Posts Tagged: "patent prosecution"

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.

A large number of patent applications are rejected in the initial stage of filing via the Patent Cooperation Treaty (PCT) route. One of the most common reasons for such a rejection is an error in the drawings appended to the patent applications. Notably, patent drawings not only enhance the visual appeal of an invention but also help in better understanding the invention. As per the PCT guidelines, patent drawings should be included wherever applicable. This implies that it is essential to submit the appropriate formal patent drawings with a patent application. Failure to do so can result in patent rejection followed by an office action (OA) from the designated patent examiner. But here are the two key steps for overcoming rejections received on PCT drawings.

The United States Patent and Trademark Office (USPTO) issued its 11 millionth patent today, May 11, 2021. America’s first (unnumbered) patent was issued in July of 1790, and patents were numbered consecutively starting in 1836. From there, the pace of patenting accelerated, with 100,000 patents issued by early 1870 and the 1 millionth issued in 1911. Since 2010, the USPTO has issued an average of over 300,000 new patents annually, as inventors and firms around the world have look to the United States as the premier global patent location.

Companies spend considerable sums of money to develop patent portfolios that protect their valuable innovations. Given the large stakes, it behooves companies to obtain high quality patents. I’ll start this article with an example of a patent mistake that resulted in a bad outcome for the patent owner. iRobot lost a patent infringement claim against a competitor that perhaps could have been avoided. The issue was that important concepts of the claims were not described in the patent, and the meaning of the claims was not clear. The independent claims included the phrase “instructions configured to cause a processor” but the only use of “instructions” in the patent related to operational instructions for a user. Because the patent did not sufficiently describe the “instructions” in the claims, iRobot did not obtain its desired claim construction, and the Federal Circuit found no infringement. It seems plausible that better claim drafting might have avoided these errors and achieved a better outcome for iRobot.

While researching the U.S. Patent and Trademark Office’s (USPTO) treatment of final Office actions for previous articles (Part I, Part II, Part III, Part IV, and Part V), we noticed USPTO petition pendency and grant rate statistics often differed from results of our analysis. Applicants relying on the pendency information provided by the USPTO Data Visualization Center prior to January 2021 would expect their petitions filed after final to be decided on average in two to three months. However, our prior publications document decisions often inexplicably delayed to such an extent that applicants were compelled to take other action to avoid abandonment of their applications. The USPTO has updated its after final petition data twice since the publication of Part V – now showing a 12-month rolling average processing time of greater than 180 days. A six month delay in processing such petitions renders any resulting decision as futile. Here, we investigate petitions decided during the fourth quarter of 2020 to determine why petition pendency has skyrocketed and what this means for applicants seeking to challenge an Examiner’s premature determination of finality.

Courts have long held that “an old product made by a new process is not novel and cannot be patented.” The validity of  product claims have generally focused on the product and not the particular process of making the product, as illustrated in Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326 (Fed. Cir. 2020). However, in biotechnology (e.g., recombinant and cellular products), the process or source from which a product is produced can confer distinct, yet difficult to define, structural and/or functional differences. Here, we discuss exemplary cases, and assess whether process-related limitations can still distinguish a claimed product over the art in certain circumstances.

Patent categories were established more than 100 years ago. There are dozens of categories that reflect industry at the time: gears, sewing machines, and bicycles, to name a few. While these are certainly useful categories, the patent classification system has not kept up with the times. It leaves out many modern technologies, like inventions that are based on machine learning or blockchain. There are no categories for these innovations, which are reshaping our world in real-time. The problem? When patent classifications don’t actually classify inventions, we have no way of knowing how many inventions in these categories are being registered.

On March 30, Judge Sean D. Jordan of the United States Federal District Court for the Eastern District of Texas, issued a rather atypical Order, at least for the Eastern District of Texas. A defendant prevailed on a motion to dismiss. See Repifi Vendor Logistics, Inc. v. IntelliCentrics, Inc., Civil No. 4:20-CV-448-SDJ. Those familiar with patent litigation know that, over many years, the Eastern District of Texas has been a notoriously favorable venue for patent owners to pursue patent infringement lawsuits against alleged infringers. One of the things that has made the Eastern District of Texas so compelling from the patent owner perspective is the extraordinary reluctance of judges to rely on procedural motions to dispose of lawsuits in favor of defendants. It is no exaggeration to say that virtually everything that is filed in the Eastern District of Texas will go to trial unless it settles, which can raise the pressure on defendants to settle, sometimes for nuisance value alone.

