Robert Stoll

Interesting tidbits from a blog post writen by Kathi Vidal, Director of the USPTO today: While the USPTO employes 10,000 employees in Patents, it has only "nearly 1,200" employees in Trademarks. In FY 2023, the USPTO's average pendency from TM application filing to initial examination was 8.5 months. Thus, the agency hired 85 new trademark examining attorneys who each received nine months of introductory training, and two more groups of new (or returning) Trademark Examiners are going through that 9-month training right now. In June 2023 the USPTO began shifting its fraud-related work to its Register Protection Office so TM examiners could focus on reviewing applications. Through April 2024, new TM application filings have been ~3% higher than the first seven months of 2023. In FY 2023, average annual trademark first action pendency was 8.5 months. Presently, average annual first action pendency is 7.85 months and is dropping. The USPTO thinks it is improving. I think it is tasked with an impossible job, and yet, I expect it to do better. What do you think?

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Looking forward to participating in this exciting discussion sponsored and hosted by USPTO, and sharing perspectives from a similar conversation at Licensing Executives Society (U.S.A. and Canada), Inc. 2023 Annual Mtg. #Patent #Licensing

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Great summary by Tangibly Inc's Chris Buntel of the recent ALIFAX v. ALCOR Scientific decision. Some snippets: 📌 The Federal Circuit said that “Alifax not only failed to describe the alleged signal acquisition trade secret with sufficient detail but also failed to identify its proper scope.” 📌 Alifax alleged that the signal acquisition trade secret is “how to acquire photometric signals from a blood sample.”…. But this definition only provides a high-level summary of the purpose of the alleged trade secret without describing it in detail.” 📌 The trade secret owner’s “burden is to describe the trade secret in sufficient detail to show that each element of a trade secret are met”, which Alifax did not do. The Alifax case is but the latest in a series of court holdings requiring trade secret owners to be increasingly specific about what their misappropriated trade secret actually is. 

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Earlier this week, Kathi Vidal, Under Secretary of Commerce for Intellectual Property, posted assurances inconsistent with US patent examiners' experiences. "In 2022, the USPTO began implementing processes for routing patent applications to increase the likelihood that a patent application would be assigned to an examiner with the right technical background in the first instance." Two days ago, examiners posted on reddit: "Why do they place you outside your speciality? Curious as to why if you have years/decades of experience it seems counter intuitive to getting the work done after." "I had another examiner complaining to me about getting access from a specific area that she has no experience in. I happen to be an expert in that sub-field. Do I get those types cases? Nope" "my specialist is rather specific ceramics and glass science which falls in Chem E, I has hired by Mech E" "The Office views examiners as interchangeable widgets" https://lnkd.in/gscvJfH3 If Kathi Vidal, Under Secretary of Commerce for Intellectual Property has been unable to *hear* the patent examiners' objections, maybe its time to re-read this Dept of Commerce OIG August 2023 report exposing patent classification and application routing process failures: "We found that average error rate for initial classification exceeded the acceptable rate. For example, from March 2021 through December 2022, the vendors averaged a 19-percent and 27-percent error rate, respectively or CPC classification." "SPEs denied 5,899 items [requests by examiners to challenge the assigned classification] without providing an explanation." https://lnkd.in/gqBVd4FD Instead of assigning applications to examiners based on their area of technical competence, some patent applications are assigned in a way that creates ethics conflicts for the patent examiners. And as recently as February 14, 2024, the Dept of Commerce OIG has exposed significant rates of potential ethical violations in the assignment of patent applications. "Based on the sample results, we estimated that in CY2022, about 2,100 patent examiners filed [confidential financial disclosure report] CFDRs - or 29.9 percent - had potential financial conflicts that ethics officials failed to identify." "In 12 of the 26 instances, the examiners were assigned patent applications for companies reported their CFDR." An example of such financial conflict "if an examiner worked in an art unit that covered aeronautics and a held stock in an aerospace company, we considered that a potential conflict." https://lnkd.in/gHVr872w https://lnkd.in/gm2wSwzn Sure doesn't seem that USPTO leadership is working together with patent examiners or Dept of Commerce OIG's oversight.

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BREAKING NEWS: Latest status report on copyright lawsuits v AI companies. 📰 4 new lawsuits = 24 total lawsuits May 8 hybrid hearing on MTD in Andersen v Stability AI: you can attend via Zoom 🏎️ Link in article below 👇🏽 Judge Tigar cancels hearing on MTD in Doe 1 v Microsoft. Who does that favor?

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On July 5, 2024, the Federal Register will publish this notice of a USPTO public listening session to be held July 25, 2024 from 10-3 ET concerning the Impact of Proliferation of AI on Prior Art and PHOSITA. Persons seeking to speak must register by 8pm ET on July 19, 2024. Persons wishing to attend either virtually or in person, must register by 8am ET July 25, 2024. https://lnkd.in/g4KNQfxG #USPTO, #AI, #tech, #patent, #inventor, #Innovation, #patentlaw, #AIPLA, #IPO, #NAPP, #commerce, #FedReg

