Posts Tagged: "patent office"

On June 29, 2021, the Supreme Court issued its long-awaited decision in Minerva Surgical, Inc. v. Hologic, Inc. in which it clarified the proper limits of the centuries-old doctrine of assignor estoppel, which operates to prevent an inventor who assigns a patent to another for value from later claiming that the patent assigned is invalid during litigation, holding that the doctrine only applies when “the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent.” The decision underscores the need to keep in mind a number of factors when preparing and executing patent assignments.  

The U.S. Court of Appeals for the Federal Circuit today issued two precedential decisions and one nonprecedential decision in cases involving Teva Pharmaceuticals and Eli Lilly, delivering wins and losses for each company. The cases relate to “humanized antagonist antibodies that target calcitonin gene-related peptide (‘CGRP’)” and methods of using such antibodies. All three cases were heard by Judges Lourie, Bryson and O’Malley, with Judge Lourie authoring the decisions.

Recently, USPTO Commissioner for Trademarks David Gooder wrote on the USPTO Director’s Forum Blog that registrations for U.S. trademarks are up 63% from the same period in 2020. The USPTO received over 92,600 trademark applications in December 2020 alone. This has caused delays in a number of stages in the trademark process, including a current pendency of 75 days (as of July 5, 2021) for the Pre-Examination Unit of a TEAS application. This is compared to a ten-day target. The USPTO also reached a dubious milestone in Q4 2020, breaking the 1 million mark in pending applications, with 1,002,768 in the queue. This has affected trademark registrants from the very beginning of the application process. First Action Pendency (months) in Q1 of 2020 was 2.8 months. For Q1 2021, the pendency was up to 4.0 months, with Q2 trending to almost five months for First Action. Delays like these affect the ability of trademark owners to protect their brands, could cause an increase in consumer confusion and impact the value of legitimate trademarks.

Numbers were relatively stable last week, with the district courts seeing 57 new patent filings and the Patent Trial and Appeal Board (PTAB) seeing 25 petitions (two post grant reviews [PGRs] and 23 inter partes reviews [IPRs]). A big chunk of the PTAB action was against Ocean Semiconductor LLC by Applied Materials, Inc., who filed five against the litigation financed entity (Fullbrite Capital Partners, LLC), and six filed by Lumenis Ltd. against BTL Healthcare Technologies A.S in an apparent litigation-free freedom-to-operate action. Bank of America filed a few challenges against NantWorks; Rothschild subsidiaries filed a number of district court complaints; and two IPRs were filed and instituted against the IPValue Management, LLC-run Monterey Research semiconductor suit—one by Qualcomm, one by STMicroelectronics; and ditto for two by Freeman Capital Partners-run FG SRC LLC—one by Xilinx and one by Intel and Xilinx. 

A patent owner has filed a lawsuit in the United States District Court for the Western District of Tennessee against former U.S. Patent and Trademark Office (USPTO) Director Michelle Lee, and a number of other former USPTO officials, for allegedly depriving the plaintiffs “of their valuable property rights in quasi-judicial administrative proceedings before the USPTO’s Patent Trial and Appeal Board (‘PTAB’).” The complaint further claims that PTAB proceedings have been “tainted by various improprieties and underhanded tactics, designed to stack the deck against [plaintiffs] and in favor of their far more powerful opponents. In short, the system had been rigged all along, due to the unconstitutional actions of the Defendants named herein.”

March 16, 2013 marked a watershed date in the practice of patent law as the effective date of the Leahy-Smith America Invents Act (AIA). Per Section 3 of the AIA, patent applications having an effective filing date prior to the effective date of the AIA are subject to first-to-invent/ pre-AIA law, whereas applications claiming an effective filing date after the effective date of the AIA are subject to the first inventor-to-file provisions of the AIA, including post grant administrative challenges introduced as part of the AIA. Not surprisingly, there were a number of patent applications filed that bridged the March 16, 2013 AIA effective date. These so-called “transition applications” were filed after March 16, 2013 but claimed priority to an application filed before March 16, 2013. These applications would not be subject to the provisions of the AIA unless the application contained a claim that did not properly find support in the pre-AIA priority document(s). The Patent Trial and Appeal Board (PTAB) is taking aim at these transitional applications, and patents issuing therefrom, by casting a wide net with respect to eligibility under the AIA and closing apparent loopholes such that patent owners cannot reverse a finding that a patent is subject to AIA law, even if all of the claims of said patent are entitled to a pre-March 16, 2013 priority date.

To capture attention in the crowded new field of cannabis-related goods and services, many companies are using other companies’ brands to promote their goods and services, including puns in the edibles space. Not surprisingly, brand owners are responding with lawsuits, alleging trademark infringement, dilution, and unfair competition among other claims. The focus of these lawsuits is generally quick injunctive relief to stop harm to the brand, rather than damages. This makes sense because of the uncertainty of collecting from companies who do not rely on the traditional finance services industry. But injunctive relief is not guaranteed without demonstrating the four preliminary injunction factors: (1) likelihood of success on the merits, (2) likelihood of irreparable harm in the absence of preliminary relief, (3) the balance of equities, and (4) the public interest. This article focuses on the first two of these factors.

