Thursday, January 31, 2019

USPTO - 2019 Revised Subject Matter Eligibility Guidance: Advanced Module

Today, the USPTO reminds:

"Sunday, February 3 is the last day to sign up for the February 26, 27, and 28 vILT course entitled “2019 Revised Subject Matter Eligibility Guidance: Advanced Module.” Trainers from the USPTO will lead this course. The materials are based on recent training delivered to patent examiners.

If you are interested in attending, use the vILT interest form to sign up.

There is limited capacity and selection for attendance is based on a first-come, first-served basis. The USPTO is applying for three hours of CLE credit in Virginia for this course.

Information on upcoming training courses is available on the vILT webpage of the USPTO website."

Copyright © 2019 Robert Moll. All rights reserved.

Monday, January 28, 2019

Harvard Business School Working Paper - Some Facts of High-Tech Patenting

Michael Webb, Nick Short, Nicolas Bloom, Nicholas and Josh Lerner's Harvard Business School (HBS) Entrepreneurial Management Working Paper No. 19-014 and HBS Finance Working Paper No. 19-014 Some Facts of High-Tech Patenting (July 2018) provides an overview on technologies people are seeking to patent. See the charts on pages 5-7.

From the abstract: "Patenting in software, cloud computing, and artificial intelligence has grown rapidly in recent years. Such patents are acquired primarily by large US technology firms such as IBM, Microsoft, Google, and HP, as well as by Japanese multinationals such as Sony, Canon, and Fujitsu. Chinese patenting in the US is small but growing rapidly, and world-leading for drone technology. Patenting in machine learning has seen exponential growth since 2010, although patenting in neural networks saw a strong burst of activity in the 1990s that has only recently been surpassed. In all technological fields, the number of patents per inventor has declined near-monotonically, except for large increases in inventor productivity in software and semiconductors in the late 1990s. In most high-tech fields, Japan is the only country outside the US with significant US patenting activity; however, whereas Japan played an important role in the burst of neural network patenting in the 1990s, it has not been involved in the current acceleration. Comparing the periods 1970-89 and 2000-15, patenting in the current period has been primarily by entrant assignees, with the exception of neural networks."

The article notes "the growth of software patents increased sharply after 2000, particularly when patent applications are considered. The number of software patent applications grew by 168.6% between 2000 and 2013. This growth mirrors that of patents more generally: patent applications overall grew by 122.6% over the same period. As we move into more recent technologies, such as cloud, drones, machine learning, and self-driving cars, the growth is far more dramatic. Meanwhile, the number of issued awards in internal combustion engines and pharmaceuticals, included for the sake of comparison, has been nearly flat."

Copyright © 2019 Robert Moll. All rights reserved.

Tuesday, January 22, 2019

Supreme Court - Helsinn Healthcare S.A. v. Teva Pharmaceutical USA, Inc. - Secret Commercial Sales of Invention Can Bar Patent

In Helsinn Healthcare v. Teva Pharmaceutical, the United States Supreme Court held that a commercial sale to a third party who is required to keep the invention confidential may place the invention "on sale" under the American Invents Act.

Justice Thomas speaking for a unanimous Court stated that the "America Invents Act (AIA) bars a person from receiving a patent on an invention that was 'in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.' 35 U. S. C. §102(a)(1). This case requires us to decide whether the sale of an invention to a third party who is contractually obligated to keep the invention confidential places the invention 'on sale' within the meaning of §102(a)."

"More than 20 years ago, this Court determined that an invention was 'on sale' within the meaning of an earlier version of §102(a) when it was 'the subject of a commercial offer for sale' and 'ready for patenting.' Pfaff v. Wells Electronics, Inc., 525 U. S. 55, 67 (1998). We did not further require that the sale make the details of the invention available to the public. In light of this earlier construction, we determine that the reenactment of the phrase 'on sale' in the AIA did not alter this meaning. Accordingly, a commercial sale to a third party who is required to keep the invention confidential may place the invention 'on sale' under the AIA."

For additional commentary see Professor Ronald Mann's Opinion analysis: Justices affirm ruling that secret sales of invention bar later patent and my post America Invents Act - On Sale Bar, 35 USC 102.

Copyright © 2019 Robert Moll. All rights reserved.

