Navigating the USPTO’s Regulatory Wave: Key Comment Deadlines for Summer 2024

by Dennis Crouch

Over the past two months, the USPTO has issued an unusually large number of public comment requests related to various proposed rules and procedure changes. This wave of RFCs includes significant proposals aimed at adjusting patent fees for fiscal year 2025, refining terminal disclaimer practices, and addressing the impact of artificial intelligence on prior art and patentability. The agency is also seeking feedback on formalizing the Director Review process following Arthrex and various changes to IPR proceedings, including discretionary review. And there’s more… (more…)

The Legacy of A.B. Dick and Motion Picture Patents: How these 100+ Year Old Ruling Reshaped Patent Law

by Dennis Crouch

I see the US Supreme Court’s 1912 decision in Henry v. A.B. Dick Co. as a major turning point in American patent and antitrust law. 224 U.S. 1 (1912).  The Court’s 4-3 decision favored the patentee and allowed the patent owner to place restrictions on the use of its patented product even after sale. But, that decision sparked a major reform effort.  Just a few years later, the Supreme Court reversed course in Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502 (1917), effectively overruling A.B. Dick and signaling a new largely anti-patent-monopoly era.

In A.B. Dick, (more…)

How Chestek Impacts USPTO’s Rulemaking Authority and the Push to Restore

by Dennis Crouch

The Federal Circuit’s recent decision in Chestek v. Vidal opened the door to extensive USPTO rulemaking that entirely avoids the notice and comment process required by the Administrative Procedure Act (APA). In re Chestek PLLC, 92 F.4th 1105 (Fed. Cir. 2024).  Chestek has now filed her petition for writ of certiorari to the U.S. Supreme Court asking: Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2).

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Major Proposed Changes to Terminal Disclaimer Practice (and You are Not Going to Like it)

by Dennis Crouch

The USPTO recently issued a notice of proposed rulemaking that could significantly impact patent practice, particularly in the realm of terminal disclaimers filed to overcome non-statutory double patenting rejections.  Under the proposed rule, a terminal disclaimer must include an agreement that the patent will be unenforceable if it is tied directly or indirectly to another patent that has any claim invalidated or canceled based on prior art (anticipation or obviousness under 35 U.S.C. 102 or 103). The new enforceability requirement would be in addition to the existing provisions that require a terminal disclaimer to match the expiration date of the disclaimed patent to the referenced patent and promise enforcement only during common ownership.

This is a major proposal that fundamentally alters the effect of terminal disclaimers.  (more…)

Supreme Court Affirms Availability of Back-Damages Under Copyright Discovery Rule

By Dennis Crouch and Timothy Knight

On May 9, 2024, the Supreme Court issued its opinion in Warner Chappell Music v. Nealy, No. 22-1078, 601 U.S. ___ (2024), resolving a circuit split over the availability of back-damages in copyright infringement cases. In a 6-3 decision authored by Justice Kagan, the Court affirmed the Eleventh Circuit’s ruling, permitting recovery of damages for acts that occurred more than three years before the filing of the lawsuit under the “discovery accrual rule.”

For those of you who have not been following the case, the Plaintiff Sherman Nealy, a music producer, helped create musical works in the 1980s with his collaborator, Tony Butler.  Nealy was incarcerated from 1989 to 2008 and again from 2012 to 2015 (more…)

Patenting Informational Innovations: IOEngine Narrows the Printed Matter Doctrine

by Dennis Crouch

This may be a useful case for patent prosecutors to cite to the USPTO because it creates a strong dividing line for the printed matter doctrine — applying the doctrine only to cases where the claims recite the communicative content of information. 

IOEngine, LLC v. Ingenico Inc., 2021-1227 (Fed. Cir. 2024).

