Posts in Inventors Information

One day before the U.S. Patent and Trademark Office (USPTO) is set to hold its first public listening session on AI inventorship, the U.S. Supreme Court today denied certiorari in the case of Thaler v. Vidal, which asked the Court to consider the question: “Does the Patent Act categorically restrict the statutory term ‘inventor’ to human beings alone?” Dr. Stephen Thaler lost his case at the U.S. Court of Appeals for the Federal Circuit (CAFC) last August, when the CAFC said the USPTO’s reading of the statute as clearly referring to inventors as natural person was “unambiguously” correct.

The United States Patent and Trademark Office (USPTO) sent out an email alert on March 16, 2023 about its transition to eGrants for patents. This change to electronic patent grants as opposed to paper patents is in accord with the USPTO’s continued changes to an all-electronic and no paper system. Prior changes have included all-electronic office actions, and of course the USPTO’s EFS-Web system, in which filings are made electronically with the USPTO. One important thing to realize is that a patent may grant very soon after payment of the issue fee, so if the Applicant desires to have a continuation, continuation-in-part (CIP), and/or divisional application filed (all such applications are referred to as “continuing applications”), they should really do so before or at the same time the issue fee is paid, in order to maintain the pendency with the to-be-issued patent.

Recently, ChatGPT (Generative Pre-trained Transformer), an artificial intelligence (AI) chatbot program developed by OpenAI, has become a popular topic, attracting much attention and discussion. Its applications in the fields of natural language processing and text analysis have been well documented and have aroused great interest. It can be used to generate various language models, such as natural language texts, dialogues, and question-answering. It is currently one of the most advanced and efficient technologies in the language field. ChatGPT has a wide range of applications. In fields like medical, financial, legal, and media, ChatGPT can also be used to generate and analyze text data, thereby improving work efficiency and accuracy. Recently, the technology has even been used in the realm of intellectual property, with some having used it to draft patent applications.

Whether or not the law recognizes a machine as the inventor-at-law, the facts are indispensable to determination of the true inventor-in-fact. In the case of Stephen Thaler’s attempt to obtain patent protection for a food container and light stick he says were independently invented by his AI machine, DABUS, the inventor-in-fact will be either Thaler or his machine. The procedural posture of Thaler v. Vidal caused the discourse to jump over the facts of how the food container and the light stick were invented by DABUS. These overlooked facts may reveal the true inventor, regardless of whether or not the type of inventor is recognized by the current law. 

I attended the hearing at the U.S. Court of Appeals for the Federal Circuit (CAFC) in Maalouf v. Microsoft on Monday February 6, 2023, and the CAFC issued its opinion in the case this past Thursday. This case has curious origins. Through his company Dareltech, Ramzi Khalil Maalouf, a Lebanese immigrant and U.S. citizen, sued Xiaomi, a Chinese multinational corporation, for patent infringement in New York. The case was dismissed without prejudice because Xiaomi was found not to have a physical presence in New York, notwithstanding their proven secret office.  Later, Microsoft, naming Xiaomi as the real party in interest, filed an Inter Partes Review (IPR) with the Patent Trial and Appeal Board (PTAB). In other words, a U.S. Big Tech multinational acted on behalf of a China-controlled multinational to invalidate the patents of a small American inventor, thus clearing the way into the U.S. market for the China-controlled multinational.

The U.S. Patent and Trademark Office’s (USPTO’s) announcement early last week that it is requesting public comments on artificial intelligence (AI) and inventorship indicates that changes may eventually be implemented with respect to how the Office considers inventions created, or partially created, by AI machines. The Office is asking for input on 11 questions, including “how does the use of an AI system [in the invention process]…differ from the use of other technical tools”; whether AI inventions may be patentable under current patent laws on joint inventorship; and if statutory or regulatory changes should be made to better address AI contributions to inventions.

The U.S. Patent and Trademark Office (USPTO) announced on Tuesday that it is once again extending the deadline for submissions on its “Request for Comments on USPTO Initiatives to Ensure the Robustness and Reliability of Patent Rights.” The Office originally published the Federal Register Notice on October 4, 2022, with a deadline of January 3. That deadline was then extended to February 1 in November, with a note that “this will be the only extension of the comment period.” But on Tuesday, the Office said it will extend the deadline a second time “to ensure that all stakeholders have a sufficient opportunity to submit comments on the questions presented in the October 4, 2022, notice.” The announcement also asserted that “this will be the last extension of the comment period.”

Inventions are secrets, at least until they are divulged to others. It would be lovely if an inventor could simply tell their secret to the world and receive just compensation in exchange. However, human nature tells us that people are reluctant to pay for something they are using unless someone makes them pay for it. When an inventor files a patent application, the secret of their invention is instantly shared with the world via public disclosure. As a result of the speed with which the inventor’s secret is shared with the world, receiving just compensation from users of that secret is particularly difficult.

