USPTO - Federal Register Notice on Artificial Intelligence

Artificial intelligence (AI) has been around decades, but has gotten lots of recent press. Less known is the USPTO has issued several thousand patents on AI technologies.

The USPTO recognizes AI raise issues so announced it "will be publishing a notice in the Federal Register that poses questions regarding the intersection of patent law with AI that the public may respond ... to gather information on AI patent policy issues for purposes of evaluating whether further guidance is needed and informing the development of any such guidance.

Questions the public is invited to reply to include:

• Do current patent laws and regulations regarding inventorship need to be revised to take into account inventions where an entity or entities other than a natural person contributed to the conception of an AI invention or any other invention? 
• Are there any patent eligibility considerations unique to AI inventions? 
• Does AI impact the level of a person of ordinary skill in the art? 
• Do the disclosure rules (enablement, specification, etc.) need to be altered for AI-related patent applications?"

For details: Federal Register Notice on Artificial Intelligence Patent Issues

Copyright © 2019 Robert Moll. All rights reserved.

ED Texas - Judge Gilstrap Changes Playing Field with Patent Eligibility

Here's something to raise the expense of the patent eligibility defense.

An article in Law 360, Judge Gilstrap Changes Playing Field with Patent Eligibility (subscription required), describes an ED of Texas local rule requiring a defendant to state its factual contentions of what is "known" and "conventional" in support of any patent ineligibility defense under 35 U.S.C. 101 within 45 days of receiving the patent owner's disclosure of the asserted claims and infringement contentions.

Sure it's ED Texas local rule, and thus not governing other courts, but this rule appears to implement the CAFC's Berkheimer v. HP decision that among other things states whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination. If other courts adopt this local rule, it would increase the defendant's cost of asserting the patent ineligibility defense.

Copyright © 2019 Robert Moll. All rights reserved.

USPTO - Foreign-domiciled Trademark Applicants and Trademark Registrants Require US Attorney

On August 3, 2019, the USPTO announced:

"If you are a foreign-domiciled trademark applicant, registrant, or party to Trademark Trial and Appeal Board proceedings, in all U.S. trademark matters you must now be represented by an attorney who is licensed to practice law in the United States. This includes Canadian applicants, registrants, and parties.

In addition to this change, U.S.-licensed attorneys representing anyone before the USPTO in trademark matters are now required to confirm they are an active member in good standing of their bar and to provide their bar membership information.

Learn more about this federal trademark law change."

Copyright © 2019 Robert Moll. All rights reserved.

USPTO - Setting and Adjusting Patent Fees During Fiscal Year 2020

The USPTO proposes to increase patent fees in fiscal year 2020:

For example, the USPTO proposes (1) a practitioner fee: $240/year with continuing legal education (CLE) and $340 without CLE to defray the Office of Enrollment and Discipline's costs; (2) an increase of the maintenance and surcharge fees; and (3) an increase in inter partes review (IPR) petition and post institution fees to cover the work of ruling on the validity of each challenged claim as required by the US Supreme Court's holding in SAS Institute Inc. v. Iancu.

See Setting and Adjusting Patent Fees During Fiscal Year 2020 for the USPTO presentation why many patent fees need to increase. Note some of the same IPR fees increased in January 2019.

The public has 56 days to comment on the fee proposal.

Copyright © 2019 Robert Moll. All rights reserved.