Tag Archives: patent prosecution

Patently-O Bits and Bytes

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USPTO Patent News:

  • Patent number 12 million issued on Tuesday, June 4, 2024, to Pacific Biosciences of California.  The patent covers particular labeled nucleotide analogs that include an avidin protein for use in analyzing enzymatic reactions and molecular recognition events, such as single-molecule real-time nucleic acid sequencing. From the file history, it looks like David Roise was the lead attorney on the case.
  • Derris Banks has been appointed as the Regional Director of the USPTO’s Elijah J. McCoy Midwest Regional Office (Detroit), where he will oversee outreach efforts while serving inventors and entrepreneurs in the Midwest region.  Banks has been at the USPTO since joining as an examiner in 1994, rising to various leadership positions.  Damian Porcari, who led the office for five solid years, retired in 2023.
  • Several comment periods are still open at Regulations.Gov. Yesterday the period for comments closed on upcoming USPTO fee increases. At least 30 comments were submitted, including those from the AIPLA who “objects to the major policy shift wherein front-end fees are being added not only to recover aggregate costs, but change applicant behavior and implement significant policy changes, including large fee increases for claiming benefits of earlier effective filing dates, filing of Requests for Continued Examinations (“RCEs”), terminal disclaimer submissions, and for filing of large Information Disclosure Statements (“IDSs”).”  [This sentence was almost certainly written by a patent attorney.]

Recent Job Postings on Patently-O Jobs:

  • Van Pelt, Yi & James LLP is seeking local or remote patent engineers to prepare, file, and prosecute patent applications in the fields of computer science and electrical engineering. [Link]
  • Withrow + Terranova, PLLC is looking for an Associate Patent Attorney to work in Apex, NC (open to hybrid and remote arrangements) for patent application preparation and prosecution, client counseling, opinion work, and other related IP matters. [Link]
  • Epstein Becker & Green is seeking an intellectual property associate with at least three years of experience in patent prosecution within the life sciences industry to join their Columbus, Nashville, Pittsburgh, Portland, or Princeton office. [Link]
  • Viering, Jentschura & Partner mbB is seeking a U.S. patent attorney in either their Dresden or Munich office to draft and prosecute patent applications in the United States for various companies. [Link]
  • Dority & Manning is looking for an EE/CS Patent Attorney or Agent to draft and prosecute patent applications in their Raleigh-Durham, NC or Greenville, SC office. [Link]
  • Suiter Swantz IP has an immediate opening for a Patent Attorney or Patent Agent with 2-5 years of experience in their Omaha, NE office (remote considered). [Link]
  • Harrity & Harrity, LLP is seeking a patent professional to draft patent applications for leading global technology companies in software, computer, and electrical technology areas. The position is 100% remote. [Link]
  • The Marbury Law Group is seeking a highly motivated individual to join their Life Sciences team as a Pharma Associate in their Reston, VA, Boston, MA office or remote. [Link]
  • Ballard Spahr LLP is seeking an Electrical/Computer Engineering Patent Prosecution Associate with 2-4 years of experience to work in their Atlanta, Denver, Minneapolis or Phoenix office. [Link]
  • Ballard Spahr LLP is seeking a patent agent with 5+ years of patent prosecution experience to assist in prosecution, IP diligence, IP-transfer commercial transactions, and strategic IP business counseling in their Atlanta, New York, or Philadelphia office. [Link]
  • McNeill Baur is seeking experienced attorneys and agents with advanced degrees in Chemistry and at least 3 years of relevant experience in patent prosecution and/or patent counseling or patent litigation to work remotely. [Link]

SCT: False Claims Act Actions Based Upon Fraudulently Obtained Patent Rights

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by Dennis Crouch

This post walks through a new petition for writ of certiorari involving claims that Valeant Pharma defrauded the U.S. government by using fraudulently obtained patent rights prop up its drug prices. [Read the Petition]

The False Claims Act (FCA), originally enacted in 1863 to combat contractor fraud during the Civil War, imposes civil liability on anyone who “knowingly presents” a “fraudulent claim for payment” to the federal government. 31 U.S.C. § 3729(a)(1)(A). The Act allows private citizens, known as “relators,” to bring qui tam actions on the government’s behalf against those who have defrauded the government. If successful, relators can recover up to 30 percent of the damages. 31 U.S.C. §§ 3730(b)(4), (d)(2).