The United States Patent and Trademark Office (USPTO) is requesting public comments on artificial intelligence (AI) and inventorship via a Federal Register Notice published today, February 14. The Office has sought comment on the topic before, but not since its decision to deny patent protection to inventions created by Stephen Thaler’s artificial intelligence (AI) machine, DABUS. That decision was upheld by the district court and U.S. Court of Appeals for the Federal Circuit (CAFC) on appeal, but the CAFC in its decision left open the possibility that inventions made by human beings with the assistance of AI may be eligible for patent protection.

Case law has defined prosecution laches as an affirmative defense against an infringement assertion. Specifically, the case law indicates a patent that is being asserted is unenforceable when the patentee caused an unreasonable and unexplained delay in prosecution of the patent. Symbol Tech v Lemelson Medical, No. 04-1451 (Fed. Cir. 2005). There is relatively little case law on the specifics of laches. However, in 2021, the Federal Circuit said: “we now hold that, in the context of a § 145 action, the PTO must generally prove intervening rights to establish prejudice, but an unreasonable and unexplained prosecution delay of six years or more raises a presumption of prejudice”. Gil Hyatt v. Hirshfeld (Fed. Cir. 2021). What does this – or might this – mean beyond the Hyatt case?

Yesterday, February 1, was the deadline for submissions to the U.S. Patent and Trademark Office (USPTO) on its call for responses to a number of questions purportedly aimed at making U.S. patents more “robust and reliable.” But many commenters have weighed in to question why the Office is relying on data driven by advocacy groups to explore potentially major adjustments to the U.S. patent system when, as the expert agency on patents, it has not yet undertaken a data-driven study itself to confirm the need for such changes. The key data being questioned is that of  the Initiative for Medicines, Access & Knowledge (I-MAK), an advocacy organization that has become a “principal, go-to source” for data on the number of patents and patent applications covering pharmaceutical innovations. Some of the questions raised in the USPTO’s Request for Comments (RFC) seem to be based on many of the premises of the I-MAK data.

The inventor of a novel jump rope system (the Revolution Rope), Molly Metz, argued in a reply brief to the U.S. Supreme Court filed on behalf of her company, Jump Rope Systems, LLC, on Tuesday that her case against Rogue Fitness is justiciable and the company has standing despite the cancellation of her patent claims by the U.S. Patent and Trademark Office (USPTO). Jump Rope Systems filed the brief in reply to Rogue Fitness’s brief in opposition, which was filed on January 19. Metz and Jump Rope Systems originally sued Rogue Fitness in 2018. But after Rogue filed a petition for inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) ruled that Jump Rope Systems’ two patents (US 7,789,809 B2 and US 8,136.208 B2) related to jump rope handle technology were unpatentable.

Last October, the United States Patent and Trademark Office (USPTO) issued a Request for Comments on USPTO Initiatives To Ensure the Robustness and Reliability of Patent Rights. Responses to this request are due by this Thursday, February 2, 2023. Patent owners, especially small businesses and independent inventors, need two things of the patent system: 1) Reliability/believability. We need patents that are respected when they are issued. We do not want any doubt about their validity. 2) Flexibility. We use many different strategies during patent prosecution. Many of our strategies reflect the startup-nature of our inventions, where we are constantly working on the product-market-fit. We may need several bites at the apple to effectively protect our invention. The Request for Comments suggests several different changes to patent prosecution, none of which address small companies’ needs.

As Robert Frost poetically noted, two roads diverged in the woods he was exploring. One road was well trod, easy to traverse, and the other less traveled, difficult and getting weedy. Sadly, although Americans pride themselves on innovation, American innovation, particularly inventorship, is now the difficult road. Bad decisions made in previous forks in the road have gradually undermined the innovative spirit in our nation, but some inventors in Washington, DC, next week want to change course before we automatically go down the well-trod path.

While working as a patent examiner at the U.S. Patent and Trademark Office (USPTO) in Art Unit 2121 (artificial intelligence, or AI) I noticed that the typical patent application that I examined had seven method claims, seven apparatus claims, and six computer-readable medium (CRM) claims. In the typical application, the method and apparatus claims were mirrors of each other, and the first five CRM claims were mirrors of claims 1-5 and the last CRM claim combined the subject matter of claims 6 and 7. While examining a typical patent application, I only had to find prior art that taught these seven unique claims to reject the entire patent application. This led me to ponder why applicants are wasting the 13 other claims included with the standard filing fee with mirrored claims. Though best practice is to have multiple statutory categories with mirror claims by the time of allowance for enforceability reasons, there is a potential advantage for the applicant to file fewer mirror claims initially.