Posts Tagged: "patent prosecution"

I recently had the opportunity to conduct an interview with Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, via WebEx. The focus of our conversation was the COVID-19 pandemic: USPTO efforts to work with stakeholders, the role of intellectual property in finding cures and treatments, and general thoughts relating to what the Office is observing. Our conversation also veered into Bayh-Dole and the the letter just sent by three-dozen state Attorneys General asking the federal government to use march-in rights against Remdesivir.

This year, Germany shot to the top of Bloomberg’s rankings for the most innovative nation worldwide, breaking South Korea’s six-year winning streak. Germany is a thriving European center for innovation where patent activity, high-tech density, and value-added manufacturing are on the rise. The country is particularly renowned for its modern car technology. It has designed award-winning high-speed roadways, digitally networked mobility, and some of the most advanced driverless vehicles. In fact, German patents for driverless cars have doubled in the last five years, and its top three patent areas in 2017 were Transport (11,000+ patents), Electrical Machinery (7,000+ patents), and Mechanical Elements (6,000+ patents). If you wish to join the trend and patent your innovation in Germany, here is a walk-through of the German patent application process.

During periods of economic instability, intellectual property (IP) can be a surprisingly attractive investment vehicle. Product innovation through patent investment can facilitate additional revenue generation through immediate lower-yield returns, as well as longer-term, higher-yield returns. When viewing IP as a true asset, the question for businesses is how to assess and maximize these advantages, particularly in challenging economic times. In-house legal departments are well-positioned to bring value to the business, particularly during an economic downturn, to create new and innovative opportunities and sources of revenue.

On August 10, Senator Tillis, the Chairman of the Senate Judiciary Committee Subcommittee on Intellectual Property, sent a letter to United States Patent and Trademark Office (USPTO) Director Andrei Iancu encouraging the Office to implement two administrative changes that would help to improve the effectiveness of the U.S. patent system. Noting that the Subcommittee has held a series of hearings on patent eligibility reform “with an eye toward improving the efficiency and effectiveness of U.S. patent law and its administration”, Tillis explained that he remains interested in finding ways to improve the patent system despite the inability of stakeholders to reach a consensus on legislative reforms as a result of the hearings. Tillis referred to a paper on patent reform by Stanford University professors Lisa Larrimore Ouellette and Heidi Williams that outlined three specific reforms to the U.S. patent system.

Despite their best efforts, patent practitioners may reach an impasse during negotiations with patent examiners at the United States Patent and Trademark Office (USPTO). If an applicant still desires patent protection, it can authorize the filing of a notice of appeal to the Patent Trial and Appeal Board (PTAB) and an associated appeal brief. Thus begins an ex parte appeals process in which a panel of at least three administrative patent judges (APJs) considers patentability of the rejected claims. Over the years, I’ve observed some patent attorneys and agents approach ex parte appeals as essentially a document assembly exercise: arguments from past Office action responses are pasted into a template and then submitted to the PTAB. In my view, such an approach represents a missed opportunity to present the strongest possible case for patentability. In a worst-case scenario, it may even prevent a client from securing the patent protection it deserves. To maximize clients’ chances of success, practitioners instead should approach appeals with the mindset of a strategist and advocate.

Greetings; John White here. It is time for you to “Think PCT” [Patent Cooperation Treaty] anew. If the last thing you remember hearing me say about the PCT was some pneumonic about how to ensure an International Filing Date (English Applicant Requests Priority Designation!), or how to calculate an old Section 102(e) date under the FOoT/DUSE  (Fee Oath Translation/ Designate United States (publish in) English) Rule for the Patent Bar Exam: good, you still remember it! You’ve put off senility a little further by keeping these things circulating in your steel-trap like brain! (Sadly, my voice is probably still rattling around in there as well, I suppose. Sorry about that…) But, let’s move on; it is now time to really understand the use and implementation of a PCT strategy in the modern era. The world is changing rapidly!

In the United States patent system, patent applications are handled by two separate, yet equally important, groups: the patent practitioners, who prepare and prosecute applications on behalf of inventors or their assignees; and the patent examiners, who examine the applications for the United States Patent and Trademark Office (USPTO) for patentability under U.S. patent law. Ryan Potts worked at the USPTO for over seven years, including several as a primary examiner, before joining Lando & Anastasi. Rob Lichter worked at the USPTO as a junior patent examiner before becoming a law firm associate. The following is a list of tips and insights to understanding and interacting with U.S. patent examiners.