To prevent opportunistic lawsuits, however, Congress has sought to strike a “balance between encouraging private persons to root out fraud and stifling parasitic lawsuits” (more…)

What I’m doing with LLM-Based GenAI Tools

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by Dennis Crouch

As many of you know, I have done machine learning work for many years — starting in the 1990s while in college.  However, like most of the world, I have been surprised and amazed by the power of LLM-based GenAI technology and have been trying to figure out ways to use it both for patent practice and in my job as a law professor.  I hope that it helps me become both more effective and more efficient.

On the Patently-O side, I have been honing my approach somewhat. I tried to have a GenAI tool (like ChatGPT or Claude) simply write a blog post for me, but those attempts largely failed because the results lacked insight, and the tools continue to make up wrong answers (i.e., hallucinate).  My approach recently has been to first write a draft blog post myself, then refine it with insights from a GenAI — I typically seek input on any errors in my post and suggestions on what else I might have said.  I also have been using these tools for small idea generation if I ever have writer’s block. Although I write one or more blog posts almost every day, I also have about 1,000 unfinished posts, many of which I have been sitting dormant because I wasn’t quite sure how to wrap up.  These days when I get to a blocking point, I will typically ask an AI tool to help me brainstorm (“provide me with five ideas of what to write next”).  The ideas are often not very good, but sometimes they are good. And, I almost always find that one of them triggers an idea of what to do next.  The bottom line then is that this is helping me to finish more work, although I’m still working on improved quality.

I have also been using an AI tools for transcribing Federal Circuit oral arguments – this is a bit more complicated and required some python and API calls to make it work.  The tools do a great job with automated transcription, including catching legal phrases without much trouble. But, my current version does not distinguish between speakers.  I’m hoping this summer to finish the project of automating serialization so that the transcript looks like a real court transcript.

In my patent prosecution class, the students are busy drafting a patent application.  This year they are using a drafting tool known as Edge created by Evan Zimmerman that has an especially good chat-tool for creating a detailed invention disclosure.  It is really fun to see the students dig deeply into this. I envision GenAI assisting with lots of tasks, prior art searches (including detailed comparison to claims), office action responses, specification drafting (including multiple prophetic examples), and (more…)

USPTO Fees: Targeted Higher Fees to Push for Compact

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by Dennis Crouch

The United States Patent and Trademark Office (USPTO) recently proposed a new fee structure for fiscal year 2025, which includes significant increases in various patent fees. [Read the Notice of Proposed Rulemaking] While incremental fee adjustments are common, the proposed changes for FY2025 are particularly noteworthy due to their magnitude in certain targeted areas and potential impact on applicant behavior. Many filers will likely change their practices based on the new higher fees. The USPTO appears to be using these fee adjustments as a tool to shape patent prosecution strategies, encouraging more compact patent applications and smaller patent families.  However, the USPTO is also seeking ways to ensure that the agency remains financially solvent and able to perform its statutory duties in the face of inflation and the Unleashing American Innovators Act of 2022 which reduced patent fees for small and micro entity applicants. The USPTO’s proposed fee increases are largely unchanged from the plan announced last year.

One of the most striking changes in the proposed fee structure . . . (more…)

A New Horizon: Design Patent Practitioner Bar Proposed by USPTO

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by Dennis Crouch

The United States Patent and Trademark Office has proposed a rule to create a separate design patent practitioner bar. The USPTO is publishing this proposal in the Federal Register on May 16, 2023 (link below to the prepub).

As it stands today, there is a single patent bar that applies to those practicing in patent matters before the USPTO, covering utility, plant, and design patents.  And, even though design patents cover ornamentally, the current rules require that the  design patent practitioner be an engineer or scientist.

The proposed rule aims to establish an additional separate bar for those who only specialize in design patents, ensuring that they have the necessary qualifications, while opening the door to non-engineers.  The proposal appears to not affect those already registered to practice. Existing patent practitioners will continue to practice as before, and new applicants who meet the current criteria, including passing the existing registration exam, will also be permitted to practice in all patent matters, including design patent matters.

