Posts in Inventors Information

Humanizing Technology: Back to Basics on DABUS and AI as Inventors

With South Africa’s patent office having recently granted the first patent to an AI inventor, and an Australian court ruling in favor of AI inventorship, it’s time to review how we got here—and where we’re going. The number of artificial intelligence (AI) patent applications received annually by the United States Patent and Trademark Office (USPTO) grew from 30,000 in 2002 to more than 60,000 in 2018. Further, the USPTO has issued thousands of inventions that utilize AI. According to a 2020 study titled “AI Trends Based on the Patents Granted by the USPTO”, the total number of AI-related patents granted by the USPTO per year increased from 4,598 in 2008 to 20,639 in 2018. If AI-related patent applications and grants are on the uptick, what was the problem with DABUS?

PPAC Announcements: Hirshfeld Doubles Down on Director Review Authority; Commerce Department to File for Registration of USPTO Trademarks; Committee Requests Release of $64 Million in User Fees

During the Patent Public Advisory Committee (PPAC) quarterly meeting held today, participants provided an update on the Director Review process under the Supreme Court’s Arthrex v. Smith and Nephew ruling, among other announcements. Patent Trial and Appeal Board (PTAB) Senior Advisor and Judge Linda Horner noted that, since the ruling, 14 timely requests for Director Review have been received; 11 of those were for a batch of related inter partes reviews (IPRs). Hirshfeld this week issued two decisions on the first two requests, denying both; the rest remain pending.

We Have to Believe: Keeping an Open Mind on AI is Vital to the Future of Our Patent System

In response to articles on implementing AI into our patent system, and specifically to the suggestion that we should consider developing AI to replace some aspects of human decision making in the patent space, we have received a number of comments and even objections to the idea. A common objection: it is likely impossible and impractical for us to advance AI to the point where it can make reliable subjective decisions (e.g., infringement and obviousness), let alone reliably replace human decision making. At the outset, we challenge the presumption of this argument.  

CAFC Holds Bylaws Failed to ‘Effectuate Present Automatic Assignment’, Thwarting Apple’s Attempt to Dismiss Infringement Suit

On August 2, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the U.S. District Court for the Northern District of California’s denial of Apple’s motion to dismiss in Omni MedSci, Inc. v. Apple, Inc. The majority, with Judge Linn writing, determined that the University of Michigan’s (UM’s) bylaws did not effectuate a present automatic assignment of patent rights from one of its faculty members…. The CAFC concluded that paragraph 1 of Bylaw 3.10 does not unambiguously constitute either a present automatic assignment or a promise to assign in the future and is instead best read as a “statement of intended disposition and a promise of a potential future assignment . . .”

DABUS Scores Again with Win on AI Inventorship Question in Australia Court

The Federal Court of Australia on Friday ruled in Thaler v Commissioner of Patents [2021] FCA 879 that an artificial intelligence (AI) system can be an inventor under the Australian Patents Act. The Honorable Justice Beach, in a very thorough judgment, set aside the decision of the Deputy Commissioner of Patents that patent application no. 2019363177 did not comply with reg 3.2C(2)(aa) of the Patents Regulations 1991 (Cth), which “requires that the applicant, who in this case is Dr Stephen Thaler, must provide the name of the inventor of the invention to which the application relates.” The Deputy Commissioner of Patents said that Thaler could not name an inventor because an AI simply cannot be an inventor under the Act. But Justice Beach said “that position confuses the question of ownership and control of a patentable invention including who can be a patentee, on the one hand, with the question of who can be an inventor, on the other hand.”

How J.E.M. and Chakrabarty Make the Case for DABUS

Twenty years ago, the U.S. Supreme Court ruled for the first time that plants could be protected with utility patents. J.E.M. Ag Supply, Inc., v. Pioneer Hi-Bred International, Inc. 534 U.S. 124 (2001). Forty-one years ago, the U.S. Supreme Court ruled for the first time that living organisms were patentable. Diamond v. Chakrabarty, 447 U.S. 303 (19080). Before these landmark cases, plants and living matter were not protectable with patents. The rationale of the Supreme Court in J.E.M. and Chakrabarty supports patent protection for inventions by non-humans, i.e., artificial intelligence inventors.

Billionaire Space Race Between Bezos and Branson (and Musk) Pushes Forward Next Generation of Spaceflight Innovation

This July has been a landmark month for the commercial space sector thanks in large part to the determination of two tech billionaires: Richard Branson, business magnate and founder of the Virgin Group; and Jeff Bezos, the former CEO of e-commerce titan Amazon.com. Both of these icons of business entrepreneurship reached the outer limits of Earth’s gravity to slip into space for a brief moment in recent weeks—Branson in the VSS Unity, owned by his Virgin Galactic spaceflight company, and Bezos in the New Shepard craft developed by his Blue Origin firm. The successful spaceflights for both Branson and Bezos are breathing life into the nascent space tourism industry, as many others with the wealth to pay for a seat to outer space are lining up for the opportunity.

