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Kirk Hartung

Patent Attorney, McKee, Voorhees & Sease

Kirk Hartung is a member of the Mechanical Patent Practice Group at McKee, Voorhees & Sease, PLC.

For more information or to contact Kirk, please visit his Firm Profile Page.

Recent Articles by Kirk Hartung

Conflicting Precedent for the Supreme Court in American Axle

The U.S. Department of Justice is encouraging the Supreme Court to grant certiorari to American Axle to clarify U.S. patent eligibility law. Thus, it appears that the chances are better than ever for this issue to get some much-needed attention…. After more than one year of waiting, the Justice Department filed their amicus brief on May 24, 2022. The Solicitor unequivocally stated that the Federal Circuit’s holding that the ‘911 claims are patent ineligible “is incorrect,” and that the appellate decision reflects “substantial uncertainty about the proper application of Section 101.” The Solicitor also noted that the Alice two-part test for patent eligibility enunciated by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014), has produced confusion in lower courts, and has “fractured” the Federal Circuit. (See Solicitor’s brief at page 19). The Solicitor also acknowledged the admitted difficulty for the U.S. Patent and Trademark Office (USPTO), inventors, businesses, and other patent stakeholders, in applying the Supreme Court’s precedents consistently with regard to patent eligibility under Section 101. The Solicitor urged that the Section 101 inquiry be guided by historical practice and judicial precedent. But Supreme Court precedent appears to be irreconcilable.

A Tale of Two Googles: Patent System Champion or Crux of the Problem?

On April 28, Google published a blog by their general counsel, Halimah DeLaine Prado, about the crisis condition of the U.S. patent system. Prado portrays Google as a strong supporter of the patent system, citing their history in initiatives to spur new inventions and technologies. For example, Google was a key player in 2013 in starting the Open Patent Non-Assertion Pledge (to not sue on open-source software). Google was also instrumental in the beginnings of the License On Transfer network (which helps members who have been sued by “patent trolls”). Google has provided technical support for the Prior Art Archive. Prado notes that Google has 42,000 patents, which she says they license at “fair value,” and sell to grow the portfolios of other companies, all in the interest of small businesses.

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.

Examining Tillis’ Proposal for a One-Stop IP Shop

North Carolina Republican Senator Thom Tillis has raised the possibility of a combined patent, trademark and copyright office so as to improve the federal government’s approach to all aspects of intellectual property. On January 26, the Senator sent a letter to the Chairman and Counsel for the Administrative Conference of the United States (ACUS) to undertake a study into whether there should be a unified, independent Intellectual Property Office. The Administrative Conference is an independent agency that makes procedural recommendations to the federal government. Tillis’ request is premised upon his view that currently there is a fractured approach to intellectual property in our federal government, with multiple IP functions spread across different agencies, leading to conflicting policy agendas and unnecessary bureaucracy. Tillis is the Ranking Member of the Senate’s Judiciary Committee’s subcommittee on Intellectual Property.