Posts Tagged: "inventor"

Representative Nydia Velázquez (D-NY), Senator Mazie K. Hirono (D-HI), Senator Thom Tillis (R-NC), and Congressman Steve Stivers (R-OH) yesterday reintroduced the Inventor Diversity for Economic Advancement Act (IDEA Act), which seeks to direct the United States Patent and Trademark Office (USPTO) “to collect demographic data – including gender, race, military or veteran status, and income level, among others – from patent applicants on a voluntary basis.” Senators Chris Coons (D-DE) and Patrick Leahy (D-VT) are co-sponsors of the legislation.

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.

Eleven amicus briefs were docketed during the last two business days of 2020 in United States v. Arthrex, Inc., et al., which is scheduled for oral argument on March 1, 2021. Several of the briefs were filed by independent inventors, who implored the Court to acknowledge the stories of entrepreneurs and small inventors who have been adversely impacted by the Patent Trial and Appeal Board (PTAB), in part because Administrative Patent Judges (APJs) are presently unaccountable.

In 2015, Randy dela Fuente launched Snapizzi. Randy had bet big, putting his career, savings, and company at risk. Later, Randy brought in a business partner, Chris Scoones, who cleaned out his savings and mortgaged his house. But they believed in the patent. On the patent’s government-issued cover, it stated that Snapizzi would have the “right to exclude others from making, using, offering for sale, or selling” the invention. This meant that U.S. Patent No. 8,794,506 would protect their company from infringers and give them enough time to carve a toehold in the market. That patent cover also said that the patent was “granted under law”, which meant that it was a legally granted and presumed valid property right. In America, we are a nation of laws. Randy trusted the U.S. government, and this made the burden of huge risk much more tolerable. But in December 2019, a court held that the claims are all ineligible for patenting because they are “abstract ideas”.

Recently, the U.S. Patent and Trademark Office (USPTO) published a Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board (PTAB), seeking “focused public comments, on appropriate considerations for instituting America Invents Act (AIA) trials.” Comments are due on November 19. US Inventor provides a streamlined tool for submitting comments here. This is a big deal for inventors. We desperately need help. We simply cannot participate in the patent system until the PTAB is regulated to provide predictability with respect to the validity of our issued patents. Director Iancu has made a valiant effort to restore balance, but it has failed thus far. As it stands, we cannot use our issued patents because it is utterly impossible to predict whether or not they survive the PTAB – no matter how carefully we follow the existing laws and procedures.

In August, Apple, Google, Cisco and Intel filed a lawsuit against the U.S. Patent and Trademark Office (USPTO) in the Northern District of California challenging the Patent Trial and Appeal Board’s (PTAB’s) adoption of the NHK-Fintiv discretionary denial framework as procedurally invalid under the Administrative Procedures Act (APA), and arguing that the PTAB’s application of them violates the America Invents Act (AIA). Shortly after, a number of “Small Business Inventors” (US Inventor; 360 Heros, Inc.; Larry Golden; World Source Enterprises, LLC; Dareltech LLC; Tinnus Enterprises, LLC; Clearplay, Inc.; and E-Watch, Inc.) filed a Notice of Motion and Motion to Intervene and related Complaint in the case. Now, US Inventor has filed its reply brief, in which it contends that “AIA trial reviews have stifled innovation, crushed inventor morale, and created a lopsided process whose use alone (irrespective of individual merits) can destroy innovative businesses”. The organization is asking the court to enter a temporary restraining order and preliminary injunction in order to preserve “the one lifeline giving any hope of escaping this ongoing catastrophe for American innovation and fair competition.”

Yesterday, a group of 324 American innovators sent a letter to the bipartisan leadership of the Senate and House Judiciary Committees to express support for several improvements in the patent system implemented by U.S. Patent and Trademark Office (USPTO) Director, Andrei Iancu, over the last several years. The letter also expressed support for recently proposed rulemaking concerning the USPTO’s discretion in instituting inter partes review Proceedings (IPR). The group of innovators included universities, nonprofit foundations, individual inventors, startups, small businesses, manufacturing, technology and life sciences companies.

