Posts Tagged: "patent prosecution"

U.S. Embassy Failures, COVID-19 Travel Restrictions, Keep Attorney Working on COVID-19 Technology Out of United States

Surely there can be no greater national interest to the United States than to allow each and every single person working to solve the COVID-19 pandemic to cross our border without issue, especially those who have already earned visas to work in the United States. However, a series of unfortunate events and policies has resulted in an ironic situation in which, in one example, an attorney from Sweden, who has spent significant periods of time within the United States since 2006, cannot return to the states to sit for the patent bar; aid members and clients of her law firm who are needful of her unique skills, including one colleague who is undergoing medical treatment for a serious health condition; or prosecute several patent applications representing some vital advancements in the fight against COVID-19. U.S. Embassy inaction, which is blocking her ability to take the U.S. patent bar, join her colleagues in the U.S. who have mentored her in this field for a year-and-a-half, and work on these COVID-19 patent solutions, arguably threatens the very chance of those inventions and technologies being properly commercialized to benefit everyone in the United States and beyond.

Importance of Accurate Translation of Non-English Priority Patent Applications

Can a U.S. patent be invalidated due to an inaccurate translation of the non-English priority patent application? The answer is most definitely “Yes.” This article examines the recent Federal Circuit decision in which this occurred, IBSA Institut Biochimique, S.A. v. Teva Pharm. USA, Inc., 966 F.3d 1374 (Fed. Cir. 2020), and discusses the procedural framework on how to prevent and correct such a problem.

Building High-Quality Patent Portfolios in the United States and Europe: Part III – Examiner Interviews

In Part I of this series we discussed how patent portfolio managers should be careful when generating company-owned prior art or reviewing competitor prior art, and how a patent litigation or licensing campaign can be significantly hamstrung based on how the United States and Europe consider intervening prior art. In Part II, we examined software patents with U.S. and European Patent (EP) family members. Part III builds on Parts I and II and focuses on the value of examiner interviews in the U.S. and Europe.

Tillis and Leahy Urge USPTO to Address Inconsistent Prior Art Statements by Patent Applicants at the FDA

On Thursday, September 9, Senators Thom Tillis (R-NC) and Patrick Leahy (D-VT) sent a letter addressed to Drew Hirshfeld, performing the functions and duties of the Director of the U.S. Patent and Trademark Office (USPTO), discussing the issue of inconsistent statements made by patent applicants pursuant to their disclosure requirements at the USPTO and other federal agencies, especially the U.S. Food and Drug Administration (FDA). The Senators are asking the USPTO to take swift action to ensure that applicants are disclosing all known prior art at both the USPTO and the FDA.

USPTO’s Patent Quality and Pendency Programs are Bearing Fruit

According to Strategic Goal 1 of the United States Patent and Trademark Office’s (USPTO’s) FY2020 Performance and Accountability Report (PAR), the USPTO is committed to high-quality patent examination in a timely manner. From submission to approval, the USPTO has established groundbreaking quality assurance programs, metrics, and training programs. It has also established IT modernization programs to improve the overall quality of the office’s work products and processes. These steps have made it possible for the agency to introduce new programs to significantly reduce pendency. A high-quality patent must adhere to the requirements of Title 35, and to the corresponding and applicable case law. To monitor and drive quality, the Office has been conducting both internal and external stakeholder perception surveys semiannually since 2006. In response to stakeholder feedback, the USPTO is providing detailed data at the technology center level, including filings, pendency, staffing, productivity, and inventory levels.

It’s All in the Hardware: Overcoming 101 Rejections in Computer Networking Technology Classes

Technologies such as computer networking, which, unlike software inventions, typically incorporate at least some hardware elements, may be less vulnerable to rejection under the U.S. Supreme Court’s decision in Alice v. CLS Bank. However, responding to these rejections when they are issued still requires some finesse. In these cases, rejections usually revolve around whether the hardware included in the claims serves as an improvement over existing hardware or is merely used as a tool for a mental process or other abstract idea. If the examiner concludes that the networking hardware merely serves as a tool, the claims usually fail the Alice/Mayo test. However, if you can show that the networking hardware either presents novel features or is improved by the invention to become a more effective tool, you may overcome the rejection.

Building High-Quality Patent Portfolios in the United States and Europe: Part I – Intervening Prior Art

One ingredient that distinguishes a good patent portfolio from a great patent portfolio can be the synergistic strength of its U.S. and European patent family members. To develop this strength, it is not enough to have a U.S. attorney and a European attorney simply coordinate the procedural strategy for filing an application; rather, the drafter and manager of the application should analyze important issues upfront and prepare a patent application that accounts for the substantive differences between U.S. examination, U.S. courts, European examination, and national courts in Europe.

In Win For Google, CAFC Holds Patentees May Not Bend Claim Terms to Fit Their Needs

On August 26, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the United States District Court for the District of Delaware, holding Google LLC did not infringe patents held by Data Engine Technologies LLC (DET). DET sued Google for infringing certain claims of U.S. Patent Nos. 5,590,259; 5,784,545; and 6,282,551 (the Tab Patents). The Tab Patents are directed to systems and methods for displaying and navigating three-dimensional electronic spreadsheets by use of user customizable “notebook tabs” on a spreadsheet interface. The prior art discussed in this trio of patents explained that “three-dimensionality, as presently implemented, is an advanced feature beyond the grasp of many spreadsheet users.” ‘259 patent col. 3 ll. 9-11. Accordingly, the Tab Patents explain, prior art spreadsheets require the user to manipulate each individual spreadsheet within a three-dimensional spreadsheet as an individual window in a graphical window environment. By contrast, the Tab Patents recite notebook tabs that allow the user to simply “flip through” several pages of the notebook to rapidly locate information.

