Posts Tagged: "independent inventors"

In a letter provided last week to members of the National Council for Expanding American Innovation (NCEAI), Secretary of the U.S. Department of Commerce Gina Raimondo announced her role as Chair of the Council for Inclusive Innovation (CI2). I congratulate the Secretary for this extremely important role. Innovation should have no barriers, and both of these—a) innovation and b) the breaking down of unjust barriers—stand at the root of America’s success and identity. To aid the CI2 and all who create and execute innovation policy in our government, underrepresented inventors have an unresolved ask, and it involves breaking down a barrier identified by the very people who the CI2 and Congress desire to help. That ask is this: remedy the inventor’s second prong.

The 2022 class of inductees into the National Inventors Hall of Fame (NIHF), announced earlier this week, includes the inventors of the foundational technology for messenger ribonucleic acid (mRNA)-based vaccines, the Super Soaker, and Laserphaco cataract surgery. In all, 29 inductees will be honored at the Annual National Inventors Hall of Fame Induction Ceremony on May 5 of next year. Twenty-two of these inventors were announced in 2020.

Earlier today, U.S. Senators Thom Tillis (R-NC) and Patrick Leahy (D-VT), the Ranking Member and Chair of the Senate Intellectual Property Subcommittee, introduced a pair of bipartisan bills that the Senators say are aimed at improving the participation Americans from all backgrounds in the patent system and ensuring that the public knows the true owners of patents. If enacted, the Unleashing American Innovators Act (UAIA) would require the Director of the United States Patent and Trademark Office (USPTO) to establish another satellite office within three years somewhere in the Southeastern region of the nation, which the bill specifically defines as Virginia, North Carolina, South Carolina, Georgia, Florida, Tennessee, Alabama, Mississippi, Louisiana, and Arkansas. Of course, given that the main campus of the USPTO is located in Alexandria, Virginia, it would seem unlikely that Virginia would be the final destination of any Southeast Region satellite office. The UAIA would also require the Director to determine within two years whether any additional regional satellite offices are necessary to— in the words of the bill— “achieve the purposes described in section 24 23(b) of the Leahy-Smith America Invents Act… and increase participation in the patent system by women, people of color, veterans, individual inventors, or members of any other demographic, geographic, or economic group that the Director may determine to be underrepresented in patent filings.”

Now that the 10th anniversary of the America Invents Act (AIA) has passed, we can look back not only at the past decade, but also the reactions of various interested parties and how they responded to that anniversary. There were two revolutionary amendments to U.S. patent laws enacted on September 16, 2011; one relating to the U.S. changing from first-to-invent to first-to-file, the other relating to the creation of the Patent Trial and Appeal Board (PTAB) and three new procedural mechanisms to invalidate issued patents. While from a philosophical and practical point of view, the change from first-to-invent to first-to-file had the largest impact on patent practice, it has essentially become a footnote in patent history. Yes, the United States had a bizarre system that allowed the second filer in some instances (i.e., the first to invent) to obtain a patent over the first-to-file, but that almost never happened. And now, the United States has a strange, hybrid first-to-file system that still theoretically allows the first-to-invent to prevail in even rarer circumstances, but that change became easily baked into the system, because overwhelmingly, the first-to-invent did file first. The real story of the change to first-to-file is that much more is now prior art, including foreign filed applications as of their foreign filing date, typically, which continues the theme of the last 15+ years of making it harder to obtain and keep patent rights in the United States.

In March of this year, a bipartisan group of senators asked Drew Hirshfeld, who is Performing the functions and duties of the Director of the U.S. Patent and Trademark Office (USPTO), to “publish a request for information on the current state of patent eligibility jurisprudence in the United States, evaluate the responses,” and provide the senators with a detailed summary of the findings in order to assist them as they consider appropriate legislative action. The letter gave a deadline of March 5, 2022 to submit a report on the topic. Now, a Federal Register Notice (FRN) scheduled to be published July 9 is requesting answers and input from stakeholders to 13 questions/topics to assist in that effort, according to a publicly posted draft of the FRN.

On May 20, the U.S. Court of Appeals for the Ninth Circuit affirmed the decision of the United States District Court for the District of Nevada, holding that requests for information by the United States Patent and Trademark Office (USPTO) to an individual are exempt from the Paperwork Reduction Act (PRA). Gilbert P. Hyatt is the named inventor on hundreds of inter-related patent applications that encompass over 100,000 claims. See Generally Hyatt v. U.S. Pat. & Trademark Off., 797 F.3d 1377 (Fed Cir. 2015). Both Hyatt and the American Association for Equitable Treatment (AAET) contend that patent applicants should not have to comply with certain USPTO rules because, they allege, the USPTO is violating the PRA.

Senate Majority Leader Chuck Schumer (D-NY) this week filed the United States Innovation and Competition Act of 2021 as a substitute amendment to the Endless Frontier Act, thereby bringing that bill together with a number of other bipartisan bills, including the Inventor Diversity for Economic Advancement (IDEA) Act, which passed out of the Senate Judiciary Committee last month. The IDEA Act is aimed at improving the U.S. Patent and Trademark Office’s (USPTO) demographic data-gathering efforts to better understand the rates at which women, people of color, and lower-income individuals are inventing and patenting. The Innovation and Competition act is primarily aimed at out-competing China in critical technology sectors.

