Patent Planet

Tuesday, January 9, 2024

US Supreme Court - High Court Denies Intel Bid to Nix Patent Office’s Fintiv Rule

Michael Shapiro's Bloomberg Law article High Court Denies Intel Bid to Nix Patent Office’s Fintiv Rule is worth reading. It discusses the US Supreme Court's decision to not hear Intel's petition to challenge to the Fintive rule that gives PTAB judges discretion in an inter partes review (IPR) to not institute a patent validity challenge even when the IPR is filed within one year of complaint service if the parallel litigation is at "an advanced stage" in district court. This is a favorable decision for patent owners, since invalidity rates are higher in an IPR than in court.

Friday, December 1, 2023

PREVAIL Act & Molly Metz - Clear and Convincing: Will changing the standard save America’s greatest patents?

Molly Metz's article Clear and Convincing: Will changing the standard save America’s greatest patents? discusses whether or not the PREVAIL Act goes far enough in proposing to raise the "burden of proof" for instituting a validity challenge in an inter partes review (IPR) in the USPTO.

Note the article talks about "burden of proof" when it must mean "standard of proof." (Burden of proof assigns which party must prove something in a proceeding, while standard of proof establishes the amount of evidence required to support a claim or defense).

First, the PREVAIL Act proposes to change more than the standard of proof. See PREVAIL Act fact sheet for a summary, but let's focus on what was raised in the article.

Ms. Metz's article argues that a heightened standard of proof will not suffice, due to the subjective nature of an obviousness under KSR and certain procedural issues (e.g., lack of a jury, cross examination of experts, and discovery) during an IPR. I understand her position and do not doubt her experience. But the key factor for a patent owner to win in an IPR is for it to not be instituted in the first place. And whether an IPR will be instituted may well depend on the standard of proof.

In 2012, the AIA set a low standard of proof for instituting an IPR, i.e., prove a reasonable likelihood at least one claim is unpatentable. IPR's were assumed to be much like patent prosecution where patent owners could if required amend claims.

However, nearly all patent owners have not been able to amend claims. Facing this problem, USPTO launched a series of studies, but nothing has changed. See IP Watchdog's recent article: USPTO Motion to Amend Study Update Shows 83% of MTAs Denied.

Congress understand at this stage the low standard for institution is based on a faulty assumption. The low standard of proof allows infringers to institute an expensive IPR, out resource the patent owner, and invalidate valid patents. A heightened standard should reduce the problem. At least let's admit we don't know because the standard has not changed.

It also seems that invalidity challenges in an IPR should be proven by clear and convincing evidence like district court. Shouldn't the patent that was obtained by the same examination be afforded the same presumption of validity in both forums?

Wednesday, November 8, 2023

USPTO - November 15 New Date for Patent Center Replacing EFS-Web and Private PAIR

Yesterday, the USPTO announced that November 15, 2023 is its new date for Patent Center replacing EFS-Web and Private PAIR

Seven days is not close to sufficient time to address the problems with the Patent Center software.

For details why see, e.g., Mr. David Boundy's article in IP Watchdog Patent Center Delay—Good Start, or More Entrenched, Magical Thinking?

Sunday, November 5, 2023

IP Watchdog - Patent Community Slams USPTO’s Rush to Retire Old Software Systems Despite Patent Center Problems

Eileen McDermott, Editor-in-Chief of IP Watchdog, summarizes reaction to the USPTO's decision for Patent Center to replace Private PAIR and EFS on November 8, 2023:

See Patent Community Slams USPTO’s Rush to Retire Old Software Systems Despite Patent Center Problems

It might be wise to keep Private PAIR and EFS as a "safety net" for applicants until the Patent Center software is reasonably debugged, right? Private PAIR and EFS have worked well for years.

Thursday, March 30, 2023

USPTO - Mixed Bag of News - Non-DOCX Surcharge Delayed (Again) & No Red Ribbon of US Patents (Unless You Pay)

Here are some recent USPTO announcements:

"Filing a new non provisional 111(a) application? Starting June 30, 2023, specification, claims and abstracts not filed in DOCX format will incur a non-DOCX surcharge of up to $400 for this filing type. See the Federal Register notice for more information.

Any known issues and workarounds for Patent Center can be found on the Patent Center information page.

Extended through June 30, 2023, exclusively in Patent Center, applicants have the option to upload a backup (auxiliary) PDF version of their application with their DOCX version. There are no fees associated with this auxiliary PDF. See the Federal Register notice for more information.

Attend a DOCX training webinar or visit the DOCX information page to learn more about filing in DOCX format.

