Posts Tagged: "patent prosecution"

Artificial intelligence (AI) is everywhere, touching nearly every aspect of our daily lives, including how we work, communicate, shop, travel and more. The term “AI” is generally understood to encompass computerized systems that perform tasks ordinarily perceived as requiring some form of human intelligence. Many AI-based systems are able to recognize trends, patterns and connections, test hypotheses using available data sets, and continuously improve decision trees based on user input. As such, AI has been shown to have near endless applications, driving a surge of inventions and related patent application filings.

Laches is an equitable defense that may be raised in a patent-related proceeding. If a defending party can show that a patent holder exhibited unreasonable delay that caused prejudice to the defending party, the patent holder may be barred by laches from asserting the right.While the examples of “reasonable” and “unreasonable” delay provided in Symbol Techs. are informative (as are the fact-specific analyses from the other cases), a bright-line test for “unreasonable delay” had yet to be established in the prosecution laches context. That is, until the June 2021 decision of Gil Hyatt v. Hirshfeld (Fed. Cir. 2021). This case pertained to the laches defense raised by the USPTO when Hyatt filed an action under 35 U.S.C. § 145 to obtain four patents subsequent to receiving an affirmance of rejections of various claims at the Patent Trial and Appeal Board (PTAB).

IPWatchdog and LexisNexis held a “Conversation with the Commissioner of the USPTO” today, in which Drew Hirshfeld, the U.S. Patent and Trademark Office (USPTO) Commissioner for Patents, Performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director, explained that, while he would prefer to wait until a political appointee is heading the Office to move ahead on substantive reforms, he will consider moving forward on important initiatives if necessary. “I’m trying to run the agency as if I was in this permanently, knowing I’m not and I won’t be, because I think that’s the right thing to do for the system,” Hirshfeld said. “If we’re going long enough without a nominee then maybe I need to move forward on things.”

Gilbert Hyatt filed hundreds of patent applications across fields such as machine control, audio and image processing, and computer technology. While many such applicants can similarly claim to have filed at least so many applications in these areas, Hyatt is perhaps somewhat unique in that: (1) he is a pro-se inventor; (2) he filed the vast majority of the applications shortly before the 1995 General Agreement on Tariffs and Trade (GATT) transition date when patent terms transitioned from 17 years from issuance to 20 years from filing; and (3) his applications are long with complex and extended priority chains. Hyatt has been characterized by some (e.g., Judge TS Ellis) as a “prolific inventor”. For others, Hyatt brings “submarine patents” to mind.

Almost two years ago, the Brazilian Patent and Trademark Office (BPTO) launched a plan to reduce the backlog in examination of patent applications, which has had positive results. As part of this important initiative, at the beginning of 2021, the BPTO published its action plan for the year indicating its intentions to increase the efficiency of services offered by the institution via new performance goals. The plan to combat the backlog has already resulted in a reduction of more than 60% of patent applications pending for decision. This has had a positive effect on the credibility of the Brazilian patent system domestically, but also has contributed to the improvement of the national and international attractiveness of the sector, which will possibly provide a greater incentive to protect patents in Brazil.

During the Senate Judiciary’s Subcommittee on Intellectual Property hearing, titled Protecting Real Innovations by Improving Patent Quality, held on June 22,  Jorge Contreras, Presidential Scholar and Professor of Law at the S.J. Quinney College of Law of the University of Utah, testified under oath that patents are effectively the same thing as products, and seemed to suggest that executive fraud unrelated to patents must make the patents fraudulent too. This, of course, is a fallacy. It shows a fundamental and deep misunderstanding of what patents are and how they work, and completely misrepresents law and logic. If taken seriously, Contreras’ testimony would destroy the value of virtually every patent portfolio and further chill investment in new technologies. It is an alarming position coming from a patent lawyer and credentialed law school professor who claims he is “intimately familiar with the topic of today’s hearings.”

How much detail is needed in a patent application for a software-based invention? Software patents present some unique challenges that many other kinds of patent applications do not need to contend with, one of them being the level of disclosure and care in drafting needed to avoid indefiniteness issues. While source code is not required in most cases, a growing body of case law indicates that insufficient detail about the algorithms underpinning the invention could render the patent claims indefinite, meaning that the scope of the claimed invention is too ambiguous. If the patent examiner deems the disclosure to be inadequate during examination, indefiniteness could prevent a patent from issuing. In the case of an already-issued patent, indefiniteness could render the claims unenforceable.

