Patent Prosecution & Strategic Counseling

An invention is not patentable if it was described in, or obvious in view of, an earlier printed publication. See 35 U.S.C. 102(a)(1). This blog post addresses how to overcome an anticipation or obviousness rejection where an inventor is the author or otherwise the source of subject matter in the publication cited as prior art

The European Patent Office (EPO) and International Energy Agency (IEA) have now released “Hydrogen Patents for a Clean Energy Future” – a comprehensive report on innovation in clean-energy hydrogen technologies over the past two decades according to global patent filings. Patents remain strong indicators of innovation activity and the state and direction of science. The report provides a unique look at where green hydrogen investment has been focused and where it are heading based on international patent families (“IPFs”). According to the report, IPFs are reliable proxies for inventive activity as each represents an invention having value sufficient for seeking protection across multiple patent offices.

Starting a high-tech company is a difficult, exhausting, and thrilling endeavor – one in which founders will face seemingly endless challenges, deadlines, and make or break decisions. From a venture’s inception, founders face numerous decisions that if not thoughtfully considered can result in significant legal and financial risk.

Innovators developing IP strategies for 2023 are reflecting on last year’s key IP issues, including entity size designations for US patent applications, erasures of patent damage awards due to flawed expert opinions, and developments involving the ITC, artificial intelligence and machine learning, and inter partes reviews.

At the time of filing any patent application with the United States and Patent Trademark Office (USPTO), patent applicants must designate their entity status.  Selecting the correct entity status can significantly reduce costs, so it is important to determine the correct entity status and update the status as needed throughout a patent’s and patent application’s life.  There are three types of entity statuses: large, small, or micro, with small and micro entities being entitled to reduced USPTO fees

The U.S. Patent and Trademark Office (USPTO) recently launched an online First Office Action Estimator, which provides an estimate when a patent application will receive a first Office action. Having an idea of when a patent application will be first subject to examination can help applicants make a variety of strategic decisions to manage costs and/or proceed faster to allowance. This article explores these decisions.

Recently, the U.S. Patent and Trademark Office (“USPTO”) published a notice informing the public that it will be implementing a pilot program (called the Deferred Subject Matter Eligibility Response Pilot Program, or the “DSMER Pilot Program”) to determine the value of allowing applicants to defer responding to 35 USC § 101 rejections (commonly known as “101 rejections” or “Alice rejections”). The Program is only available for certain applications, and certain procedures are required for participation; however, the Program has the potential to encourage more efficient patent prosecution. Below we answer some questions patent applicants are likely to have about the Program.

As 2022 begins and intellectual property (IP) strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2021.  According to many readers, hot topics included efficient and expeditious U.S. patent prosecution, new copyright and trademark laws, and standard essential patents (SEPs). Below are 5 of the most read IP Posts on Mintz.com from last year.

Tasked with starting an innovation protection and patent development program at your company but do not know where to begin? This three part series describes the key components to a patent development program for any company, small or large. This second installment in the series describes subject matter for educating the innovator technical team tasked with developing or evaluating potential patentable innovations within a company.

Computer-based inventions – especially in the machine learning (ML), bioinformatics, and artificial intelligence (AI) fields – are susceptible to subject matter eligibility challenges. Subject matter eligibility challenges may prevent a patent application from being granted by the United States Patent and Trademark Office (USPTO) and may even be asserted to invalidate a patent post-grant. In recent years, the Federal Circuit has implemented a multi-step test to determine whether patent claims would survive a subject matter eligibility challenge.

Frank Gerratana discusses the relationship between blockchain and cryptocurrency and the underlying intellectual property issues and opportunities for patent holders.

In late August of 2021, the Federal Circuit reversed a jury verdict of $1.2 billion in favor of Juno Therapeutics and Sloan Kettering Institute because the jury’s finding that four of the asserted patent claims did not lack adequate written description under 35 U.S.C. § 112 was not supported by substantial evidence.

It is no question that Artificial Intelligence (“AI”) technologies have popped up in all aspects of society such as online shopping, music streaming, and social networking. The U.S. Patent and Trademark Office (“USPTO”) has even reported that patents which incorporate AI has increased from under 5% in 1980 to over 20% in 2018. Among those organizations that utilize AI is the USPTO itself.

Tasked with starting an innovation protection and patent development program at your company but do not know where to begin? This three part series describes the key components to a patent development program for any company, small or large.

The Bayh Dole Act was enacted to provide incentives to promote commercialization of federally funded inventions and was designed to capitalize on the significant government investments in small business, university research, and other non-profit institutions.

Claim language is important. Particularly when dealing with software systems, claims may be held invalid as being indefinite when the claim language is characterized as “means-plus-function” under pre-AIA 35 U.S.C. §112 ¶ 6 (now AIA 35 U.S.C. §112(f)).

Today, there are new opportunities to own a bit of sports history. It is now possible to even own a digital collectible of your favorite athlete making a play during a game.  NFTs (non-fungible tokens) are being used to provide digital provenance that affords unique ownership of sports most memorable moments. 

It is not uncommon for applicants to file related patent applications in the United States and in Japan. When the applications claim priority to a common patent application, or one of the applications claims priority to the other, the applications’ family relationship can be used advantageously to speed prosecution in one or both jurisdictions. Multiple programs exist to expedite prosecution at the U.S. Patent and Trademark Office (USPTO) and the Japan Patent Office (JPO).

Last week, Mintz Member Lisa Adams moderated a panel discussion between in-house attorneys that covered best practices for conducting patent clearances and obtaining non-infringement and invalidity opinions. The panel discussion, which was hosted by the Boston Patent Law Association, focused on key practical considerations that ensure product clearances and opinions are used as effective tools in a comprehensive intellectual property protection strategy.

Examiner interviews are often indispensable to advance prosecution of a U.S. patent application, and interviews can help advance prosecution in the vast majority of applications. The Midwest Regional U.S. Patent and Trademark Office (USPTO) held a webinar on March 24, 2021 entitled “Conducting an Effective Patent Examiner Interview,” featuring Vivek Koppikar, Special Advisor to the Regional Director of the Midwest Regional Office.