Posts Tagged: "patent prosecution"

I want to salute the patents that, every so often, reference science fiction. Please stop reading if you’re looking for deep, doctrinal substance. Stick around, however, if you have a few minutes to loosen up. These enhancements make patents more fun. Not so long ago, U.S. Supreme Court Justice Elena Kagan drew headlines in Vanity Fair and People by weaving Spider-Man references into her opinion in Kimble v. Marvel Entertainment. Surely, we’re not more uptight than the Supreme Court, right? Beyond lightheartedness though, these enhancements might make patents more meaningful. Camilla Hrdy and Daniel Brean recently commented in the Michigan Technology Law Review that “many inventions that were originally introduced in science fiction also end up in the patent record.” Although some of their commentary might overlap with my point here, I want to instead focus on science fiction as a fun and useful tool.

Preparing an Information Disclosure Statement (IDS) can be stressful. The United States Patent and Trademark Office (USPTO) has very strict guidelines which must be followed precisely to avoid errors. Failure to adhere to these guidelines will result in additional costs and time spent in filing the Information Disclosure Statement (IDS). Often, errors are made due to changes in requirements made by the USPTO, failing to adhere to deadlines, and lack of providing adequate reference materials. While these mistakes can happen frequently, there are steps patent filers and intellectual property (IP) professionals can take to avoid errors. Below are some of the most common IDS-related mistakes made by patent filers and practitioners.

In 2020, the percentage of pending patent applications that were abandoned rose to 62% over a previous four-year drop of 49%-41%. The implication was that patent applicants were cutting back on expenses in response to the adverse economic impact of the coronavirus pandemic. At the same time, there was a 2% drop in the number of U.S. patent applications filed in 2020 and a minor drop of 0.4% in U.S. patent applications filed in 2021, according to preliminary data.

Non-functional descriptive material is a throwback to an earlier time. Historically, the non-functional descriptive matter doctrine was used by examiners to argue that limitations related to the content of information should be given little to no patentable weight. However, current subject matter eligibility jurisprudence provides tools to simply treat content-based inventions as ineligible (e.g., Electric Power Group, LLC v. Alstom S.A.), and so it is not clear that non-functional descriptive material rejections should continue to play a role in examination. Nevertheless, the doctrine still exists, and so this article presents three examples illustrating how you can respond to non-functional descriptive material rejections when they arise in your practice.

The U.S. Court of Appeals for the Federal Circuit (CAFC) earlier today affirmed a district court ruling that Biogen International’s patent for a method of treating multiple sclerosis (MS) was invalid for lack of written description. Judge O’Malley dissented, arguing that the district court clearly erred in its finding that Biogen was judicially estopped from drawing a distinction between clinical and therapeutic effect, and that the entire analysis “might well change” if the case was remanded “for reconsideration of the record with the understanding that the patent is not about clinical efficacy” but therapeutic effect.

Earlier this year, the European Patent Office (EPO) updated some of its Guidelines for Examination in a way that potentially could affect U.S. patent litigation. These Guidelines instruct European patent examiners (and the public) on how the patent prosecution process works—much like the United States Patent and Trademark Office’s (USPTO’s) Manual of Patent Examining Procedure. For example, the Guidelines detail what form a patent application must be in, what happens during a prior art search, and perhaps most importantly, what should be included in an application. Guideline F-IV 4.3 particularly focuses on the form, contents, and clarity of the claims.

On Friday, November 19, the USPTO announced that it will be delaying the $400 fee for patent applications filed in non-DOCX formats until January 1, 2023. Previously, the fee was set to take effect on January 1, 2022, but the Federal Register notice, officially published on Novemebr 22, indicated that the Office will undertake enhanced testing of its information technology systems as more users file in DOCX, and that it wants to give applicants more time to adjust to filing patent applications in DOCX format. The goal, according to acting USPTO Director Drew Hirshfeld, is to alleviate concerns that have been raised by users about rendering problems that could result in applicants losing their filing dates due to incorrect information being filed.

The question that we receive most frequently from inventors, usually independent inventors, relates to whether a provisional patent application can be refiled with the United States Patent and Trademark Office (USPTO).  Before giving the correct answer, it is critically important for everyone to understand that if a provisional patent application is refiled it may become impossible for a patent to ever be obtained, period.  Can a provisional patent application be refiled? The short, easy answer to the question is yes, of course you can refile the provisional application. The USPTO will be happy to have you refile the application, take your filing fee, and send you a new filing receipt. The problem for you, as an inventor, however, is the consequence of refiling a provisional application. So, while it may be very easy to do, and seem like you’ve just extended the life of your original provisional application, that is precisely NOT what has happened, and you may have – indeed likely have – made it impossible to ever obtain a patent anywhere in the world.

