The United States Patent and Trademark Office (USPTO) published a report authored by its Chief Economist titled, Adjusting to Alice: USPTO patent examination outcomes after Alice Corp v. CLS Bank International. The report highlights how recent actions undertaken by the USPTO have brought greater predictability and certainty to the determination of patent eligibility in the technology areas most affected by the decision.
“We have heard anecdotally from both examiners and applicants across the entire spectrum of technologies that our 2019 guidance on Section 101 greatly improved the analysis in this important area of patent law,” said Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. “The Chief Economist’s report now confirms this general perception, especially with its critical finding that uncertainty decreased by a remarkable 44%.”
The report’s analysis by the USPTO’s Office of the Chief Economist found that one year after the USPTO issued its January 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG), the likelihood of Alice-affected technologies receiving a first office action with a rejection for patent-ineligible subject matter had decreased by 25%. Likewise, uncertainty about determinations of patent subject matter eligibility in the first action stage of patent examination for the relevant technologies decreased by 44% over the first year following publication of the 2019 PEG compared to the previous year.
“The primary economic function of the patent system is to provide an incentive for greater innovation,” according to Dr. Andrew Toole, Chief Economist of the United States Patent and Trademark Office and principal author of the report. “Using an evidence-based approach, our report highlights the significant impact of the Supreme Court’s Alice decision on patent examination outcomes and the important stabilizing role played by the USPTO. This is what innovators and investors need to confidently promote entrepreneurship, create jobs, and advance science and technology.”
Director Iancu added, “I have long said that in order to ensure that the United States remains the global leader in the technologies of the future, our patent system must move beyond the recent years of confusion and unpredictability on subject matter eligibility. It is now clear that our recent guidelines mark a significant step in that direction, and I ask all involved in our treasured patent system to come together and solve, once and for all, this fundamental issue.”
The full report is available for download from the USPTO’s website.
The United States Patent and Trademark Office (USPTO) released a report on the trends and characteristics of U.S. women inventors named on U.S. patents granted from 1976 through 2016. The report delivers several important findings, including:
- The share of patents that include at least one woman as an inventor increased from about 7 percent in the 1980s to 21 percent by 2016.
- Even with this increase in patent counts, women inventors made up only 12 percent of all inventors on patents granted in 2016.
- Gains in female participation in science and engineering occupations and entrepreneurship are not leading to broad increases in female inventors earning a patent.
- Technology-intensive states, as well as those where women comprise a large percentage of the state’s overall workforce, show higher rates of women inventors.
- Women inventors are increasingly concentrated in specific technologies, suggesting that women are specializing in areas where female predecessors have traditionally patented rather than entering into male-dominated fields.
- Women are increasingly likely to patent on large, gender-mixed inventor teams, and are less likely than men to be an individual inventor on a granted patent.
“Women inventors have made and continue to make key contributions,” said Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Laura Peter. “We look forward to working with industry, academia, and other government agencies to identify ways to increase the number of women inventors in all sectors of our economy.”
The full report can be found online at www.uspto.gov/learning-and-resources/ip-policy/economic-research/progress-potential.
By Debby Winters
We have discussed various aspects of design patents in this series of blog posts. In short, design patents should be considered to provide an alternative or additional means of protection for an invention, and generally have a lower cost, higher allowance rate, and faster timeline than utility applications. The guidelines outlined in this series should be considered when preparing an application for an ornamental design. However, you should always consult with a licensed patent attorney before moving forward with your application. We would be happy to serve as your patent attorney. Good luck!
By Debby Winters
To continue our series of blog posts on design patents, in this post we will discuss including additional embodiments. Similar concepts with slightly different modifications, such as certain features being shown in solid and broken lines, are considered additional embodiments and could be filed in the same application. The potential outcome of including additional embodiments in a design application that does not exist in a utility application is the potential for receiving a restriction requirement. The Patent Office may or may not issue a restriction requirement, depending on how closely related the designs are. The subjectivity will also depend upon the particular Examiner assigned to your application. Including different embodiments allows different levels of protection for the same invention. There is no downside to including embodiments of different scope in the same application. The Patent Office will issue a restriction if warranted, and subsequent divisional applications can be filed that are directed to the restricted embodiments.
Alternatively, an Appendix including additional or related embodiments may be filed in the application. The Appendix will serve as support for future drawing amendments or continuation applications and should be canceled by the Examiner upon allowance of the application.
By Debby Winters
Many rejections received by applicants during the prosecution of a design patent application involve inconsistencies in the drawings. Design patents require a sufficient number of views to completely disclose the appearance of the invention. Most design patents require seven (7) views of the invention – front, rear, top, bottom, right side, left side, and at least one perspective view. These views must be consistent with each other so a full understanding of the design can be reached. Elements shown in each figure should be shown in all others, assuming that the element can be seen in that particular view. Solid and broken lines should be consistent as well. This is one reason it is critical to have a draftsperson who is experienced at design patent drawings.
By Debby Winters
The first examination to undertake is to understand what a design patent is and how it differs from a utility patent.
U.S. design patents cover the ornamental design of an object having practical utility. The subject matter claimed is the design embodied in or applied to the article and not the article itself. In other words, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. In contrast to a utility patent that protects the way an article is used and works, a design patent protects the way an article looks.
I am often asked whether a client should seek a design or a utility patent. While it depends on the invention, a U.S. design patent provides a number of advantages when compared to a U.S. utility patent. First, design patents have a higher allowance rate. Second, design patents have a faster time to final resolution. Finally, design applications are typically less than half the cost of utility applications due to their expedited prosecution and the limited specification required in design patent applications.
The five areas for our discussion on best practices will focus around the following:
- Know the Subject Matter Qualifications
- Drawing Quality is Key
- Figure Views Should be Consistent
- Use of Solid vs. Broken (Phantom) Lines
- Include Additional Embodiments
We will discuss each in a separate blog post starting with the first so keep reading!
Dennis Crouch, a Law Professor at the University of Missouri School of Law, has written an informative blog about application pendency since 2005. His diagram shows you how things have changed over time. Check it out to see how the curve has shifted but not changed dramatically.