Posts Tagged: "USPTO"

On February 12, the U.S. Patent and Trademark Office entered a notice of intent to issue an ex parte reexamination certificate on a patent owned by Opticurrent, LLC, which will confirm all challenged patent claims without any amendments or changes to the specification and drawings. The USPTO’s notice brings an end to a patent battle in which Opticurrent argued that Power Integrations engaged in some unusual gamesmanship to challenge the validity of patent claims asserted against it in district court.

As argument nears in the Supreme Court battle between Booking.com and the United States Patent and Trademark Office (USPTO), 12 parties have now filed amicus briefs in support of Booking.com. Among the amici are the Intellectual Property Owners Association (IPO), the International Trademark Association (INTA), and the Survey Scholars and Consultants (SSC).

As an independent inventor, I am greatly concerned about the new proposed Section 112(f) wording related to “functional claiming” that was put forward as part of the fix for patent eligibility law. While the bill is on the back burner for now, lawmakers have stated their desire to revive it. In my mind it is part of a continuing effort to prevent inventors of computer-implemented inventions from experiencing smooth sailing in patent prosecution and patent assertion. A description of what computers do and how they “logically” work has a close relationship with its physical structure. These aspects are closely interwoven and largely equivalent. Executing a computer operation means that physical circuits are activated. A computer operation or function is not a disembodied occurrence. An instruction executed by a computer is a rapid configuration/activation of one or more (usually electrical) circuits.

This article relates to key practice pointers for making a claim patent-eligible subject matter according to the U.S. Patent and Trademark Office’s (USPTO’s) October 2019 Patent Subject Matter Eligibility Guidance Update (October 2019 PEG Update). The October 2019 PEG Update expands on the January 2019 PEG (Patent Subject Matter Eligibility Guidance). In view of the continued denial of cases involving patent subject matter eligibility, such as Athena Diagnostics, Inc. v. Mayo Collaborative Services, 915 F.3d 743 (Feb. 6, 2019) by the U.S. Supreme Court, patent practitioners and clients alike need to pay more attention to the issued guidance documents and relevant Federal Circuit case law. Accordingly, one needs to have strategies in place for dealing with compliance of patent claims with 35 U.S.C. § 101.

The patent industry is in the doldrums. While the U.S. economy continues to endure historic, sustained growth, the stock market has skyrocketed, and new services, products, and investments launch every year, patents as an asset class have remained relatively flat for years. In the last decade, at best, patents as assets have shown anemic growth and stagnant value creation. While capital for litigation funding is available and overall U.S. patent grants and holdings continue to rise, patent valuations have not. Some blame the America Invents Act (AIA) and court decisions over the past decade as the reason why the market has not thrived. I disagree. Any effects felt from changes in the law are symptoms of much more systematic problems that must be solved first for patents to fulfill their full potential as valuable investment vehicles. These problems—identified below— won’t be solved by rolling back regulations or reversing opinions and artificially increasing the value of unworthy assets.

In November, the U.S. Supreme Court granted a petition for certiorari filed by the U.S. Patent and Trademark Office (USPTO) asking the Court to consider “Whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.” Booking.com filed its brief for the respondent in the case last week, arguing that “under the Lanham Act, the consumer is king,” and the fact that survey evidence has proven 74.8% of relevant consumers to consider BOOKING.COM a brand, rather than a generic name, “should end this case.”

If a recent decision denying institution of an inter partes review (IPR) is any indicator, the answer to the titular question seems to be no, the Board does not routinely review a challenged patent’s prosecution history—even when the history includes a prior Board decision construing claim terms at issue in the IPR. In Apple Inc. v. Uniloc 2017 LLC, IPR2019-00753, Paper 7 (PTAB. Sep. 16, 2019), the Board majority denied institution, finding certain claimed subject matter missing from Apple’s prior art—despite the Board’s earlier finding in a prosecution appeal that the very same subject matter was disclosed and obvious based on different prior art. Making the apparent oversight even more remarkable, one member of the Patent Trial and Appeal Board (PTAB) majority had actually authored the earlier prosecution appeal decision.

As an update to my posts from 2017 and 2019, it has now been more than six years since the U.S. Supreme Court’s 2014 Alice Corp. v. CLS Bank decision. Still, the IP bar awaits a clear and reliable test to determine when exactly a software (or computer-implemented) claim is patentable versus being simply an abstract idea “free to all men and reserved exclusively to none.” The USPTO’s Section 101 guidelines interpreting Alice—and the accompanying 46 examples—have not cleared the confusion, and Alice continues to distract the USPTO, courts, and practitioners from focusing properly on Sections 102 (novelty) and 103 (obviousness). The net effects still being increased cost, lower patent quality, lower patent portfolio valuations, wasted patent reform lobbying dollars and, in many instances, the denial of patent protection for worthwhile software inventions.

