Posts Tagged: "patent prosecution"

New USPTO Tool Aims to Help IP Newbies Identify Their Rights

At the U.S. Patent and Trademark Office’s (USPTO) Women’s Entrepreneurship (WE) event in Naples, Florida, on Wednesday, January 18, USPTO Director Kathi Vidal announced that the Office has a new tool, called the Intellectual Property (IP) Identifier, intended to assist those “less familiar with IP” in identifying what IP they have and what rights they need to protect it. The tool also provides basic information on patents, trademarks, trade secrets and copyright. Vidal said in a press release Wednesday that anyone “considering starting a business or trying to grow one” should use the tool and that “it’s another example of our work to bring more people into the innovation ecosystem to increase American competitiveness, grow the economy, and solve world problems.” 

Apple Scores Win at CAFC in Split Ruling on Prosecution Laches

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled today in a split precedential decision authored by Judge Reyna that a district court properly found Personalized Media Communications’ (PMC) patent unenforceable due to prosecution laches. Judge Stark dissented, arguing that, although he agreed PMC’s delay in prosecuting its patent was “unreasonable and inexcusable,” Apple failed to establish that it suffered prejudice during the period of delay. PMC sued Apple in the U.S. District Court for the Eastern District of Texas in 2015, alleging that Apple’s digital rights management software, FairPlay, infringed claim 13 of PMC’s U.S. Patent No. 8,191,091. A jury found that Apple infringed at least one of claims 13-16, but in a subsequent bench trial the district court found that the patent was unenforceable due to prosecution laches under Hyatt v. Hirshfeld.

With Vaishali Udupa Set to Take the Helm as Commissioner for Patents, USPTO Leadership Now Lacks Prosecution Prowess

January 17 marks the first day in the tenure of the U.S. Patent and Trademark Office’s (USPTO’s) new Commissioner for Patents, Vaishali Udupa. Udupa, whose appointment was announced in December, comes to the USPTO after serving the last seven years as the head of litigation for Hewlett Packard Enterprise, where she was responsible for heading HPE’s intellectual property litigation and formulating case strategies. She replaces Acting Commissioner for Patents Andrew Faile, who served in that role since January 2021 and who will be retiring from the agency after 33 years upon Udupa’s installation as commissioner. Well-known within the patent community as an advocate for diversity and representation issues, Udupa joins the USPTO as a relative outsider. She comes in as the first full Commissioner for Patents since the retirement of Drew Hirshfeld, who served with the agency for two decades before he was first appointed to Commissioner in 2015. Those familiar with recent Patent Office history will recall that Commissioners immediately preceding Hirshfeld included Bob Stoll, Peggy Focarino, John Doll and Nick Godici. Stoll, Focarino, Doll and Godici each served in various capacities at the Office, including in high-level policy and regulatory positions, for more than a generation prior to becoming Commissioner.

IBM Cites Deliberate Strategy Shift as it Drops to Second Place in IFI Claims Patent Grant List for First Time in 29 Years

This week, patent data analytics firm IFI CLAIMS published its annual report of the top 50 U.S. patent recipients and the global 250 largest patent portfolios for 2022. The list provides a comprehensive snapshot of the patent landscape with insights into growing trends in the industry. One of the most eye-catching details is Samsung taking the first spot for U.S. patent grants in 2022, ending IBM’s 29-year reign at the top. The difference between the two is also surprisingly wide, with a gap of nearly 2,000 patent grants. According to an IFI press release, the number of U.S. patent grants was at its lowest since 2018 despite the number of patent applications reaching a record high. Since the beginning of the COVID-19 pandemic, the number of patent grants has decreased three years in a row.

CAFC Says USPTO Arguments for Rejecting Google Patent Application Lack Support in Record

The U.S. Court of Appeals for the Federal Circuit (CAFC) in a precedential decision today vacated a Patent Trial and Appeal Board (PTAB) finding that certain claims of Google, LLC’s U.S. Patent Application No. 14/628,093 were obvious. The CAFC opinion, authored by Chief Judge Moore, said the U.S. Patent and Trademark Office’s (USPTO’s) arguments on appeal “cannot sustain the Board’s decision below because they do not reflect the reasoning or findings the Board actually invoked.” Google’s patent application has to do with methods for filtering the results of an internet search query such that only age-appropriate results for a user are displayed. At issue were two prior art references: Parthasarathy, which “discloses methods of filtering search results by comparing a “search-query-intent score” to a predetermined safety threshold” and Rose, which is titled “System and Method for Improving the Ranking of Information Retrieval Results for Short Queries.”

The Campaign Against Pharma Companies Creates New Level of Uncertainty for all Patent Attorneys Re: Duty of Disclosure and Inquiry

The United States Patent and Trademark Office (USPTO) issued a Notice on the “Duties of Disclosure and Reasonable Inquiry During Examination, Reexamination, and Reissue, and for Proceedings Before the Patent Trial and Appeal Board” on July 29, 2022 (87 FR 45764-67), without a big reaction from the IP community. Patent attorneys mostly scratched their heads wondering what it means, especially as it was created in the backdrop of an attack on drug companies and drug pricing. The attack was motivated by a now largely discredited disinformation campaign by the advocacy group I-MAK (Initiative for Medicines, Access and Knowledge; an oxymoron), based on non-peer reviewed erroneous patent data analysis (see supporting false analyses by Univ. of Calif. Hastings Law School “Evergreen Drug Patent Search” and R. Feldman, “May your drug price be evergreen” J. Law and Biosciences Vol 5(3) Dec 2018, 590-647). Notwithstanding, the White House and certain members of Congress picked up I-MAK’s “Overpatented, Overpriced” faulty advocacy piece (2018; updated Sept 2022), and without checking the integrity of the data, quoted to it, and got to work.