Saturday, January 19, 2019

IP Watchdog - Sherry Knowles Scrutinizes an Activist Supreme Court and its Unconstitutional Approach to Patent Eligibility

Here's a fresh analysis of patent eligibility law. See IP Watchdog: Sherry Knowles Scrutinizes an Activist Supreme Court and its Unconstitutional Approach to Patent Eligibility for an interesting interview and article.

From the abstract of the article: "A or B” is inconsistent with “A not B.” This describes why the application of 35 U.S.C. § 101 by the U.S. Supreme Court is inconsistent with the U.S. Constitution, and thus unconstitutional. This article tracks the legislative history of patent eligibility from 1790 to 2011, and the parallel but inconsistent U.S. Supreme Court case law during this period. In following its own case law, the Court has shown extraordinary judicial activism, has penciled out two words of the federal statute (“or discovers”), and has penciled a word out of the U.S. Constitution (“discoveries”)."

Copyright © 2019 Robert Moll. All rights reserved.

Wednesday, January 16, 2019

Patently-O - How is the USPTO Operating During the Federal Government Shutdown?

Dennis Crouch of Patently-O's post: How is the USPTO Operating During the Federal Government Shutdown? discusses, among other things, what happens if the shut down continues.

Copyright © 2019 Robert Moll. All rights reserved.

Tuesday, January 15, 2019

Venture Beat - Apple and Qualcomm offer billion-dollar sob stories at FTC antitrust trial

In Venture Beat, Jeremy Horwitz reports Apple and Qualcomm offer billion-dollar sob stories at FTC antitrust trial.

The article gives more details on the negotiations leading to the FTC trial than what is described in Wired - The FTC Thinks You Pay Too Much For Smartphones. Here’s Why. For example, the article mentions initially Apple was willing to pay $7.50/phone in 2011 and meet other conditions including advocate against a budding wireless standard WiMax. Then Qualcomm decided to leverage the need for the CDMA chips used by Verizon on the sale of other chips and increase the patent license from $7.50/phone to $8-10/phone plus retain exclusivity. It looks like the "straw that broke the camel's back" as Apple had further developed Intel as a second source for the chips.

Copyright © 2019 Robert Moll. All rights reserved.

Monday, January 14, 2019

Wired - The FTC Thinks You Pay Too Much For Smartphones. Here’s Why


In Wired, The FTC Thinks You Pay Too Much For Smartphones. Here’s Why, FTC is investigating if Qualcomm has committed an antitrust violation (a "tax" on cell phones that drives up prices and hurts competition) in demanding 5% of the value of a cell phone up to $20 max for licensing its patented wireless technology to Apple and Huawei.

From the article:

"Qualcomm charges companies like Apple a set percentage of the total price of a phone in exchange for the right to use its technology, according to the antitrust suit filed by the FTC. The percentages vary, but Qualcomm generally charges 5 percent of the value of a device, up to a maximum of about $20 per device, according to a legal brief filed by Qualcomm. Phone makers like Apple and Huawei argue that Qualcomm demands a larger cut of each phone sale than is fair, but that they pay because Qualcomm essentially threatens to cut off their supply of important wireless chips if they don’t. The FTC describes this as a "tax" on cellular phones that drives up prices and hurts competition.

In court Friday, Apple executive Tony Blevins accused the chipmaker of strong-arm tactics. Blevins said that during negotiations in 2013, Qualcomm president Cristiano Amon told him, "I'm your only choice, and I know Apple can afford to pay it,” CNET reports."

It appears Apple was able to buy its replacement chips from its second source Intel but incurred some delays as it scrambled to integrate the Intel chips to cover for Qualcomm's refusal to reduce its price. It sounds like the mobile computing patent wars have resumed.

Copyright © 2019 Robert Moll. All rights reserved.

Thursday, January 10, 2019

Time - How America Risks Losing Its Innovation

The Time article How America Risks Losing Its Innovation highlights how the Federal government and military have played an important role in funding (i.e., long-term venture capital) technological innovation such as the Internet. Not exactly a new insight, but a well written article with some new stuff and high definition photos of American history.

Copyright © 2019 Robert Moll. All rights reserved.

Wednesday, January 9, 2019

USPTO - Webinar - Revised Subject Matter Eligibility Guidance

Today, the USPTO announced:

"Our Patent Quality Chat webinar kicks off the 2019 series on Jan. 10, from 2 – 3 p.m. ET, with "Revised Subject Matter Eligibility Guidance."