Earlier this year, we published our findings on some of the best performing patent firms of 2021. Now, we have evaluated this data at the attorney level, meaning that we can compare the activity and performance of patent attorneys and rank them based on their work. To calculate this ranking, our Data Science Team had to develop an AI-based tool to read tens of millions of PDF documents available through the U.S. Patent and Trademark Office’s (USPTO’s) Public Pair website and then use neural networks to identify the attorney responsible for each application.

Towards the end of 2019, I was finishing a book, AI Concepts for Business Applications. The last chapter was titled, “The Future.” I wrote about quantum computing and a version of deep learning that was related: a “quantum walk neural network.”In 1980, the idea of a quantum processing unit was proposed. Such a processing unit doesn’t use the 1s and 0s with which we’re familiar. That “classical” way of thinking is the way we think, with a 1 for true and a 0 for false, and combinations—for example, a “false positive.” Quantum computing is based on a “superposition” of states called “quantum bits” or “qubits” for short. But there’s a big difference between the way we think and the way nature behaves. In 1981, the late Caltech professor, Richard Feynman (a Nobel Prize co-winner for his work with “quantum electrodynamics”) summed it up: “Nature isn’t classical, dammit, and if you want to make a simulation of nature, you’d better make it quantum mechanical, and by golly it’s a wonderful problem, because it doesn’t look so easy.” Now, quantum computing is beginning to emerge.

The United States Patent and Trademark Office (USPTO) publishes a large number of notices in addition to guidelines for patent applicants. These guidelines are frequently updated, and it is critical to stay informed of those updates. On July 1, 2021, the USPTO published a notice in the Federal Register titled “Properly Presenting Prophetic and Working Examples in a Patent Publication.” In this notice, the USPTO defined prophetic and working examples, distinguished these concepts, and described their use and importance within patent applications. In contrast, this distinction is not made under Indian or Chinese law or practice. Furthermore, applicants are generally not required to provide prophetic or working examples, and the concept of prophetic examples is not recognized under Indian or Chinese patent law.

Blockchain’s history begins in 1991, when Stuart Haber and W. Scott Stornetta published a paper describing a cryptographically secured chain of blocks. It took another 18 years before a developer who called himself Satoshi Nakamoto released a white paper that established the model for a blockchain and then, a year later, implemented the first blockchain as a public ledger for transactions using bitcoin. The engine that runs the bitcoin ledger that Nakamoto designed is called the blockchain; the original and largest blockchain is the one that still orchestrates bitcoin transactions today. Blockchain technology was separated from currency in 2014, and that advance opened the door for using blockchain for applications beyond currency. The standout example is the Ethereum blockchain system, which introduced computer programs in a blockchain format, representing financial instruments such as bonds. These became known as smart contracts.

Drafting a patent application is a complex task that involves dealing with several critical components of the patent application. If one must ask any patent attorney about the crucial aspect of a patent draft, the answer will always be “the claims”. Even the simplest of mistakes in claims can pose risk to a patent application. In light of this, the following article highlights some potential pitfalls to avoid while drafting patent claims.

With the forecasted growth of global Artificial Intelligence (AI) market size, it is evident that AI is quickly becoming the solution to most software and service needs. AI has even infiltrated our homes—for example, we are increasingly seeing smart home systems that incorporate Internet of Things (IoT) technology along with a master AI virtual assistant. Undoubtedly, the technology has made space in the intellectual property-based service sector as well. For instance, to support patent searching, there are quite a few AI-based automated patent search tools available. Although many of these are still in their training stage, these tools are likely to mature. Thereafter, the question looming over innovators is whether to take advantage of affordable AI patent search tools or invest in outsourced manual patentability searches.

In 2015, I spotted what I thought might be an emerging technology: deep learning. Because of my engineering education, I was able to go up the “deep learning” curve. The term “deep learning” is the current name for a “deep neural network,” which was previously called a “multi-layer neural network.” While our organic brains are filled with approximately 86 billion neurons, the “deep learning” quest was built on mathematics and Graphics Processing Units (GPUs). It seemed like a breakthrough. With enough examples of a category, could a deep learning model assess data that the model hadn’t seen previously, and then score, rank and report the “matches” to a user? In short order, I was persuaded that the answer was yes.