Posts Tagged: "patent office"

At today’s Heritage Foundation event in Washington, D.C., titled Restoring American Leadership in Patent Law and Innovation Policy, former U.S. Patent and Trademark Office Director (USPTO) Andrei Iancu began by lamenting the failure of decision makers to make the connection between intellectual property and innovation. Increasingly, policy makers think innovation just happens, Iancu explained, with too many believing monetization happens after the fact, rather than driving innovation. “Without IP, the free market does not participate, or does not participate to scale,” Iancu told the Heritage audience. Laurie Self, Senior Vice President and Counsel, Government Affairs, Qualcomm, agreed with Iancu and added that, without a strong patent system, there is no opportunity to maintain a strong innovation leadership position. Presumably alluding to developments such as the Biden Administration’s support for waiving IP rights under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) related to COVID-19 inventions and the recent Executive Order on Competition, Self said: “We are seeing a series of policies that if implemented would undermine our system… this cognitive dissonance is a threat.”

Oral proceedings before the EPO Boards of Appeal can be held by videoconference, even without the consent of the parties, during a general emergency, according to a July 16 decision by the EPO’s Enlarged Board of Appeal (G1/21). The question about videoconferencing was referred to the EBA in March by a Technical Board of Appeal in Case T-1807/15. The EPO introduced hearings by videoconference (generally held via Zoom) last year as a result of the pandemic and travel restrictions. Since January 2021, some oral proceedings have been conducted without the consent of the parties. The EBA, which comprises members of the Boards of Appeal and judges from EPC member states, was asked to rule on whether this was compatible with the right to oral proceedings as enshrined in Article 116(1) of the European Patent Convention. The EPO claims that videoconference hearings are necessary to manage the workload and ensure efficient delivery of justice during the pandemic. They also mean that parties throughout the EPC’s 38 member states can participate on equal terms, without having to travel to Munich or The Hague.

Laches is an equitable defense that may be raised in a patent-related proceeding. If a defending party can show that a patent holder exhibited unreasonable delay that caused prejudice to the defending party, the patent holder may be barred by laches from asserting the right.While the examples of “reasonable” and “unreasonable” delay provided in Symbol Techs. are informative (as are the fact-specific analyses from the other cases), a bright-line test for “unreasonable delay” had yet to be established in the prosecution laches context. That is, until the June 2021 decision of Gil Hyatt v. Hirshfeld (Fed. Cir. 2021). This case pertained to the laches defense raised by the USPTO when Hyatt filed an action under 35 U.S.C. § 145 to obtain four patents subsequent to receiving an affirmance of rejections of various claims at the Patent Trial and Appeal Board (PTAB).

IPWatchdog and LexisNexis held a “Conversation with the Commissioner of the USPTO” today, in which Drew Hirshfeld, the U.S. Patent and Trademark Office (USPTO) Commissioner for Patents, Performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director, explained that, while he would prefer to wait until a political appointee is heading the Office to move ahead on substantive reforms, he will consider moving forward on important initiatives if necessary. “I’m trying to run the agency as if I was in this permanently, knowing I’m not and I won’t be, because I think that’s the right thing to do for the system,” Hirshfeld said. “If we’re going long enough without a nominee then maybe I need to move forward on things.”

After last week’s spike in complaints, things returned to steady-state this week, with plaintiffs filing 58 complaints and patent challengers filings 26 petitions (one post grant review [PGR] and 25 inter partes reviews [IPRs]). There were four denials under Fintiv at the Board, all related to upcoming trial dates and a stipulation the Board found fault with in Cisco Systems v. Estech. A surprising number of challenges against semiconductor-related patents being asserted by NPEs (most with litigation funding backing, such as by Starboard Value, Vector Capital, and Cambridge Partners) were instituted this week, perennial filers K.Mizra and Blue Spike had new complaints, Coinbase filed a declaratory judgment against frequent filer and NPE Modern Font Applications, and there were a number of pharmaceutical litigations initiated that bear scrutiny.

It was a busy week for patent filings in the district courts, with 113 complaints filed, fueled particularly by nearly 50 (!) IP Edge complaints, primarily filed in the Western District of Texas’s Waco Division; the Patent Trial and Appeal Board (PTAB), on the other hand, was slightly down, with 29—the bulk coming from Intel counterpunching with seven challenges against AQUIS-asserted patents. 

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.