In this decision, the Federal Circuit partially reversed a PTAB invalidity finding against several IOEngine patent claims. The most interesting portion of the opinion focuses on the printed matter doctrine.   Under the doctrine, certain “printed matter” is given no patentable weight because it is deemed to fall outside the scope of patentable subject matter. C R Bard Inc. v. AngioDynamics, Inc., 979 F.3d 1372 (Fed. Cir. 2020).  In this case though the Federal Circuit concluded that the Board erred in giving no weight to IOEngine’s claim limitations requiring “encrypted communications” and “program code.”

The printed matter doctrine a unique and somewhat amorphous concept in patent law that straddles the line between patent eligibility under 35 U.S.C. § 101 and the novelty and non-obviousness requirements of §§ 102 and 103. (more…)

Cycling Towards Confusion: Is there room for iFIT Fitness Services and iFIT Safety Glasses?

by Dennis Crouch

In its initial decision, the TTAB dismissed iFIT’s opposition to ERB’s I-FIT FLEX registration — finding no likelihood of confusion because the goods were in separate markets.  iFIT is a major manufacturer of exercise equipment like treadmills and stationary bikes and holds several trademark registrations for IFIT marks covering fitness machines, online fitness training services and content, software, and some ancillary products like apparel.  ERB Industries applied to register I-FIT FLEX for protective and safety eyewear sold at hardware stores such as Home Depot.  Although the two brands are at-times sold in the same online store (Amazon.com and Walmart.com) this type of overlap was not sufficient for the TTAB. In its decision, the TTAB rejected iFIT’s relatedness argument using an analogy to racecar drivers and chemists. The TTAB reasoned that while some racecar drivers and chemists may use safety glasses, that doesn’t mean safety glasses are related to racecars or to chemicals like ammonia.

iFIT appealed the Federal Circuit, and most recently Federal Circuit granted (more…)

Amazon Patent Enforcement Process Can Create Personal Jurisdiction

by Dennis Crouch

In a significant decision on personal jurisdiction in patent cases, the Federal Circuit held that using Amazon’s patent enforcement process (APEX) to target an alleged infringer’s listings can subject the patent owner to specific personal jurisdiction in the alleged infringer’s home state. SnapRays, LLC v. Lighting Def. Grp. LLC, No. 2023-1184 (Fed. Cir. May 2, 2024).

Plaintiff SnapRays (d/b/a SnapPower) is a Utah company that designs and sells electrical outlet covers with USB ports and night lights. Defendant Lighting Defense Group (LDG), a Delaware company based in Arizona, owns a patent on outlet cover technology. In 2022, LDG initiated an action against SnapPower through Amazon’s Patent Evaluation Express (APEX) program (more…)

Federal Circuit Untangles Trademark Dispute

by Dennis Crouch

Araujo v. Framboise Holdings Inc., No. 23-1142 (Fed. Cir. Apr. 30, 2024).

In this appeal, the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision sustaining an opposition proceeding and refusing registration of the standard character mark #TODECACHO for hair combs. Procedural and Substantive: the Federal Circuit held that the TTAB properly allowed Framboise to extend its trial period; and that substantial evidence supported the TTAB’s finding that Framboise established prior use.  Opinion by Judge Lourie, joined by Judges Linn and Stoll.

In Brazilian Portuguese the colloquial phrase – “to de cacho” –  is often used to mean “I am angry.”  In the context of this case, however, it references difficult to control curly hair. (more…)

Post-Default Creditor’s Right to Assign, License and Enforce Patent does not Disturb Patentee’s Separate Right to Sue Infringers

by Dennis Crouch

The Federal Circuit’s new decision in Intellectual Tech LLC v. Zebra Techs. Corp., No. 2022-2207 (Fed. Cir. May 1, 2024) offers some interesting insight into leveraged patent transactions, and the effect of a lender’s ability to license or assign a patent on the patent owner’s standing to sue for infringement, especially (more…)

Discerning Signal from Noise: Navigating the Flood of AI-Generated Prior Art

by Dennis Crouch

This article explores the impact of Generative AI on prior art and potential revisions to patent examination standards to address the rising tidal wave of AI-generated, often speculative, disclosures that could undermine the patent system’s integrity.