A Closer, Evidence-Based Look at ‘Patent Quality’ Advocacy

The Patent Infringer Lobby has ramped up banging the drum about “patent quality.” They dedicated a week-long campaign to questioning “patent quality,” which its constituents regard as a huge problem. Advocates have taken advantage of the vacuum left after U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu left the building. Anti-patent advocates are exploiting the new dynamic of Senator Patrick Leahy, coauthor of the America Invents Act (AIA), who now chairs the Senate Intellectual Property Subcommittee. Leahy recently did the Infringer Lobby the favor of holding a hearing on this subject.

DABUS Gets Its First Patent in South Africa Under Formalities Examination

South Africa’s patent office has granted the first patent for an invention conceived by an artificial intelligence (AI) inventor, DABUS. The country does not have a substantive patent examination system, and thus the significance of the grant may not be as great as it would be in other jurisdictions—but the DABUS team is celebrating. The patent is for “a food container based on fractal geometry,” and was accepted by South Africa’s Companies and Intellectual Property Commission on June 24. The notice of issuance was published in the July 2021 Patent Journal.   

USPTO Implementation of Arthrex: Questions from Administrative Law, Part II—the Bigger Picture for Reform

In Part I, we looked at two of the legal principles that govern Arthrex Director review: Director review must be implemented by notice-and-comment “regulation,” not website, and the Administrative Procedure Act (APA) requires that the Director’s decision demonstrate “reasoned decisionmaking.” Today, we’ll look at a few more legal obligations that confine the U.S. Patent and Trademark Office’s (USPTO’s) discretion as the USPTO seeks a lawful implementation of Director review. This Part II concludes with a plea that the USPTO take the public interest seriously, as the public interest is reflected in various statutes outside the Patent Act.

‘AISITAs’ and Written Description Requirements: Considerations and Guidance for AI Patent Applications

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.

USPTO Implementation of Arthrex: Questions from Administrative Law, Part I—Dismissal and Subregulatory Rulemaking

In United States v. Arthrex, No. 19-1434, 141 S.Ct. 1970 (Jun. 21, 2021), Chief Justice Roberts cured an Appointments Clause defect in the Patent Trial and Appeal Board’s (PTAB’s) organic statute by holding that 35 U.S.C. § 6(c) “cannot constitutionally be enforced to the extent that it[] prevent[s] the Director from reviewing final decisions rendered by APJs.” Arthrex, slip op. at 21. Henceforth, rehearings are no longer the exclusive domain of PTAB panels, and the U.S. Patent and Trademark Office (USPTO) must provide at least one path of review that flows through the agency head…. This article discusses a number of issues of administrative law that must be addressed before the USPTO can proceed. The PTAB now resembles a poorly-maintained building—after decades of benign neglect, and more than a little old-fashioned cheating to evade work that’s required by the statute, a stress has induced a collapse.

ITC and Trade Secret Cases Against Apple Over Pulse Oximetry Tech Highlight Need for Better Ways to Rein in Big Tech

In late June, medical technology firm Masimo Corporation and its consumer device subsidiary Cercacor Laboratories filed a complaint with the U.S. International Trade Commission (ITC) asking the agency to institute a Section 337 investigation into several versions of the Apple Watch. Masimo’s allegations, which also include trade secret litigation ongoing in U.S. district court, follow an increasingly familiar narrative in which a Big Tech player, in this case Apple, engages in licensing negotiations with a small tech developer, only to poach employees and ideas from the smaller firm without paying the original developers.

Emerging Anti-IP Policies the Focus of Heritage Foundation Event

At today’s Heritage Foundation event in Washington, D.C., titled Restoring American Leadership in Patent Law and Innovation Policy, former U.S. Patent and Trademark Office Director (USPTO) Andrei Iancu began by lamenting the failure of decision makers to make the connection between intellectual property and innovation. Increasingly, policy makers think innovation just happens, Iancu explained, with too many believing monetization happens after the fact, rather than driving innovation. “Without IP, the free market does not participate, or does not participate to scale,” Iancu told the Heritage audience. Laurie Self, Senior Vice President and Counsel, Government Affairs, Qualcomm, agreed with Iancu and added that, without a strong patent system, there is no opportunity to maintain a strong innovation leadership position. Presumably alluding to developments such as the Biden Administration’s support for waiving IP rights under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) related to COVID-19 inventions and the recent Executive Order on Competition, Self said: “We are seeing a series of policies that if implemented would undermine our system… this cognitive dissonance is a threat.”

Did the USPTO Institute Procedural Obstacles to Block Patents for a Particular Applicant?

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.

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