Posts Tagged: "Gene Quinn"

Andrei Iancu, the Director of the United States Patent and Trademark Office (USPTO), has a real mess on his hands. This particular mess relates to the Patent Trial and Appeal Board (PTAB) and the astonishing reality that the Administrative Patent Judges (APJs) on the PTAB are not bound by any Code of Judicial Conduct, as is applicable to Article III federal judges. Instead, PTAB Judges are only bound by the same ethics standard that applies to all other employees, which requires them to recuse themselves from any decisions relating to former employers for one year. That is how several PTAB Judges have been able to adjudicate inter partes review (IPR) and covered business method (CBM) challenges filed by a former litigation client – Apple, Inc. What is scandalous is the dismissal of this behavior in the recently filed amicus brief filed at the United States Court of Appeals for the Federal Circuit by the United States Department of Justice (USDOJ) in the matter of Apple, Inc. v. Voip-Pal, Inc., Nos. 2018-1456, 2018-1457. In this case there are no clean hands, although you can certainly feel for the patent owner.

There is a window open for legislative action on patent reform, and the innovator community is blowing it. Google fired its lobbyists in Washington, D.C., and then rehired all new lobbyists with an antitrust and economic background. Meanwhile, the Trump Administration has held roundtable talks about how to combat counterfeits in online marketplaces, which have been thinly veiled forums asking what, if anything, the government can do to punish Amazon for rampant counterfeits. Facebook has few friends in Washington, D.C. after the last election and its privacy issues, and its recent quarterly report shows expenses significantly up, that revenue growth slowed significantly and the CFO suggests that is likely to continue into the future. The time is right for a legislative fix for the patent eligibility crisis facing real innovators in the life sciences and software industries. There is a unique opportunity for a legislative fix for 101, with many of those who have favored a weakened patent system no longer focused on the issue the way they once were, and partners in the Senate IP Subcommittee who actually, truly understand patents, the patent system and innovation.

Things are bad for many innovators and there is little hope for improvement on the foreseeable horizon. Despite the best efforts of Senator Thom Tillis (R-NC) and Senator Chris Coons (D-DE), efforts to reform America’s patent system for the better have stalled to the point that the Senate IP Subcommittee is moving on from patent matters and will focus on copyright reform throughout 2020. “Given the reasonable concerns that have been expressed about the draft as well as the practical realities of the difficulty of passing legislation, absent stakeholder consensus I don’t see a path forward for producing a bill—much less steering it to passage—in this Congress,” Senator Tillis told the Intellectual Property Owners Association in an interview published earlier today. Sources tell IPWatchdog that it is not inconceivable that the Subcommittee will steer back toward patent issues – namely patent eligibility reform – but disagreement among the interested constituencies has shelved any hope for patent eligibility reform. Shockingly, the disagreement that has shelved the long-awaited legislative fix for 35 U.S.C. 101 is among those who support reform. It seems the various constituencies that want 101 reform have their own demands and – if you can believe it – would prefer no change to a change that doesn’t give them 100% of what they are seeking.

Earlier this month, the European Patent Office (EPO) and the UK Intellectual Property Office (UKIPO) each rejected two patent applications that designated an artificial intelligence named DABUS as the inventor. While the UKIPO published a decision setting out its reasoning, the EPO simply stated at the time that the applications did “not meet the requirement of the European Patent Convention (EPC) that an inventor designated in the application has to be a human being, not a machine.” Now, the EPO has released more detail about the grounds for its decision. In the EPO press release today, the Office explained: “The EPO considered that the interpretation of the legal framework of the European patent system leads to the conclusion that the inventor designated in a European patent must be a natural person. The Office further noted that the understanding of the term inventor as referring to a natural person appears to be an internationally applicable standard, and that various national courts have issued decisions to this effect.”