Beginning April 18, 2023, the USPTO will begin issuing electronic patent grants (eGrants) to patent recipients, which minimizes paper waste, potentially reduces patent pendency, and allows recipients to get their patent grant in PDF format on the day of issue."

I don't see this as "such a benefit" as some who like to get the original red ribbon of the US patent will now need to pay for it, and it may create a pitfall for those applicants who cannot decide whether or not to file that continuation near issuance of the parent application.

Wednesday, March 29, 2023

USPTO - Manual of Patent Examining Procedure (MPEP) Published February 2023

The USPTO revised the Manual of Patent Examining Procedure (MPEP) Ninth Edition, Revision 07.2022 in February 2023. It is not legal authority, e.g., like the Federal Circuit decisions, but nonetheless a useful searchable online resource for many details of US patent prosecution.

Thursday, December 29, 2022

USPTO - Delays the Effective Date of the Non-DOCX Filing Fee

Today, the USPTO announced to the relief of applicants experiencing problems filing in DOCX (Microsoft's file format) that it will delay the date of the Non-DOCX Filing Fee (i.e., $400 extra to large entities filing the text of an application in PDF).

Here's the gist of the official announcement:

The United States Patent and Trademark Office (USPTO) published a final rule in the Federal Register on August 3, 2020 that includes a fee for patent applications that are not filed in DOCX format, except for design, plant, or provisional applications. This new fee was scheduled to become effective on January 1, 2023.

Through this final rule, the USPTO is delaying the effective date of this fee until April 3, 2023. The USPTO has held and continues to hold many discussions with stakeholders to ensure a fair and reasonable transition to the DOCX format. This final rule is effective December 29, 2022. The change to 37 CFR 1.16(u) in amendatory instruction 2.i., published at 85 FR 46932 on August 3, 2020, is applicable only to nonprovisional utility applications filed under 35 U.S.C. 111 on or after April 3, 2023.

Wednesday, February 2, 2022

USPTO - New Patent Public Search Tool

The United States Patent and Trademark Office (USPTO) announced:

"A new Patent Public Search tool that provides more convenient, remote, and robust full-text searching of all U.S. patents and published patent applications.

Based on the advanced Patents End-to-End (PE2E) search tool USPTO examiners use to identify prior art, this free, cloud-based platform combines the capabilities of four existing search tools scheduled to be retired in September 2022: Public-Examiner’s Automated Search Tool (PubEAST), Public-Web-based Examiner’s Search Tool (PubWEST), Patent Full-Text and Image Database (PatFT), and Patent Application Full-Text and Image Database (AppFT).

 “This new platform represents a significant step forward in our broader efforts to meet stakeholders where they are, especially in the pandemic,” said Drew Hirshfeld, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “Knowing that our previous tools did not provide users with the convenience or similar functionality as those used by our examiners, it is incredibly gratifying to know that now more stakeholders can search for patents using the resources of four powerful search platforms in one expansive tool.”

In the past, users could only access legacy search tools PubEAST and PubWEST at a USPTO facility like the headquarters in Alexandria, a regional office, or a Patent and Trademark Resource Center. With the launch of the new tool, remote searching is now available to all users with internet access. Additional benefits include:

Layouts: Multiple layouts with multiple tools to provide more data at once
Highlighting: Multi-color highlighting that can be viewed across multiple gadgets and turned on or off
Tagging: Ability to tag documents into multiple groups that can be renamed and color coordinated
Notes: Ability to add notes to an image with options to include tags, relevant claims, and highlights
Quality: Robust full-text searching of U.S. patents and published applications
Familiar usability: Same searching syntax as PubEAST and PubWEST

In conjunction with the launch of Patent Public Search tool, the USPTO unveiled a new Patent Public Search webpage that includes FAQs, training resources, and other information to help users transition to the new tool. Upcoming public training sessions will be posted on the webpage as soon as they are scheduled.

For questions regarding Patent Public Search, please contact the Public Search Facility at psf@uspto.gov or visit the Public Search Facility and/or Patent and Trademark Resource Centers websites."

Thursday, January 6, 2022

USPTO - Deferred Subject Matter Eligibility Response Pilot Program.

Here's the USPTO's announcement:

"The United States Patent and Trademark Office (USPTO) today announced a new Deferred Subject Matter Eligibility Response (DSMER) Pilot Program for nonprovisional patent applications that will launch on February 1, 2022. This pilot program was initiated in response to a letter from Senators Thom Tillis and Tom Cotton and is designed to evaluate how deferred applicant responses to subject matter eligibility (SME) rejections could affect examination efficiency and patent quality as compared to traditional compact prosecution practice. Participation in this program is by invitation only. Applicants may receive invitations to participate if their applications meet certain criteria, including a requirement that the first Office action on the merits makes both SME and non-SME rejections. More information about this pilot program is available in the Federal Register Notice announcing the program and on the DSMER Pilot Program page of the USPTO website."

