Posts Tagged: "independent inventor"

Earlier this month, IP diversity advocacy group Invent Together announced that it had launched an online learning platform known as The Inventor’s Patent Academy (TIPA), an e-learning course designed in collaboration with Qualcomm to educate inventors from diverse and underrepresented backgrounds about the benefits of engaging with the U.S. patent system. This online academy is the latest of several efforts by Congress and patent system stakeholders in recent years to unlock the innovative potential of women, people of color, LGBTQIA, and low-income inventors to benefit the U.S. economy.

On June 7, the U.S. Patent and Trademark Office’s (USPTO’s) Director’s Blog published a post authored by USPTO Director Kathi Vidal announcing that the agency is now receiving applications from inventors seeking free legal assistance to bring ex parte appeals of patent examiner rejections to the Patent Trial and Appeal Board (PTAB). While Vidal’s announcement is certainly welcome news to many inventors who are in financial need, it fails to address larger issues faced by inventors at the PTAB that have been voiced by members of Congress and the inventor community alike in recent months.

On Wednesday, May 25, United States Patent and Trademark Office (USPTO) Director Kathi Vidal and a panel of academics from Silicon Valley participated in a 90-minute, live Q&A webinar regarding the state of the USPTO. I attended virtually. I am a five-time world jump rope champion and the only jump roper to design and patent a jump rope handle technology. I was granted my two patents (US 7,789,809 B2 and US 8,136.208 B2) in 2010/2012. I started my jump rope manufacturing business, JumpNrope, in 2010 here in Louisville, Colorado. I am proud to also say that I source all my jump rope parts and pieces from U.S. vendors. We make all our jump ropes by hand in Colorado. My technology not only changed the sport of jump rope by offering a precision speed jump rope handle, but it also changed the fitness industry. To date, hundreds of companies have infringed on my patent, including Rogue Fitness, the largest fitness distributor for CrossFit and Strongman. As detailed in my case, I believe that Rogue has willfully infringed on my patent since 2012 by selling tens of millions of dollars’ worth of infringing jump ropes per year.

On May 20, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Kaufman v. Microsoft Corp. affirming a jury verdict of $7 million in reasonable royalty damages against Microsoft’s Dynamic Data for generating web applications. The Federal Circuit denied various claim construction arguments advanced by Microsoft on appeal, including several raised on the proper meaning of “automatically generating” within the preamble to asserted claim 1, and reversed the Southern District of New York’s denial of prejudgment interest to Kaufman.

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.

All things in Washington are driven by money, media and votes. If you can deliver one or more of those things, you will get the results you want. Engaging in politics with this in mind is key to fixing the broken patent system by passing HR 5874, the Restoring American Leadership in Innovation Act (RALIA). Since no mortal can compete with Big Tech’s big bucks and their control of social media, and the media in general, the only lever remaining is delivering votes back home, or more importantly, delivering those votes to candidates who commit to supporting HR 5874.

Thirty percent of respondents to a survey of applicants using the U.S. Patent and Trademark Office’s (USPTO’s) Patent Pro Bono Program (PPBP) were African American or Black and 41% were female, according to the latest USPTO Director’s Blog. The demographic data were collected voluntarily in 2021from the 21 regional programs that administer the PPBP as part of the broader goal of diversifying the patent system. A 2019 USPTO study found that only 12.8% of all inventors named on U.S. patents are women, while a Harvard study said that white individuals are three times more likely to invent than Black individuals.

Senator Thom Tillis has come out on the record in support of Kathi Vidal to be the next Director of the U.S. Patent and Trademark Office (USPTO), on the eve of a Senate Judiciary Committee vote on her confirmation. Despite recent scrutiny of her ties to big tech and Silicon Valley, Tillis in a statement today said that he was satisfied with Vidal’s responses to his “tough questions” during the confirmation hearing process and feels he has received her commitment that she will continue the reforms implemented by former USPTO Director Andrei Iancu.

On December 1, Judge Alan Albright, sitting in the Waco Division of the Western District of Texas, granted a preliminary injunction (PI) to Gonza LLC, finding that all four factors of the judicial test for injunctive relief favored Gonza. IPWatchdog is told it is one of only a handful of PIs Albright has issued. On July 28, 2021, Gonza LLC sued Mission Competition Fitness Equipment (MCF) in the Waco Division of the Western District of Texas. Gonza sought both injunctive relief and damages arising out of MCF’s alleged infringement of its U.S. Patent No. 11,007,405 (the ‘405 patent). Gonza asserted that it developed the subject matter of the ‘405 patent, which discloses a neck exercise device with resistance bands that can be used to improve neck capabilities, during a period of over two years. In its complaint, Gonza contended that MCF released a knock-off device that used lower quality materials, but nonetheless infringed the ‘405 patent. Gonza argued that MCF’s infringement of their ‘405 patent created a loss of goodwill, eroded the market price, and caused extreme negative consequences for Gonza’s business.