Gilbert Hyatt filed hundreds of patent applications across fields such as machine control, audio and image processing, and computer technology. While many such applicants can similarly claim to have filed at least so many applications in these areas, Hyatt is perhaps somewhat unique in that: (1) he is a pro-se inventor; (2) he filed the vast majority of the applications shortly before the 1995 General Agreement on Tariffs and Trade (GATT) transition date when patent terms transitioned from 17 years from issuance to 20 years from filing; and (3) his applications are long with complex and extended priority chains. Hyatt has been characterized by some (e.g., Judge TS Ellis) as a “prolific inventor”. For others, Hyatt brings “submarine patents” to mind.

In a recent Supreme Court decision in Arthrex v. Smith & Nephew, the Court held that the unreviewable authority wielded by Administrative Patent Judges (APJs) at the Patent Trial and Appeals Board (PTAB) of the U.S. Patent & Trademark Office (USPTO) exercises authority of a “principal officer” and is incompatible with their appointment by the Secretary of Commerce to an “inferior office.” Instead of declaring their appointment unconstitutional, the Court’s remedial ruling was aimed at making PTAB judges “inferior officers.” It did so by a ruling interpreting 35 U.S.C. § 6(c) as enabling the USPTO Director to “review decisions rendered by APJs,” subordinating them to the Director’s full supervision.

As the United States today celebrates the 245th anniversary of its independence, the intellectual property (IP) community will tomorrow be celebrating the 75th anniversary of the Lanham Act, which was signed into law by President Harry S. Truman on July 5, 1946. The Lanham Act was introduced by Fritz Garland Lanham, who was born in Weatherford, Texas in 1880. He was elected to Congress in 1919 and reelected 13 times before he retired in 1947, the year the Lanham Act was enacted. Lanham’s father was a lawyer and served as a Congressman as well as the 23rd governor of Texas.

This week, the U.S. Patent and Trademark Office announced that it would be implementing an interim rule at the agency in response to the U.S. Supreme Court’s late June decision in Arthrex v. Smith & Nephew. Today, the Office held a Boardside Chat with Drew Hirshfeld, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO; Scott R. Boalick, Chief Administrative Patent Judge; Jacqueline W. Bonilla, Deputy Chief Administrative Patent Judge; and Scott C. Weidenfeller, Vice Chief Administrative Patent Judge to explain how the interim process will work and answer questions submitted by the public. Janet Gongola, Vice Chief Judge for Engagement at the PTAB, moderated the panel.

The U.S. Senate Committee on the Judiciary’s Subcommittee on Intellectual Property recently held hearings on the topic of Protecting Real Innovations by Improving Patent Quality. The Subcommittee is to be commended for seeking practical solutions to improve patent quality. To this end, the author respectfully recommends that the Subcommittee and the intellectual property (IP) community take a close look at the United States Patent and Trademark Office (USPTO)’s revised Performance and Appraisal Plan (PAP) for patent examiners.

Almost two years ago, the Brazilian Patent and Trademark Office (BPTO) launched a plan to reduce the backlog in examination of patent applications, which has had positive results. As part of this important initiative, at the beginning of 2021, the BPTO published its action plan for the year indicating its intentions to increase the efficiency of services offered by the institution via new performance goals. The plan to combat the backlog has already resulted in a reduction of more than 60% of patent applications pending for decision. This has had a positive effect on the credibility of the Brazilian patent system domestically, but also has contributed to the improvement of the national and international attractiveness of the sector, which will possibly provide a greater incentive to protect patents in Brazil.

During the Senate Judiciary’s Subcommittee on Intellectual Property hearing, titled Protecting Real Innovations by Improving Patent Quality, held on June 22,  Jorge Contreras, Presidential Scholar and Professor of Law at the S.J. Quinney College of Law of the University of Utah, testified under oath that patents are effectively the same thing as products, and seemed to suggest that executive fraud unrelated to patents must make the patents fraudulent too. This, of course, is a fallacy. It shows a fundamental and deep misunderstanding of what patents are and how they work, and completely misrepresents law and logic. If taken seriously, Contreras’ testimony would destroy the value of virtually every patent portfolio and further chill investment in new technologies. It is an alarming position coming from a patent lawyer and credentialed law school professor who claims he is “intimately familiar with the topic of today’s hearings.”

How much detail is needed in a patent application for a software-based invention? Software patents present some unique challenges that many other kinds of patent applications do not need to contend with, one of them being the level of disclosure and care in drafting needed to avoid indefiniteness issues. While source code is not required in most cases, a growing body of case law indicates that insufficient detail about the algorithms underpinning the invention could render the patent claims indefinite, meaning that the scope of the claimed invention is too ambiguous. If the patent examiner deems the disclosure to be inadequate during examination, indefiniteness could prevent a patent from issuing. In the case of an already-issued patent, indefiniteness could render the claims unenforceable.