Posts in Inventors Information

Industry Commenters Say Minerva Ruling is a Win for Employee Mobility

Yesterday, the U.S. Supreme Court ruled 5-4 in Minerva Surgical, Inc. v. Hologic, Inc., Cytyc Surgical Products, LLC that the doctrine of assignor estoppel”—which bars the assignor of a patent from later attacking the patent’s validity—“is well grounded in centuries-old fairness principles…[but] applies only when the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent.” Most expected the Court to rule along those lines following oral argument earlier this year, but the split decision, which included two separate dissents, could signal this Court’s future interest in patent cases. Commenters below also said that the ruling will result in the doctrine of assignor estoppel being applied much less frequently and in much narrower circumstances, and that it will almost certainly never be applied in employee agreement situations going forward. Here is what some stakeholders had to say.

Disclosure Requirements in Software Patents: Avoiding Indefiniteness

How much detail is needed in a patent application for a software-based invention? Software patents present some unique challenges that many other kinds of patent applications do not need to contend with, one of them being the level of disclosure and care in drafting needed to avoid indefiniteness issues. While source code is not required in most cases, a growing body of case law indicates that insufficient detail about the algorithms underpinning the invention could render the patent claims indefinite, meaning that the scope of the claimed invention is too ambiguous. If the patent examiner deems the disclosure to be inadequate during examination, indefiniteness could prevent a patent from issuing. In the case of an already-issued patent, indefiniteness could render the claims unenforceable.

Patent Procurement and Strategy for Business Success Part III: Prosecution – Wielding an Invisible Hand

In the United States Patent and Trademark Office’s (USPTO’s ) patent academy (or today’s version of such), patent examiners are taught that the objective of the patent examiner is to “issue valid patents promptly.” In pursuing this institutional interest, each examiner conducts examinations that they independently manage. Although patent prosecutors cannot control an examiner’s decisions, they can establish a context that encourages a favorable outcome. If first and second application drafters each drafted applications to cover the same invention (that met all of the requirements of 35 USC 112) the presentation of the content in the respective applications could engender drastically different examination processes. This is because there is a relationship between the manner in which the content of a patent application is presented and the character of the examination process that follows.

Senate IP Subcommittee Mulls Ways to Improve Patent Quality (Again)

The Senate Judiciary Committee’s Subcommittee on Intellectual Property on Tuesday heard from four witnesses on the topic of “Protecting Real Innovations by Improving Patent Quality.” The topic has been addressed by the Senate IP Subcommittee before, and long-debated in patent circles generally. Under the leadership of its new Chairman, Senator Patrick Leahy (D-VT), the Subcommittee now seems to be revisiting the conversation and looking for practical fixes.

Patent Procurement and Strategy for Business Success Part II: Claims – Targeting the Right Infringers

To protect the inventions that are important to a company’s current and future success, the claims of the patents covering those inventions must accurately define the subject matter that is regarded as the invention and target the right infringers. Drafting claims that accurately define the subject matter that is regarded as the invention requires the crafting of claims to have metes and bounds that precisely circumscribe the subject matter which is regarded as the invention. This can be done by constructing independent claims such that the subject matter regarded as the invention forms the axis around which independent claims are structured. Using this approach, the content of the body of the independent claim is limited to the subject matter that has been identified as that regarded as the invention and any subject matter that is needed to support that subject matter. These subject matter parts are the elements that are needed to accurately define the subject matter protected by the patent. Organizing these elements into patent claim format with the elements recited as broadly as possible provides the fullest measure of protection to which the applicant is legally entitled. This process helps to ensure that those who engage in infringing activity related to the inventive subject matter are implicated by the claim for infringement.

Patent Procurement and Strategy for Business Success: Building and Strategically Using Patents that Target the Right Infringers and Thwart Competitive Countermeasures

Successful patent strategies for business are inexorably tied to the quality of the patents upon which the patent strategies depend. The quality of a patent depends upon the capacity of a patent prosecutor to resolve a series of non-trivial patent application drafting and/or examination challenges in order to secure the issuance of a valid patent that includes claims that provide a desired scope of protection. Such challenges can involve subjecting complex and/or unwieldy subject matter to patent form in a manner that yields an accurate, clear and complete detailed description of the invention and well-crafted claims. Moreover, they can involve managing difficult patent examiners who require the amendment of claims as a prerequisite to advancing the prosecution of the application. The detailed description and the claims are the parts of the patent that can be employed by the practitioner to imbue a patent with attributes that optimize their support of patent strategies for business.

After Hyatt v. Hirshfeld, it Might Be Time to Pay Attention to Prosecution Laches

Gilbert Hyatt was one of many applicants who filed many patent applications shortly before the June 8, 1995 transition point, where patent terms transitioned from being defined based on 17 years from issuance to 20 years from filing. However, he was quite unique in that he was an independent inventor who filed 400 patent applications before this transition point. The vast majority of these applications are still pending – decades after filing. Hyatt asserts that the long pendency is due to bad-faith behavior of the USPTO, while the USPTO asserts that the extended pendency is due to inaction by Hyatt and the complexity of the applications.