I appreciate the effort to mitigate the uncertainty of Section 101, but note this program may result in claims held to be novel and non-obvious (after much effort) to be held ineligible based on an examiner's unsupported subjective opinion.

Tuesday, December 28, 2021

RPX - Alice Remains in Narrowed State Post-Berkheimer as Congress Revives Section 101 Reform Debate

RPX's article Alice Remains in Narrowed State Post-Berkheimer as Congress Revives Section 101 Reform Debate is worth reading.

Here's a brief summary:

"Data on patent eligibility rulings reveal that Alice currently remains in a narrowed state as a result of the Federal Circuit’s 2018 Berkheimer and Aatrix decisions, which limited courts’ ability to grant early Section 101 challenges. The result has been a significant drop in the Alice invalidation rate, which has since become the status quo for defensive eligibility motions in district court, impacting both challenges against patents asserted by NPEs and by operating companies."

Sunday, December 26, 2021

Federal Circuit - CosmoKey Solutions GmbH v. Duo Security LLC - Software Patent Eligible

In CosmoKey Solutions GmbH v. Duo Security LLC, the Federal Circuit reversed the district court's decision that a two-factor authentication to software application patent was ineligible under 35 USC § 101.

Claim 1 of US Patent No. 9,246,903 appears to be a broad claim, yet satisfied the Federal Circuit as eligible:

A method of authenticating a user to a transaction at a terminal, comprising the steps of:

transmitting a user identification from the terminal to a transaction partner via a first communication channel,

providing an authentication step in which an authentication device uses a second communication channel for checking an authentication function that is implemented in a mobile device of the user,

as a criterion for deciding whether the authentication to the transaction shall be granted or denied, having the authentication device check whether a predetermined time relation exists between the transmission of the user identification and a response from the second communication channel,

ensuring that the authentication function is normally inactive and is activated by the user only preliminarily for the transaction,

ensuring that said response from the second communication channel includes information that the authentication function is active, and

thereafter ensuring that the authentication function is automatically deactivated.

The Federal Circuit disagreed with the district court ruling of ineligibility, stating "the claims and written description suggest that the focus of the claimed advance is activation of the authentication function, communication of the activation within a predetermined time, and automatic deactivation of the authentication function, such that the invention provides enhanced security and low complexity with minimal user input."

The Court noted the claims "recite a specific improvement to authentication that increases security, prevents unauthorized access by a third party, is easily implemented, and can advantageously be carried out with mobile devices of low complexity." Further, invention solved a problem in computer networks with non-conventional steps as recited in claim 1.

Although the Federal Circuit has held many software patents ineligible, this decision suggests your chance of allowance and validity will increase when the invention is an improvement to computers or networks, and importantly, the claims recite a specific novel solution to a technical problem that is described in the written description.

Wednesday, October 20, 2021

Federal Circuit - In re Surgisil - Favorable to Grant of Design Patents

The USPTO grants three types of patents: utility, design, and plant. Utility patents issue for new and useful processes, machines, manufactures, compositions, and improvements thereof. Plant patents issue for new and distinct plants, and design patents issue for new designs of article of manufacture.

When you read about patents, nearly always people talk about utility patents rather than design patents. Yes, utility patents can protect technology advances in software, hardware, products, and drugs, but design patents also have an important role. Thus, if an invention's appearance is new, you should consider seeking a design patent, because it is relatively inexpensive compared to seeking a utility patent, it may support large damage awards, and it can stop copyists.

Further, the Federal Circuit’s recent decision In re Surgisil has made it easier to obtain a design patent. There, the Federal Circuit held that 35 U.S.C. 171 grants design patents for articles of manufacture rather than for shapes in the abstract. It is not as USPTO argued: "appropriate to ignore the identification of the article of manufacture in the claim." The Federal Circuit held prior designs only anticipate (i.e., block issuance) if they are identical in shape to the claimed design and relate to the same article of manufacture. Thus, a drawing stump (used by illustrators) with the same shape did not anticipate a claim for an ornamental design for a lip implant. It's unclear if "related articles of manufacture" will become the ground of an obviousness rejection, but it should help applicants overcome anticipation rejections based on similar shapes for different articles of manufacture.