New rules governing all trademark filings with the United States Patent and Trademark Office (USPTO) went into effect two days ago, on February 15. Although the headline is a move to mandatory electronic filing for virtually all trademark applications, some of the rules have caused significant controversy within the trademark bar, especially a requirement that applicants provide a contact email address for the applicant, not just their counsel. The USPTO’s shift to mandatory electronic filing is relatively uncontroversial, since more than 99% of applications under Section 1 or Section 44 of the Trademark Act are already filed electronically. There are certain exceptions under the rule for foreign applicants under international agreements, and for non-traditional scent and flavor marks, where a physical specimen will still need to be mailed to the USPTO. But for all other applicants, electronic filing will now be mandatory unless the USPTO’s filing system – the Trademark Electronic Application System (TEAS) – goes down.

Are you bullish or bearish on the 2020 patent market? That is the question I asked a panel of experts recently. Each of the experts surveyed will participate on the faculty at IPWatchdog CON2020, which will take place in Dallas, TX from March 15-18. All those industry insiders who responded are bullish, which is an interesting change after many years of insiders being bearish, or at best cautiously optimistic. Indeed, the sentiment expressed across the board by experts from both the monetization / licensing world and litigation world is surprising, at least at first glance. And, as you will read below, while at least several people cited the uncertainty around patent eligibility in the United States, there is real optimism because license deals are getting done and policy changes show evolutionary changes in the IP ecosystem.

Climate activist Greta Thunberg is reportedly planning to register her name as a trademark based on her fears that third parties will exploit her identity for commercial gain. While registering a trademark has many advantages under U.S. law, she can likely accomplish her goal of protecting her name without the cost, delay, and uncertainty associated with the trademark registration process. As an initial matter, a trademark does not exist in the abstract. It is only protectable in connection with particular identified goods and services. Consequently, her trademark (or service mark) application would need to identify the goods or services she offers or intends to offer under the mark. To obtain registration, she would ultimately need to provide specimens showing technical trademark (or service mark) use. 15 U.S.C. § 1051.

As you’ve most likely heard, Prince Harry and Meghan Markle have decided to become financially independent of the Crown. No small task when your security costs are reported to be $1.3 to more than $7 million per year. Ouch! So, what are they planning to do? One hint can be found in the trademark application for “Sussex Royal” that they filed in England on June 21, 2019. This trademark filing provides the opportunity for many lessons to be learned.

With cannabis now legal in some form across more than 30 states, the cannabis industry is on the rise and expected to achieve a market size of more than $60 billion by the end of 2025. As with any new and growing industry, intellectual property protection will be central to innovation and investment. Several unique challenges emerge at the intersection of cannabis and intellectual property law, the first of which is obtaining protection for a cannabis-related business or invention. Two characteristics of cannabis make intellectual property protection challenging—its status as a Schedule I drug under the Controlled Substances Act and the fact that many cannabis species are naturally-occurring. Applications for cannabis trademarks, for instance, have encountered resistance at the U.S. Patent and Trademark Office (USPTO) due to cannabis’s illegal status under federal law. Unlike trademarks, however, a patent does not require an applicant to show that the product is lawfully used in interstate commerce. Rather, a patent provides the right to exclude others from the invention, and there is nothing unlawful about obtaining such a right.

Andrei Iancu, the Director of the United States Patent and Trademark Office (USPTO), has a real mess on his hands. This particular mess relates to the Patent Trial and Appeal Board (PTAB) and the astonishing reality that the Administrative Patent Judges (APJs) on the PTAB are not bound by any Code of Judicial Conduct, as is applicable to Article III federal judges. Instead, PTAB Judges are only bound by the same ethics standard that applies to all other employees, which requires them to recuse themselves from any decisions relating to former employers for one year. That is how several PTAB Judges have been able to adjudicate inter partes review (IPR) and covered business method (CBM) challenges filed by a former litigation client – Apple, Inc. What is scandalous is the dismissal of this behavior in the recently filed amicus brief filed at the United States Court of Appeals for the Federal Circuit by the United States Department of Justice (USDOJ) in the matter of Apple, Inc. v. Voip-Pal, Inc., Nos. 2018-1456, 2018-1457. In this case there are no clean hands, although you can certainly feel for the patent owner.

Last night, February 4, the U.S. Chamber of Commerce Global Innovation Policy Center (GIPC) held a reception to launch its eighth annual International IP Index, Art of the Possible. The event featured remarks from U.S. Patent and Trademarks Director Andrei Iancu, who touted the results as a win overall for the United States in particular, as well as for the global economy, but also explained to attendees that the upcoming WIPO elections for Director General will be key in signaling to the global community that respect for IP protections and enforcement is paramount to economic development. While Iancu stopped short of endorsing any of the ten candidates the WIPO General Assembly is considering, he said the next Director General must come from a country and respects intellectual property rights. Read his remarks in full below.