Every time a patent application is filed, we have to ask, “Who are the inventors?” It is a simple question, but the answer can be complicated. And there can be severe consequences if you get it wrong. You could lose your patent. As the Grail Knight in the Indiana Jones movie stated so well, “You must choose, but choose wisely.” As you know, patents typically have a number of claims broken down into independent and dependent claims. So, you have to look at each of the claims and determine who conceived the invention. There can be cases where different inventors conceived different parts of the invention in different claims. What’s important to understand is that you must include as named inventors anyone who conceived of an invention in any claim – even dependent claims.

Not too long ago, independent inventor Josh Malone finally received a settlement for willful infringement of his patents. He won in court and at the Patent Trial and Appeal Board (PTAB), and from what I’ve read, I know it was a long, hard fight, and the cost to litigate was in the tens of millions of dollars. But, he did it, and his product Bunch O Balloons continues to be a number-one hit summer toy. Licensing his invention to one of the fastest growing toy companies in the world (ZURU) clearly had its advantages for Malone. But what about the rest of us independent inventors? For the last decade or so, the patent system has not been in favor of the independent inventor. But has it ever been? I don’t think so.

In the latest decision regarding inventions made by the DABUS artificial intelligence machine, the England & Wales High Court has upheld two decisions of the UK Intellectual Property Office (UKIPO) deeming the UK patent applications to be withdrawn. In a judgment on September 21, Mr Justice Marcus Smith found that all the grounds of appeal filed by the applicant, Dr Thaler, must be dismissed. (Thaler v The Comptroller-General of Patents, Designs And Trade Marks [2020] EWHC 2412 (Pat).) As previously reported by IPWatchdog, the patent applications (for a fractal container and a neural flame) have been filed in many jurisdictions. The applicant claims that they are the autonomous output of the DABUS machine. Like the UKIPO, the EPO and USPTO have published decisions refusing to accept them.

As IPWatchdog’s Virtual CON2020 continues, in a session on Day 7 titled “The Gender Gap: Stem Education, Funding & Inventorship,” a panel discussed the current underrepresentation of women and possible steps forward in science, technology, engineering, and mathematics (STEM) disciplines, patent professions and inventing. The panelists included Hope Shimabuku, the Director of the USPTO Texas Office; Megan Carpenter, Dean of the University of NH Franklin Pierce School of Law; Efrat Kasznik, President of Foresight Valuation Group; Delicia Clarke, Associate at WilmerHale; and Sandra Nowak, Assistant Chief IP Counsel at 3M.

In Article 1, Section 8, Clause 8, of our Constitution, the founders were relatively specific. The founders give Congress power to secure “the exclusive Right” to “Authors and Inventors” in the “Writings and Discoveries”. Congress is given  specific direction on how to do it (i.e., “for Limited Times”), and why it should be done (i.e., “To promote the Progress of Science and useful Arts”). Unfortunately, the Leahy-Smith America Invents Act (AIA) of 2011 dramatically changed how the Executive branch implements the Constitutional prerogative.  The AIA transferred power constitutionally allocated to the judicial branch to the executive branch – specifically, to Administrative Patent Judges (APJs) in the USPTO. In the process of implementing the Patent Trial and Appeals Board (PTAB) on which the APJs sit, judicial independence, judicial ethics, rules of evidence, and other protections commonly afforded rights holders in disputes adjudicated by the federal judiciary were sacrificed in the name of expediency.

This month, the United States Patent and Trademark Office (USPTO) released a report titled “Progress and Potential: 2020 update on U.S. women inventor- patentees” (the Report). The Report updated a study published last year that outlined trends in women inventors named on U.S. patents from 1976 to 2016. These reports are a result of the Study of Underrepresented Classes Chasing Engineering and Science Success (SUCCESS) Act of 2018, which directed the USPTO to study and report to Congress on the number of patents applied for and obtained: (1) by women, minorities, and veterans; and (2) by small businesses owned by women, minorities, and veterans. As evidenced by the USPTO reports, women are under-represented as inventors of record on USPTO patents, which is least partially due to a general lack of funding available to women inventors. 

District court patent filings are back down to roughly double the number of Patent Trial and Appeal Board (PTAB) filings, with 65 new complaints to the PTAB’s 28 new inter partes reviews (IPRs) and one post grant review (PGR). The complaints were driven by the Rothschild entities, adding defendants to existing campaigns, and a fair number of pharmaceutical complaints.