Last week, the European Patent Office (EPO) announced six U.S. researchers as finalists for the European Inventor Award 2021. The EPO began the prestigious European Inventor Award in 2006 to honor individual and teams of inventors in five categories, i.e. Industry, Research, SMEs, Non-EPO countries and Lifetime achievement. The finalists and winners are selected by an independent jury of experts in the fields of business, politics, science, academia and research. In addition, a Popular Prize is awarded based on a public vote wherein the public selects a winner from among 15 finalists through online voting. U.S. researcher Gordana Vunjak-Novakovic was nominated for a lifetime achievement award for devoting her career to “developing an ex vivo tissue engineering technique for more precise tissue cultivation.” The remaining U.S. finalists were nominated in the “Non-EPO countries” category. In particular, Kim Lewis and Slava S. Epstein were nominated for their development of a device for separating and incubating single strains of bacteria in nature, Sumita Mitra was nominated for pioneering use of nanotechnology in dentistry, and Bo Pi and Yi He were nominated for developing the first fingerprint sensor capable of detecting both a fingerprint’s pattern and the presence of blood flow.

Starting a business is steeped with uncertainty, especially during a global pandemic. Small business owners are constantly running through the scenarios: Can I make payroll? Will I recoup my investment? Can I change my community for the better? There are plenty of systems at play that tell them, “No.” It’s too difficult to get a loan; the commercial real estate market is too competitive; advertising and marketing is too expensive. Even so, there’s one system that sings a resounding, “Yes!” That’s America’s intellectual property system.

Throughout February, we have recognized some of the earliest Black women inventors, beginning with Martha Jones in 1868 and her patent directed to a corn husker, ending with Sarah Boone’s 1892 patent for the Ironing Board. Black women have continued to play an important role in driving innovation during the twentieth century and through today.

Martha Jones of Amelia County, Virginia, is believed by many to be the first black woman to receive a United States patent. Her application for an “Improvement to the Corn Husker, Sheller” was granted U.S. patent No. 77,494 in 1868. Jones claimed her invention could husk, shell, cut up, and separate husks from corn in one operation, representing a significant step forward in the automation of agricultural processes.

Inventor advocacy group US Inventor has filed an amicus brief in support of a petition to the U.S. Supreme Court asking the justices to clarify “[w]hether the Federal Circuit’s “heavy presumption” line of cases or its “holistic” line should govern claim construction. The petition was filed in December by Akeva, LLC, owner of a portfolio of athletic footwear patents, and is an appeal from a July 2020 nonprecedential Federal Circuit decision, Akeva, LLC v. Nike, Inc. In that case, the Federal Circuit upheld a district court’s grant of summary judgment of noninfringement to a number of defendants—including Asics, Nike, adidas America, Inc., New Balance Athletic Shoe, Inc., and Puma North America, Inc.—finding in part that the district court had “correctly construed the claim term ‘rear sole secured’ to exclude conventional fixed rear soles.”

Eleven amicus briefs were docketed during the last two business days of 2020 in United States v. Arthrex, Inc., et al., which is scheduled for oral argument on March 1, 2021. Several of the briefs were filed by independent inventors, who implored the Court to acknowledge the stories of entrepreneurs and small inventors who have been adversely impacted by the Patent Trial and Appeal Board (PTAB), in part because Administrative Patent Judges (APJs) are presently unaccountable.

Recently, the U.S. Patent and Trademark Office (USPTO) published a Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board (PTAB), seeking “focused public comments, on appropriate considerations for instituting America Invents Act (AIA) trials.” Comments are due on November 19. US Inventor provides a streamlined tool for submitting comments here. This is a big deal for inventors. We desperately need help. We simply cannot participate in the patent system until the PTAB is regulated to provide predictability with respect to the validity of our issued patents. Director Iancu has made a valiant effort to restore balance, but it has failed thus far. As it stands, we cannot use our issued patents because it is utterly impossible to predict whether or not they survive the PTAB – no matter how carefully we follow the existing laws and procedures.

In August, Apple, Google, Cisco and Intel filed a lawsuit against the U.S. Patent and Trademark Office (USPTO) in the Northern District of California challenging the Patent Trial and Appeal Board’s (PTAB’s) adoption of the NHK-Fintiv discretionary denial framework as procedurally invalid under the Administrative Procedures Act (APA), and arguing that the PTAB’s application of them violates the America Invents Act (AIA). Shortly after, a number of “Small Business Inventors” (US Inventor; 360 Heros, Inc.; Larry Golden; World Source Enterprises, LLC; Dareltech LLC; Tinnus Enterprises, LLC; Clearplay, Inc.; and E-Watch, Inc.) filed a Notice of Motion and Motion to Intervene and related Complaint in the case. Now, US Inventor has filed its reply brief, in which it contends that “AIA trial reviews have stifled innovation, crushed inventor morale, and created a lopsided process whose use alone (irrespective of individual merits) can destroy innovative businesses”. The organization is asking the court to enter a temporary restraining order and preliminary injunction in order to preserve “the one lifeline giving any hope of escaping this ongoing catastrophe for American innovation and fair competition.”