Thursday, September 23, 2021

USPTO - Increase Limit on Track One Prioritized Examination

The USPTO is expanding the availability of prioritized examination on September 24, 2021.

Here's the USPTO announcement:

"The United States Patent and Trademark Office (USPTO) has issued an interim rule further expanding the availability of prioritized examination (Track One) by increasing the limit on the number of Track One requests that may be accepted in a fiscal year from 12,000 to 15,000. The USPTO’s continued monitoring of the Track One program confirmed that the program could be further expanded to permit more applications to undergo prioritized examination while maintaining the ability to timely examine all prioritized applications.

Track One allows applicants to receive a final disposition on their patent applications within approximately 12 months and grants applications special status with fewer requirements than the current accelerated examination program. More information on Track One is available on the Track One webpage of the USPTO website.

The full text of the notice is available in the Federal Register and on the Patent Related Notices webpage."

"From the Federal Register: "the number of applications accepted for prioritized examination will remain a small fraction of the patent examinations completed in a fiscal year (the Office examines approximately 640,000 applications and requests for continued examination in total per fiscal year). Accordingly, the Office is further expanding the availability of prioritized examination by increasing the limit on the number of prioritized examination requests that may be accepted in a fiscal year to 15,000, beginning in fiscal year 2021 (October 1, 2020, through September 30, 2021) and continuing every fiscal year thereafter until further notice."

So what's the USPTO currently charge applicants? I had to search the uspto.gov fee schedule for those details. The fee for the request for prioritized examination depends on applicant's size: $1,000 (micro entity), $2,000 (small entity), and $4,000 (large entity) plus a processing fee of respectively, $35 (micro entity), $70 (small entity), and $140 (large entity), plus you probably guessed your attorney's fees!

Tuesday, June 8, 2021

USPTO - Changes to Representation of Others Before the United States Patent and Trademark Office

The USPTO published: Changes to Representation of Others Before the United States Patent and Trademark Office on May 26, 2021.

The USPTO states the change "aligns the USPTO Rules of Professional Conduct more closely with the American Bar Association (ABA) Model Rules of Professional Conduct. It also improves clarity in existing regulations to facilitate the public's compliance, including revising various deadlines, the procedures concerning the registration exam, provisions related to the revocation of an individual's registration or limited recognition in limited circumstances, and provisions for reinstatement. It makes non-substantive changes to improve the readability of various provisions as well."

Saturday, June 5, 2021

USPTO - Modernizing Patent Filing with DOCX?

The USPTO Director article: Modernizing Patent Filing with DOCX confirms the USPTO still plans to shift user patent filings to DOCX and charge PDF filers an extra Non-DOCX fee starting on January 1, 2022.

In my experience, PDF has worked well aside from the embedded fonts issue. PDF has been the file format used millions of times since beginning of e-filing. Also PDF is no longer an Adobe only software offering.

If DOCX is better as stated in the article, one might expect some user validation. Instead, nearly all the user comments to the article say DOCX is not ready! Despite many months of USPTO promotion and development it has a number of bugs, pitfalls, and no user benefit over filing of PDF documents.

I don't think the USPTO should ignore the users on this issue. Instead, it should wait until DOCX is ready so users uniformly agree it is a better way of filing, or let users choose PDF or DOCX and continue without tilting costs (i.e., no USPTO surcharge for Non-DOCX filings). Otherwise, the USPTO is penalizing users for avoiding use of substandard software.

Monday, May 17, 2021

USPTO - Updated Inventor and Entrepreneur Resources Web Page - Worth Bookmarking!

The USPTO published a new inventor and entrepreneur resources web page that should save time on accessing intellectual property (IP) basics, patent and trademark search tools, and guidance on applications. It is worth bookmarking to save time searching for basic information on the USPTO website.

Friday, December 4, 2020

RPX - Former Operating Company Patents Have Been at Issue in the Majority of NPE Litigation

Here's an article worth reading: Former Operating Company Patents Have Been at Issue in the Majority of NPE Litigation December 2, 2020. RPX indicates approximately 85% of the patent litigation filed in any given year from 2005 forward has concerned some operating company patents.

The article suggests that operating companies selling patents to non-practicing entities (NPE) are failed or weak companies looking for money. Surely this happens, but it would be interesting to see how many of the "more successful companies,"e.g., public companies listed on NASDAQ also sell their patents to NPEs. Like this article, the results may be surprising.