In Fall 2022, the USPTO asked for comments on proposals in this direction and received mostly positive comments. Stakeholders acknowledged that the move would encourage broader participation in the patent system.

The proposal would still have a ‘technical’ requirement, typically a degree in one of the following: industrial design, product design, architecture, applied arts, graphic design, fine/studio arts, or art teacher education. The degree requirements here align with the current hiring practices of the USPTO for design patent examiners.  In addition to the degree requirements, applicants would have to meet the other requirements to register for the bar, including taking and passing the current registration examination and passing a moral character evaluation.

The USPTO will accept comments on the proposed rulemaking through August 14, 2023 via the regulations.gov portal.

Links:

Comments on USPTO Proposed Fee Changes

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The USPTO has proposed a major set of patent fee revisions. One purpose of the new fees is to raise revenue. It is also clear that the proposal is designed to shift patent applicant behavior along certain fronts.  You can read more at the following links. Note, that the PPAC will be holding a public hearing Thursday, May 18, 2023, from 1-3 p.m. ET.

I submitted a brief comment arguing that before any fee shifting occurs, it is essential to conduct an economic analysis to forecast the impact on USPTO revenue and on innovator behavior.  In the commentary, I outline four general categories of fees, including (1) fees designed to raise money for the USPTO, (2) fees that create a costly screen, (3) fees that shift behavior without substantially shifting rights or raising overall costs, and (4) fees that discourage certain behaviors that result in a loss of rights for users. Each of these categories has potential major impacts, but categories 2 and 4 raise special concerns.

In the commentary, I identify eight specific proposed fee changes that require special attention by the USPTO chief economist or other economic experts. These include new and increased fees for AIA Trial filings, new large costs for terminal disclaimers, and substantial increases in fees for additional claims, among others.

Read it here: ltr.20230510.FeeShifting

Attorney Fees on Undecided Inequitable Conduct Issues

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by Dennis Crouch

United Cannabis Corp (UCANN) vs. Pure Hemp Collective, — F.4th — (Fed. Cir. 2023)

The UCANN vs. Pure Hemp patent case has come to a close with the Federal Circuit affirming the district court’s decision to deny attorney fees to Pure Hemp. The original infringement lawsuit was filed in 2018, with UCANN suing Pure Hemp for infringing US Patent No. 9,730,911, covering various high concentration cannabis and CBD extract formulations. During the litigation, UCANN filed for bankruptcy, causing the case to be stayed, and eventually, the parties stipulated to a dismissal of the infringement claims with prejudice. However, the stipulated dismissal did not include any discussion of attorney fees — leading to the current appeal.

Following the dismissal, Pure Hemp moved for attorney fees and sanctions, arguing that UCANN’s counsel committed inequitable conduct during patent prosecution and that UCANN’s litigation counsel had a conflict of interest. The district court sided with UCANN and denied attorney fees, stating (1) that Pure Hemp was not the prevailing party and (2) that Pure Hemp did not prove that the case was exceptional. The Federal Circuit has now affirmed the decision, finding that the district court did not abuse its discretion in finding the case unexceptional. Although district court the district court erred in not finding Pure Hemp to be the prevailing party, the error was harmless.

(more…)

Generative AI and Copyright

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A few days ago I wrote an essay about the ongoing economic war between the leaders of the US and those of China, with a focus on the impact US attorneys representing Chinese clients. For the article, I used an AI tool to create some art for my publication. The image above shows the resulting four images. I chose the bottom right and had the AI enhance the image for publication by pushing a single button. I then did a cut and paste before publishing.

Although I didn’t contribute any of the expression seen in the work, after these actions and then publishing it, I actually feel some gut level of ownership. And, that I might be upset if someone else used _my_ image without permission.

My questions for you:

  • Do I deserve to “own” this image?
  • Should I be able to claim authorship?
  • Should I disclose my AI creation methodology when I use the image in published works?

