Posts in Inventors Information

Tips from a Former Examiner on How to Conduct Interviews at the USPTO

The “interview” during the patent prosecution process is a meeting typically held between a patent examiner and the applicant’s representative (i.e., a patent practitioner). In some cases, the inventor, assignee, or a subject matter expert may also be present. During my time as a United States Patent and Trademark Office (USPTO) patent examiner, I would almost always encourage scheduling an interview with applicant’s representative to discuss the merits. Curiously, many patent practitioners are not proactive in initiating an interview with the examiner. Why is an interview so important? When and how should it be held? How does an applicant’s representative conduct an effective interview?

Hyatt Returns to SCOTUS with Request to Clarify Standard for Summary Judgment, APA Scope of Review Provisions

Gilbert Hyatt, an inventor who has been granted more than 70 patents and has filed more than 400 applications with the U.S. Patent and Trademark Office (USPTO), has petitioned the U.S. Supreme Court asking the Justices to weigh in on his challenge of a policy he alleges the USPTO implemented in the 1990s to categorically deny him issuance of any additional patents. Hyatt has been embroiled in litigation with the USPTO for decades and won a previous Supreme Court appeal in 2012.  

Foreign Filing Requirements Part III: Managing Compliance

In Part II of this series, we reviewed three of the most popular jurisdictions for global patenting and their foreign filing restrictions for cross-border inventions. Our final article in this series will discuss how an applicant’s failure to comply with foreign filing restrictions may result in various penalties, ranging from invalidation of the patent to criminal consequences accompanied by fines, and even imprisonment. Before strategically planning the global patent filing of a new invention, the first step for a practitioner is to gather the relevant information. Because the foreign filing requirements vary greatly among countries, information beyond simply name and address of each inventor (or applicant if different from the inventor) needs to be collected. Given that some countries’ foreign filing license requirements are based on residency as well as nationality, it is necessary to know the citizenship and/or residency status of each inventor.

Navigating Foreign Filing Requirements for Cross-Border Patent Inventions (Part I)

With the rapid development of communication technologies, the world is more connected than ever. As the academic communities are drawn closer, international research collaborations increase dramatically. Researchers and scientists from all over the world often come together to make new inventions….. Such global collaboration can result in exciting innovations for which the inventors or their employers often would like to seek patent protections. Due to the “global” nature of these inventions, it is only natural that the applicants desire to patent them in multiple countries to maximize the rights. However, while science and technology observe no national borders, patent protections and related regulations do.

German Decision Could Provide an Answer to AI Inventorship

Germany’s Federal Patent Court has set aside a decision by the country’s Patent and Trademark Office (DPMA) that refused a patent application naming an artificial intelligence (AI) as the inventor. The decision was first rendered in November 2021 following oral argument, but the fully written opinion was only delivered March 31, and was published in German on the court’s homepage on April 19, 2022. The application was filed on October 17, 2019, and is titled “Food Container”. It named the applicant as Stephen L. Thaler and the inventor as “DABUS – The invention was autonomously generated by an artificial intelligence.”

Understanding the Importance of Words in Design Patents

Is the scope of a design patent determined by the figures alone? Two recent Federal Circuit decisions highlight that the words describing the article of manufacture in the title and claims can indeed limit the scope and enforceability of a design patent. In particular, the title and claims of the design patent contain important information that provide a more accurate and predictable notice of what is and is not protected by the design patent. Thus, the title and the claims of a design patent are particularly relevant to the scope of the patent—both for procurement and enforcement.

DABUS Sent Back to Drawing Board Following Reversal of Inventorship Decision by Australia Court

On April 13, 2022, the Federal Court of Australia, on appeal, reversed its 2021 decision that DABUS, an artificial intelligence (AI) machine, qualified as an inventor for a patent application under Australian law. DABUS is a computer built, programmed and owned by Dr. Stephen Thaler. Thaler has filed patent applications in several countries around the world for inventions created by DABUS. Each application names DABUS as the sole inventor. Patent offices in the United States, the United Kingdom, and Australia determined that the applications were incomplete, since a human inventor was not identified. Thaler appealed each application in the patent offices, all of which continued to rule that an AI machine was not an inventor. On further appeals, courts in the United States and the United Kingdom have agreed with the patent offices and ruled against Thaler. However, in 2021, the Federal Court of Australia issued an opinion by a primary judge, who reversed the Australian Patent Office and held that Australia’s law did not require an inventor to be a natural person.

