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Posts in USPTO

Ten Common Patent Claim Drafting Mistakes to Avoid

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.

The Section 145 Trilogy: Why More Applicants Might Take Patent Applications from the USPTO to the E.D. of VA

Typically, patent examiners are the prominent decision-makers controlling whether patent applications are allowed. However, Applicants have the power to change who controls these decisions. For example, each Examiner’s Answer must be approved by a supervisory examiner, so filing an Appeal Brief results in the supervisory examiner reviewing the rejections at hand, the appellant’s arguments, and the examiner’s responses to the appellant’s arguments. (If the supervisory examiner agrees with the appellant, then the application is either allowed or prosecution is reopened with one or more new rejections). So long as prosecution is not reopened, paying the Forwarding Fee subsequent to receiving the Examiner’s Answer results in jurisdiction shifting to the Patent Trial and Appeal Board (PTAB).

Comments on USPTO Patent Eligibility Study Reveal Stark Contrast in Viewpoints of Some U.S. Patent Stakeholders

Friday, October 15, marked the final day of the public comment period for the U.S. Patent and Trademark Office’s patent eligibility jurisprudence study. By the close of the comment period, 43 public comments were submitted from entities with very different viewpoints on the U.S. patent system. Public comments will be used to determine how the current state of Section 101 patent eligibility case law is impacting investment in U.S. innovation. Many comments raised dire concerns about the uncertain nature of Section 101 eligibility and how that uncertainty has been impacting R&D activities across the nation.

The Fintiv Deception: Leahy’s Legislative ‘Fix’ is Unwarranted in Light of Sotera Wireless

Several weeks ago, Senators Patrick Leahy (D-VT) and John Cornyn (R-TX) introduced the Restoring America Invents Act, which would reverse the reforms of the Patent Trial and Appeal Board (PTAB) introduced by former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu. The Senators claim that the legislation is necessary, among other reasons, to prevent undermining the Congressional intent in enacting the Leahy-Smith America Invents Act (AIA). According to Senator Leahy specifically, Director Iancu’s reforms politicized inter partes review (IPR) decisions by exercising discretion not to institute every IPR challenge filed by petitioners. “[Andrei Iancu] took actions that were designed to undermine the IPR process,” Leahy explained at a ceremony in September commemorating the 10th anniversary of the AIA. “[The Iancu reforms] hamstring the ability of the public to challenge poor-quality patents.”

USPTO Judges, Management, Accused of Bias—This Time at the TTAB

A motion filed on Friday, October 15, with the U.S. Court of Appeals for the Federal Circuit (CAFC) requests that the appellant, Charles Bertini, be allowed to present evidence not of record in order to demonstrate that bias at the Trademark Trial and Appeal Board (TTAB) may have had a negative impact on his case. Bertini owns the mark APPLE JAZZ, which was registered in New York state in 1991 for entertainment services. He began using the mark well before that, in 1985. Unaware that he did not have a federal registration, Bertini filed an opposition against Apple, Inc.’s federal registration for “Apple Music” in 2016, along with an application to register APPLE JAZZ with the USPTO.

Patent Owner Tells PTAB Precedential Opinion Panel Fintiv Factor 2 Should Be Modified Post-Arthrex

On October 8, a motion was filed on behalf of K.Mizra LLC asking the Patent Trial and Appeal Board’s (PTAB’s) Precedential Opinion Panel (POP) to review a PTAB institution decision on the ground that Apple Inc. v. Fintiv (IPR2020-00019) Factor 2 should be modified. Instead of comparing the proximity of the district court’s trial date to the projected time to a PTAB final written decision (FWD), the timing should account for completion of Director Review based on the Supreme Court’s ruling in Arthrex v. Smith & Nephew, said the motion. The issue has not been previously raised before the POP to IPWatchdog’s knowledge.

CAFC Shoots Down Due Process Challenges to PTAB Structure

In an appeal from the Patent Trial and Appeal Board (PTAB) brought by Mobility Workx against Unified Patents, the U.S. Court of Appeals for the Federal Circuit today ruled that the structure of the PTAB does not violate due process rights under the U.S. Constitution. While the PTAB’s ruling was ultimately remanded to the USPTO Director for review under Arthrex v. Smith & Nephew, the court said there is no evidence that PTAB administrative patent judges (APJs) have a financial interest in instituting inter partes review (IPR) proceedings. Judge Newman dissented from the majority’s “endorsement of the status quo.”

Where We Are on AI Inventorship and Where We Should be Heading

The past few years saw a meteoric rise of artificial intelligence (AI) products, services, and applications. AI has evolved from merely a buzzword or a cool new idea to a substantively used tool in a variety of applications, including autonomous driving, natural language processing, drug development, finance and cybersecurity among others. Companies, universities, and inventors world-wide noted the importance of AI and began seeking to patent various aspects of AI technology. Until 2018, these patent applications identified a human inventor who invented a particular aspect of the AI technology. Then, Dr. Stephen Thaler filed a patent application for a food container and a light emitting device that identified an AI, known as DABUS, as an inventor.

In re Surgisil: Boon, Burden, or Mixed Bag for Patent Applicants and Patentees?