Comment on LinkedIn: https://www.linkedin.com/posts/patentlyo_ai-publishing-art-activity-7059984906633842688-eGgf

 

Bringing Home the Bacon with Joint Inventorship

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Guest Post by Jordan Duenckel.  Jordan is a second-year law student at the University of Missouri, head of our IP student association, and a registered patent agent.  He has an extensive background in chemistry and food science.

HIP, Inc., v. Hormel Foods Corp., 2022-1696, — F.4th — (Fed. Cir. May 2, 2023)

Joint inventorship requires a substantial contribution to the invention. In the decision HIP, Inc. vs. Hormel, Judge Lourie writes for a unanimous panel to reverse a district court’s determination of joint inventorship involving a new process for precooking bacon. US Patent 9,980,498 has four inventors that are employees of and assigned their interest to Hormel.  HIP sued Hormel, alleging that David Howard was either the sole inventor or a joint inventor of the ’498 patent. The district court determined that Howard was a joint inventor based solely on his alleged contribution to the infrared preheating concept in independent claim 5.  

Bacon is an interesting food with unique preservation and cooking properties. Being a cured product, for food safety reasons, no additional cooking of the bacon is needed when bought off the shelf in a refrigerated section. Of course, most people are not consuming the bacon without additional cooking and some companies will precook the product for consumer convenience. When precooking, Hormel is trying to avoid the loss of salt, and therefore flavor, through condensation and prevent the creation charred off flavors (as opposed to the desirable char on a steak).  

 In the process of viability testing the new method, prior to filing the application, the inventors consulted with David Howard of Unitherm, HIP’s predecessor, to discuss methods related to Unitherm’s cooking equipment to create a two-step process of preheating then a higher temperature step. After some difficulties, Hormel leased the equipment and returned to their own R&D lab. The method created, the subject matter of the ‘498 patent, involves a first step that allows the fat of the bacon to seal the surface of the bacon and prevent condensation. The charring was remedied by adjusting the heating method of the oven in the second step of high-temperature cooking. In Hormel’s product development, Hormel tried an infrared oven and a conventional spiral oven.

HIP argued that Howard contributed to the ‘498 patent in the preheating by hot air in claim 5 and/or preheating with an infrared oven in claim 5.  Claim Five reads in the relevant part:  

  1. A method of making precooked meat pieces using a hybrid cooking system, comprising: preheating meat pieces in a first cooking compartment using a preheating method selected from the group consisting of a microwave oven, an infrared oven, and hot air to a temperature of at least 140º F. to create preheated meat pieces…

On appeal, Hormel argues that Howard’s contribution is well-known in the art and insignificant when measured against the full invention. With inventorship being a question of law, and the issuance of a patent creating a presumption of inventorship, an alleged joint inventor must provide clear and convincing evidence to substantiate their claim. In evaluating whether a significant contribution was made by Howards, the parties apply the test from Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998). The test requires that the alleged joint inventor: 

(1) contributed in some significant manner to the conception of the invention; (2) made a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention; and (3) did more than merely explain to the real inventors well-known concepts and/or the current state of the art. 

Analyzing the second Pannu factor, the Court found that the alleged contribution of preheating meat pieces using an infrared oven to be insignificant in quality because it was mentioned only once in the patent specification as an alternative heating method to a microwave oven and was recited only once in one Markush grouping in a single claim. In contrast, preheating with microwave ovens and microwave ovens themselves were prominently featured throughout the specification, claims, and figures. The examples and corresponding figures also employed procedures using preheating with a microwave oven, but not preheating with an infrared oven.  

Infrared heating seems to have been an afterthought in the creation of the two-step precooking method. Whatever discussions Howard might have had about the importance of the infrared, Hormel seems to have focused on microwave heating to solve the condensation problem. From one step further back, it seems absurd to permit joint ownership by a cooking equipment manufacturer when the significant discoveries and refinements of the methods were made in Hormel’s R&D facility without Howard present. The prevention of condensation and avoiding the char flavor were both made independent of Howard’s contributions. Considering the second Pannu factor, the reversal of inventorship seems appropriate.  