Generally speaking, the first section of a patent specification will be the Background. The Manual of Patent Examination and Procedure (MPEP) recommends that the Background be broken up into two sections: (1) Field of Use Statement; and (2) Background of the Prior Art. These sections are recommended, not mandatory. Indeed, the Background itself is recommended and not mandatory. If you are going to have a Background it needs to be short, sweet, completely self-serving, must never actually describe the invention and it cannot ever use the term “prior art.” One big mistake inexperienced patent practitioners and researchers tasked with creating a first draft will make is they will go on page after page in patent applications about the history of the invention and the prior art. Indeed, there are some popular books on the market that recommend that this material be filed in patent applications. Including that type of information in an application that is filed is simply inappropriate. You do not see the best lawyers at the best law firms who represent the largest patent acquiring companies write patents like that, so why should you?

Patent prosecution can sometimes seem to be a rather byzantine process. As with anything, the more you understand, the better prepared you will be for the strategic decisions that lie ahead, some of which will result in a streamlined patent approval, but which will also raise the overall cost of obtaining the protection desired. In this regard the patent process is full of trade-offs. For many, getting a patent quickly is very important, as is the case with high-tech start-ups and SMEs seeking reputational advantages, additional funding, licensing opportunities and partnerships. With this in mind, here are eight helpful tips co-authored with the Morningside IP team and specifically aimed at those applicants filing at the European Patent Office (EPO) who are hoping to obtain a strategically reasonable set of patent claims with a streamlined patent application approval process. Of course, following these eight tips can and should also pay dividends with respect to getting your patent approved in other patent offices around the world.

Yesterday was a dark day for patent eligibility in America. The United States Supreme Court denied certiorari in five more petitions relating to patent eligibility challenges. Based on our count, this brings the total number of patent eligibility petitions denied by the Supreme Court to at least 48, since the Court issued its controversial, if not catastrophic, decision in Alice Corporation vs. CLS Bank, 134 S.Ct. 2347 (2014). Obviously, the Supreme Court is perfectly comfortable with the status quo as it pertains to the law of patent eligibility. This reality evokes myriad emotions, ranging from despair to outrage to resentment to cynicism to exasperation and finally to a begrudging acceptance. Even with Justice Gorsuch hiring clerks with an intellectual property background – an extreme rarity at the Supreme Court – there seems to be no willingness or desire to clean up the mess this Court created when it ignored the doctrine of stare decisis, several generations of well-established law, and the 1952 Patent Act itself, which had been interpreted by the Supreme Court based on the explicit language of 35 U.S.C. 101 and the legislative history to make “anything under the sun that is made by man” patent eligible. Diamond v. Chakrabarty, 447 U.S. 303 (1980) (citing S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H. R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952)).

To the surprise and sorrow of some, but the relief of others, the Supreme Court earlier today denied certiorari in some key cases on patent eligibility law, putting any hope of further clarity in this realm squarely in the hands of Congress. Many see this as a dereliction of the Court’s duty, while others are just thankful the Court will not cause further harm than it already has. Commenting on the development, IPWatchdog CEO and Founder Gene Quinn tweeted out his view that this was a “bad day for patent eligibility” and that the denial of Athena ultimately “means medical diagnostics are NOT patentable in America.”

The issue of unauthorized practice of law is a concern for all attorneys, and something that periodically does catch up with patent attorneys. The typical scenario where this issue arises is when patent attorneys are admitted in one state and have an office in another state but provide more than patent related services. When an attorney accepts a job as an in-house counsel, the potential for problems associated with the unauthorized practice of law similarly present themselves. Different states have different regulations and procedures that must be followed when an out-of-state attorney relocates to become in-house counsel. Although in-house counsel should always consult the rules and regulations of the state where their employer is located, a common thread in these rules and regulations is that the in-house lawyer must be a full-time employee and may only provide legal services for the employer (including parent, affiliate and subsidiaries). However, in-house attorneys with out-of-state registrations are frequently allowed, often even encouraged, to provide pro bono representation through recognized legal aid organizations. The American Bar Association has compiled links to information for each state, which is current through November 7, 2019. In-House Corporate Counsel Registration Rules (last visited December 14, 2019). What follows below is a discussion of how several states with higher populations of patent attorneys handle admission for out-of-state in-house counsel. We will review the rules for Virginia, Texas, California, New York, Illinois and Florida.