Data Show USPTO Patent Pro Bono Program is Working for Women and Minorities

Thirty percent of respondents to a survey of applicants using the U.S. Patent and Trademark Office’s (USPTO’s) Patent Pro Bono Program (PPBP) were African American or Black and 41% were female, according to the latest USPTO Director’s Blog. The demographic data were collected voluntarily in 2021from the 21 regional programs that administer the PPBP as part of the broader goal of diversifying the patent system. A 2019 USPTO study found that only 12.8% of all inventors named on U.S. patents are women, while a Harvard study said that white individuals are three times more likely to invent than Black individuals.

Zaxcom Asks Full Federal Circuit to Clarify Court-Created Confusion on Presumption of Nexus

In February, the U.S. Court of Appeals for the Federal Circuit (CAFC) agreed with the Patent Trial and Appeal Board’s (PTAB’s) decision that the original claims of Zaxcom’s U.S. Patent No. 9,336,307 for Engineering Emmy® and technical OSCAR award-winning wireless microphone technology were unpatentable as obvious, but upheld the substitute claims Zaxcom had proposed. Now, Zaxcom has petitioned the court for rehearing en banc, arguing that the CAFC’s precedent in Fox Factory, Inc. v. SRAM LLC, 944 F.3d 1366 (Fed. Cir. 2019), “confused the law” regarding a rebuttable presumption of nexus.

What it Means that Russian Businesses Can Now Legally Steal Intellectual Property from ‘Unfriendly Countries’

Russian businesses now hold the key to pilfering, producing and profiting from western technologies. As of Monday, March 7, the Russian government has legalized intellectual property (IP) theft. With this move, businesses in Russia can now violate IP rights, as they no longer need to compensate patent holders from “unfriendly countries.” The list of “unfriendly countries” includes the United States, Canada, Australia, Switzerland, Norway, Iceland, the United Kingdom, Japan, South Korea, New Zealand, Singapore, Taiwan and all 27 European Union (EU) member countries. Russia has faced growing isolation from the Western world following President Vladmir Putin’s invasion of Ukraine. The United States, EU member countries and others recently initiated sanctions against Russia and have enacted crippling trade limitations. Currently, Russia is sufficiently meeting its supply and demand needs for agriculture, energy and natural resources. However, Russia’s isolation and growing lack of skilled producers have led to a stark decrease in technological production and innovation.

When it Comes to Eukaryotic Cells, Broad Institute Has Priority to CRISPR Gene Editing Tech, Says PTAB

The U.S. Patent and Trademark Office (USPTO) ruled in an interference proceeding yesterday that The Broad Institute, Inc., Massachusetts Institute of Technology, and President and Fellows of Harvard College (“Broad”) have priority over The Regents of the University of California, University of Vienna, and Emmanuelle Charpentier (“CVC”) with respect to who was first to invent the use of single-guide CRISPR-Cas9 genome engineering technology in eukaryotic cells.

CAFC Affirms District Court Finding that Dual-Access Lock Patents are Invalid Under 101

On February 14, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the Eastern District of New York’s grant of summary judgment that inventor David Tropp’s patents were invalid because they claim ineligible subject matter under 35 U.S.C. § 101. The appeal was brought by Tropp against Travel Sentry, Inc. and other lock and luggage makers. The asserted claims relate to U.S. Patent Nos. 7,021,537 (the ’537 patent) and 7,036,728 (‘728 patent). Representative claim 1 of the ’537 patent relates to a method of making available a dual-access lock having a combination-lock portion and a master-key-lock portion. The dual-access lock allegedly enables travelers to lock their bags while still allowing luggage screeners to access luggage (with a marked lock) with a master key.

Word Salad, Fact Confusion, and Lawyering: One Take on ParkerVision v. Qualcomm

Last month, I followed a hearing in a case called ParkerVision v. Qualcomm in Federal Court in the Middle District of Florida and reviewed the court briefs. This patent infringement case is potentially one of the largest of the year and is related to very important technology that miniaturized radio frequency (RF) transceivers, thus paving the way for the invention of the smartphone. Lawyer arguments in these hearings are very interesting, and you can learn a lot about the law. You can also learn how lawyers distort and twist the facts by confusing the court with word games, something I call word salad. Courts are pretty good at figuring out word games in most subject matter, but technology is foreign territory to many courts, so a well-tossed word salad can bring about an unjust decision.

Ten Mistakes to Avoid When Drafting Information Disclosure Statements

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.

Defanging Descriptive Material Rejections

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.