The core task of patent examination is identifying quality prior art.  References must be sufficiently accessible, clear, and enabling to serve as legitimate evidence of what was previously known.  Although documents are widely available today via our vast network of digital communications, there is also increasing junk in the system — documents making unsubstantiated claims that are effectively science fiction.  Patent offices prefer patent documents as prior art because they are drafted to meet the strict enablement standards and filed with sworn veracity statements. Issued patents take this a step further with their imprimatur of issuance via successful examination.  Many of us learned a mantra that “a prior art reference is only good for what it discloses” — but in our expanding world of deep fakes, intentional and otherwise, is face value still worth much?

In a new request for comments (RFC), the USPTO has asked the public to weigh in on these issues — particularly focusing on the impact of generative artificial intelligence (GenAI) on prior art. (more…)

Ikorongo Challenges Federal Circuit’s Heightened “Same Invention” Requirement for Reissue Patents

by Dennis Crouch

Ikorongo Technology has filed a petition for certiorari asking the Supreme Court to overturn the Federal Circuit’s heightened disclosure standard for the “same invention” requirement in reissue patents. The petitioner argues that the Federal Circuit’s test, established in Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354 (Fed. Cir. 2014), directly contradicts the Supreme Court’s decision in U.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals Corp., 315 U.S. 668 (1942). Petition for Writ of Certiorari, Ikorongo Tech. LLC v. Bumble Trading LLC, No. 23-1118 (U.S. Apr. 2024).

Reissue has long been a part of the U.S. Patent system, and today’s guiding statute (35 U.S.C. 251) looks substantially the same as that enacted back in 1836.  The basic idea is that a defective patent can be “surrendered” and a new patent issued “for the same invention.”  (more…)

The Non-Compete Ban: Impact on Patenting and Challenging Implementation

by Dennis Crouch

Non-compete agreements fly under the radar for most American lawyers.  One reason is that such restrictions have long been banned within legal practice. As an example, the American Bar Association (ABA) Model Rule 5.6(a) prohibits lawyers from entering into agreements that restrict their right to practice law after terminating an employment, partnership, or other professional relationship. The rule’s stated aim is to protect clients’ freedom to choose their legal representation, but it also ensures that lawyers can practice their profession without restriction.

The increasing prevalence of non-compete agreements in other industries has drawn increasing scrutiny from policymakers and regulators, leading to the FTC’s recent rule banning most non-compete agreements across the United States.  The new rule was announced on April 23, 2024 following a 3-2 vote by the FTC Commissioners (along party lines, with Democrats in the majority). It is set to take effect 120 days later (August 21, 2024). As I discuss below, two lawsuits have already been filed seeking to derail implementation.

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Without Undue Experimentation vs Without Any Experiments

by Dennis Crouch

I was rereading the Supreme Court’s recent enablement decision of Amgen Inc. v. Sanofi, 598 U.S. 594 (2023) and was struck by the Supreme Court’s statement that its 19th Century decision of Wood v. Underhill, 46 U.S. 1 (1847) “establish[ed] that a specification may call for a reasonable amount of experimentation to make and use a patented invention.”  This statement from Amgen is surprising because Chief Justice Taney’s decision in Wood includes a seemingly contrary statement that bars any experimentation (more…)

Guest post by Profs. Chien and Grennan: Unpacking the Innovator-Inventor Gap: Evidence from Engineers

By: Colleen V. Chien, Professor of Law at the University of California, Berkeley School of Law and co-director of the Berkeley Center for Law and Technology, and Jillian Grennan, Associate Professor of Finance and Sustainability at the University of California, Berkeley Haas School of Business. This post is part of a series by the Diversity Pilots Initiative. The Initiative will be hosting its second conference at Emory University Law School in Atlanta on Friday, September 20, 2024. Indicate your interest by signing up here.)