Biden is Missing an Opportunity at the USPTO

Intellectual property (IP) made modern vaccines possible. It took billions of dollars in private and public investments in research and development to be able to create, in record time, multiple viable vaccines to fight the COVID-19 pandemic. The entire world should be celebrating the innovators that continue to push forward with new solutions to problems we will face in the future. This pandemic will end, but there will be another. We should be eternally grateful to have companies like Pfizer, Moderna and Johnson & Johnson that have the capability to create and manufacture vaccines at large scale…. It has been over four months since President Biden’s inauguration. As of yet there has not been a nomination for the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO). In addition to running the USPTO, the Director is responsible for advising the President on intellectual property issues. I believe that President Biden would have benefitted from an experienced voice knowledgeable about the dangers of supporting the erosion of property rights during the discussions on whether to support India and South Africa’s proposal to the World Trade Organization to waive IP protections under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

Fit to Drive: Three Inspiring Office Action Responses from the USPTO’s Art Unit 3668

Every patent practitioner has faced the same obstacle — a client’s application is assigned to an unfamiliar art unit. This presents two challenges: unfamiliarity with the examiners and unfamiliarity with the application of the law. Here are three proven arguments that overcame Section 101 rejections in AU 3668 from which to draw inspiration.

Design Patents 101: Understanding Utility Patents’ Lesser-Known Cousin

Design patents provide powerful protections both on their own and as a complement to their more well-known cousin, utility patents. The highly publicized Apple v. Samsung lawsuits of the previous decade featured both design and utility patents, and revitalized public awareness of design patents in general. In fact, it was infringement of the design patents that resulted in the large damages awards in those litigations, with three design patents resulting in an award of $533.3 million and two utility patents only $5.3 million. Beyond the likelihood of greater money damages, as compared to their utility patent counterparts design patents are also less expensive to obtain and hold, offer simpler determinations of infringement and validity, and are less susceptible to being invalidated (whether, e.g., for non-patent eligible subject matter or via a post-grant procedure). As such, design patents are more likely to survive, potentially resulting in substantial damages for the patent holder.

Patent Filings Roundup: In Reversal, COVID Renders W.D. TX Trial Dates Uncertain for Fintiv; Semiconductor NPE Suits and PTAB Challenges on a Roll; Board Issues Order Barring Future Filings

A quiet week resulted in 28 petitions at the Patent Trial and Appeal Board (PTAB), mostly related to preexisting suits, though with a perhaps surprising number of semiconductor patents challenged, and three Qualcomm challenges to Monterey Research (i.e., Vector Capital) patents were all instituted; in general, the district courts had a light week with 55 patent filings, many complaints adding new defendants for old campaigns. Some of the recently filed complaints in the longest-running Blitzsafe campaign against were dismissed without prejudice against automotive OEMs; and probably most notable, in a Fintiv denial, a panel cited the global pandemic and the uncertainty of trial schedules in weighing that factor neutrally (while still exercising their discretion for other reasons), as discussed below. Sonos hit back with inter partes reviews (IPRs) against Google patents in their ongoing dispute.

Leahy-Tillis Amendments to Endless Frontier Act Opposed by Inventor Advocacy Group

The full U.S. Senate is currently considering passing S. 1260, the Endless Frontier Act, a bill that would establish a Directorate for Technology and Innovation within the National Science Foundation (NSF) that would work to establish U.S. dominance in crucial areas of basic research including artificial intelligence, high-performance computing and advanced manufacturing. The bill, which represents a bipartisan effort to address China’s ambitions to become a globally dominant technological power, includes a pair of amendments from Senators Patrick Leahy (D-VT) and Thom Tillis (R-NC) that would impact U.S. patent law by requiring foreign entities to register ownership changes to ensure the availability of infringement remedies, and by increasing the scope of ex parte reexamination to adjudicate whether patent claims are unenforceable for inequitable conduct. But according to small business and independent inventor advocacy group US Inventor, these amendments would negatively impact small inventors.

Ninth Circuit Upholds Ruling Against Gil Hyatt: The Paperwork Reduction Act Does Not Apply to Individualized Communications Between The USPTO and Applicants

On May 20, the U.S. Court of Appeals for the Ninth Circuit affirmed the decision of the United States District Court for the District of Nevada, holding that requests for information by the United States Patent and Trademark Office (USPTO) to an individual are exempt from the Paperwork Reduction Act (PRA). Gilbert P. Hyatt is the named inventor on hundreds of inter-related patent applications that encompass over 100,000 claims. See Generally Hyatt v. U.S. Pat. & Trademark Off., 797 F.3d 1377 (Fed Cir. 2015). Both Hyatt and the American Association for Equitable Treatment (AAET) contend that patent applicants should not have to comply with certain USPTO rules because, they allege, the USPTO is violating the PRA.

Republican Senators Demand Answers from Biden on ‘Disastrous Decision’ to Support COVID IP Waiver

A group of 16 Republican senators sent a letter on Wednesday to U.S. Department of Commerce Secretary Gina Raimondo and U.S. Trade Representative (USTR) Katherine Tai denouncing the Biden Administration’s “disastrous decision” to support a proposal at the World Trade Organization (WTO) to waive intellectual property (IP) rights for COVID-19-related inventions and products.  The letter explains that the waiver is not limited to vaccines and “will do nothing to end the pandemic,” but will instead “undermine the extraordinary global response that has achieved historically remarkable results in record time and our nation’s global leadership in the technologies, medicines, and treatments of the future.”

IDEA Act Added as Amendment to U.S. Innovation and Competition Act

Senate Majority Leader Chuck Schumer (D-NY) this week filed the United States Innovation and Competition Act of 2021 as a substitute amendment to the Endless Frontier Act, thereby bringing that bill together with a number of other bipartisan bills, including the Inventor Diversity for Economic Advancement (IDEA) Act, which passed out of the Senate Judiciary Committee last month. The IDEA Act is aimed at improving the U.S. Patent and Trademark Office’s (USPTO) demographic data-gathering efforts to better understand the rates at which women, people of color, and lower-income individuals are inventing and patenting. The Innovation and Competition act is primarily aimed at out-competing China in critical technology sectors.

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