Posts Tagged: "patent office"

On Thursday, Reuters reported that Google sent a letter to the U.S. Patent and Trademark Office (USPTO) criticizing proposed rule changes that the tech firm believes will stifle U.S. innovation. The internet giant expressly pointed to the field of artificial intelligence as a weak point for the USPTO and its patent examiners. The letter was signed by Halimah DeLaine Prado, General Counsel for Google.

In a precedential decision issued today, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated and remanded a Patent Trial and Appeal Board (PTAB) ruling that found all claims of a Volvo Penta patent unpatentable as obvious. The court found that the PTAB erred in its analysis of nexus between the claims and evidence of secondary considerations, as well as in its weighing of the objective indicia of nonobviousness.

U.S. patent practitioners have had a rocky relationship with the once-straightforward patent eligibility requirement under 35 U.S.C. 101 in recent years. Decisions such as Mayo and Alice upended the status quo, muddying the threshold test for patent subject matter eligibility. When dealing with difficult 101 rejections under this new status quo, it can sometimes help to think outside of the box about how to overcome a given rejection. This article presents a potential unlabeled “Step Zero” of the Subject Matter Eligibility Analysis which could help you overcome or avoid 101 rejections.

Last week, the U.S. Patent and Trademark Office (USPTO) hosted a webinar to discuss recent revisions to the interim process for Director review of America Invents Act (AIA) trial decisions by the Patent Trial and Appeal Board (PTAB). While the revised procedures include the delegation of the Director’s review authority to a pair of newly created panels, officials from the USPTO indicated that the Director’s discretion to review and opine upon issues in delegated cases meet the constitutional mandate laid out by the U.S. Supreme Court in U.S. v. Arthrex (2021).

The commercialization of space flight and space exploration has given rise to many inventions being deployed into outer space and onto celestial bodies. Inventors seeking to enforce their patent rights are challenged by the territorial nature of intellectual property laws. The current treaties do not protect the inventors’ rights against infringement.

Careless naming of inventors on a patent application can create confusion and add complexity to an already intricate process. The recent case of Blue Gentian, LLC v. Tristar Prod., Inc. is a great example where failure to properly list a co-inventor resulted in the only named inventor losing their patent rights…. To avoid a case similar to Blue Gentian v. Tristar, identify all inventors carefully and have them sign an assignment agreement, which transfers their rights to a single entity, such as an individual or the company that’s going to exploit the patent.

The past year has provided decades’ worth of developments across law and policy in the areas of artificial intelligence (AI) and machine learning (ML) technologies. If 2022 was the breakthrough year for accessible AI, then 2023 can so far be deemed as the first year of likely many more to come in the era of an AI inquisition. “After years of somewhat academic discourse,” reflects Dr. Ryan Abbott, “AI and copyright law have finally burst into the public consciousness—from contributing to the writer’s strike to a wave of high-profile cases alleging copyright infringement from machine learning to global public hearings on the protectability of AI-generated works.” Both the U.S. Copyright Office (USCO) and the U.S. Patent and Trademark Office (USPTO) are in active litigation over the eligibility of generative AI outputs for statutory protection. Additionally, both offices have held numerous webinars and listening sessions and conducted other methods of collecting feedback from the public as they work through policy considerations surrounding AI.

A little over halfway through 2023, and nearing the end of the Patent Trial and Appeal Board’s (PTAB’s) fiscal year, we can take stock of an administrative body that is settling into a decade of precedent while big changes still loom. Unlike prior years, where policy changes resulted in statistical swings for institution rates, outcomes, amendment practice, and the like, this year has been more of an extension of previous trends (though institution rates are still creeping higher).

Everyone’s talking about artificial intelligence (AI), but not everyone’s talking about it the same way. The tenor of the global conversation on AI ranges from dystopian fearmongering to evangelistic optimism. It’s vital to know the prevailing mood in the territory where you plan to launch your AI-powered service, app, or consultancy. In this article, we’ll briefly tour recent legislation, ethical conversations, and economic strategies to demonstrate how varied current thinking is on this revolutionary new technology. We’ll look at the current situation in the United States, Canada, Europe, China, Japan and beyond, as countries develop the policies, guidelines and laws necessary to regulate AI innovation without stifling creativity.

Recently, it has come to my attention that a system that utilizes a camera to capture images and software to run facial recognition is being rejected by the United States Patent and Trademark Office (USPTO) as an abstract idea. Why? Well, it unfortunately seems that the reason is simply because the purpose of this very tangible, working system is to identify people and charge them a fare. Because money is overtly involved, for reasons that make no rational sense, this is being deemed a business method, despite the facial recognition technology—and even though this is a clean, streamlined approach for conducting commerce.

This week in Washington IP news, while Congress continues its summer recess, the U.S. Patent and Trademark Office (USPTO) hosts several events, including on how to protect your IP in Southeast Asia. The Office also continues its #WEWednesday series, this week with an installment on how to increase the number of women in the STEM field. Elsewhere, the Peterson Institute for International Economics will look at what preventative policy measures are needed to prevent repeat bank failures in the United States.

The PREVAIL Act addresses current rules that enable gamesmanship at the Patent Trial and Appeal Board (PTAB) by huge corporations against small inventors, startups and other patent owners, and that increase invalidation rates. It introduces standing requirements, establishes a clear and convincing evidence standard to invalidate a patent, ensures a code of conduct is put in place for administrative patent judges (APJs), and more. While these changes are well-intended, due to the PTAB’s perverse incentive structure, the PREVAIL Act will only be marginally effective, and may have no real effect at all.

The Patent Trial and Appeal Board (PTAB) yesterday published the eighth installment of its Motion to Amend (MTA) Study, including updated information from March 15, 2019, through March 31, 2023. The study analyzes all motions to amend, including pre-pilot and pilot program motions. Of 469 total motions to amend patent claims since October 1, 2012, 83% (391) were denied; 10% (47) were granted; and 7% (31) were granted in part. According to a U.S. Patent and Trademark Office (USPTO) press release, this year’s report “provides the most comprehensive data regarding the pilot program to date, including additional information on MTA filings by technology.”

One of the many amici who have filed briefs in a Supreme Court case asking the Court to overrule its precedent in Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc. told the justices last week that the United States Patent and Trademark Office (USPTO) is abusing the so-called Chevron doctrine “to bypass the procedures that ensure that the agency considers the public interest.” The “Chevron doctrine” says courts should defer to administrative agencies’ interpretation of the statutes delegated to them. In the 1984 ruling in Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc., the Supreme Court held that a court “may not substitute its own construction of a statutory provision for a reasonable interpretation made by [the agency charged with administering the statute],” where the statute is ambiguous.

On July 25, the U.S. Court of Federal Claims (CFC) issued a ruling in Pulnikova v. U.S. dismissing monetary damages claims for alleged violations of 42 U.S.C. § 1983 by patent examiners and officials at the U.S. Patent and Trademark Office (USPTO). Although the CFC expressed its sympathy for the inventor’s frustrations, including the pro se filing of “appeal-books” containing thousands of pages responding to office actions, the court added that it lacked subject matter jurisdiction to award the type of damages sought.