Posts Tagged: "USPTO"

As an update to my previous posts from 2017, 2019, 2020, March 2021, August 2021, 2022, and 2023, it has now been almost a decade 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 76 years ago by then-Supreme Court Justice Douglas in Funk Bros. Seed Co. v. Kalo Inoculant Co.).

On February 27, the U.S. Patent and Trademark Office (USPTO) published a notice in the Federal Register providing updated guidance for agency decision-makers on making proper determinations of obviousness under the U.S. Supreme Court’s 2007 ruling in KSR International Co. V. Teleflex Inc. While the USPTO’s examiner guidance doesn’t constitute substantive rulemaking, it traces 15 years of case law from the U.S. Court of Appeals for the Federal Circuit to clarify several areas of confusion stemming from the Supreme Court’s calls for a flexible approach to the obviousness analysis for patent validity.

Writing a useful and enforceable patent application is not an easy task. A number of articles show how to draft a patent application. For example, Gene Quinn of IPWatchdog published a series of articles with tips to avoid mistakes or pitfalls. Automated software and AI-assisted drafting tools have also become available, but there have been ethical and practical concerns about relying on AI. Instead of discussing the specific details of the steps in writing a patent application or the pros and cons of automated or AI tools, I will focus on the overall strategies or approaches.

There are many views on the significance of In re Chestek, No. 2022-1843 (February 14, 2024) to the U.S. Patent and Trademark Office (USPTO) rulemaking process. One question I have asked myself is what I would do differently after Chestek if I were still involved in rulemaking at the USPTO. The simple answer is almost nothing: I would cite Chestek instead of the other decisions in the Administrative Procedure Act (APA) section of a proposed or final rule.

As artificial intelligence (AI) systems become increasingly sophisticated and play a greater role in our society, questions surrounding patentability and inventorship have come to the forefront of intellectual property discourse. This is particularly so in the wake of Thaler v. Vidal, 43 F. 4th 1207, 1213 (Fed. Cir. 2022), cert denied, 143 S. Ct. 1783 (2023), in which the Federal Circuit held that “only a natural person can be an inventor, so AI cannot be.” The U.S. Patent and Trademark Office (USPTO) recently issued guidance aimed at addressing these concerns.

It was an average week all around with 31 new patent filings at the Patent Trial and Appeal Board (PTAB) – all inter partes reviews (IPRs) – and 67 new filings in district court. The bulk of this week’s new PTAB filings (a total of 19) were petitions challenging patents owned and asserted by Entropic Communications LLC [associated with SoftBank Group Corp.] (discussed further below). Other notable filings include petitions challenging patents held by Softex [associated with SoftBank Group Corp.], Dental Imaging Technologies [associated with Envista Holdings Corporation], Resonant Systems [d/b/a RevelHMI], Immersion Corp, and Dsm IP Assets BV [associated with DSM-Firmenich AG].

The U.S. Patent and Trademark Office (USPTO) issued a Notice of Proposed Rulemaking (NPRM) today that would allow practitioners who are not registered with the USPTO patent bar to act as lead counsel in proceedings before the Patent Trial and Appeal Board (PTAB). The Office has decided to propose that practitioners must still be represented by a registered practitioner, but to allow parties to “designate a non-registered practitioner as lead counsel and the registered practitioner as back-up counsel.”

The Patent Trial and Appeal Board (PTAB) remains a popular and busy venue for post-grant review of patents. These proceedings are known for being faster, and by statute, they allow for less discovery than district court patent cases. PTAB litigants therefore may not think about potential third-party subpoenas, which can take significant time and effort to obtain. It is possible, however, to obtain a subpoena in a PTAB case. In certain circumstances, a PTAB subpoena can be a useful tool to bolster your case at the PTAB, but there are specific procedures that must be followed to properly issue and enforce such a subpoena. Precise compliance with these procedures is necessary to obtain the discovery sought.

In an ideal world, issued patents would not contain errors. In reality, patent drafting is tedious and time-consuming work and perfection is not an attainable goal. The patent industry seems to be steadily getting better, though. In a recent study, we uncovered an 11.24% decrease in errors per patent over the past four years. We observed this decrease by reviewing every patent issued by the U.S. Patent and Trademark Office (USPTO) since 2020 – nearly 1.4 million patents.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision on Thursday vacating the Trademark Trial and Appeal Board’s (TTAB’s) denial of a petition to cancel a trademark for a medicated tea product to treat colic in babies. Naterra International, Inc. petitioned the TTAB to cancel the mark BABIES’ MAGIC TEA based on likely confusion in the market with its own registrations for the mark BABY MAGIC, which cover “numerous toiletry goods.” The Board found that Naterra failed to prove confusion under the 13 DuPont Factors.

It was an average week for patent filings at the Patent Trial and Appeal Board (PTAB) and an above-average week in district courts, with 72 district court complaints filed and 18 new PTAB petitions—one petition for Post Grant Review (PGR), and 17 for Inter Partes Review (IPR). At the PTAB, a number of challenges were filed, including two IPRs by Tesla challenging patents owned by Iqar Inc, four IPRs by Dish challenging patents owned by Entropic Communications LLC (associated with Fortress), two IPRs by Microsoft challenging patents owned by Interdigital Patent Holdings Inc (associated with InterDigital Inc.), and two IPRs by Juniper Networks challenging patents owned by Monarch Networking Solutions LLC (associated with Acacia Research Corporation).

The U.S. Court of Appeals for the Federal Circuit (CAFC) today said in a precedential decision that the U.S. Patent and Trademark Office (USPTO) did not need to engage in notice-and-comment rulemaking to require trademark applicants and registrants to provide a physical street address with their trademark applications. The court took the case as an opportunity to directly address “when a rule is procedural and excepted from notice-and-comment rulemaking as a ‘rule[] of agency organization, procedure, or practice.’”

Is your company paying the United States Patent and Trademark Office (USPTO) maintenance fees for expired patents? The USPTO requires payment of maintenance fees to keep a granted patent in force due at 3.5 years, 7.5 years, and 11.5 years after the date of grant of a patent. For 2023, these fees amount to $2,000, $3,760, and $7,700, respectively. You may be unknowingly paying maintenance fees for expired patents.

The year 2023 marked another year of rapid advancements in quantum computing technology, showcasing significant progress in key areas such as scalable quantum computing and quantum error correction. Multiple physical realization approaches or modalities for creating quantum bits (qubits) are under development, offering different tradeoffs in performance metrics such as qubit count, error rate, decoherence time, and gate speed. Patenting activities are effective indicators of innovation speed and resource distribution in a technology field. As 2024 begins, this post explores the newest development focus and trends in the quantum computing industry through the angle of its patent landscape and discusses strategic considerations for patenting in this rapidly evolving field.

The U.S. Patent and Trademark Office (USPTO) today released guidance for determining inventorship of artificial intelligence (AI)-assisted inventions. As the Office has previously stated, the guidance clarifies that “while AI-assisted inventions are not categorically unpatentable, the inventorship analysis should focus on human contributions, as patents function to incentivize and reward human ingenuity.” The USPTO issued a call for comments on AI inventorship in February 2023. That Federal Register Notice (FRN) asked the public to respond to 11 questions, including “how does the use of an AI system [in the invention process]…differ from the use of other technical tools”; whether AI inventions may be patentable under current patent laws on joint inventorship by, for example, simply listing the natural person involved in inventions created by AI machines; and whether statutory or regulatory changes should be made to better address AI contributions to inventions.