Last week, the Federal Circuit Court reversed the Patent Trial and Appeal Board decision in In re Surgisil, L.L.P., overturning the Board’s ruling that a design for a rolled-paper art tool for blending anticipated Surgisil’s (Applicant) claimed lip implant. In re Surgisil, L.L.P., No. 2020-1940, 2021 WL 4515275 (Fed. Cir. Oct. 4, 2021). Although the “stump” art tool cited as prior art in Surgisil resembled Applicant’s lip implant (see below), the Federal Circuit found that Applicant’s “claim is limited to lip implants and does not cover other articles of manufacture.” From this finding, the Surgisil court appears to extrapolate a symmetry by which a design for an artist’s stump is both ineligible for citation against Applicant’s lip implant in patent prosecution and also not covered in a putative enforcement of Applicant’s design.

This Week in Washington IP: Ethics in Artificial Intelligence, Challenges with Carbon Removal and the USPTO Hosts the 2021 Hispanic Innovation and Entrepreneurship Program

This week in Washington IP news, Congress is largely quiet except for a hearing of the House Artificial Intelligence Task Force regarding ethical frameworks for developing artificial intelligence (AI) applications in various industries. Elsewhere in D.C., the Center for Data Innovation explores data driven approaches in addressing e-commerce counterfeits, The Brookings Institution hosts a conversation with Susteon’s Shantanu Agarwal on the challenges of carbon removal tech, and the U.S. Patent and Trademark Office kicks off the 2021 Hispanic Innovation and Entrepreneurship Program with multiple fireside chats and a panel on building networks and resources available to the community of Hispanic innovators.

Eagle Forum Event Participants Delve into Patent Eligibility ‘Goulash’

The extreme uncertainty that U.S. patent eligibility “validity goulash” jurisprudence has caused is wreaking havoc on inventors, especially those working on emerging technologies. It is also hindering patent owners’ ability to enforce their property rights, investment and licensing deal-making, and giving China advantages in global competitiveness. And it’s likely to get worse before it gets better. Those were takeaways from the Eagle Forum Education & Legal Defense Fund’s (EFELDF) “The Sorry State of Patentability: ‘Anything Under the Sun Made by Man’ No More” program in Washington, D.C. The September 29 event’s panelists considered patent eligibility from the Chakrabarty decision, which ruled a manmade living microorganism was patent-eligible, to dubious, damaging, judicially-created exceptions in such cases as Bilski, Mayo, Alice, Myriad and American Axle. The participants made painfully clear that the Alice-Mayo Framework doesn’t work and course correction is long overdue.

India Amends Patent Rules and Reduces Fees by 80% for Educational Institutions

On September 21, 2021, India’s Department for Promotion of Industry and Internal Trade (DPIIT) under India’s Ministry of Commerce and Industry published amended Patents Rules, 2021, to amend the 2003 Patents Rules. The amendment now includes a new category, “eligible educational institutions,” which qualifies for the same reduced fees as natural persons, startups, and small entities. This means any “eligible educational institution” will pay 80% reduced fees for the entire patent filing and prosecution, thereby hopefully incentivizing those institutions to apply for more patents, and bringing India a step closer to becoming a global player in patent filings.

CAFC Says Forum Selection Clause in NDA Does Not Apply to Inter Partes Review

The U.S. Court of Appeals for the Federal Circuit (CAFC) today held in a precedential decision authored by Judge Chen that a non-disclosure agreement’s (NDA’s) forum selection clause barring lawsuits to be brought outside of the New York court system did not apply to inter partes review (IPR) proceedings at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). Judge Newman dissented. Kannuu Pty Ltd. appealed to the CAFC asking that the court compel Samsung Electronics to seek dismissal of its instituted IPR proceedings at the PTAB seeking to invalidate Kannuu’s patents. Kannuu’s appeal was based on the terms of an NDA entered into between the companies during business negotiations in 2012.

Patent Filings Roundup: Uniloc (Fortress) Waves White Flag; IP Edge Files Dozens of Complaints to Start Third Quarter; Joao NPE Sues Texas Border Health Clinic, Withdraws

The third quarter came in like a wrecking ball, with district court patent filings spiking to 121 (roughly double average, driven entirely by a huge 48-complaint dump by IP Edge subsidiaries); Patent Trial and appeal Board (PTAB) filings were steady at 28, all  inter partes reviews (IPRs). A pattern seems to be emerging from IP Edge of a spike in settlements and terminations at the end of a fiscal quarter, followed by another round of filings when the next quarter starts. IP Edge is on pace to break the records it previously held for most complaints by a set of related entities in a calendar year. The Board denied another case under their Section 314(d) Fintiv discretion in light of an International Trade Commission (ITC) case, noting that, as “the ITC is scheduled to complete its investigation approximately seven-and-a-half months before the due date for the final written decision, this factor weighs in favor of exercising our discretion to deny institution.”

Report: Top IPR Law Firms of 2021

The annual IPR Intelligence Report evaluates all stakeholders in Inter Partes Review (IPR) proceedings each year. Here, we will reveal some of the best law firms involved in the 7,582 IPR challenges filed during the period of the study. In order to have a meaningful comparison, as well as compensating for the time required for each case from filing to completion (e.g. 6 to 18 months), we covered a period of five years, from July 1, 2016 through June 30, 2021, using the latest updates for the cases as of August 20, 2021. During this period, a total of 7,582 IPRs were filed to challenge 5,087 unique patents and 80,831 unique claims. Nine-hundred and thirty law firms and a total of 5,341 attorneys represented 2,658 companies involved in one or more IPRs as patent owners or petitioners.