Posts Tagged: "patent"

The position of Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO), as well as Deputy, is now vacant. Commissioner for Patents Drew Hirshfeld has been vested with the authority to act with the powers of the Under Secretary of Commerce for IP and Director of the USPTO, although he has not been given the title Acting Director. This is almost certainly due to the fact that no one in the federal government can hold a title of Acting head of an agency for more than 270 days. In our space, the position of Under Secretary and Director of the USPTO is a front-line, top-level position. In the greater political scheme, it is likely we will not have an appointee for many months. President Obama did not nominate David Kappos until June 18 and President Trump did not nominate Andrei Iancu until August 26. There are many capable people—all realistic, based on party affiliation—who should be considered by the Biden Administration for nomination as Under Secretary of Commerce for IP, but in my opinion several names stand out above everyone else based on their background, ties with the tech sector, and what appears to be a preference on the part of President Biden (at least so far) to appoint those with close ties to the Obama Administration and longstanding ties to the Democratic party.

Senator Jim Inhofe (R-OK) yesterday introduced the “Protecting American Innovation and Development (PAID) Act of 2021,” a bill that would give the U.S. Department of Commerce authority to hold accountable bad-actor Chinese companies that refuse to pay licensing and royalty fees to free-market developers of wireless technologies. Covered by standard essential patents (SEPs).

Since launching Petition.ai’s searchable database of publicly available patent petition documents filed with the United States Patent and Trademark Office (USPTO), the most searched petition type, by far, is for a Retroactive Foreign Filing License (RFFL). Anecdotally, patent practitioners believe it is difficult, if not almost impossible, to obtain a RFFL. However, while the process may take a long time and may require several petitions, our analysis shows requests for RFFLs are often granted, eventually. A future article will examine the most common reasons why RFFL petitions are dismissed. Finally, our research uncovered some troubling issues with the substantial number of the granted petition decisions not available for public review.

The 2020 “Progress and Potential” report produced by the United States Patent and Trademark Office (USPTO) focused on women and inventorship. Recently, however, members of Congress asked the USPTO to consider a gender gap in patent practitioners, rather than inventors. This request is based on an article authored by Mary T. Hannon of DePaul University that argued that there is a formidable gender gap in individuals eligible for the patent bar, primarily based on the categories of technical background required to sit for the exam. Last week, the USPTO replied to the December letter—which was sent by Senators Mazie Hirono (D-HI), Thom Tillis (R-NC) and Chris Coons (D-DE)—citing statistics that found 29.22% of the 397 applicants that have taken and passed the registration examination since October 2019 selected the “Ms.” field on their applications and that, of the 1,937 applicants who have submitted applications electronically since October 19, 2019, 65.67% chose the “Mr.” salutation while only 34.33% chose “Ms.”

As we turn the page to 2021, we expect at least two major cases to be resolved that could have long-lasting effects on where and how Hatch-Waxman and Biologics Price Competition and Innovation Act (BPCIA) cases are litigated. Specifically, the future of skinny labels is in doubt, and available venues for Plaintiffs could be significantly narrowed. The number of new drugs eligible for generic competition will also rebound in 2021, but only time will tell if the global pandemic affects the overall number of generic filings. While there are many more Hatch-Waxman and BPCIA developments to watch this year, these are a few that we will be following closely.

Advocates for “patent reform” have long argued that reducing patent protection will open up markets and accelerate innovation by lowering entry barriers and expanding access to existing technologies. Yet, over 15 years of patent reform since the landmark 2006 decision in eBay, Inc. v. MercExchange LLC, followed by enactment of the America Invents Act in 2011, we have witnessed the rise of a technology ecosystem led by a handful of dominant platforms. In my recently published book, Innovators, Firms and Markets: The Organizational Logic of Intellectual Property, I show that this outcome should not be surprising. Almost 120 years of U.S. patent and antitrust history (1890-2006) indicate that reducing patent protection can often shield incumbents against the entry threats posed by smaller firms that have strong capacities to innovate but insufficient resources to transform innovations into commercially viable products and services.

The ipAwarenessAssessment (the Tool) is engineered for both business owners and inventors so that they can comprehensively value their intellectual property (IP) and manage their IP portfolios accordingly. Developed as a joint effort by the United States Patent and Trademark Office (USPTO) and the National Institute of Standards and Technology/Manufacturing Extending Partnership (NIST/MEP), the Tool allows a participant to asses their overall IP awareness, usage, and maintenance. The Tool itself is comprised of online multiple choice questionnaires where the pre-assessment contains five questions covering various types of IP; a customized assessment based on the answers provided during the pre-assessment that ranges from five to ten categories only relevant to the pre-assessment answers; and the full assessment which contains 10 categories and over 60 questions. These categories span a comprehensive spectrum of many aspects of IP and the individual questions are engineered to discover the user’s overall IP awareness.

