Posts Tagged: "patent office"

One day before Joe Biden was to be inaugurated as the 46th U.S. President, U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu confirmed he would be leaving his position as USPTO Director, reminiscing on his tenure with the Office in his latest Director’s Forum blog post and in remarks made at a United States Chamber of Commerce Global Innovation Policy Center event yesterday. Iancu recalled his successful efforts to clarify examination guidelines on patent eligibility and to balance post-grant proceedings, noting that, “In light of our many carefully-calibrated reforms, Senator Tillis recently said that the PTAB is no longer a death squad for patents. It is indeed a new day at the PTAB.” While many would not agree, it is generally accepted that Iancu’s administration has been a boon for patents, and the IP community will no doubt be sad to see him go.

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?

As we thankfully see 2020 fading into the rear-view mirror and all look forward to a hopefully much better 2021, we want to take a moment to reflect on what the past year brought us and how the stage is set for another very fluid and consequential year for intellectual property policy. In times like these, it is clear that leadership matters more than ever. During some of the most challenging times our country has faced, there were a number of places where we saw strong leadership result in tangible progress. This year has already shown us a dramatic first few days. Beyond the tragic events in the U.S. Capitol, we saw the somewhat unexpected shift of power in the Senate to Democratic control based on the election of both Rev. Raphael Warnock and John Ossoff in Georgia. It is clear that the new Congress and the new Biden Administration will face huge challenges before we approach anything close to “normal” in any sense. That said, when it comes to IP, what can we expect?

On January 11, Brian Pomper, Executive Director of the Innovation Alliance, sent a letter to President-elect Biden and Vice President-elect Harris urging support for strong patent rights and outlining Innovation Alliance’s recommendations with respect to the U.S. patent system and the U.S. Patent and Trademark Office (USPTO). The letter emphasized the importance of a strong patent system that incentivizes technological advancement in order to effectively compete with China and explained that the current system is in distress and strong leadership is needed.  

As a Patent Agent, the work product coming out of the U.S. Patent and Trademark Office (USPTO) seemed random to me. This article shares what I learned as a USPTO Patent Examiner that lifted the veil and shed light on that randomness. As a Patent Examiner I learned a powerful lesson: the approach that a Patent Examiner takes in interpreting claim language is learned by “on the job” training while working with USPTO trainers and other experienced USPTO examiners. The USPTO does not give new Patent Examiners detailed training on how to interpret claim language. Understanding the unique lens through which each examiner is viewing the application and prior art is critical to working effectively with Patent Examiners. Some Examiners interpret very broadly and allow fewer applications, while other examiners interpret more narrowly and allow more applications.   

Complete Genomics, Inc., BGI Americas Corp., and MGI America’s Inc. (Complete Genomics) have filed suit against Illumina, Inc. alleging violation of federal antitrust statutes and California unfair competition laws in the U.S. District Court for the Northern District of California, San Francisco Division. The January 11 complaint contends that Illumina obtained at least three of the patents Illumina has asserted against Complete Genomics in an unlawful, anticompetitive manner. The complaint argues that two of the patents asserted by Illumina are invalid based on fraud on the United States Patent and Trademark Office (USPTO) and that there was no basis for asserting infringement with respect to the third patent.

On January 13, the United States Patent and Trademark Office (USPTO) published a new report on the impact of patent and trademark filing trends in China. The report, titled Trademarks and Patents in China: The Impact of Non-Market Factors on Filing Trends and IP Systems, discusses how the high rate of Chinese patent and trademark filings may well be influenced by government subsidies and other non-market factors, rather than inventiveness and organic economic activity within China.

On January 12, patent database provider IFI Claims published its Top 50 U.S. patent grant recipient list for 2020, as well as its Global 250 list of top owners of active patent assets worldwide. The Top 50 list includes many of the usual suspects among top patent filing organizations, including IBM, which takes the top spot among all firms receiving U.S. patents for the 28th year in a row. Perhaps the most surprising finding from the study is that patent application filing activity increased slightly during 2020 despite the massive disruptions to daily life caused by the COVID-19 pandemic.

Since the Supreme Court’s Alice decision in 2014, inventors have faced extra hurdles trying to protect their software-related inventions with patents. A chief obstacle has been satisfying the two-part test for eligibility under Section 101 set forth in Alice and Mayo. To meet this test, claimed subject matter must not be directed to a judicial exception, such as an abstract idea, (Step One), and if it is, must add “significantly more” to provide an inventive concept (Step Two)…. Theodore Rand reported in IPWatchdog last week, a disturbing but not surprising trend. Rand found that, in 2020, 81% of software-related patents on appeal for subject matter eligibility in decided precedential cases (22 of 27) were found invalid. But in three cases, software-related patents were found drawn to eligible subject matter for patent purposes. Id. In each of the three cases, the appeals court pointed to aspects of the patent specifications themselves. Looking more closely at the representative claims and court’s comments with respect to the corresponding patent specification is illuminating. In particular, the court looked to the specifications for evidence of performance improvements over conventional systems, description of a technical problem/solution, and technological advantages.

Judge Kimberly Moore, in a comprehensive and insightful opinion dissenting from the denial of the petition for rehearing en banc in Athena Diagnostics, Inc. v. Mayo Collaborative Servs., 927 F.3d 1333 (2019), emphasized that the lack of clarity in Section 101 jurisprudence is one of the most critical issues in patent law. Sensing no interest by her colleagues in crafting an opinion with sufficient common denominators to provide instructions to trial judges on how to navigate the cross-currents created by Federal Circuit decisions post-Mayo/Alice, Judge Moore advised litigants: “Your only hope lies with the Supreme Court or Congress.” Id. at 1363. Not now. Several months after Athena, the USPTO took the initiative to issue a guidance document “October 2019 Update: Subject Matter Eligibility,” in response to requests by numerous stakeholders for more clarity and predictability. Consequently, in light of well-established Supreme Court precedent in administrative law, there is every reason for the Federal Circuit to now adopt the analysis of these Guidelines in future Section 101 cases.

Last week, the United States Patent and Trademark Office (USPTO) issued binding indefiniteness guidance in a memorandum from Director Andrei Iancu that addresses confusion about which indefiniteness standard applies in post-grant proceedings: the standard set forth in In re Packard, 751 F.3d 1307 (Fed. Cir. 2014) or in Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014). Specifically, the memorandum confirms that the standard in Nautilus is the correct approach for analyzing indefiniteness in America Invents Act (AIA) post-grant proceedings.

On Friday, the U.S. Supreme Court granted a petition for certiorari filed by Minerva Surgical, Inc. asking the Court to clarify questions around the doctrine of assignor estoppel. Specifically, the petition presents the question “whether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits.”

Combining the holiday break, we see a steady 24 and 25 Patent Trial and Appeal Board (PTAB) petitions filed in the last two weeks, respectively, with 84 and 71 District Court complaints filed, respectively. The 84 was again bumped up roughly 10 by another round of WSOU filings, this time against Salesforce; otherwise it was the typical mix of small file-and-settle non-practicing entity (NPE) additions (mostly IP Edge, seemingly filling out some kind of annual quotas, and with a new campaign against shuttle services), bigger funded NPEs like Acacia and Dominion Harbor entities, small filers, and a smattering of company-company filings. Cedar Lane also ended the year strong, adding a few logs to the yule fire.

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.