Thursday, December 3, 2020

USPTO - PTAB’s Motion to Amend Pilot Program

Today, the USPTO Blog (Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and Scott Boalick, Chief Judge of the Patent Trial and Appeal Board of the USPTO) stated the PTAB's Motion to Amend Pilot Program shows promising results:

"On March 15, 2019, the USPTO implemented a pilot program for motions to amend (MTAs) in AIA trials before the PTAB. In MTAs, patent owners may request to cancel challenged claims or propose substitute claims to replace challenged claims if they are found unpatentable. We have seen promising results for claim amendments made under this pilot program and want to share these with you.

Under the pilot program, a patent owner has two new options. First, the patent owner can request preliminary guidance from the Board on its MTA. Second, the patent owner may file a revised MTA in response to preliminary guidance (if requested) or to the petitioner’s opposition. In short, by providing for guidance and an opportunity to revise the MTA, the pilot program provides for back and forth between the Board and the patent owner that did not previously exist.

If a patent owner requests preliminary guidance, the Board will provide feedback on the statutory and regulatory requirements for an MTA, as well as on patentability of the proposed substitute claims based on the record at that time. The patent owner may then file a revised MTA in response to the preliminary guidance. Alternatively, if the patent owner does not request preliminary guidance, it may file a revised MTA in response to the petitioner’s opposition to the original MTA. Notably, if a patent owner does not choose either pilot option, then the MTA proceeds under effectively the same practice as before implementation of the pilot program.

The pilot program applies to all AIA trials instituted on or after March 15, 2019, and patent owners could start filing MTAs under the program in June of 2019. Between June 1, 2019 and September 30, 2020, patent owners requested preliminary guidance in 76% of MTAs, or 78 out of 102 MTAs. Thereafter, 79% of patent owners filed a revised MTA. From April 1, 2020 through September 30, 2020, the PTAB issued 31 Final Written Decisions addressing pilot-eligible MTAs. So far, the pilot program options are being used in the vast majority of MTAs. Moreover, early results suggest that patent owners who chose at least one of the pilot program options are more likely to have their MTAs granted for at least one proposed substitute claim as compared to MTAs that do not use the pilot program options.

Specifically, out of the 31 Final Written Decisions with MTAs that were eligible for the pilot program, 22 elected at least one of the pilot program options. And out of the 22 MTAs in which patent owners elected at least one pilot program option, 36% had at least one proposed substitute claim granted. By contrast, of the nine MTAs where patent owners did not elect either pilot program option only 11% had at least one proposed substitute claim granted. Before the pilot program, only about 14% of MTAs had at least one proposed substitute claim granted.

The USPTO implemented the MTA pilot program with the goal of providing a more robust amendment practice in AIA trials, in a manner that is fair and balanced for all parties and stakeholders. Through this practice, the aim is to ensure that patent owners have viable opportunities to amend claims challenged by third parties. Preliminary data indicates that the pilot program is working as intended."

Thursday, October 29, 2020

USPTO - Report Inventing AI - Tracing the Diffusion of Artificial Intelligence with US Patents

On October 27, the USPTO report "Inventing AI - Tracing the diffusion of artificial intelligence with U.S. patents" states that US patent applications received on AI have sharply increased.

Here's the USPTO announcement:

"The number of artificial intelligence (AI) patent applications received annually by the United States Patent and Trademark Office (USPTO) more than doubled from 2002 to 2018, according to a new report published today by the USPTO, “Inventing AI: Tracing the diffusion of artificial intelligence with U.S. patents.” During those 16 years, annual AI patent applications grew from 30,000 in 2002 to more than 60,000 in 2018.

Accompanying the 100% increase of AI-related patent applications was unprecedented growth and broad diffusion of AI across technologies, inventor-patentees, organizations, and geography that attest to the growing importance of AI for all of those seeking intellectual property protection.

'I am pleased to see this rapid increase in artificial intelligence patent applications received by the USPTO, as artificial intelligence is becoming an integral part of our everyday lives,' said U.S. Secretary of Commerce Wilbur Ross. 'I commend the USPTO for quickly adapting to this increase in AI-related patents and for supporting American patent filers as they utilize new technologies to enhance the lives of people across the globe.'

'Artificial intelligence is becoming ingrained in the daily life of Americans, facilitated by its rapid integration into products such as voice recognition systems in mobile phones, robotic appliances, satellites, search engines, and so much more,' said Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. 'As this major new report demonstrates, the expansion of AI is a long-term trend that is accelerating every year. Unlocking the potential of AI will provide the basis for future U.S. economic growth and prosperity, and is something that the USPTO will continue to facilitate with our corps of patent examiners and other professionals who specialize in the nuances of this broad-based and far-reaching technology.'

