Posts Tagged: "patent office"

In Part I of this five-part series, the authors reviewed the law behind subsequent patent applications. In Part II, we reviewed the different types of subsequent applications. In Parts III and IV we discussed various implications of the types of subsequent applicants. And now, in Part V, we provide practice tips drawn from the case law cited in this series, as well as derived from omphaloskepsis.

On December 23, the United States Court of Appeals for the Federal Circuit (CAFC) vacated a decision of the USPTO’s Patent Trial and Appeals Board (PTAB), holding that the PTAB’s conclusion that Raytheon Technology Corp.’s (Raytheon’s) patent was non-obvious lacked substantial evidence. See General Electric Company v. Raytheon Technologies Corporation. The CAFC also found that General Electric Company (GE) had alleged sufficient facts to establish that it was engaging in activity that created a substantial risk of future infringement, and therefore had standing to bring the appeal.

As the world bids good riddance to 2020, cursed as it has been by the COVID-19 pandemic and its attendant shutdown of major swathes of the globe’s economy, this list of the Top 10 Patents of 2020 hopefully serves as a reminder that—although the world has missed out on concerts and sporting events aplenty—this year has not been a wasted opportunity for inventors. The world of patent law may be steeped in the tradition of legal precedent but the technologies covered by patents themselves are forward-looking, promising days of driverless vehicle commutes, personalized cancer treatments and fewer awkward moments on Zoom calls. This list does not purport to be an authoritative collection of the most economically valuable technologies protected by patents during 2020, but it offers an honest assessment of technologies that may provide an array of social benefits to consumers long after we ring out the current year.

Novel and non-obvious can be easily used to describe the events of 2020, both here in the United States and around the world. Despite all the challenges, there have been positive developments in the way we conduct business—and that certainly was true at the U.S. Patent and Trademark Office (USPTO). Below we recap some of the most significant developments at the USPTO in 2020 and topics to keep an eye on in 2021.

The week before Christmas brought the biggest post-grant review (PGR) bulk filing to date, with 10 matters all stemming from a pharmaceutical dispute between Allergan and BTL Medical Technologies (and one other, unrelated). That’s a steady average of 30 inter partes reviews (IPRs) propped up by the glut of 11 PGRs stemming from that dispute, discussed below. The 81 district court cases were again propped up by WSOU adding their usual dozen or so complaints and a new defendant, this time adding Salesforce to their ever-growing campaign asserting some of their 4,000 or so Nokia patents against seemingly the entire world.

In Part I of this series, the authors reviewed the law behind subsequent patent applications. In Part II, we reviewed the different types of subsequent applications. Part III discussed some of the implications of these for prosecution and litigation, and Part IV will examine some further implications. In the fifth and final installment in this series, we will distill all of the information covered to provide concrete practice tips for practitioners.

Greek philosopher Heraclitus is credited with saying “the only thing that is constant is change.”  In 2020, life for everyone changed, including for those in the intellectual property (IP) sphere. There were changes at the U.S. Patent and Trademark Office (USPTO), in IP litigation, client activities and business development. Looking into the crystal ball, we believe some of those changes are here for good, while others are not.

What intellectual property (IP) rights achieve, and for whom, is a mystery to most people, including heads of state. President-elect Biden’s ambitious plan to support all of America’s workers through R&D investment, inclusion and by combatting IP theft from China, ‘Made in All of America,’ is well-timed. But it is unlikely to have the desired impact without the backing of reliable IP rights. Biden’s initiatives will require capital and non-contentious licensing to succeed. Good intentions aside, without support from a fully functioning IP system, do not expect America’s workers to be in a position to cash in on research and startups or to challenge China’s stated goal to dominate in areas of innovation and technology by 2025.  

December remains a light month at the Patent Trial and Appeal Board (PTAB), with just 16 petitions filed last week, 15 inter partes reviews (IPRs) and one post grant review (PGR). District court cases were steady, with 62, propped up by a new banking campaign by Raymond Anthony Joao, detailed below. On the policy front were rumors of a last-minute extension of the covered business method patents program (CBM) being worked into the lame-duck session, but it was unclear whether that was just the rumor mill reacting to Innovation Alliance’s posting of a counter-statement and fact sheet lobbying against an extension so late in the year, or some actual threat of an extension being passed at the eleventh hour. Separately, the Intellectual Property Owners Association (IPO) posted a series of qualities it seeks in a new USPTO Director—mostly generic—including at least 15 years of patent lawyer experience, something I personally think excludes many phenomenal candidates from industry, business, and the inventor community.

“Qualified women are unnecessarily excluded from membership in the patent bar,” wrote Mary T. Hannon in a recent law review article seen by Senators Mazie Hirono (D-HI), Thom Tillis (R-NC) and Chris Coons (D-DE), who promptly sent a letter to United States Patent and Trademark Office (USPTO) Director Andrei Iancu demanding answers. A scandal of epic proportions in 2020 if an agency of the executive branch is actively excluding women from the ranks of patent practitioners. But it’s just not true.

The European Patent Office (EPO) issued a press release and 75-page study on December 10, titled “Patents and the Fourth Industrial Revolution – the global technology trends enabling the data-driven economy,” which examined global trends in innovation in fourth industrial revolution (4IR) technologies. As used in the study, 4IR denotes “the full integration of information and communication technologies (ICT) in the context of manufacturing and application areas such as personal, home, vehicle, enterprise and infrastructure,” and it marks a “radical step towards a fully data-driven economy.” The study examined international patent families (IPFs), i.e., inventions for which patent applications have been filed in two or more patent offices, related to 4IR worldwide between 2000 and 2018. The study revealed that, between 2010 and 2018, global patent filings for 4IR technologies, including smart connected objects, Internet of Things, Big Data, 5G, and Artificial Intelligence (AI), grew at an average annual rate of almost 20%, which is nearly five times faster than the average of all technology fields.

The World Intellectual Property Organization (WIPO) launched their INSPIRE (Index of Specialized Patent Information Reports) “database of databases” on November 4, 2020. It provides useful summaries of patent databases to help both novice and expert patent searchers identify the most suitable search system. WIPO’s ultimate goal was to speed up the pace at which innovation takes place. To do this, INSPIRE identifies database features without commenting on any strengths or weaknesses of products. At the time of writing, INSPIRE listed 23 databases, both free and subscription. Content was still being added to the collection and there was scope for more sources to be included.

On December 4, the United States Patent and Trademark Office (USPTO) designated three Patent Trial and Appeals Board (PTAB) decisions as precedential.  In Apple Inc. v. Uniloc 2017 LLC, the PTAB refused to institute inter partes review (IPR) based on Apple’s “follow-on copycat petition.” SharkNinja Operating LLC v. iRobot Corporation and Applications in Internet Time, LLC v. RPX Corp. both related to real parties in interest (RPI). In SharkNinja, the PTAB declined to engage in a lengthy analysis to consider whether a non-party must be named as an RPI and in Applications in Internet Time the PTAB found the non-party to be an RPI and denied institution.

As we head into the holidays, district court patent filings were down (51) and settlements/terminations up (51), with another 32 petitions filed before the Patent Trial and Appeal Board (PTAB). The filings for the Board are fewer than usual in general, though given that frequent filer WSOU provoked at least eight inter partes reviews (IPRs) from Huawei, driving the number up a tad. Once-frequent filer Empire IP resurfaced with a number of new suits, too. What are the odds we have a quiet end of the year?