The question that we receive most frequently from inventors, usually independent inventors, relates to whether a provisional patent application can be refiled with the United States Patent and Trademark Office (USPTO).  Before giving the correct answer, it is critically important for everyone to understand that if a provisional patent application is refiled it may become impossible for a patent to ever be obtained, period.  Can a provisional patent application be refiled? The short, easy answer to the question is yes, of course you can refile the provisional application. The USPTO will be happy to have you refile the application, take your filing fee, and send you a new filing receipt. The problem for you, as an inventor, however, is the consequence of refiling a provisional application. So, while it may be very easy to do, and seem like you’ve just extended the life of your original provisional application, that is precisely NOT what has happened, and you may have – indeed likely have – made it impossible to ever obtain a patent anywhere in the world.

Much deserved criticism has been leveled at the U.S. patent system in the last decade or so, from all sides. No one branch of the system seems to much appreciate what the other branches are doing. The Supreme Court and Federal Circuit are issuing decisions that seem innocuous at first, but then inevitably snowball into wrecking balls. Regulatory policies, guidelines and statutory prescriptions that are well intended when the ink dries turn lethal to patents—witness the creation of the Patent Trial and Appeal Board (PTAB). But, despite this situation, in the late summer/early fall of this year, in a brief burst of face-to-face patent events, I began to re-appreciate the value of the system and what it means to the country and our collective future.

Representative Thomas Massie (R-KY) on November 5 introduced a bill, titled the Restoring America’s Leadership in Innovation Act of 2021 (RALIA), HR 5874, that would repeal the Patent Trial and Appeal Board (PTAB), return the patent system to a “first-to-invent” model, rather than first-to-file, and would end automatic publication of patents. Inventor groups such as US Inventor and conservative groups are supporting the legislation.

In a letter provided last week to members of the National Council for Expanding American Innovation (NCEAI), Secretary of the U.S. Department of Commerce Gina Raimondo announced her role as Chair of the Council for Inclusive Innovation (CI2). I congratulate the Secretary for this extremely important role. Innovation should have no barriers, and both of these—a) innovation and b) the breaking down of unjust barriers—stand at the root of America’s success and identity. To aid the CI2 and all who create and execute innovation policy in our government, underrepresented inventors have an unresolved ask, and it involves breaking down a barrier identified by the very people who the CI2 and Congress desire to help. That ask is this: remedy the inventor’s second prong.

The 2022 class of inductees into the National Inventors Hall of Fame (NIHF), announced earlier this week, includes the inventors of the foundational technology for messenger ribonucleic acid (mRNA)-based vaccines, the Super Soaker, and Laserphaco cataract surgery. In all, 29 inductees will be honored at the Annual National Inventors Hall of Fame Induction Ceremony on May 5 of next year. Twenty-two of these inventors were announced in 2020.

Earlier today, U.S. Senators Thom Tillis (R-NC) and Patrick Leahy (D-VT), the Ranking Member and Chair of the Senate Intellectual Property Subcommittee, introduced a pair of bipartisan bills that the Senators say are aimed at improving the participation Americans from all backgrounds in the patent system and ensuring that the public knows the true owners of patents. If enacted, the Unleashing American Innovators Act (UAIA) would require the Director of the United States Patent and Trademark Office (USPTO) to establish another satellite office within three years somewhere in the Southeastern region of the nation, which the bill specifically defines as Virginia, North Carolina, South Carolina, Georgia, Florida, Tennessee, Alabama, Mississippi, Louisiana, and Arkansas. Of course, given that the main campus of the USPTO is located in Alexandria, Virginia, it would seem unlikely that Virginia would be the final destination of any Southeast Region satellite office. The UAIA would also require the Director to determine within two years whether any additional regional satellite offices are necessary to— in the words of the bill— “achieve the purposes described in section 24 23(b) of the Leahy-Smith America Invents Act… and increase participation in the patent system by women, people of color, veterans, individual inventors, or members of any other demographic, geographic, or economic group that the Director may determine to be underrepresented in patent filings.”