Which IP professionals ascend to partnership or top counsel roles? Which professors publish in the top journals? And which innovators become inventors? This question of who among lawyers, academics, or innovators reaches the next milestone in the progression of a career is relevant in many settings. It has been a central focus in the world of innovation since USPTO’s Director Kathi Vidal’s urgent call to ensure that we “get everyone off the bench” in order to solve world problems and foster economic prosperity.

This call is motivated by the observation that while women comprise 35% of the STEM workforce, they make up only 13% of inventors; Black professionals represent 9% of STEM workers but only 1.2% of inventors. What explains this innovator-inventor gap, the reduced rate at which underrepresented innovators become inventors?  Just as lawyers of varying backgrounds do not equally ascend in firms – with women comprising a slight majority of associates but just 24% of equity partners – the journey from conceiving an idea to becoming a named inventor on a patent is not just a matter of technical merit, but, rather, is significantly influenced by the broader work environment.  Because the progression from innovator to inventor happens largely behind closed, corporate doors, this critical gap has largely been overlooked and its causes, largely unexplored, despite technological innovations’ critical role as a driver of economic growth.

In our study, “Unpacking the Innovator-Inventor Gap: Evidence from Engineers,” which reports on a survey of close to 4,000 innovators across 4 firms, and collaborating firms’ invention disclosure databases, we use detailed administrative and survey data to unpack the forces underlying this gap and provide novel insights into the invention process, how it is influenced by firm policies, and its variation by demographics.  The study’s unique empirical data reveal that inventorship, far from being a rote translation of ideas into patents, reflects an opt-in, competitive process, in which only one-third of engineers engage with their firm’s formal invention submission processes, and only half of these submissions progress to the patent application stage.  Strikingly, participation rates for women at each step of this journey are significantly lower.

A closer examination of the data uncovers additional nuance. While the gender gap is pronounced at all stages of the patenting process, engineers from underrepresented ethnicities exhibit higher engagement levels in both initial ideation and later stages, suggesting distinct experiences and that the barriers and incentives likely differ across demographic groups.  An important take-away for practitioners is that one-size fits all policies to encourage inclusive innovation may not work, rather targeted strategies to address the specific hurdles faced by women and underrepresented ethnicities are warranted.

We gain insights into the process of inventing and the challenges engineers face in going from having an innovative idea to becoming a named inventor by interviewing thirteen patent professionals and the resulting survey of engineers across various collaborating high-tech firms.  The next two figures highlight a key finding takeaway from our study.  Namely, that the path from ideation to patenting is a process fraught with potential frictions attributable to firm policies and systems, cultural norms, and personal experiences.

Figure 1. Variations in the invention submission process across firms

Figure 1 reveals the varied approaches employed by firms in the invention submission process. This figure captures the essence of the diverse practices across different organizations, showcasing the differences in how ideas are collected, reviewed, and iterated upon based on feedback. It serves as a window into the dynamics between engineers, patent professionals, and patent review boards.

Figure 2. Factors influencing the invention submission process

Figure 2 complements Figure 1 by delineating the myriad factors at both the firm (external) and individual (internal) levels that influence an engineer’s decision to submit an inventive idea. It categorizes firm-level factors into informal and formal institutions, such as culture and management practices, while individual-level traits include personal characteristics, early-life experiences, and desires for work-life balance.

Together, these figures underscore the need for a holistic approach to fostering an inclusive inventive environment, one that not only encourages the generation of new ideas but also supports their refinement and submission through processes that are equitable and transparent. As high-tech firms reassess their internal policies and practices, it is helpful to know the specific factors engineers perceive to be working for and against the invention process, in order to cultivate an environment where innovation can thrive.

