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 or visit the Public Search Facility and/or Patent and Trademark Resource Centers websites."

Copyright © 2022 Robert Moll. All rights reserved.

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. 

Copyright © 2022 Robert Moll. All rights reserved.

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."

Copyright © 2021 Robert Moll. All rights reserved.

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. 

Copyright © 2021 Robert Moll. All rights reserved.

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.

Copyright © 2021 Robert Moll. All rights reserved.

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 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! 

Copyright © 2021 Robert Moll. All rights reserved.

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."

Copyright © 2021 Robert Moll. All rights reserved.

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.

Copyright © 2021 Robert Moll. All rights reserved.

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.

Copyright © 2021 Robert Moll. All rights reserved.

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.

Copyright © 2020 Robert Moll. All rights reserved.

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."

Copyright © 2020 Robert Moll. All rights reserved.

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.'"

Copyright © 2020 Robert Moll. All rights reserved.

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.

Copyright © 2020 Robert Moll. All rights reserved.

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.

Copyright © 2020 Robert Moll. All rights reserved.

Tuesday, October 6, 2020

USPTO - Report 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.

Copyright © 2020 Robert Moll. All rights reserved.

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.

Copyright © 2020 Robert Moll. All rights reserved.

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."

Copyright © 2020 Robert Moll. All rights reserved.

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."

Copyright © 2020 Robert Moll. All rights reserved.

Thursday, September 17, 2020

USPTO - Trial Statistics IPR, PGR, CBM Patent Trial and Appeal Board August 2020

The USPTO monthly publishes trial statistics for IPRs, PRG, and CBM in the PTAB section of Note covered business methods (CBM) expired September 15, 2020. 

Here's the latest report: Trial Statistics IPR, PGR, CBM Patent Trial and Appeal Board August 2020

Copyright © 2020 Robert Moll. All rights reserved.

Monday, August 31, 2020

IP Watchdog Annual 11-day Free Virtual IP law conference (September 1-30)

Gene Quinn's IP Watchdog Annual Meeting 11-day virtual conference (September 1-30) with IP law speakers starts at 9 AM (PT) tomorrow: IP Watchdog free registration page.

Copyright © 2020 Robert Moll. All rights reserved.

Saturday, August 29, 2020

RPX - Infringement Is the Top District Court Issue Appealed to the Federal Circuit

RPX published a nice summary on what US patent issues are appealed to the Federal Circuit:

"RPX data on the Federal Circuit show that infringement is the most common issue appealed from district court patent cases, appearing in over 450 appeals. Claim construction and invalidity (under Sections 102/103/112) are the next two most frequent issues, each of which appears in over 300 appeals. Two other key issues round out the top five: damages/fees/costs (appearing in around 275 appeals) and invalidity under Alice/Section 101 (just over 240 appeals)."

Note the low reversal rates of many issues appealed point to the importance of winning at trial. As Judge Rich might say, "the name of the game is the claim."

For more detail: RPX Infringement Is the Top District Court Issue Appealed to the Federal Circuit

Copyright © 2020 Robert Moll. All rights reserved.

Wednesday, August 19, 2020

USPTO - Use of Admitted Prior Art in a Petition for Inter Partes Review

On August 18, 2020, the USPTO issued a Guidance Memorandum to the Patent Trial and Appeal Board (PTAB) regarding reliance on applicant admitted prior art in a petition for inter partes review.

The USPTO stated: "the memorandum, issued under the Director’s authority to set forth binding agency guidance, provides the office’s interpretation of 35 U.S.C. § 311(b) that the basis for an inter partes review (IPR) must be a prior art patent or printed publication, and that statements regarding prior art in the challenged patent therefore cannot serve as the basis for instituting an IPR. Such statements, however, may provide evidence of the general knowledge possessed by a person of ordinary skill in the art, and may be used to support an obviousness argument in conjunction with one or more prior art patents or printed publications."

Thus, the USPTO memo states IPR challengers cannot ground a petition solely in applicant's admissions in the specification, but can use them to support obviousness along with prior art.

This is uncontroversial, but it reminds how you write a US patent application. The popular Pressman, Patent It Yourself (2018) states that "applicants should indicate the problems of the prior art, if any, and describe and knock all prior art" under the heading Background - Prior Art. However, this is not good advice, a big job, and in my view unnecessary. Instead, it is best to avoid risk of a prior admission in describing and knocking all prior art, especially when the USPTO only requires applicants and attorneys disclose prior art they are aware of that is material to patentability in an information disclosure statement for consideration by the examiner.

Copyright © 2020 Robert Moll. All rights reserved.

Tuesday, July 28, 2020

Federal Circuit - Packet Intelligence LLC v. NetScout Systems, Inc. - Claims Patent Eligible under 35 USC 101

In Packet Intelligence LLC v. NetScout Systems, Inc., the Federal Circuit held claims patent eligible under 35 USC § 101.