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🛠️ Do you do competitor teardowns—on your competitor's patents? No more stealth purchases and breaking out the Torx 🪛 Use patents or whitepapers, or other literature that may exist— Here I've selected a benign example of US20230176593, it's the most recent patent publication for which Elon Musk is named as an inventor. This one's very conceptual in nature, with the actual implementation abstracted into code. Could be about ride hailing, but probably more about retrieving your own car from the valet station. ➡️ Tell me about this patent  ➡️ Is this a robotaxi patent?  ➡️ Tell me about the problems this patet solves and the advantages it achieves ➡️ Give me some inventive improvements over this patent relating to safety convenience and user experience ➡️ Now give me some wildcard S-curve jumps that would render this patent obsolete You get the picture— some of the S-curve suggestions are indeed wild—like Neuralink x Tesla autonomous control 🧠⚡️🚖 ‼️ 🚘 #tesla 💎#innovation 💻#softwarepatents 

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An interesting case to watch. It all started in 2020 when Ikorongo Technology LLC sued Bumble Trading LLC for infringing two reissue patents. When Judge Alan Albright ruled in favor of Bumble, it was because he felt Ikorongo failed the "original patent" requirement. Ikorongo has challenged the ruling, effectively testing the original patent requirement. #OriginalPatentRequirement #FederalCircuit #Ikorongo #Bumble

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On April 3, 2024, the United States Patent and Trademark Office (USPTO) published a 266-page Notice of Proposed Rulemaking (NPRM) on “Setting and Adjusting Patent Fees during Fiscal Year 2025” (89 FR 23226), with proposed selective and in some cases extraordinary increases in fees for the fiscal years 2025-2029. These proposed increases in fees for patent activities have been controversial among stakeholders.

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The government has imposed licensing requirements for exports to *all destinations worldwide* of certain gate all-around field effect transistor technology, quantum computing items, advanced semiconductor manufacturing equipment, additive manufacturing equipment, and aerospace coating systems technology. The new measures are notable for their restrictive application to all destinations in the world and their institution of a new license exception that allows for exports of the newly controlled items to specified “like-minded” countries that have instituted comparable export controls that are harmonized with U.S. controls. My colleagues Anthony Rapa, Alan kashdan, and Brendan Saslow offer five key takeaways on the new rule. #internationaltrade #exportcontrols #crossbordertrade

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The Federal Circuit has issued an important decision interpreting the scope of the on-sale bar under the AIA in Celanese v. ITC (Fed. Cir. August 12, 2024). Here, the claimed invention - a process of manufacturing an artificial sweetener - was kept secret prior to filing, but the patentee had sold some of the resulting Ace-K product. The court affirmed that the on-sale bar continues to block patenting of an otherwise secret process when the patentee makes pre-filing sales of products made using that process. Even though the statute appears limited to sales of the "claimed invention." This decision maintains the precedent established in D.L. Auld (Fed. Cir. 1983) under the new AIA framework. In deciding the case, the court did not consider the role of international harmonization, despite this being a stated goal of the AIA legislation. This oversight is notable given that patent laws in many other countries generally do not bar patents on secret processes commercialized through product sales -- thus maintaining a divergence between U.S. patent law and international norms. Notable attorneys in the case: • Deanne E. Maynard (Morrison Foerster) for Celanese • Nicole Saharsky (Mayer Brown) for the intervenor • Brian Pandya (Duane Morris LLP) for National Association of Manufacturers - NAM as amicus Read more on Patently-O: https://lnkd.in/gQ4u6-SM

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While the USPTO leadership seeks comments regarding the impact of AI on certain patentability determinations, patent examiners debate the merits of using AI to draft non-final office actions... https://lnkd.in/gRfAkAtu https://lnkd.in/gvBWr9cD #USPTO, #AI, #IP, #IT, #patentquality. #invention, #innovation, #inventor, #patent

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What did you learn from this year’s AIPLA annual meeting? 🤔 From Thursday’s opening plenary with USPTO Director Kathy Vidal’s remarks on AI, to the increasing number of exhibitors offering new AI-focused products, this year’s meeting really put the “AI” in “AIPLA.” 🤖 This included a thought-provoking presentation on using AI tools responsibly and ethically. 😇 Some of my thoughts/takeaways from the presentation (not putting words in the speakers’ mouths 🤐): While genAI-assisted patent drafting is in its infancy and may not be suitable in many situations currently, there may come a time in the (potentially near) future when using genAI to assist in drafting is not only acceptable but ethically required. ✅ Like how use of cloud computing by attorneys was once considered too risky but now is basically expected. ☁️🖥️ In the meantime, it’s crucial to keep up with this evolving technology to make sure that practitioners are using (or not using) AI tools responsibly. 📓 That said, while AI was on the back of the minds of many people in attendance, the conference was far from AI-centric and had plenty of discussion on non-Ai topics. 🗣️ For example, one panel featured a discussion about the LKQ decision, which has the potential to greatly impact how patentability of designs is analyzed in the US and/or how often design patents are rejected/invalidated under 35 USC 103. ❌ As someone who has taken an extra interest in design patents this year, it was really interesting to hear what others think about these design updates. ⚜️ Historically, design patents were rarely found obvious under 103 due to the fairly strict Rosen-Durling analysis, but the more flexible test using the Graham factors like what is used for utility inventions might make obviousness findings more common in design world going forward. 😵 On top of the excellent panels, it was great extending connections with people I met on LinkedIn to the real world as well as meeting new people at the conference! 🔗 If anyone looking to expand their network wants to connect (whether you made it to the conference or not), feel free to reach out! 🛜 #AIPLA #AI #IP #patents #USPTO

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