Posts Tagged: "USPTO"

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.

In addition to unrecoverable issues like divided infringement, it’s no secret that patents have come under increased scrutiny over the last decade. The Patent Trial and Appeal Board (PTAB) continues to invalidate patent claims at an alarming rate, defendants have ever-increasing invalidity and non-infringement arguments to make in district court, and the Supreme Court’s Alice decision on patent eligibility continues to baffle the entire patent community…. While the patent community debates the need for reform, an easy and attainable solution, and one that is within your control, is simply to strengthen the patents before they issue.

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).

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).

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.

The U.S. Court of Appeals for the Federal Circuit (CAFC) held in a precedential decision today that an inter partes review (IPR) petitioner must be given the opportunity to present evidence of anticipation or obviousness under a new claim construction when that construction is first proposed by a patent owner in its response following the institution decision. The court ultimately vacated the decisions and remanded to the PTAB to reconsider.

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.

Scott McKeown is one of the preeminent Patent Trial and Appeal Board (PTAB) practitioners in the country, founder and author of PatentsPostGrant.com, Co-Chair of the IPWatchdog PTAB Masters program, and a good friend. Recently, Scott decided to make a change, leaving Ropes & Gray and joining Wolf Greenfield & Sacks and becoming the first partner resident in Wolf’s new Washington, DC, offices. Given the news, I took the opportunity to invite Scott to IPWatchdog headquarters for an interview.

On August 2, inventor advocacy group US Inventor held a webinar on provisions of the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act that are intended to curb abuses impacting small business patent owners at the Patent Trial and Appeal Board (PTAB). While most panelists on the virtual call acknowledged that the PREVAIL Act wouldn’t solve every problem threatening the U.S. innovation ecosystem’s most vulnerable members, there was widespread agreement that the bill would have beneficial impacts if enacted. The webinar was US Inventor’s second on the PREVAIL Act following a virtual call last week with law professor Adam Mossoff and C4IP General Counsel Jamie Simpson.

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.”