Last year was a big one for IPWatchdog! In 2019 we celebrated 20 years continuously on the Internet on October 9, with a big celebration at The Park in Washington, DC. We also hired Eileen McDermott to be our Editor-in-Chief. Eileen joined us at the beginning of 2019 and has managed to improve everything about our publication. With Eileen firmly…

Earlier today, the United States Patent and Trademark Office (USPTO) announced that it will no longer accept requests to participate in the IP5 Patent Cooperation Treaty (PCT) Collaborative Search and Examination (CS&E) pilot and will no longer accept new international applications. The reason for the USPTO no longer accepting these requests is because the Office has reached the total number of applications it can accept. The operational phase of the CS&E pilot went into effect on July 1, 2018 and was established for a two-year period running through June 30, 2020. During this two-year operational phase, each of the International Searching Authorities (ISAs) participating were quite limited with respect to the number of applications they could accept, which accounts for the USPTO’s inability to accept any additional applications with a full six months remaining in pilot program.

Executives that have decision making capacity within any innovation-based organization, whether a young startup or a Fortune 500 corporation, almost universally have little or no familiarity with patents from a legal perspective. Sometimes these leaders also have little familiarity with science or technology, and are hired because they are particularly adept in leading a rapidly growing company with hopes of an initial public offering (IPO), or because they have shown a particular facility with raising ever increasing rounds of capital from investors, or for their ability to make returns to early investors on their capital investments. Whatever the case, after a high-tech startup has outgrown the founders as being the top leaders in the C-suite, it is commonplace for the top decision makers in those high-tech companies to be far more familiar with the business and marketplace realities facing technology companies than the actual science and technology that made them high-growth darlings in the first place.

If you are an inventor new to inventing, you undoubtedly believe you’ve come up with an idea, or two or three, that could really be successful. That eternal optimism and belief in one’s self is precisely what every inventor needs to succeed. Now, if you are like the so many others who have walked in your footsteps before you, you’ve probably started researching how to patent an idea but have quickly become bombarded with information from a variety of sources.  “I have no clue where to start, and I have only a limited budget,” is a typical new inventor question. “What should be my first step?” The patent process can be complex and knowing where to begin and how to approach the process in a cost-responsible manner is not always easy, particularly for first time inventors. Of course, before proceeding it is worth first asking why it is you want a patent? The road to invention riches may, or may not, include obtaining a patent, although at least filing a provisional patent application can be and usually is a wise first step for a variety of reasons.

As we explained in Part I of this series yesterday, this December marks the end of a decade as well as 2019. In reflecting on the top 10 patent stories from 2010 to 2019, we acknowledge that there will undoubtedly be disagreements and mentioned yesterday that some big cases, like Mayo v. Prometheus and TC Heartland LLC v. Kraft Foods Group…

This year, we wind down not only the year, but the decade. So, it is time to reflect upon the biggest patent related stories of the last ten years. As with any Top 10 list or ranking, there will undoubtedly be disagreements. For example, be forewarned, Mayo v. Prometheus did not make the list, but rest assured the ineptitude of the Supreme Court with respect to patent eligibility is well represented. Before jumping to the top 10, represented in chronological order, I want to mention several honorable mention stories that were close but didn’t make the list. First, although completely inconsequential, on June 22, 2015, in Kimble v. Marvel, the United States Supreme Court rejuvenated a 50-year-old rule that limits collecting patent royalties after a patent expires. In that decision the Supreme Court cited the importance of stare decisis, saying that there needs to be an overwhelmingly important rationale for disturbing well settled law, which is laugh-out-loud funny given how they did precisely that when they completely rewrote all of patent eligibility law with Bilski, Myriad, Mayo and Alice this decade. I’m sorry, but the Supreme Court citing stare decisis shows just how out of touch and ignorant they have collectively become.