Professional Liability risks of filing in DOCX

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Carl Oppedahl has been focused on the USPTO’s electronic filing and docketing system for several decades. Most recently, he has been calling out the USPTO for “pants-on-fire lies” about the workability of the DOCX standard.  The PTO plans to institute a $400 surcharge for those who fail to use DOCX starting at the end of June 2023.

Oppedahl is presenting two webinars on the topic, focusing on professional liability risks associated with the new process and some tips for reducing the risks:

Professional Liability Risks of Filing in DOCX – for users of Microsoft Word.  Wednesday, May 10, 2023, 10 AM to 11:30 AM Mountain Time.  Executive summary from 10 AM to 10:40 AM, details from 10:40 AM to 11:30 AM.  For more information, or to register, click here.

Professional Liability Risks of Filing in DOCX – for users of non-Microsoft word processors.  Friday, May 12, 2023, 10AM to 11:30 AM Mountain Time.   Executive summary from 10 AM to 10:40 AM, details from 10:40 AM to 11:30 AM.   For more information, or to register, click here.

What should the patent attorney do? 

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After coming up with a core idea for a new product, Inventor jumps on chatGPT and asks the AI to expand upon the product idea, including providing additional design elements based upon the inventor’s original description. ChatGPT comes through with flying colors and provides several detailed designs that inventor had not considered.  Inventor is diligent in their disclosure docs to include the chatGPT transcript.  Patent search reveals that Inventor’s original idea is not patentable by itself, but it is likely patentable when combined with the chatGPT input. The patent attorney sees value  in having claims directed solely to the features provided by chatGPT.

You are the patent attorney, what do you do in this situation?

Preparing for Automated Examination

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Associates around the country today are drafting motions, patent applications, and other documents using some version of ChatGPT.   Of course, If I were a judge or examiner, I might also be interested in using AI to help facilitate my decision-making.  ChatGPT is good for that as well and can provide a reasoned structure, including identifying of prior art and obviousness standards.

If you recall your last writing course, the professor repeatedly focused attention on the audience. “Who is the audience you are looking to persuade?”  Moving forward, it appears that we really do have a new audience for our writing — AI advisors.  This calls to mind the great tape recorder scene from Real Genius (1985). Members of the class began just leaving tape-recorders to record the  boring lecture; eventually, the professor also just brought in his own taped lecture to speak to the machines.

Automated Examination: On the patent prosecution side, we may shortly be in a situation where AI systems will be able to conduct patent examination at the same level of quality as a typical human examiner.  It seems obvious that we should rely upon the AI to at least facilitate examination.  The bigger question is whether to eliminate the first-level human bureaucracy all together and move to an automated examination system.  The benefit of that process is that it could be done very rapidly (immediate allowance / rejection) and potentially at a much lower cost.  Certainly, PCT systems could move toward substantially lowering costs with initial search reports and examination being done automatically.

What do you think? 

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Update on the Akin Gump v. Xcential case

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By David Hricik, Mercer Law School

Noted below, Akin Gump had sued a former vendor, Xcential, arguing that its lawyers had invented what Xcential had sought to patent. In response to the firm’s suit, Xcential filed five counterclaims, essentially asserting Akin Gump had misused information that Xcential had disclosed to Akin Gump.

As noted below, Akin Gump moved to dismiss those counterclaims and, further sought a preliminary injunction.

The district court denied the motion to dismiss four of the five, essentially holding Xcential had plead plausible facts that Akin Gump had misappropriated Xcential’s confidential information for the firm’s own benefit.  The order is here. (Call me Nostradamus, but I’d bet Akin Gump’s motion for preliminary injunction will be denied, too.)

On the main page, Dennis posted about a case raising somewhat similar ethical concerns, United Cannabis Corporation v. Pure Hemp Collective Inc., Docket No. 22-01363 (Fed. Cir. 2023), which involved a firm’s admitted use of text from one patent application in an application for another client in closely related cases.  It’s not clear, in either instance, whether any of the firms engaged in improper conduct, but it is not a good look where a firm is prosecuting cases for different clients in technologies so closely related that one client’s application provides a head start on another’s, or allegedly taking a vendor’s confidential information and using it for the law firm’s own benefit.