Posts Tagged: "patent prosecution"

Protecting Intellectual Property in Augmented Reality

Augmented Reality (“AR”), along with Virtual Reality (“VR”), is rapidly growing in prominence and will be transformative to the way we live, work, learn and play. Both AR and VR will undoubtedly bring a whole set of novel IP issues for individuals, companies, IP practitioners and the courts. Like any new technological area, such as cyber law for the nascent internet technology in the early 1990s, many legal issues need to be addressed and many more are yet to be discovered as this area evolves.  

Tips From a Former Examiner: Pre-Appeal Brief Review

After two or more U.S. Patent and Trademark Office (USPTO) office actions on the merits, a patent applicant has the option to appeal the patent examiner’s decision rejecting one or more claims to a higher forum, i.e., the Patent Trial and Appeal Board (PTAB). Since 2005, the USPTO has provided an ongoing pilot program in which an appellant, upon the filing of a notice of appeal, may also request a pre-appeal brief review. Why make this request? What are the pros and cons? What are the risks? In this article, I will explore these issues from my perspective as a former USPTO patent examiner.

Tips from a Former Examiner on How to Conduct Interviews at the USPTO

The “interview” during the patent prosecution process is a meeting typically held between a patent examiner and the applicant’s representative (i.e., a patent practitioner). In some cases, the inventor, assignee, or a subject matter expert may also be present. During my time as a United States Patent and Trademark Office (USPTO) patent examiner, I would almost always encourage scheduling an interview with applicant’s representative to discuss the merits. Curiously, many patent practitioners are not proactive in initiating an interview with the examiner. Why is an interview so important? When and how should it be held? How does an applicant’s representative conduct an effective interview?

Hyatt Returns to SCOTUS with Request to Clarify Standard for Summary Judgment, APA Scope of Review Provisions

Gilbert Hyatt, an inventor who has been granted more than 70 patents and has filed more than 400 applications with the U.S. Patent and Trademark Office (USPTO), has petitioned the U.S. Supreme Court asking the Justices to weigh in on his challenge of a policy he alleges the USPTO implemented in the 1990s to categorically deny him issuance of any additional patents. Hyatt has been embroiled in litigation with the USPTO for decades and won a previous Supreme Court appeal in 2012.  

USPTO Issues Update on Relations with Russian Patent Office

The U.S. Patent and Trademark Office (USPTO) announced today that certain intellectual property (IP)-related transactions are now authorized in Russia, following publication by the U.S. Department of Treasury’s Office of Foreign Assets Control (OFAC) of General License No. 31. The authorized transactions include the filing and prosecution of any application to obtain a patent, trademark, or copyright, as well as renewal and maintenance fees.

Foreign Filing Requirements Part II – Comparing Popular Patenting Jurisdictions

In Part I of this series, we provided an overview of foreign filing restrictions for cross-border inventions around the world. For a deeper examination, we will narrow our focus to some of the most common countries for filing. The United States, China, and India are among the most popular patent filing venues in the world. While all three countries require a Foreign Filing License (FFL) before filing abroad or otherwise first filing in the home country, the specific requirements vary.

Grammar, Commas and Courts: Know the Rules to Save Your Patent

To quote a popular saying: “Let’s eat grandpa. Let’s eat, grandpa. Correct punctuation can save a person’s life.” And incorrect punctuation can cost millions of dollars. Do you know when to use a comma versus a semicolon? Do you know how to indent a plurality of elements in a claim? Do you know when to write “patent, copyright, or trademark” or “patent, copyright or trademark”? As Judge David J. Barron said: “For want of a comma, we have this case.”… Although there are no hard and fast grammatical rules, it’s better to err on the side of caution, following rules that courts have recognized.

Obviousness and Inherency in Solid Forms

Claimed inventions in issued patents must, of course, pass the statutorily required hurdles of novelty and non-obviousness. In the context of solid forms, there are particular nuances the practitioner should consider when formulating a strategy for obtaining such claims in the United States. This article touches upon novelty and obviousness matters which have arisen with solid-form patents and provides some food for thought on how to plan in advance to tackle these issues.

