reason for this is because of English. You speak it. They also speak it. So, your client could very well ask you to review documents coming out of Europe to save money (if they have not already). Because of this, it’s important to know some of the basics of European prosecution practice. In this episode, let’s talk about Extended European search reports (EESRs), which basically means an EP office action.