As previously reported on this blog, a bipartisan group of senators recently reintroduced a bill in Congress called the “Inventor Diversity for Economic Advancement Act of 2021,” or the ‘‘IDEA Act,’’ S.632; H.R.1723.  The Senate Committee on the Judiciary is scheduled to hold its hearing on the IDEA Act this Thursday morning.  Citing a report that “only 22 percent of all U.S. patents list a woman as an inventor,” the sponsor’s press release explains that the bill’s purpose is “to close the gap that women, minorities, and others face when procuring patent rights in the United States.” To advance this putative goal, the bill adds Section 124 to the Patent Act that will require the U.S. Patent and Trademark Office (USPTO) to annually collect and report personal demographic data from patent applicants including “gender, race, military or veteran status, and any other demographic category that the Director determines appropriate, related to each inventor listed with an application for patent.”  Accordingly, the USPTO Director would be granted plenary authority to collect information on “any other demographic category” such as those the sponsors have already identified in their previous version of the bill, namely: ethnicity, national origin, sexual orientation, age, disability, education level attained, and income level…. Unexpectedly, however, this bill would actually harm small business and underrepresented inventors. As explained below, this legislation is contrary to patent law; it proposes a dangerous method for injecting identity politics at the USPTO, where it never has nor should play any role, and where there is no evidence that the USPTO has displayed prejudice or discrimination.

On March 16, the European Patent Office (EPO) released the Patent Index 2020, which gives the public a snapshot view of the filing activities going on at the EU’s patent granting agency during the past year. Total patent application filings declined only slightly during 2020 to just over 180,000 patent applications, a reduction of 0.7% compared to the EPO’s 2019 patent filing totals. Despite a 4.1% decrease in patent application filings at the EPO, the United States still held the top spot among individual countries with 44,293 EPO patent filings. Patent application filing totals also dropped in Germany (down 3% to 25,954 filings) and Japan (down 1.1% to 21,841). The United States, Germany and Japan were ranked first, second and third, respectively, in the EPO Patent Index 2020.

You have probably heard of a company called Apple. They sell computers, watches, tablets and all kinds of accessories. You have probably also heard that Apple was engaged in a patent war with Samsung Electronics, which was fought all over the world and finally resolved after many years of litigation. What you might not be familiar with is the fact that, in the United States, it was not Apple’s utility patent portfolio that was found infringed by Samsung. Apple had to rely on design patents to prevail over Samsung. If design patents are powerful enough for Apple to use to prevail over Samsung, then it makes sense that anyone who has a unique visual presentation to their products should consider whether adding design protection to their portfolio is a wise decision— which it probably is.

Determining where to seek patent rights is an important and expensive decision. If you know you are going to want international patent protection, the best, most cost-effective course is to file directly in those countries. This direct filing strategy does not utilize the Patent Cooperation Treaty (PCT), but instead leverages direct filings in countries of interest. For well established companies in mature markets, this can be an effective strategy. For immature markets, new companies, or even mature companies entering immature markets, it is difficult to know where patent protection will be necessary, which makes an international patent application filed pursuant to the PCT a highly effective strategy.

The Patent Cooperation Treaty (PCT) enables applicants to file one application, called an international application, in a standardized format in an authorized Receiving Office, and have that patent application treated as a regular national patent application in all Member Countries to the PCT. The PCT also provides for the establishment of an international search report and written opinion and publication of the international application after 18 months from the earliest priority date. Aside from being cheaper compared to filing directly in every PCT Member Country individually, which would be unthinkably expensive, the applicant has up to 30 months to actually decide where to receive a patent.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday upheld the District of Delaware’s grant of judgment as a matter of law (JMOL) that Amgen’s patent claims covering its Repatha cholesterol treatment were invalid for lack of enablement. The court found that Amgen’s composition claims were defined by meeting functional limitations, rather than by structure, and that the patent specifications didn’t enable the preparation of the full scope of the claims without undue experimentation. Judge Lourie authored the opinion.  Amgen v. Sanofi (CAFC, Feb. 11, 2020)

Patent systems around the globe offer a quid pro quo that exchanges limited monopolies for disclosures of inventions. Most patent filings list: (1) the inventor(s); and (2) the applicant. The applicant may be an assignee (e.g., company, university, organization, etc.) with rights to seek patent protection on innovations that were identified during employment and that were within a scope of employment. Frequently, the assignee is a current or former employer of the inventor(s). In some jurisdictions (e.g., in the United States), the inventor(s) hold the rights to prosecute the patent application and assert any resulting patent unless and until the inventor(s) assign those rights to another entity (which is frequently done in employment and work?for?hire contracts). In some jurisdictions (e.g., the European Union), it is presumed that the party that applied for a patent holds the rights to the patent application. Thus, it is well-established that non-human entities may be the applicant, assignee, and/or owner of a patent. However, it is not well-established that a non-human entity may be an inventor on a patent applicant. Multiple patent offices (e.g., USPTO, UKIPO, and WIPO) have been considering what the standard in this respect should be.