The study’s authors developed their own AI algorithm to examine all U.S. patent applications published from 1976 through 2018. They found that patents containing AI appeared in 9% of technologies in 1976, spreading to more than 42% of technologies by 2018. While the growth of AI patent applications came in all AI-related technologies, 'planning and control' and 'knowledge processing' were the two categories that recorded the greatest increase in AI use.

The number of individual inventor-patentees active in AI also expanded dramatically during this period, from 1% in 1976 to 25% in 2018. There was similar growth in AI activity by organizations, with most of the top 30 AI companies being in the information and communications technology sector. The top five U.S. patent owners at time of grant from 1976 to 2018 were IBM, Microsoft, Google, Hewlett Packard, and Intel.

While AI inventor-patentees between 1976 and 2000 tended to be concentrated in larger cities and technology hubs, the report found that from 2000 to 2018 there was a marked diffusion of AI into other areas of the country, with notable growth in the Midwest.

'AI has the potential to vastly broaden the inventor community in the United States,' said Director Iancu. 'We have entered a new era of invention, entrepreneurship, and technological development. It is imperative that we train the next generation of Americans in the STEM subjects and innovation skills that will enable them to be part of this revolution.'"

Friday, October 23, 2020

USPTO - International Filing Tools for Inventors Seeking Foreign Patents

Today, the USPTO published a web page International Filing Tools to assist inventors seeking foreign patent protection.

Sunday, October 11, 2020

Michel & Battaglia - EBay the Right to Exclude, and the Two Classes of Patent Owners

In Patently-O, an article Michel & Battaglia - EBay the Right to Exclude, and the Two Classes of Patent Owners worth reading.

The article reviews the Supreme Court's EBay decision, which cautioned courts from categorically denying injunctions to patent owner that seek to license rather than commercialize their patented invention. Despite the caution, when it comes time to grant injunctive relief some courts think we have two class of patent owners. Time for patent owners to remind the court what did and didn't happen in EBay.

Tuesday, October 6, 2020

USPTO - Report on Artificial Intelligence and Intellectual Property Policy

Today, the USPTO released a report: Public Views on Artificial Intelligence and Intellectual Property Policy.

It looks at the impact of artificial intelligence (AI) on intellectual property (IP) law, including on patent, trademark, copyright, trade secret, and database protection.

As stated in the USPTO announcement:

"To that end, the USPTO proactively solicited public input through two formal Requests for Comments published in the Federal Register. In response, the agency received approximately 200 unique comments from a broad range of experts in foreign patent offices, bar associations, trade associations, academia, law firms, and companies in the electronics, software, automobile, medical, and pharmaceutical industries.

As the report indicates, the majority of commenters believe the U.S. legal system is well equipped to handle the emerging issues raised by AI. However, many commented that the USPTO and IP stakeholders must keep a close eye on legal and scientific developments in AI to ensure the United States keeps up with this critical technology."

For more detail see the USPTO Artificial Intelligence webpage.

Wednesday, September 30, 2020

Federal Circuit - Network-1 Technologies, Inc. v. Hewlett Packard - Joining Party Can Challenge Validity On Different Grounds Than Raised in IPR

In Network-1 Technologies, Inc. v. Hewlett Packard, the Federal Circuit held that a party joining an inter partes review (IPR) before Patent Trial and Appeal Board (PTAB) can later challenge patent validity in court as long the challenge is based on different grounds than those raised earlier in the IPR.

As a reminder, 35 U.S.C. § 315(e) estops a petitioner from challenging patent claims in court on grounds it "raised or reasonable could have raised" after a final decision in an IPR. The Federal Circuit explained a joining party is not estopped from raising grounds different than those when the IPR was instituted. In short, a party is only estopped from challenging in court on the grounds it "raised or reasonably could have raised" in the IPR.

Sunday, September 27, 2020

USPTO - Director Iancu's Remarks at the IPO Association's Annual Meeting 2020

On September 15, Director of the U.S. Patent and Trademark Office Andrei Iancu gave the following remarks at the Intellectual Property Owners Association's (IPO) Annual Meeting 2020:

"Hello, and thank you, IPO, for bringing us together. I wish we could be meeting in person as in years past, but I am thankful for the thousands of patents awarded over the decades that make it possible for us to meet virtually.

I hope you are staying safe and healthy. Even in these difficult times, the United States Patent and Trademark Office (USPTO) is running smoothly. Before the pandemic, 56% of USPTO employees worked from home full time, and another 31% worked from home at least one day a week. Our popular telework program made us uniquely well-positioned to pivot to full-time telework for all employees with little difficulty.

We are all learning a lot from the pandemic—and like all pandemics in the past, it is changing the structure of our society. It is also ushering in a new era of invention and innovation, in spite of the hardship and suffering.

