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Note: First published in The Intellectual Property Strategist and Law.com.

This article is Part Three of a Three-Part Article Series

Artificial intelligence is changing industry and society, and metrics at the US Patent and Trademark Office (USPTO) reflect its impact. In a recent publication, the USPTO indicated that from 2002 to 2018 the share of all patent applications relating to artificial intelligence grew from 9% to approximately 16%. See “Inventing AI, Tracing the diffusion of artificial intelligence with U.S. patents,” Office of the Chief Economist, IP Data Highlights (October 2020). For the foreseeable future, patent applications involving artificial intelligence technologies, including machine learning, will increase with the continued proliferation of such technologies. However, subject matter eligibility can be a significant challenge in securing patents on artificial intelligence and machine learning.…

Continue Reading Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part Three Of Three

Note: First published in The Intellectual Property Strategist and Law.com.

This article is Part Two of a Three-Part Article Series

Artificial intelligence is changing industry and society, and metrics at the US Patent and Trademark Office (USPTO) reflect its impact. In a recent publication, the USPTO indicated that from 2002 to 2018 the share of all patent applications relating to artificial intelligence grew from 9% to approximately 16%. See “Inventing AI, Tracing the diffusion of artificial intelligence with U.S. patents,” Office of the Chief Economist, IP Data Highlights (October 2020). For the foreseeable future, patent applications involving artificial intelligence technologies, including machine learning, will increase with the continued proliferation of such technologies. However, subject matter eligibility can be a significant challenge in securing patents on artificial intelligence and machine learning.…

Continue Reading Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part Two Of Three

In recent years, AI patent activity has exponentially increased. The figure below shows the volume of public AI patent applications categorized by AI component in the U.S. from 1990-2018. The eight AI components in FIG. 1 are defined in an article published in 2020 by the USPTO. Most of the AI components have experienced explosive growth in the past decade, especially in the areas of planning/control and knowledge processing (e.g., using big data in automated systems).
Continue Reading Patent Protection on AI Inventions

Note: First published in The Intellectual Property Strategist and Law.com.

This article is Part One of a Three-Part Article Series

Artificial intelligence is changing industry and society, and metrics at the US Patent and Trademark Office (USPTO) reflect its impact. In a recent publication, the USPTO indicated that from 2002 to 2018 the share of all patent applications relating to artificial intelligence grew from 9% to approximately 16%. See “Inventing AI, Tracing the diffusion of artificial intelligence with U.S. patents,” Office of the Chief Economist, IP Data Highlights (October 2020). For the foreseeable future, patent applications involving artificial intelligence technologies, including machine learning, will increase with the continued proliferation of such technologies. However, subject matter eligibility can be a significant challenge in securing patents on artificial intelligence and machine learning.…

Continue Reading Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part One Of Three

The harm caused to brands by counterfeiting goes far beyond loss of sales or profits.  Fake goods jeopardize public health and safety when a brand’s trademark is applied to a sub-standard and potentially harmful product.  This is especially hazardous for counterfeit medical items, mechanical parts, and food products, to name a few.  What is more, the reputational damage inflicted by low-quality products can be devastating. …
Continue Reading Practice Tips for Combating Counterfeiters: An Action Plan for Brands, Manufacturers and Retailers

This article originally appeared in The Intellectual Property Strategist. © 2021 ALM Media LLC. Reprinted with permission.

Companies have historically turned to patent pools as vehicles for achieving shared objectives. A patent pool can be formed when a group of patent holders agree to pool their patents for some purpose. For instance, members of a patent pool may agree to pool and license their patent rights to a third party in exchange for fees or royalties. In this scenario, the pooling companies may own complementary patents that enable a technical standard. Pooling the complementary patents can enable a licensee to develop a product or service. In another scenario, members of a patent pool may agree to pool and cross-license their patent rights to one another. This may occur when a group of companies are developing similar products and services. Here, the members can benefit from shared patent rights that allow them to focus more of their resources on developing their businesses and less on patent transactional and litigation expenses.
Continue Reading Synergizing Patents to Drive Innovation and Growth

The Situation

Smart contracts are often mentioned in blockchain-themed patent applications and recited in claims. However, Examiners without a thorough understanding of this concept or unfamiliar with blockchain technology often equate smart contracts with legal or commercial contracts stored on blockchains. As a result, the Examiners may find claims directed to merely applying the blockchain technology to execute legal or commercial contracts, for example, as part of a commerce system, like hedging. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. at 2356 (citing Bilski v. Kappas, 561, U.S. 593, 611 (2010)).…

Continue Reading Distinguish “Smart Contract” From Abstract Idea To Pass Blockchain Patentability Scrutiny

On February 10, 2021, the Federal Circuit in Infinity Computer Products, Inc. v. Oki Data Americas, Inc., No. 20-1189 (Fed. Cir. 2021) affirmed a decision by the U.S. District Court of Delaware that patent claims were invalid for indefiniteness based on conflicting positions taken by the patentee during prosecution. Specifically, the Federal Circuit held that the conflicting positions leave one of ordinary skill without reasonable certainty regarding the scope of the invention. This Federal Circuit decision is a reminder to patent applicants that piecemeal success before the Patent Office that does not conform to a coherent overarching prosecution strategy can invalidate patent rights.
Continue Reading “Winning” Prosecution Arguments Can Invalidate Your Patent As Indefinite

Blockchain patent applications may be divided into two types: underlying technologies of blockchain, such as consensus methods, security, etc., and applications of blockchain in, e.g., fintech, legal, and other industries. In patent examination, the first type, because it recites underlying technology improvement, rarely elicits subject matter rejections. The second type, applications of blockchain, are often found to be directed to an abstract idea. This article analyzes a recent Patent Trial and Appeal Board (PTAB) decision in a blockchain patent application and explores drafting and prosecution strategies to anticipate subject matter scrutiny.
Continue Reading Blockchain Patentability Through The Lens Of A Recent PTAB Decision

December 1, 2020 marked the five-year anniversary of the Supreme Court’s abrogation of Form 18—the model complaint that provided the minimum requirements for stating a claim of direct infringement.  Following the abrogation of Form 18, patent infringement claims must satisfy the plausibility standard articulated in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009).  Courts, however, have diverged in applying Iqbal and Twombly to patent cases.  As a result, pleading standards now vary from jurisdiction-to-jurisdiction (and even from judge-to-judge within the same jurisdiction).

In a series of blog posts, we are exploring how courts are applying the Iqbal/Twombly pleading standards to patent cases five years after Form 18 was abrogated.  In Part 1, we examined Federal Circuit opinions, including the seeming inconsistencies among those opinions.  In this installment, we look at how pleading standards have been applied in the District of Delaware.
Continue Reading Patent Infringement Pleading Standards Remain Unsettled Five Years After the Abrogation of Form 18 – Part 2: Pleading Standards in Delaware