In First Half of 2021, 63% of U.S. Patents, 48.9% at EPO and 40.1% in China Were Software-Related

As an update to my posts from 2017, 2019, 2020, and March 2021, it has now been 86 months since the U.S. Supreme Court’s 2014 Alice Corp. v. CLS Bank decision. Yet the debate still rages over when a software (or computer-implemented) claim is patentable versus being simply an abstract idea “free to all men and reserved exclusively to none” (as eloquently phrased over 73 years ago by then-Supreme Court Justice Douglas in Funk Bros. Seed Co. v. Kalo Inoculant Co.). Further, it has been 10 years since famed venture capitalist Marc Andreessen wrote the influential and often-quoted op-ed piece in the Wall Street Journal titled “Why Software Is Eating the World.” Today, the digital transformation where software is “eating the world” is undeniable. Let’s look at some facts and figures from the USA, Europe and China.

Experimental Data: A Key Element of Brazilian Medical Use Claims

There is no doubt that it is a challenge to design a patent protection strategy for a new medical use (for example, a new disease to be treated or prevented by a known composition, active ingredient or biological). The proper format for claiming such subject matter may vary significantly between patent jurisdictions. In Brazil, besides the accepted format, there are other points that deserve attention in terms of increasing the chances of success in obtaining a patent, such as the need to present experimental data in medical use patent applications in order to meet the sufficiency of disclosure requirements.

Drafting AI Patents: Challenges and Solutions

Artificial Intelligence (AI) is the latest buzzword across all sectors. Every tech and non-tech company is vigorously filing, strategizing or planning to enter the AI patent domain. However, the journey is not as easy as it may seem. While drafting AI-based patent applications, drafters often face challenges in formulating the right strategy for writing claims and identifying the correct scope of the application. Thus, it’s important to know the challenges in detail and to develop practical solutions for drafting a patent-worthy application.

Humanizing Technology: Back to Basics on DABUS and AI as Inventors

With South Africa’s patent office having recently granted the first patent to an AI inventor, and an Australian court ruling in favor of AI inventorship, it’s time to review how we got here—and where we’re going. The number of artificial intelligence (AI) patent applications received annually by the United States Patent and Trademark Office (USPTO) grew from 30,000 in 2002 to more than 60,000 in 2018. Further, the USPTO has issued thousands of inventions that utilize AI. According to a 2020 study titled “AI Trends Based on the Patents Granted by the USPTO”, the total number of AI-related patents granted by the USPTO per year increased from 4,598 in 2008 to 20,639 in 2018. If AI-related patent applications and grants are on the uptick, what was the problem with DABUS?

PPAC Announcements: Hirshfeld Doubles Down on Director Review Authority; Commerce Department to File for Registration of USPTO Trademarks; Committee Requests Release of $64 Million in User Fees

During the Patent Public Advisory Committee (PPAC) quarterly meeting held today, participants provided an update on the Director Review process under the Supreme Court’s Arthrex v. Smith and Nephew ruling, among other announcements. Patent Trial and Appeal Board (PTAB) Senior Advisor and Judge Linda Horner noted that, since the ruling, 14 timely requests for Director Review have been received; 11 of those were for a batch of related inter partes reviews (IPRs). Hirshfeld this week issued two decisions on the first two requests, denying both; the rest remain pending.

DABUS Gets Its First Patent in South Africa Under Formalities Examination

South Africa’s patent office has granted the first patent for an invention conceived by an artificial intelligence (AI) inventor, DABUS. The country does not have a substantive patent examination system, and thus the significance of the grant may not be as great as it would be in other jurisdictions—but the DABUS team is celebrating. The patent is for “a food container based on fractal geometry,” and was accepted by South Africa’s Companies and Intellectual Property Commission on June 24. The notice of issuance was published in the July 2021 Patent Journal.   

USPTO Petition Process: Who Should Pay for the Burden of Inordinate Delays and ‘Mistakes’?

In our last article, Part VI, we reported significant Technology Center (TC)-to-TC variation at the U.S. Patent and Trademark Office (USPTO) in pendency and grant rates for petitions pertaining to premature final Office actions. The USPTO Petition Timeline shows these types of petitions are currently decided in an average of 178 days with a 42% grant rate. Because the mere filing of a petition will not stay any period for reply that may be running (37 CFR Section 1.181(f)), a six-month delay in processing after final petitions effectively renders any such decision as futile. Without a decision resolving the status of the final Office action, Applicants are forced to choose between filing an Request for Continued Examination (RCE), a Notice of Appeal, a continuing application or letting the application go abandoned…. In Part IV, we reported many after final petitions were essentially held in abeyance until after the RCE was filed. The RCE was then used as justification to dismiss long-delayed petitions as moot. Here, we identify instances where some petitions were not only granted after the RCE was filed, but the RCE fees refunded.