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Aseet Patel

is a partner in the Chicago office of the intellectual property law firm of Banner & Witcoff. Aseet concentrates on patent prosecution, counseling, licensing, and litigation matters, for a wide range of industries including electrical, computer, IoT, cybersecurity, medical, financial, and apparel industries. He provides opinion counseling services to clients, including various types of clearance opinions on both utility and design patents. Aseet relies on his experience as a former U.S. Patent Examiner at the U.S. Patent and Trademark Office when representing clients. Before serving at the USPTO, Aseet was a consultant and programmer for an e-Commerce software start-up, where he helped develop and deploy multi-million dollar software products for Fortune 500 clients using HTML, SQL, Java, Javascript, and other web technologies.

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Recent Articles by Aseet Patel

Examining the USPTO’s Patents 4 Partnerships Platform

Intellectual property (IP) is a “bridge to collaboration” between companies, and not just a “weapon of competitive warfare.” The U.S. Patent and Trademark Office (USPTO) launched an IP licensing marketplace, “Patents 4 Partnerships” (P4P), on May 4 that is a platform furthering this ideology. The P4P platform is initially being limited to technologies related to COVID-19 to address the ongoing pandemic. However, USPTO Director Andrei Iancu seems prepared to expand the platform to include other technologies, including artificial intelligence (AI) innovations and cancer treatments, based on interest and engagement during this pilot phase.

First PTAB Reversals Under New Subject Matter Eligibility Guidance

Since having been sworn in as the new director of the U.S. Patent and Trademark Office (USPTO) in February 2018, Andrei Iancu has led the charge to improve predictability of patent-eligible subject matter. In his speech at the Intellectual Property Owners’ (IPO) Association’s annual meeting in Chicago in late September 2018, the director told IPO’s membership that the USPTO is “contemplating revised guidance to help categorize the exceptions [to patent eligibility]—and indeed to name them—and instruct examiners on how to apply them.” Moreover, Director Iancu had created a new post that coordinates between the Patent Trial and Appeal Board (PTAB) of the USPTO and the examining corps, and he installed former PTAB Chief Judge David Ruschke to that post in August 2018. True to his word, on January 7, 2019, Director Iancu issued “2019 Revised Patent Subject Matter Eligibility Guidance,” which explains how U.S. Patent Examiners should analyze patent-eligibility questions under the judicial exception to 35 U.S.C. § 101. See 84 Fed. Reg. 50-57 (Revised Guidance). In less than two weeks since the Revised Guidance, the PTAB issued two decisions reversing examiners’ 35 USC § 101 rejections based on the Revised Guidance—ex parte Rockwell, Appeal No. 2018-004973, Jan. 16, 2019; and ex parte Fanaru, Appeal No. 2017-002898, Jan. 22, 2019.