Claim Drafting Issues for Biotech, Chemical and Pharma Patent Applications, Part II: From Indefiniteness to Negative Claim Limitations, Know Best Practices

In our previous blog post, we covered claim construction, Markush Groups, and dependent claim invalidation. As stated previously, while it is impossible to cover all of the various issues related to claim drafting for biotech, chemical and pharma patent applications, in Part II we will highlight some more of the most common issues that may come up, including changes to the law around indefiniteness; product-by-process and means plus function claims; and negative claim limitations.

Claim Drafting Issues for Biotech, Chemical and Pharma Patent Applications, Part I: Claim Construction, Markush Groups, Dependent Claim Invalidation

The fields of patent prosecution and patent litigation are ever-evolving, and with every new court decision there are lessons for patent practitioners. While it is impossible to cover all of the various issues related to claim drafting for biotech, chemical and pharma patent applications, here, and in future blog posts, we will cover a range of claim drafting topics of interest.

Practical Tips for Writing Ex Parte Appeal Briefs

When it comes to ex parte appeals, the kid gloves come off. It’s always nice to be easy-going with the examiner when working directly with that person, but if an impasse is reached and you need to appeal, then there’s no reason to go easy anymore. Don’t be disrespectful, but it’s okay to be rigorous and articulate. With that in mind, below are a few practical tips for writing an appeal brief to the Patent Trial and Appeal Board (PTAB). None of them are meant to serve as a magic bullet but they might help you get a leg up. And course, you need to have a decent case to appeal in the first place or nothing I say below is going to help very much.

WIPO Report: China Sees Massive Surge in IP Filings Across the Board

Worldwide IP filings increased by 3.6% in 2021, according to a report published November 21 by the World Intellectual Property Organization (WIPO). The increase came during a turbulent time for the world economy, at the height of the COVID-19 pandemic, as well as a global economic downturn. The biggest increase in patent filings was in Asia, where 67.6% of worldwide patent applications were filed. The United States saw a 1.2% decrease in filings and a 1% increase in trademark filings. Trademark applications grew at a much faster rate than patent applications, with a 5.5% in trademark filing activity. Industrial design filing activity also rose by 9.2% with the largest uptick again in Asia. China saw high rates of growth and is a global leader in sheer numbers across all indicators.

How to Ensure Your Retroactive Foreign Filing License Petition Isn’t Dismissed

As outlined in our article, The Good, the Bad and the Missing: Findings from a Review of the Data on Granted Retroactive Foreign Filing Licenses, Petition.ai’s subscribers’ most searched patent petition type is for retroactive foreign filing licenses (RFFLs). In the article, we highlighted that 71% of applications petitioning the U.S. Patent and Trademark Office (USPTO) for a RFFL eventually are granted. On average, it took 2.3 RFFL petitions over 1.4 years before obtaining the granted petition. We also pointed out 84% of granted RFFL petition decisions could not be found in the Public PAIR’s Image File Wrapper (IFW). Several months after we published the article, and after several communications with the Office of Petitions, these granted decisions were finally published in the IFW. This article examines the most common reasons why the USPTO dismisses RFFL petitions.

How to Use the USPTO Patent Public Search Tool

Do you want a simple way to search for specific patents and to get PDF copies of those patents? And do you want those PDF files to come straight from the United States Patent and Trademark Office (USPTO), so you can be confident that they contain any Certificates of Correction? Our first article in a series about the USPTO’s Public Patent Search (PPS) web page shows you how. PPS launched on December 1, 2021. It’s critical to get to know PPS now—especially if you want to get access to PDF copies of patents, because the USPTO removed the only other remaining method to get PDFs from their site just last month. Like any new technology, it can take some getting used to—but once you get the hang of it, it can make your life much easier. This short how-to article explains the essentials of using PPS to find and download specific patents and how to deal with the unique idiosyncrasies of PPS’s text versions of patents.

How to Rewrite Method-of-Treatment Claims to Conform to Japanese Patent Practice

In the United States, claims directed to methods of treating/diagnosing human disease are patentable. On the other hand, in Japan, such claims are unpatentable. Therefore, the applicant is required to rewrite or delete the claims when a patent application (e.g., Patent Cooperation Treaty application) containing such claims enters the Japanese national phase and is examined. In this article, I offer my personal views on how to rewrite method-of-treatment claims for Japanese examination. I will particularly focus on claims that may or may not conform to Japanese patent practice while past Japanese patent cases and the current patent system are taken into account.

Naming Inventors on a Patent Application May Be More Important than You Think

In a recent webinar moderated by Gene Quinn, President & CEO of IPWatchdog, Ludwig APC founder, Eric Ludwig, and Pattric Rawlins, partner at Procopio Cory Hargreaves & Savitch, discussed the topic of inventorship, including subjects such as naming inventor(s) on a patent and the implications of amending and contesting Inventorship. “Matters of inventorship and patent ownership are easy until they’re not—until there’s a fight or a disagreement over co-inventorship,” Ludwig explained. “If the parties have a good relationship and there is an amicable decision to correct an error or omission as to who is named as an inventor, then that’s an easy process. If it’s contested, that’s when problems arise.”

In Defense of Patentability of Mathematical Formulas and Relationships

“Mathematical Formulas and Relationships” fall under the “Abstract Idea” exception to the categories of patentable subject matter. Characterizing the “Mathematical Formulas and Relationships” as “Abstract Ideas” has led to misrepresentation of mathematical concepts in patent law. A “Mathematical Formula or Relationship” is a means of expression and should be inspected to extract what it expresses. Next, the content that is being expressed may be evaluated to determine whether the “Mathematical Formula or Relationship” is expressing a “Tool” or a “Model,” both of which are used for building machines and devising technological processes and neither of which needs to be categorically excepted from patentability.

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