The USPTO is currently in “Phase 1,” so our buildings are still closed to the public. Most of our employees continue to work from home and are encouraged to do so to the maximum extent possible. We are moving cautiously and following the guidelines and mandates of our federal, state, and local governments. We will move forward to the next phase only when we are confident of the safety of our employees and customers.

In the meantime, our employees are as committed as ever to our mission of fostering innovation and economic competitiveness. They continue to work with the utmost diligence and professionalism. I couldn’t be more proud of them, especially those with school-age children. But working remotely is certainly not a panacea, and we look forward to the day when we are back together in the office.

The USPTO’s response to the COVID-19 crisis has included a variety of initiatives designed to help our customers. To support filers impacted by the crisis, we have waived petition fees in certain situations, extended the time to file certain fees and meet certain deadlines, and we have allowed all documents and applications—including plant patent applications—to be filed electronically.

We also instituted a COVID-19 Prioritized Examination Pilot Program. It waives the fees for prioritized examination for small or micro entities whose applications cover a product or process that is subject to FDA approval, for use in the prevention and/or treatment of COVID-19. We aim to reach final disposition of these prioritized applications in this program within six months.

We also created a new USPTO IP marketplace platform called “Patents 4 Partnerships,” to facilitate contacts between patent owners who want to license their inventions and potential licensees. It is our hope that Patents 4 Partnerships will accelerate the commercialization of products and technologies to address the current health crisis. The data in the platform includes U.S. patents and published U.S. patent applications related to COVID-19 that have been identified as “available for licensing” by their owners.

For our latest COVID-related initiatives, I encourage everyone to keep an eye on our COVID-19 Response Resource Center. It is now on our website to assist the public with accessing all of our COVID-19 initiatives and programs.

Despite our efforts to spur innovation during the pandemic, there has been a decrease in some filings as a result of the lockdowns. Based on our experience in previous economic downturns, we expected this would happen.

Patent applications are a lagging indicator of economic activity because of the innovation lag that occurs between the completion of research to the conception of a new idea or product, to the creation of an invention, and to the application for a patent.

Through the end of August, serialized patent filings are 0.1% above fiscal year 2019 filings for the same time period. This might sound promising, but it is below plan. Before the pandemic we expected that serialized filings would increase by 2.5% this year. We saw strong improvement over the previous year through February. However, since March, filings have been in decline. Further, RCE filings are currently 10.4% below fiscal year 2019 through the end of August. These declines accelerated during the second half of this fiscal year and are expected to continue into next year.

There have also been recent decreases in patent renewals. For the months of May through August, maintenance fee collections were 4.1% lower—or $19.5 million less than projected. Looking back during previous periods of economic uncertainty, renewal rates typically drop for a short period but then bounce back. We expect that will hold true now, but we’ve never had a period of time quite like this.

Nonetheless, there is good news to report on the innovation front: Small and micro entity patent filings are at a historic high, with more than 112,000 filed during the first 11 months of fiscal year 2020.

While patent filings are a lagging indicator, Trademark applications are more closely correlated with current economic activity, and they tend to follow the S&P 500 index. This year, Trademark filings at the USPTO have exhibited a healthy V-shape recovery, where the front edge of the “V” represents a precipitous decline caused by the pandemic, and the trailing edge of the “V” represents a rapid bounce back to normalcy. It is moving in parallel with the general economic recovery we are experiencing as a nation.

Through the end of August 2020, trademark filings are 3.2% above filings for the same period last year and are slightly higher than we expected. In fact, August 2020 is our biggest filing month yet, with 76,400 classes. We should see more than 700,000 classes for the year.

This is all good news. However, trademark renewals have been lower than expected, and we now project a decrease in collection of $12.3 million. As the mix of filers shifts more towards pro se, one-time filers, and foreign filers, we expect lower trademarks renewal rates in the future.

Despite the pandemic-related challenges, the USPTO has remained focused and operations have been smooth. Through all the metrics we have put in place over the years, we know that our examiners are as productive as ever.

Plus, we have continued our work to improve the IP ecosystem. Among other things, we are clarifying patent subject matter eligibility and balancing post-grant proceedings at the PTAB. In fact, given the economic downturn and the global competitive challenges we face as a nation, we are doing more than ever before to boost innovation in America.