With South Africa’s patent office having recently granted the first patent to an AI inventor, and an Australian court ruling in favor of AI inventorship, it’s time to review how we got here—and where we’re going. The number of artificial intelligence (AI) patent applications received annually by the United States Patent and Trademark Office (USPTO) grew from 30,000 in 2002 to more than 60,000 in 2018. Further, the USPTO has issued thousands of inventions that utilize AI. According to a 2020 study titled “AI Trends Based on the Patents Granted by the USPTO”, the total number of AI-related patents granted by the USPTO per year increased from 4,598 in 2008 to 20,639 in 2018. If AI-related patent applications and grants are on the uptick, what was the problem with DABUS?

During the Patent Public Advisory Committee (PPAC) quarterly meeting held today, participants provided an update on the Director Review process under the Supreme Court’s Arthrex v. Smith and Nephew ruling, among other announcements. Patent Trial and Appeal Board (PTAB) Senior Advisor and Judge Linda Horner noted that, since the ruling, 14 timely requests for Director Review have been received; 11 of those were for a batch of related inter partes reviews (IPRs). Hirshfeld this week issued two decisions on the first two requests, denying both; the rest remain pending.

In response to articles on implementing AI into our patent system, and specifically to the suggestion that we should consider developing AI to replace some aspects of human decision making in the patent space, we have received a number of comments and even objections to the idea. A common objection: it is likely impossible and impractical for us to advance AI to the point where it can make reliable subjective decisions (e.g., infringement and obviousness), let alone reliably replace human decision making. At the outset, we challenge the presumption of this argument.  

The Federal Court of Australia on Friday ruled in Thaler v Commissioner of Patents [2021] FCA 879 that an artificial intelligence (AI) system can be an inventor under the Australian Patents Act. The Honorable Justice Beach, in a very thorough judgment, set aside the decision of the Deputy Commissioner of Patents that patent application no. 2019363177 did not comply with reg 3.2C(2)(aa) of the Patents Regulations 1991 (Cth), which “requires that the applicant, who in this case is Dr Stephen Thaler, must provide the name of the inventor of the invention to which the application relates.” The Deputy Commissioner of Patents said that Thaler could not name an inventor because an AI simply cannot be an inventor under the Act. But Justice Beach said “that position confuses the question of ownership and control of a patentable invention including who can be a patentee, on the one hand, with the question of who can be an inventor, on the other hand.”

Twenty years ago, the U.S. Supreme Court ruled for the first time that plants could be protected with utility patents. J.E.M. Ag Supply, Inc., v. Pioneer Hi-Bred International, Inc. 534 U.S. 124 (2001). Forty-one years ago, the U.S. Supreme Court ruled for the first time that living organisms were patentable. Diamond v. Chakrabarty, 447 U.S. 303 (19080). Before these landmark cases, plants and living matter were not protectable with patents. The rationale of the Supreme Court in J.E.M. and Chakrabarty supports patent protection for inventions by non-humans, i.e., artificial intelligence inventors.

This July has been a landmark month for the commercial space sector thanks in large part to the determination of two tech billionaires: Richard Branson, business magnate and founder of the Virgin Group; and Jeff Bezos, the former CEO of e-commerce titan Amazon.com. Both of these icons of business entrepreneurship reached the outer limits of Earth’s gravity to slip into space for a brief moment in recent weeks—Branson in the VSS Unity, owned by his Virgin Galactic spaceflight company, and Bezos in the New Shepard craft developed by his Blue Origin firm. The successful spaceflights for both Branson and Bezos are breathing life into the nascent space tourism industry, as many others with the wealth to pay for a seat to outer space are lining up for the opportunity.

South Africa’s patent office has granted the first patent for an invention conceived by an artificial intelligence (AI) inventor, DABUS. The country does not have a substantive patent examination system, and thus the significance of the grant may not be as great as it would be in other jurisdictions—but the DABUS team is celebrating. The patent is for “a food container based on fractal geometry,” and was accepted by South Africa’s Companies and Intellectual Property Commission on June 24. The notice of issuance was published in the July 2021 Patent Journal.   

In a relatively subdued week, the Patent Trial and Appeal Board (PTAB or Board) saw 35 challenges and the district courts 53 new patent filings. Those challenges included a slew against Centripetal Networks and Stratosaudio patents, as well as a number of memory authentication district court campaigns launched, including one major new non-practicing entity (NPE) suit by Causam Enterprises against Ecobee, Itron, Residio, and Alarm.com for patents related to power consumption.