Posts Tagged: "patent prosecution"

While many see intellectual property merely as a shield, its greater power rests in its strategic use to spark innovation and propel business growth. In this article I describe a systematic approach for developing IP strategies that are tailored to the technology and objectives of each business, so that the resulting IP can be used to drive the achievement of those goals.

The U.S. Patent and Trademark Office (USPTO) today announced guidance for practitioners and the public regarding the use of artificial intelligence (AI) in the preparation of filings for submission to the Office. The guidance comes two months after the Office issued a guidance memorandum for the Trademark and Patent Trial and Appeal Boards (TTAB and PTAB) on the misuse of AI tools before the Boards that clarified the application of existing rules to AI submissions.

The U.S. Patent and Trademark Office (USPTO) on Tuesday, March 19, issued a memo for all patent examiners reiterating its current practices and resources for examining means-plus-function and step-plus-function claim limitations. The memo is primarily focused on reminding examiners that they must create a clear record explaining their interpretation of such claims and points to various resources and training tools that are available to assist them.

Similar to Steve Martin and John Candy’s calamitous odyssey in the classic 1980s film Planes, Trains and Automobiles, patent practitioners are experiencing their own misadventures when filing applications in the DOCX format. As of January 17, 2024, the U.S. Patent and Trademark Office (USPTO) mandated submitting all specification, claims and abstracts of non-provisional applications filed under 35 U.S.C. 111(a) in DOCX format or incurring a $400 surcharge (non-discounted). The DOCX mandate came after thousands, and likely tens of thousands, of practitioners, directly or indirectly, communicated their significant procedural, technical, legal, ethical, professional liability, and financial concerns to the USPTO.

The United States Patent and Trademark Office (USPTO) recently released new guidance to patent examiners on making obviousness rejections. The guidance focuses on post-KSR precedential jurisprudence from the U.S. Court of Appeals for the Federal Circuit. Some of the guidance is fairly mundane, some of it is not. The purpose of this article is to propose a few responses one might use to counter rejections that apply certain problematic aspects of the new guidance.

The U.S. Patent and Trademark Office (USPTO) has been working diligently towards introducing a system supporting the submission of new patent applications in structured text, particularly utilizing the DOCX format, over the past few years. This transition has recently been realized, as the Office officially implemented DOCX filing starting from January 17, 2024. This consideration of filing in DOCX format stemmed from a Proposed Rule issued by the USPTO on July 31, 2019.

The recent U.S. auto workers strike has had a wide reaching impact on the automotive industry, including spurring investors to review their current automotive investments. While significant events like the strike often cause this sort of reaction, more common practices from automakers should – but usually don’t – draw investor attention, including intellectual property management. Our recent three-part analysis on the financial impact of patent lapse strategies for major automotive manufacturers found, among other data points,that major auto brands overspend several million dollars annually by paying fees to renew non-strategic U.S. patents. Investors who understand the patent lapsing strategies of these automotive companies can more effectively evaluate their growth plans and innovation strategies. 

As an update to my previous posts from 2017, 2019, 2020, March 2021, August 2021, 2022, and 2023, it has now been almost a decade since the U.S. Supreme Court’s 2014 Alice Corp. v. CLS Bank decision. Yet the debate still rages over when a software (or computer-implemented) claim is patentable versus being simply an abstract idea “free to all men and reserved exclusively to none” (as eloquently phrased 76 years ago by then-Supreme Court Justice Douglas in Funk Bros. Seed Co. v. Kalo Inoculant Co.).

On February 20, 2024, a Brazilian congress member, Antônio Luiz Rodrigues Mano Júnior (known as Júnior Mano), introduced a bill to amend the national IP Statute (Law #9,279/96) and regulate the ownership of inventions generated by artificial intelligence systems. Bill #303/2024 proposes the addition of a paragraph to Article 6 of the IP Statute, which regulates ownership of inventions, with the following wording: “in the case of inventions autonomously generated by artificial intelligence system, the patent can be requested in the name of the artificial intelligence system that has created the invention, being the artificial intelligence system considered the inventor and owner of rights arising from the invention.”

Writing a useful and enforceable patent application is not an easy task. A number of articles show how to draft a patent application. For example, Gene Quinn of IPWatchdog published a series of articles with tips to avoid mistakes or pitfalls. Automated software and AI-assisted drafting tools have also become available, but there have been ethical and practical concerns about relying on AI. Instead of discussing the specific details of the steps in writing a patent application or the pros and cons of automated or AI tools, I will focus on the overall strategies or approaches.

In an ideal world, issued patents would not contain errors. In reality, patent drafting is tedious and time-consuming work and perfection is not an attainable goal. The patent industry seems to be steadily getting better, though. In a recent study, we uncovered an 11.24% decrease in errors per patent over the past four years. We observed this decrease by reviewing every patent issued by the U.S. Patent and Trademark Office (USPTO) since 2020 – nearly 1.4 million patents.

Is your company paying the United States Patent and Trademark Office (USPTO) maintenance fees for expired patents? The USPTO requires payment of maintenance fees to keep a granted patent in force due at 3.5 years, 7.5 years, and 11.5 years after the date of grant of a patent. For 2023, these fees amount to $2,000, $3,760, and $7,700, respectively. You may be unknowingly paying maintenance fees for expired patents.

The year 2023 marked another year of rapid advancements in quantum computing technology, showcasing significant progress in key areas such as scalable quantum computing and quantum error correction. Multiple physical realization approaches or modalities for creating quantum bits (qubits) are under development, offering different tradeoffs in performance metrics such as qubit count, error rate, decoherence time, and gate speed. Patenting activities are effective indicators of innovation speed and resource distribution in a technology field. As 2024 begins, this post explores the newest development focus and trends in the quantum computing industry through the angle of its patent landscape and discusses strategic considerations for patenting in this rapidly evolving field.

The first software patent was granted in 1968. It’s now been three decades since the “Year of the Algorithm” in 1994, when cases such as In re Allapat, In re Lowry, and In re Beauregard initiated a wave of software patents. Well over half of U.S. patents granted annually are at least “software-related,” and even a cursory search of U.S. patents reveals software patents in fields ranging from encryption to speech recognition to network security. Why, then, do so many people continue to think that software cannot be patented at all? What explains the stark contrast between the long-standing legal reality and the beliefs of otherwise well-informed engineers, high-tech business people, and even some lawyers?