The time is upon us when young patent professionals, many of them fresh out of law school (or out of engineering school) begin their professional lives as patent prosecutors. These new members to our profession quite naturally look to senior patent professionals for practical guidance. The guidance often is in the form of adages that form the Conventional Wisdom of patent prosecution. Much of this Conventional Wisdom, as it turns out, is often not very practical and some of it is not all that wise. In most cases, the Conventional Wisdom is not exactly wrong; it’s just that there may be other ways of doing things that may be more practical or effective for a particular practitioner. I’m going to talk about some pieces of Conventional Wisdom that I received that turned out to be, well, not-all-that-helpful advice. I will share what advice I would offer in its place.

The USPTO’s recent landmark decision (16/524,350) concluding artificial intelligence (AI) cannot be a named patent inventor perhaps sparked fears of super-robots inventing critical technologies that, alas, receive no patent protection. If an AI identifies new, more efficient battery chemicals, will that new battery be unpatentable? If an AI builds chemical compounds that become the next wonder drug, will that drug-maker…

On July 1, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a holding of the U.S. District Court for the District of New Jersey in Immunex Corporation, Amgen Manufacturing, Limited, Hoffman-La Roche Inc. v. Sandoz, Inc., Sandoz International GMBH, Sandoz GMBH, holding that Sandoz failed to prove that the asserted claims were invalid for obviousness-type double patenting (ODP), failure to meet the written description requirement, and obviousness for lack of motivation to combine the prior art references. The ruling for now blocks Sandoz from marketing its biosimilar version (Erelzi) of the popular rheumatoid arthritis drug, Enbrel. Judge Reyna dissented, arguing that certain clauses of the licensing agreement were illusory, thereby rendering the agreement an effective assignment for purposes of ODP.

I’ve recently hosted two webinars on patent classification, taking a look at how contractors for the U.S. Patent and Trademark Office (USPTO) determine where to route each patent application within the Office after filing. One webinar dealt with classification generally and a second dealt specifically with classification relating to computer implemented inventions. These webinars were fascinating on many levels. Did you know that the old patent classification system plays an important role in determining which Art Unit is assigned an application? And you probably thought you could forget about class 705! Not so fast! A sparsely populated technical disclosure in the specification with an inartful claim set is still a recipe for characterization in class 705, which still must be avoided at all costs if possible.

Beginners in answering office actions may find it intimidating and hope to learn from similar cases. If they are able to learn from the formats and arguments adopted by experienced patent agents, they will better handle tasks in a new work environment. This article will introduce several ways to help beginning patent attorneys and agents refer to templates of similar responses in answering office actions.

While perusing the Patent Gazette looking for interesting, recently issued patents to discuss during Intro to Patent Prosecution, I stumbled across U.S. Patent No. 10,668,819, titled Enhanced wireless charging. Issued on June 2, 2020, this patent was filed on May 22, 2017. The reason this particular patent caught my attention as I was looking for software patents and other high-tech patents and claims I could dissect for students was because the invention is to a wireless vehicle charging station. Those familiar with the Federal Circuit’s decision in ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759 (Fed. Cir. 2019), will recall that Chief Judge Prost (joined by Judge Chen) ruled that the claims directed to a wireless vehicle charging station of U.S. Patent No. 8,138,715, were abstract and patent ineligible. A review of the disclosure and claims of the recently issued ‘819 patent and the now several years old ‘715 patent tell the whole story and offer a valuable drafting lesson in this new age of eligibility uncertainty.

Around $8 billion is set to be spent this year on patent renewals at the top 10 patent offices. That total jumps to a staggering $184 billion due on all currently issued patents across the lifetime of those assets. While some businesses that have significant licensing operations may have to double down on developing and managing their portfolios over the coming years, the vast majority of in-house functions that operate as cost centers might well find themselves coming under increased budgetary pressures should market conditions worsen. 

Intellectual property (IP) is a “bridge to collaboration” between companies, and not just a “weapon of competitive warfare.” The U.S. Patent and Trademark Office (USPTO) launched an IP licensing marketplace, “Patents 4 Partnerships” (P4P), on May 4 that is a platform furthering this ideology. The P4P platform is initially being limited to technologies related to COVID-19 to address the ongoing pandemic. However, USPTO Director Andrei Iancu seems prepared to expand the platform to include other technologies, including artificial intelligence (AI) innovations and cancer treatments, based on interest and engagement during this pilot phase.