Turning to Section 101 of the Patent code (patentable subject matter), as most of you know, we issued new guidance last year that synthesizes the relevant case law and provides a clear analytical framework. By increasing the clarity of examination and decreasing uncertainty, the results have been remarkable. For example, a recent statistical report from our Chief Economist found that uncertainty decreased by 44% in the first year since our guidance. The report’s findings make it crystal clear that in proceedings at the USPTO our 101 guidance works very well, and it successfully addresses the confusion that existed for years in this important area of patent law.

Turning now to the PTAB, we have made many changes over the past three years to bring post-grant proceedings within balance. Among other things, we have worked to close loopholes that allowed repeated post-grant challenges to patents. IPRs and PGRs were meant to be a cheaper, faster alternative to District Court litigation. They were not meant to create more expensive, prolonged, and duplicative litigation. By reducing multiple bites at the apple, these changes have worked remarkably well and have brought much-needed balance to our post-grant proceedings. They have helped return the U.S. patent system to the top levels of worldwide rankings.

We have made many other substantive changes too, such as a consistent claim construction standard, a more robust amendment process, and much more. Let me highlight a couple of non-substantive new programs that have quickly become popular. PTAB’s Fast-Track Appeals Pilot Program allows appellants to have their ex parte appeals advanced out of turn and expedited. We have so far received 48 petitions and granted 45 of them.

PTAB also recently launched the Legal Experience and Advancement Program—known as LEAP—to facilitate the much-needed training of newer practitioners and help groom the next generation of highly skilled IP lawyers. Under this program, junior practitioners can receive up to an additional 15 minutes to argue a case. Plus, LEAP offers training not found elsewhere. Newer lawyers, for example, have the opportunity to refer back to senior lawyers on standby during an oral hearing, providing more confidence for both the junior lawyers and their clients. Newer lawyers can also receive training directly from PTAB judges about effective oral argument techniques and skills. The USPTO is heavily invested in the success of America’s IP law community, and we embrace the opportunity to help.

In a similar vein, this summer the USPTO released an update to our 2019 report on U.S. women inventors. The new report updates the previous findings based on a review of an additional nearly one million issued patents and three years of new data, and it provides further insights into the participation of women in America’s IP systems.

The report’s numerous findings show that more women are entering and staying active in the patent system than ever before. The number of patents with at least one woman inventor increased from 20.7% in 2016 to 21.9% by the end of 2019. The “Women Inventor Rate”—the share of U.S. inventors receiving patents who are women—increased from 12.1% in 2016 to 12.8% in 2019. These numbers show that efforts to increase the participation of women in the innovation and IP ecosystem continue to yield results. But much more is needed still.

In order to retain our nation’s edge as a global innovation leader, we need even broader participation in patenting. That’s why the USPTO has made outreach to underrepresented groups a top priority. Last week, we held the inaugural meeting for the National Council for Expanding American Innovation. Chaired by Secretary of Commerce Wilbur Ross, the council is comprised of top leaders from academia, industry, and government. The mission of the council is to help us develop a national strategy that will provide a long-term comprehensive plan for our country’s continued success as a worldwide innovation leader. This is no idle exercise. Recent studies show that by harnessing the creative talent of all Americans, we could quadruple the number of inventors and increase the overall level of U.S. GDP per capita by up to 4.4%.

In addition to working with industry and academia to expand participation in the innovation ecosystem, we will also continue highlighting the accomplishments of past and present women inventors, and inventors from other underrepresented groups, to inspire and grow more of those future innovators. We must all work together to grow a powerfully diverse innovation ecosystem and fuel our economy for decades.

All of these initiatives will help us build the strongest IP system possible. We owe the inventors and entrepreneurs of this world no less. IPO plays a critically important role in all of these efforts, and I want to thank you all for your leadership, engagement, and guidance.

Thank you for your dedication and commitment to IP, and thank you to IPO for inviting me to be part once again of your annual meeting."

Friday, September 18, 2020

RPX - The PTAB Sees a Relatively Small Percentage of Patents Litigated in District Court - Comment

On September 16, RPX published a short article: The PTAB Sees a Relatively Small Percentage of Patents Litigated in District Court September 16, 2020. It noted that only 22% of the court cases also see an inter partes review (IPR). Thus, the RPX report might give some patent owners a nice feeling: you probably won't face an IPR where more than half of US patents see claims invalidated.

But think about it. If RPX is correct that IPRs have only been filed against 4,330 patents since available in 2012, while the USPTO reports 11,148 IPR petitions filed from beginning (Sept. 16, 2012) until recently (Aug. 31, 2020), we have a difference. Let's assume both RPX and the USPTO are correct. Why the difference? I am thinking the difference is attributable to the current practice of filing multiple petitions against certain patents. Many patent may escape an IPR, but for valuable patents, it's "war by attrition."