Using well-established survey techniques, we determine a relative pecking order of factors that contribute to the innovator-inventor gap.  The hierarchy among factors contributing to the innovator-inventor gap as revealed by engineers is management, motivation, culture, the invention submission and review process, mentoring, peer influence, and last personal characteristics. Again, though, we observe that women and URMs perceptions of the factors facilitating invention are distinctive.

For instance, leadership and management practices influence the innovation-invention gap. Better management is the top factor that would increase idea submission. The disparity in engineers’ perception of management is notable, with women and URGs less likely to view management as supportive in the inventing process. Additionally, motivational factors, both extrinsic and intrinsic or pro-social, significantly influence idea submission, with a notable difference in URGs’ desires for creating social value.  Third, corporate culture, especially in terms of aspirational values like collaboration and integrity appear to contribute to the innovator-inventor gap. Female engineers are significantly less likely to (i) experience managers explaining important details, (ii) have people with whom to collaborate, and (iii) experience managers being ethical and making fair decisions. Overall, the creation of a pecking order underscores that the gap is linked to changeable aspects of companies, like management practices and corporate culture, rather than unique individual determinants.

Why is it important to address the inventor-inventor gap?  The final part of our study, in which we examine the patents granted not only to firms in our study, but all U.S. public firms, supplies one answer. We find that patents with female inventors working at firms with meaningful frictions in the innovation process, as proxied by ineffective culture and poor management, are of higher quality and more likely to be in the top 10 percent of citations than the patents of their male counterparts. This outcome is consistent with a model we present which predicts that the costs females face in refining the signal of the patent-worthiness of their inventive idea are higher because of the practices such as inadequate feedback early in the submission process or a lack of peers to collaborate with. Therefore, developing and testing pilots to address these types of information barriers is a particularly promising direction for research and policy.

In conclusion, “Unpacking the Innovator-Inventor Gap: Evidence from Engineers” presents new evidence on the competitive, opt-in nature of the invention process inside high-tech firms and determinants of the innovator-inventor gap, where STEM professionals transition unevenly to being named inventors. Most previous work on inventors focuses on factors influencing the extensive margin like access to STEM education or factors influencing the intensive margin like financial incentives. Our results point to a new, important locus point for inclusive innovation – the workplace and – frictions in the invention process within firms – as a critical factor that determines both who becomes an inventor and the quantity and quality of inventions they pursue. These frictions in the invention process help explain why there is a more pronounced innovator-inventor gap for females. Importantly, we provide evidence that these frictions are so costly to females that they prevent high quality and potentially impactful ideas from being disclosed to society.

By implementing targeted interventions and fostering a culture of inclusion, high-tech firms can unlock the full potential of their diverse workforce, driving forward the frontiers of innovation and securing their competitive edge in the global marketplace. As this analysis has shown, the path forward requires a commitment to systemic change, guided by empirical evidence and grounded in a deep understanding of the challenges faced by underrepresented inventors.

Three main takeaways:

  1. Innovator-Inventor Gap: Only one-third of engineers submit ideas through their firms’ formal invention processes, and just half of these become patent applications. Women participate significantly less at each stage in the journey from potential innovator to patented inventor.
  2. Pecking Order of Factors Influencing the Gap: One key advantage of using a survey to unpack the forces driving the innovator-inventor gap is we hear directly from the engineers who are driving technological progress about their views of the inventive process at their firms.  The hierarchy among factors contributing to the innovator-inventor gap as revealed by engineers is management, motivation, culture, the invention submission and review process, mentoring, peer influence, and last personal characteristics.
  3. Economic implications of the Gap: Analysis of citation patterns suggests that high-quality patents are lost in firms with larger gender gaps. Female inventors at firms with more frictions in the invention process receive significantly more forward citations and are more likely to have their patents be in the top decile of citations, consistent with the marginal lost inventions from women being of high quality.

Read the full paper here: Chien and Grennan, Unpacking the Innovator-Inventor Gap: Evidence from Engineers

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