Last year brought unprecedented changes as to how the United States Patent and Trademark Office (USPTO) conducts business. Prior to the pandemic, the USPTO was already a trailblazer with employees teleworking. As of 2018, 8,824 patent positions, roughly 94% of the total positions eligible for telework, already worked from home. On March 15, 2020, however, the USPTO closed all of its offices to the public, and subsequently transitioned its entire workforce of roughly 13,000 people (which includes patent examiners, trademark examiners, and other staff), to full telework, practically overnight. Since the majority of these positions were already teleworking, the transition was almost seamless.

Inventor advocacy group US Inventor has filed an amicus brief in support of a petition to the U.S. Supreme Court asking the justices to clarify “[w]hether the Federal Circuit’s “heavy presumption” line of cases or its “holistic” line should govern claim construction. The petition was filed in December by Akeva, LLC, owner of a portfolio of athletic footwear patents, and is an appeal from a July 2020 nonprecedential Federal Circuit decision, Akeva, LLC v. Nike, Inc. In that case, the Federal Circuit upheld a district court’s grant of summary judgment of noninfringement to a number of defendants—including Asics, Nike, adidas America, Inc., New Balance Athletic Shoe, Inc., and Puma North America, Inc.—finding in part that the district court had “correctly construed the claim term ‘rear sole secured’ to exclude conventional fixed rear soles.”

Examiners at the U.S. Patent and Trademark Office (USPTO) can be categorized into three different “types,” namely, green, yellow and red Examiners. Knowing the type of Examiner assigned to a particular U.S. patent application can help in strategizing on prosecution tactics, crafting responses, and anticipating costs and timing needed to obtain a U.S. patent. For each year from 2009 to 2019, data was gathered for Examiners in each of eight non-design Tech Centers at the USPTO from the LexisNexis PatentAdvisor® patent prosecution analytics database. Examiners are categorized into three different types (so-called green, yellow, and red Examiners), and the data show that certain types of Examiners allow and examine disproportionately more U.S. patents each year than other types of Examiners, resulting in few allowing many, and many allowing few.

All eyes this week were on the USPTO Director’s chair and the inauguration, and yesterday the USPTO posted a farewell blog and speech, confirming that Andrei Iancu will (and probably already has) resigned pursuant to the changeover in administrations. But patent filings wait for no one, and so we turn to the just 20 Patent Trial and Appeal Board (PTAB) petitions that were filed last week, with the district court on usual pace with 68 complaints. Notably, there were another 10 discretionary denials (and 12 substantive ones), a few highlighted below, and a few developments in district court relevant to Fintiv in general. 

Anyone who is familiar with the fortunes of Waco, Texas over the past few years will recognize the remarkable transformation of the city in most every respect. This is often attributed to Chip and Joanna Gaines of HGTV’s “Fixer-Upper” fame. The legal world has its own version of a “fixer-upper” success story in Waco, and it has nothing to do with any renovation television series. With the arrival of Judge Alan D. Albright a little over two years ago, the Waco division of the Western District of Texas began its own transformation in every respect.

When Joe Biden became President-elect Biden, he asked us to imagine a new, more hopeful version of America. He urged us to work toward leaving a “grim era” behind – a COVID-19 outbreak, economic devastation, social unrest, and a contentious election. It won’t be easy to recover, and it will require that Americans do something recently seen as undoable – unite, cooperate, and innovate. President-elect Biden immediately took a step in the right direction, though, pledging to be a president who “does not see red or blue states, but United States.” His economic priorities are also clearly expressed in the first sentence of his Build Back Better economic plan, which states, “Joe Biden believes to his core that there’s no greater economic engine in the world than the hard work and ingenuity of the American people.” These are encouraging sentiments, but to make more substantial inroads his rhetoric will hopefully be supported by real policy. Improving the protection of America’s intellectual property (IP) is an economic opportunity that he needs to capitalize on.

Last week, the United States Patent and Trademark Office (USPTO) hosted its first National Council for Expanding American Innovation (NCEAI) Innovation Chat virtually, featuring a discussion between USPTO Director Andrei Iancu and the Deputy Director General for Patents and Technology Sector, World Intellectual Property Organization (WIPO), Lisa Jorgensen. A key takeaway was specificity – Iancu and Jorgenson consistently advocated for the NCEAI to be specific in its identification of needs, to strategize specific solutions to those needs, and provide tangible measurements of each solution’s application.

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 and Part IV, we noted, all too often, applicants acquiesce to premature or improper final Office actions rather than engage in a petition process they consider uncertain. Anecdotally, patent practitioners are often reluctant to challenge an examiner on petition without a clear understanding of the likelihood of success. Here in Part V, we research successful after final petitions: ones properly processed by the USPTO and promptly granted. We found, in many instances, favorable petition decisions are followed by a Notice of Allowance. What characteristics do these successful outcomes have in common?