Posts Tagged: "patent office"

The U.S. Patent and Trademark Office (USPTO) today announced that a final rule will be published tomorrow, November 16, in the Federal Register implementing a design patent practitioner bar. The Office first published a Notice of Proposed Rulemaking (NPRM) to the Federal Register in May 2023 contemplating a separate design patent practitioner bar. A request for comments (RFC) was also published in October 22.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal today designated as precedential a Patent Trial and Appeal Board (PTAB) decision from March of this year that held a precedential U.S. Court of Appeals for the Federal Circuit (CAFC) ruling on prior art determinations for provisional applications applies only to pre-America Invents Act (AIA) patents.

Most patent prosecutors err on the side of caution when deciding whether to cite prior art references to the United States Patent and Trademark Office (USPTO). Indeed, the consequence of not citing known prior art can be a finding during patent litigation that there was a violation of the USPTO’s duty of disclosure amounting to inequitable conduct, with the patent thereby being deemed unenforceable. But the United States Court of Appeals the Federal Circuit’s recent decision in Elekta Limited v. Zap Surgical Systems (Case 2021-1985, September 21, 2023) suggests that patent prosecutors should think about ways that the fact that references are being cited could be used against the patent owner, and prosecutors might consider clarifying the record to negate potential inferences being drawn based on the citation of references.

The United States Patent and Trademark Office (USPTO) issued its one millionth design patent on September 26, 2023. U.S. Patent No. D1,000,000 claims the ornamental design for a dispensing comb. This milestone comes during a particularly prolific period for design patents. In 2022 alone, the USPTO received more than 50,000 design patent applications. The Office has seen a 20% growth in design patent applications over the last five years. It is not hard to understand why inventors are seeking design patent protection at previously unseen levels. In an age of complicated technologies, design patents can protect marketable appearances of products in the same manner generally as trademarks identify source. Understanding design patent benefits underlying the recent growth in application numbers is a good lesson for businesses seeking to distinguish a brand—but keep an eye out for further developments and be prepared to adjust business and IP strategies.

The U.S. Patent and Trademark Office (USPTO) responded last week to a petition for certiorari that is asking the Supreme Court to overturn a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that said appellate review of whether the Patent Trial and Appeal Board’s (PTAB’s) discretionary denial rules for inter partes review (IPR) are “arbitrary and capricious” is precluded by Section 314(d) of the patent statute.

The President’s recent Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence instructs the U.S. Patent and Trademark Office (USPTO) Director and Copyright Registrar to collaboratively issue recommendations to the President on further actions for advancing AI innovation through intellectual property, particularly with respect to AI inventorship and AI authorship. But the two offices currently regard AI differently in terms of assessing the creative and conceiving capabilities of machines, which poses a potential contradiction in how intellectual property law treats AI.

In today’s high-tech landscape, the ancient fable of the goose that laid the golden eggs imparts profound wisdom. The farmer in that tale weighed the decision to continue accumulating wealth slowly by selling the golden eggs that his magical goose laid (one per day) or taking a risk by killing the goose to harvest all of the gold within it at once. (Ultimately, the farmer chose the murderous path only to discover the goose did not contain any riches.) Just as the farmer faced thorny decisions in the tale, modern tech executives grapple with complex choices between immediate returns and long-term potential while also maintaining a competitive edge. In the real world, an artificial intelligence (AI) system that can generate patentable outputs (such as designs for new drugs) stands as the metaphorical “goose” while the inventions it produces are analogous to the “golden eggs.” Steadfastly guiding this delicate dance is the patent attorney with expertise in AI technology.

It was a typical week for patent filings at both the Patent Trial and Appeal Board (PTAB) and in district courts, with 25 new PTAB petitions (five post grant review and 20 inter partes review) and 53 new district court complaints filed. At the PTAB, there were three procedural denials under Section 325(d) (and denying patent owner’s request to deny under Fintiv) in IPRs filed by Nokia Corp. against optical networking patents owned by Alexander Soto and Walter Soto and asserted by inventor owned-NextGen Innovations, LLC.

The U.S. Patent and Trademark Office’s (USPTO’s) delay in retiring EFS-Web and Patent Center is welcome news. But my fear is the announcement could be just another display of the magical thinking, disregard of engineering and legal process, and deafness to stakeholder input that has been the hallmark of the USPTO’s software processes.

On the heels of a report published Sunday by IPWatchdog, the U.S. Patent and Trademark Office (USPTO) announced today that they will be postponing the transition to Patent Center—the tool meant to replace legacy systems, EFS-Web and Private PAIR—until November 15. The stated goal of the delay is “to better respond to and incorporate additional valuable stakeholder feedback into the Patent Center system,” according to a blog post published today by USPTO Commissioner for Patents, Vaishali Udupa.

Numerous letters have been submitted to the U.S. Patent and Trademark Office (USPTO) in recent weeks regarding the Office’s decision to retire Private PAIR and EFS-Web, the two main software systems used by patent applicants, on November 8. The organizations are urging the agency to delay the transition due to numerous bugs and missing features. Groups that have weighed in so far include the American Intellectual Property Law Association (AIPLA), the National Association of Patent Practitioners (NAPP), the Patent Center Listserv, Patent and Trademark Attorney, Agents and Applicants for Restoration and Maintenance of Integrity in Government (PTAAARMIGAN), and hundreds of individual patent professionals.

It was another slow week for patent filings at the Patent Trial and Appeal Board (PTAB) and a typical week in district courts, with 52 district court complaints filed and 22 new PTAB petitions. There was a new discretionary denial, a bunch of litigation-provoked high-profile PTAB challenges, and some notable new litigations. There was another Fintiv discretionary denial this week: here, a Chinese patent owner, Ningde Amperex Technology Ltd., benefited from the Board’s discretionary denial rules in a petition brought by another Chinese battery company. The case, IPR2023-00585, leaves unaddressed the questions raised about the validity of U.S. Patent 11329352.

An interesting tale of intrigue and woe is being written in the decade-long relationship between Google and Sonos. The most recent chapter ended with the district court finding the Sonos patents at issue in their patent litigation against Google were unenforceable due to laches because Sonos had the audacity to file a continuation and seek claims supported by—and actually incorporated from—an earlier filing. According to the district court, because Sonos could have filed those claims in the continuation earlier, that created a laches defense for Google.

Gene Quinn and I have collectively been teaching patent bar prep for almost 60 years! In that time, we’ve had contact with many career-bound patent people. All had, without exception, a background in the sciences or engineering, or both. The list of qualifications has, over the years, been expanded as technology has expanded. In years gone by, degrees in Biology and Computer Science would not have qualified you to sit for the U.S. Patent and Trademark Office (USPTO) Registration Exam, but now they do, along with many other intersectional STEM qualifications, including, for the first time, advanced degrees in these disciplines. Good, I say. The more the merrier.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision holding that a Delaware district court erred in its claim construction of a term with respect to Malvern Panalytical, Inc.’s patents. Specifically, the CAFC said the district court erred by relying heavily on the patent prosecution history statements for a related patent that had been cited in the information disclosure statement (IDS) during supplemental examination of one of the patents-in-suit to inform its construction of the term in question.