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.

IP Practice Vlogs: Writing Strong Patents

In the United States, patent prosecution practice is primarily shaped by two governing bodies: 1) the U.S. Patent and Trademark Office (USPTO), which issues procedural practice guidelines, and 2) judicial rulings from the U.S. Court of Appeals for the Federal Circuit. When it comes to the matter of Section 101 subject matter eligibility, the USPTO and the Federal Circuit diverge somewhat in their analysis, specifically in their consideration of what constitutes an “abstract idea.” Our modern-day concept of “abstract idea” is shaped by the Supreme Court’s ruling in Alice v. CLS Bank in 2014. The USPTO and the Federal Circuit both operate under the Alice doctrine of “abstract idea” when it comes to assessing subject matter eligibility, particularly when it comes to software patents. Alice requires that an “abstract idea” has “something more” than what is well-understood, routine and conventional in order to be patent eligible.

European Patent Filings Reached Record Number in 2021; Huawei Largest Applicant

There were 188,600 European patent applications filed last year, an annual increase of 4.5%, according to figures published by the European Patent Office (EPO) on April 5. Despite the impact of the pandemic, applications increased to a record level following a slight decline in 2020. The United States was once again the top country for applicants, accounting for a total of 46,533 applications in 2021 (an increase of 5.2%) or 25% of all filings. It was followed by Germany and Japan, with China ranking fourth. Applications from China increased by 24% to 16,665 in 2021; they have quadrupled in the past decade. Other notable increases were from Sweden (up 12% to 4,954), Canada (up 18.4% to 2,083) and India (up 16.5% to 817).

Data Show USPTO Patent Pro Bono Program is Working for Women and Minorities

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.

The USPTO’s Increased Automation of Patent Assignments is Good for the Patent System

After a patent application is filed with the USPTO, it gets assigned to an art unit and a patent examiner in that art unit who is responsible for reviewing the application, doing a prior art search, and determining whether to grant a patent…. In the past, this process was manual. People would review patent applications to assign classification codes, and then other people would determine the art unit and examiner to be assigned using the classification codes. More recently, the USPTO is automating the assignment process. The assignment process is a great candidate for automation using machine learning, because large amounts of training data are available to train a machine learning model. Automating the assignment process has several advantages: lower costs, faster processing, and more consistent and likely better assignments of applications to art units and examiners.

Solid Form Patents: Part I – Introduction and Laying the Genus/Species Foundation

Pharmaceutical products are typically dosed as solids, liquids (e.g., solutions) or gases. In gases and liquids, the molecules are tumbling; in solids, however, the molecules are essentially frozen in place, forming three-dimensional networks. When those networks are ordered, they are called crystalline…. Where the same chemical compound can exist in multiple crystalline forms is called polymorphism, with each crystalline form called a polymorph. When the compound is an element, as with carbon, it is referred to as allotropism. Predicting whether a chemical compound will be polymorphic, what that polymorph might be, and the properties thereof are notoriously challenging feats. Because polymorphs or other crystalline forms can have significantly different drug solubility and dissolution properties, it is not surprising that they are often the subject of patent applications in the pharmaceutical arts. 

Referencing Science Fiction: An Ode to (Slightly) Livening Up Patents

I want to salute the patents that, every so often, reference science fiction. Please stop reading if you’re looking for deep, doctrinal substance. Stick around, however, if you have a few minutes to loosen up. These enhancements make patents more fun. Not so long ago, U.S. Supreme Court Justice Elena Kagan drew headlines in Vanity Fair and People by weaving Spider-Man references into her opinion in Kimble v. Marvel Entertainment. Surely, we’re not more uptight than the Supreme Court, right? Beyond lightheartedness though, these enhancements might make patents more meaningful. Camilla Hrdy and Daniel Brean recently commented in the Michigan Technology Law Review that “many inventions that were originally introduced in science fiction also end up in the patent record.” Although some of their commentary might overlap with my point here, I want to instead focus on science fiction as a fun and useful tool.