Posts in USPTO

Traditional Chinese Medicine, or TCM, is a subset of herbal medicine. TCM patent applications generally fall into four categories. A Compound formula is the predominant type of patent application in the field of Chinese medicine. This is not surprising because most TCM combines two or more medicinal materials to be effective. Medicinal craft refers to active ingredients extracted from medicinal materials using a specialized process, or the specialized process itself. Medicinal materials refer to the original medicinal materials used in the preparation of Chinese medicines. Some of these original medicinal materials are the whole plant or a certain part of the plant, and some need to be processed. Related products refer to non-medicinal products containing Chinese medicines, including medicated foods, namely functional foods, health products and cosmetics containing Chinese medicines. These categories reflect the main objectives of TCM patent protection: namely, to protect the formula, craft, original materials, and commercial products. 

Accurate and clear patent drawings strengthen and enhance patent applications, helping patent examiners who are already overburdened with applications to understand inventions faster. In this article, we will be covering the essential points on the importance of patent drawings and how we can make the drawings feasible for filing at the USPTO. We will also cover some important guidelines to help you to avoid unwanted office actions.

District court patent filings exploded this week with 126, while Patent Trial and Appeal Board filings were down substantially, with just 11 inter partes reviews (IPRs) and two post grant reviews (PGRs) filed. The district courts saw the return of serial filer WSOU (this time against F5 Networks) as well as a new round of suits in AGIS Software Development LLC (discussed below), a surprising (even for them) number of new IP Edge suits, and a fair number of new defendants added to existing non-practicing entity (NPE) suits. Raymond Anthony Joao continues to add defendants quickly to various subsidiaries, and Leigh Rothschild had a few new cases, in a week dominated by NPE filings.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on February 1 held in part that the United States Patent and Trademark Office’s (UPSTO) Patent Trial and Appeal Board (PTAB) erred in finding a claim anticipated when the petition for inter partes review had only asserted obviousness as to the claim. M&K Holdings, Inc. v. Samsung Electronics Co. Ltd. (CAFC, Feb 1, 2020). The CAFC vacated the PTAB’s decision on that claim but affirmed the holding of unpatentability as to the rest of the asserted claims.

For better or for worse, there is no such thing as a worldwide patent. There is, however, something that approximates a worldwide patent application that can ultimately result in a patent being obtained in over 150 countries around the world. This patent application is known as an international patent application, or simply an international application. The international treaty that authorizes the filing of this single international patent application is the Patent Cooperation Treaty, most commonly referred to as the PCT.

The United States is not even two weeks into the administration of President Joe Biden and it’s likely that the administration’s selection for Director of the U.S. Patent and Trademark Office (USPTO) will not become clear for a few months yet. Many members of the U.S. innovation community, however, are well aware of the high stakes in play with that selection. The tenure of outgoing Director Andrei Iancu was lauded across many sectors of the U.S. patent system, perhaps with the exception of the tech sector. As we consider candidates for the next USPTO head, perhaps we should look to the political moment in which we find ourselves to guide our search.  

Martha Jones of Amelia County, Virginia, is believed by many to be the first black woman to receive a United States patent. Her application for an “Improvement to the Corn Husker, Sheller” was granted U.S. patent No. 77,494 in 1868. Jones claimed her invention could husk, shell, cut up, and separate husks from corn in one operation, representing a significant step forward in the automation of agricultural processes.

Companies that have a strong, diversified patent portfolio can establish themselves as key innovators within a particular field and secure a freedom to operate in that field. In some situations, companies may also choose to enforce patent rights granted to them by these patents in a litigation, either offensively against an alleged infringer or as a defense to patent infringement claims against them.

Recently, the Day One Project, an initiative of the Federation of American Scientists, released a transition document drafted by a collection of veteran policymakers discussing a range of policy ideas to be implemented at the U.S. Patent and Trademark Office (USPTO) starting from the earliest days of the Biden Administration. The ideas advocated by the Day One Project focus on a mix of policies related to diversity, international IP systems, patent quality, agency budgeting and governance and ways that the USPTO can contribute to broader administrative policy initiatives. While there are many sound policy positions advocated by the Day One Project, patent owners may want to be aware of the document’s stance on the “public benefit of PTAB review of a patent” as well as the agency’s role in developing policy on patentable subject matter reform. Interestingly, the policy document indicates that there is broad consensus for continuing policies from the Trump Administration relating to China’s influence on the world of intellectual property.

On January 27, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed in-part and vacated in-part a decision of the Patent Trial and Appeal Board (PTAB) in its inter partes review of claims 1—20 of U.S. Patent No. 8,370,106 (the ‘106 patent) assigned to KEYnetik, Inc. (KEYnetik). Judge O’Malley concurred in part and dissented in part. In particular, the CAFC concluded that the PTAB did not err in its claim construction regarding an orientation detection limitation and a sequence limitation. Further, the CAFC affirmed the PTAB’s decision that the Petitioner’s references could be combined. However, the CAFC also found that the PTAB failed to properly assess the appellant’s argument regarding a reasonable expectation of success when combining references and therefore vacated the decision and remanded the case so that the Board could make such a determination.

District Court patent filings were down again this week with just 46—two thirds of usual output—and the continued absence of any new WSOU filings may point to some kind of strategy reset (or not;  it could just be a lull.). Board filings were at their usual pace with 32, though a huge portion of those were filed by BMW and Mercedes against Oso IP subsidiary Stragent, LLC or Medtronic (against Speyside Medical, LLC). This week saw another five denials under the Board’s discretion, mostly on cases already reported on.

Artificial intelligence (AI) is a rapidly growing sector of the life sciences industry, with broad-ranging applications in drug discovery, biotechnology, medical diagnosis, clinical trials, precision and personalized medicine and patient monitoring. The recent uptick of AI use in this industry is likely due to the increasing availability of “big data.” AI technologies including machine learning, deep learning, and natural language processing can be harnessed to process vast data sets to identify new drug candidates, optimize drug dosing, match patients with drug trials and diagnose diseases. Recognizing this potential, global biopharma companies have invested heavily in AI technology—the AI in life sciences market was valued at USD 1092.44 million in 2019 and is expected to reach USD 3445.60 million by 2025.

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.

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.