Athough Packet Intelligence alleged infringement of three US patents, the patent eligibility issue was analyzed using representative claim 19 of US Patent No. 6,954,789:

19.  A packet monitor for examining packets passing through a connection point on a computer network, each packet conforming to one or more protocols, the monitor comprising:

    (a) a packet acquisition device coupled to the connection point and configured to receive packets passing through the connection point;

    (b) an input buffer memory coupled to and configured to accept a packet from the packet acquisition device;

    (c) a parser subsystem coupled to the input buffer memory and including a slicer, the parsing subsystem configured to extract selected portions of the accepted packet and to output a parser record containing the selected portions;

    (d) a memory for storing a database comprising none or more flow-entries for previously encountered conversational flows, each flow-entry identified by identifying information stored in the flow-entry;

    (e) a lookup engine coupled to the output of the parser subsystem and to the flow-entry memory and configured to lookup whether the particular packet whose parser record is output by the parser subsystem has a matching flow-entry, the looking up using at least some of the selected packet portions and determining if the packet is of an existing flow; and

    (f) a flow insertion engine coupled to the flow-entry memory and to the lookup engine and configured to create a flow-entry in the flow-entry database, the flow-entry including identifying information for future packets to be identified with the new flow-entry, the lookup engine configured such that if the packet is of an existing flow, the monitor classifies the packet as belonging to the found existing flow; and if the packet is of a new flow, the flow insertion engine stores a new flow-entry for the new flow in the flow-entry database, including identifying information for future packets to be identified with the new flow-entry, wherein the operation of the parser subsystem depends on one or more of the protocols to which the packet conforms.

The Federal Circuit stated in analyzing patent eligibility, we consider the claim as a whole and read it in light of the specification. The Federal Circuit observed patent-eligibility of computer and network technology often turns on whether claims recite a specific improvement in computer capability or an abstract idea for which computers are merely invoked as a tool.

The Federal Circuit stated that claim 19 was not directed to an abstract idea. Instead, it met a unique challenge to computer networks by describing how to identify disjointed connection flows in a network environment. In other words, the specification presented a new technological solution to a technological problem.

Copyright © 2020 Robert Moll. All rights reserved.

Friday, July 24, 2020

Federal Circuit - Uniloc 2017 LLC v. Hulu LLC - PTAB May Review Proposed Substitute Claims for Patent Eligibility in IPR

In Uniloc 2017 LLC v. Hulu, LLC, the Federal Circuit affirmed PTAB's determination that the patent owner's substitute claims proposed in a motion to amend were patent ineligible under 35 U.S.C. § 101 in an inter partes review (IPR).

As a reminder, IPR only permits challenges of US patent claims based on prior literature under 35 U.S.C. § 102 and 35 U.S.C. § 103. However, the Federal Circuit is now making a distinction with issued and substitute claims proposed in an IPR and states that PTAB may review substitute claims proposed by the patent owner for patent eligibility.

The dissent stated: "the majority breathes life into a dead patent and uses the zombie it has created as a means to dramatically expand the scope of inter partes review (“IPR”) proceedings. Because the Patent Trial and Appeal Board (“Board”) is estopped from issuing substitute claims in place of the invalidated claims of U.S. Patent No. 8,566,960 ("'960 patent") and because, even if the Board could issue such claims, it would be improper for it to consider 35 U.S.C. § 101."

Copyright © 2020 Robert Moll. All rights reserved.

Wednesday, July 15, 2020

USPTO - PTAB Motion to Amend Study Updated

The USPTO released an update to the PTAB Motion to Amend Study today.

It seems the data on motions to amend filed under the pilot program is insufficient at this stage to support it is less than a challenge to amend patent claims in PTAB trials.

Here's the USPTO summary:

"The Patent Trial and Appeal Board (PTAB) has published the sixth installment of its Motion to Amend Study. The study tracks and analyzes all motions to amend filed in America Invents Act trials, including pilot motions, through the end of March 2020.

This installment completes the data on all motions to amend filed before the effective date of the New Pilot Program Concerning Motion to Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board (84 FR 9497).

Highlights from the installment include:

Some limited data on motions to amend filed under the motion to amend pilot program that the office implemented for cases instituted on or after March 15, 2019.

Of the 5,359 trials that have gone to completion or settled, patent owners sought to amend the claims in 562 trials—504 pre-pilot program trials and 58 pilot program trials.

Of the 504 trials with pre-pilot motions to amend, the PTAB decided the merits of 335 motions. In the remaining 170 completed trials, the motions to amend were rendered moot because the PTAB did not find the original claims unpatentable, were not decided because the trial terminated prior to a final written decision, or contained an amendment that only sought to cancel claims.

Of the 335 pre-pilot motions to amend that the PTAB decided, the PTAB granted or granted-in-part 46 motions. For 92% of the 289 motions denied or denied-in-part, the PTAB determined that the proposed amended claims did not satisfy at least one statutory requirement of patentability—akin to an examiner rejecting a proposed amended claim because it is anticipated, obvious, not adequately described in the written description, indefinite, or directed to non-statutory subject matter—or found that the patent owner failed to satisfy the statutory requirements for a motion to amend under 35 U.S.C. §§ 316(d) or 326(d).

For the limited number of motions to amend filed under the pilot program and included in the study, patent owners requested preliminary guidance in 83% of motions and filed a revised motion to amend in 58% of trials after receiving preliminary guidance (when taking into account cases that terminated, cases in which the motion to amend was withdrawn, or cases in which the deadline to file a revised motion to amend had not yet passed)."

Copyright © 2020 Robert Moll. All rights reserved.