In the United States Patent and Trademark Office’s (USPTO’s ) patent academy (or today’s version of such), patent examiners are taught that the objective of the patent examiner is to “issue valid patents promptly.” In pursuing this institutional interest, each examiner conducts examinations that they independently manage. Although patent prosecutors cannot control an examiner’s decisions, they can establish a context that encourages a favorable outcome. If first and second application drafters each drafted applications to cover the same invention (that met all of the requirements of 35 USC 112) the presentation of the content in the respective applications could engender drastically different examination processes. This is because there is a relationship between the manner in which the content of a patent application is presented and the character of the examination process that follows.

To protect the inventions that are important to a company’s current and future success, the claims of the patents covering those inventions must accurately define the subject matter that is regarded as the invention and target the right infringers. Drafting claims that accurately define the subject matter that is regarded as the invention requires the crafting of claims to have metes and bounds that precisely circumscribe the subject matter which is regarded as the invention. This can be done by constructing independent claims such that the subject matter regarded as the invention forms the axis around which independent claims are structured. Using this approach, the content of the body of the independent claim is limited to the subject matter that has been identified as that regarded as the invention and any subject matter that is needed to support that subject matter. These subject matter parts are the elements that are needed to accurately define the subject matter protected by the patent. Organizing these elements into patent claim format with the elements recited as broadly as possible provides the fullest measure of protection to which the applicant is legally entitled. This process helps to ensure that those who engage in infringing activity related to the inventive subject matter are implicated by the claim for infringement.

Successful patent strategies for business are inexorably tied to the quality of the patents upon which the patent strategies depend. The quality of a patent depends upon the capacity of a patent prosecutor to resolve a series of non-trivial patent application drafting and/or examination challenges in order to secure the issuance of a valid patent that includes claims that provide a desired scope of protection. Such challenges can involve subjecting complex and/or unwieldy subject matter to patent form in a manner that yields an accurate, clear and complete detailed description of the invention and well-crafted claims. Moreover, they can involve managing difficult patent examiners who require the amendment of claims as a prerequisite to advancing the prosecution of the application. The detailed description and the claims are the parts of the patent that can be employed by the practitioner to imbue a patent with attributes that optimize their support of patent strategies for business.

There is a quid pro quo under the U.S. patent laws. In exchange for disclosing her invention, an inventor receives a limited monopoly. Recent developments, however, have made it harder for those in the biotechnology industry to obtain the benefit of this bargain. The written description requirement mandates that a patent specification convey to one of skill in the art that the inventors had possession of their invention as of the day they filed their patent application. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). Over the last decade, three areas have proven troublesome in the life sciences.

Last week, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the United States District Court for the Northern District of California’s final judgment of noninfringement of SpeedTrack’s (Plaintiff-Appellant) patent U.S. Patent No. 5,544,360 (the ‘360 patent). SpeedTrack sued online retailers AMAZON.COM, BESTBUY.COM, LLC, OFFICEMAX, INC., MACY’S, INC., MACYS.COM, LLC and many others for infringement of its category-based filing system. The ultimate decision weighed on the district court’s construction of claims and whether or not the ‘360 patent had a hierarchical structure. The district court construed the claims to not have a hierarchical structure and determined that defendants-cross-appellants did not infringe. The CAFC, with Judge Prost writing for the court, agreed.

Gilbert Hyatt was one of many applicants who filed many patent applications shortly before the June 8, 1995 transition point, where patent terms transitioned from being defined based on 17 years from issuance to 20 years from filing. However, he was quite unique in that he was an independent inventor who filed 400 patent applications before this transition point. The vast majority of these applications are still pending – decades after filing. Hyatt asserts that the long pendency is due to bad-faith behavior of the USPTO, while the USPTO asserts that the extended pendency is due to inaction by Hyatt and the complexity of the applications.

Every patent practitioner has faced the same obstacle — a client’s application is assigned to an unfamiliar art unit. This presents two challenges: unfamiliarity with the examiners and unfamiliarity with the application of the law. Here are three proven arguments that overcame Section 101 rejections in AU 3668 from which to draw inspiration.

On May 20, the U.S. Court of Appeals for the Ninth Circuit affirmed the decision of the United States District Court for the District of Nevada, holding that requests for information by the United States Patent and Trademark Office (USPTO) to an individual are exempt from the Paperwork Reduction Act (PRA). Gilbert P. Hyatt is the named inventor on hundreds of inter-related patent applications that encompass over 100,000 claims. See Generally Hyatt v. U.S. Pat. & Trademark Off., 797 F.3d 1377 (Fed Cir. 2015). Both Hyatt and the American Association for Equitable Treatment (AAET) contend that patent applicants should not have to comply with certain USPTO rules because, they allege, the USPTO is violating the PRA.