The discussion will focus on the USPTO’s recently-issued guidance published in the Federal Register [84 FR 50] on Jan. 7, implementing changes to USPTO procedures for determining subject matter eligibility under 35 U.S.C. § 101 for claims in patents and patent applications. This webinar will be helpful for anyone prosecuting patent applications or with an interest in statutory compliance with 35 U.S.C. § 101.

The USPTO’s Deputy Commissioner for Patent Examination Policy Bob Bahr and Senior Legal Advisor Matthew Sked will be discussing the revised guidance and the changes it makes to how USPTO personnel apply the first step of the U.S. Supreme Court’s Alice/Mayo test (Step 2A in Office guidance) for subject matter eligibility. Specifically, the revised guidance creates a new inquiry in Step 2A, in which a claim is not “directed to” a recited judicial exception if the claim integrates the judicial exception into a practical application. The revised guidance also groups the types of subject matter that are considered abstract ideas and directs USPTO personnel to use these groupings to identify abstract ideas in revised Step 2A. We look forward to hearing your thoughts and answering your questions about this revised guidance.

Please send your input and questions to patentquality@uspto.gov.

No registration is necessary to attend. More information, including how to attend, is available on our event page on the USPTO website.

The Patent Quality Chat webinar series is presented as a part of the USPTO’s continuous efforts to improve patent quality."

Copyright © 2019 Robert Moll. All rights reserved.

Tuesday, January 8, 2019

IP Watchdog - Exclusive: A Conversation on Self Driving Vehicles at the EPO with Roberta Romano-Götsch - Comment

Waymo will be testing self-driving cars in the SF Bay Area. Safe? I don't know, but you wonder compared to the ridiculous drivers texting down the road. And perhaps a way to "pack cars" into "tight traveling groups" to help address the crushing commuter traffic in SF Bay Area. Time will tell.

Interested in the patenting of self-driving vehicles in the European Patent Office (EPO)? I suggest reading the IP Watchdog interview: Exclusive: A Conversation on Self Driving Vehicles at the EPO with Roberta Romano-Götsch. It contains an interview with an EPO official, an EPO Study Patents and Self-Driving Vehicles (2018), and a graph showing the increase in EPO filings from 2011-2017.

Copyright © 2019 Robert Moll. All rights reserved.

Saturday, January 5, 2019

USPTO - Revised Guidance for Determining Subject Matter Eligibility

Yesterday, the USPTO announced revised guidance for subject matter eligibility under 35 U.S.C. § 101 and for application of 35 U.S.C. § 112 to computer-implemented inventions effective on January 7, 2019:

Section 101 guidance

Section 112 guidance

"These guidance documents aim to improve the clarity, consistency, and predictability of actions across the USPTO," said Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Iancu. "The USPTO will provide training to examiners and administrative patent judges on both documents to ensure that guidance is being properly administered."

"The 2019 Revised Patent Subject Matter Eligibility Guidance makes two primary changes to how patent examiners apply the first step of the U.S. Supreme Court’s Alice/Mayo test, which determines whether a claim is 'directed to' a judicial exception.

  • First, in accordance with judicial precedent and in an effort to improve certainty and reliability, the revised guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes certain groupings of subject matter: mathematical concepts, certain methods of organizing human activity, and mental processes.
  • Second, the revised guidance includes a two-prong inquiry for whether a claim is “directed to” a judicial exception. In the first prong, examiners will evaluate whether the claim recites a judicial exception and if so, proceed to the second prong. In the second prong, examiners evaluate whether the claim recites additional elements that integrate the identified judicial exception into a practical application. If a claim both recites a judicial exception and fails to integrate that exception into a practical application, then the claim is 'directed to' a judicial exception. In such a case, further analysis pursuant to the second step of Alice/Mayo test is required.
The Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112 guidance emphasizes various issues with regard to § 112 analysis, specifically as it relates to computer-implemented inventions. The guidance describes proper application of means-plus-function principles under § 112(f), definiteness under § 112(b), and written description and enablement under § 112(a).

These guidance documents have been issued concurrently to ensure consistent, predictable, and correct application of these principles across the agency.

The USPTO is seeking public comment on all the issues addressed by the two guidance documents. Additionally, we invite the public to submit suggestions to address future guidance supplements as part of their comments. Please submit written comments on these issues to Eligibility2019@uspto.gov on or before March 8, 2019."

Copyright © 2019 Robert Moll. All rights reserved.