NEWS
The USPTO’s New Fee Structure for Large Information Disclosure Statement Filings.
“When in doubt, cite it” is the wisdom handed down regarding prior art on the edges of relevance. After all, it didn’t cost much to cite such art by filing an IDS, but there was a big potential risk if the art wasn’t cited. That wisdom, however, may cost you now with the new USPTO fees for filing large IDS’s.
The USPTO is contending that in many instances, these large IDS submissions contain clearly irrelevant, marginally irrelevant, or cumulative information. To cover the extra time examiners must put in to check so many references, and incentivize practitioners to think harder about what information needs to be included, the PTO has upped the fees:
$200 for 51-100 items
$500 for 101-200 items
$800 for 201+ items
The PTO says about 5% of applications contain 51-100 items; 4% of applications have 101-200 items; and 4% have over 200 items. This should translate to only about 1 in 8 applications being affected.
It will be interesting to see how this affects filing. Historically, the choice has been clear. Patent filers have been able to avoid both the extra effort and inherent liability in identifying the most relevant references, by simply citing everything that is even marginally relevant. Are the new fees high enough to discourage that strategy? And seen from a more cynical viewpoint, are the new fees high enough to offset the fees that would otherwise be charged to clients from filing large IDSs. Are they high enough to discourage filers from trying to hide the most relevant references within a mountain of less relevant references?
New FishFAQs video: The Patent Process Overview
We have recently added another video to our FishFAQ video series on patents. This one covers a basic overview of the U.S. patent process.
You can find the entire FishFAQ video playlist at our Youtube channel: https://www.youtube.com/@fishiplaw
New FishFAQs video: The History of Patents
We have recently added another video to our FishFAQ video series on patents. This one covers a brief history and development of patents.
You can find the entire FishFAQ video playlist at our Youtube channel: https://www.youtube.com/@fishiplaw
New FishFAQs Patent Families video
FishFAQ Patent Pending
We have a new FishFAQ™ video explaining the term “patent pending”, when it can be used, and some considerations to keep in mind when using the term.
You can find all the videos in our FishFAQ video series here: https://www.youtube.com/@fishiplaw
TRUMP TOO SMALL Trademark Refusal is not First Amendment Violation
The Supreme Court recently decided, in Vidal v Elster, that the TTAB’s refusal to register the TRUMP TOO SMALL mark, was not a violation of First Amendment rights.
Registration Application and Refusal
Back in 2018, Steve Elster sought to register a mark of “TRUMP TOO SMALL” as a t-shirt slogan, inspired by an exchange between Trump and Marco Rubio during the 2016 Republican primary. The PTO examiner refused on the grounds that the mark violated the ‘names clause’ of the Lanham Act, which requires written consent for a mark containing the name of a living individual. Elster countered that the ‘names clause’ was a violation of his first amendment free-speech rights, but the examiner responded that refusing registration doesn’t constitute a restriction on free speech. For reference, the PTO has also refused trademark registrations on “WELCOME PRESIDENT BIDEN”, “I STUMP FOR TRUMP”, and “OBAMA PAJAMA”.
Elster appealed the decision before the Trademark Trials and Appeals Board, but the TTAB affirmed the original decision barring Elster from registering the mark.
Federal Circuit in Re: Elster (Feb 24 2022)
Elster appealed the TTAB decision before the Federal Circuit. The Court noted that section 2 of the Lanham Act requires the PTO to refuse registration of certain categories of proposed trademarks. But in the last five years, the Supreme Court held two provisions in section 2 unconstitutional.
While the Federal Circuit acknowledged the TTAB’s point that the registration bar doesn’t “prevent Elster from communicating his message, it can legally disadvantage the speech at issue here.”
The Fed Circuit stated that it is one of the prerogatives of American citizenship to criticize public men. In fact, the first amendment has its fullest and most urgent application to speech concerning public officials. Therefore, suppressing the right to praise or criticize governmental agents can’t be squared with the first amendment.
While this right was acknowledged by the TTAB, the government’s interest in protecting privacy and publicity rights was seen to outweigh it. The Federal court argued here that Trump, as a public political figure can’t expect privacy. It further noted that one of the fundamental reasons for trademarks in the first place is the need to safeguard against the dilution of commercial value of his name, and that was not applicable here either. In summary, the government had no valid publicity interest that could overcome the first amendment protections afforded to the political criticism in Elster’s mark. As such, the Federal Circuit reversed the TTAB’s decision.
Vidal v Elster before Supreme Court
In 2023, the Supreme court agreed to review the judgment in order to resolve whether the Lanham Act’s names clause violates the First Amendment.
The Supreme Court considered the issue as distinguishing between content-based, and content-neutral regulations of speech.
Content-based regulations target speech based on its communicative content and is presumptively unconstitutional. Viewpoint discrimination targets not merely subject matter, but particular views taken by speakers on the subject. Trademark restrictions that discriminate based on viewpoint violate the first amendment.
Because the names clause doesn’t single out a trademark based on the specific motivating ideology or the opinion of the speaker, it doesn’t facially discriminate against any viewpoint. But it may still be found to discriminate on viewpoint in its practical operation. Elster suggested this was the case here because it would be easier to obtain a mark if it flattered rather than mocked a subject. But there are many reasons why a person might want to withhold consent to register a trademark bearing his name.
While the names clause is not viewpoint based, it is content based because it applies to particular speech because of the topic discussed or the message expressed, so it turns on whether the proposed trademark contains a person’s name.
The Supreme Court reasoned that although a content-based regulation of speech is presumptively unconstitutional, it had not decided whether heightened scrutiny extends to a content-based, but viewpoint-neutral, trademark restriction. Trademark rights have always coexisted with the first amendment, and the inherently content-based nature of trademark law has never been a cause for constitutional concern.
Restrictions on trademarking names have historically been grounded in the notion that a person has ownership over his own name, and that he may not be excluded from using that name by another’s trademark. So the court issued a narrow decision that, in this instance, the particular restriction does not violate the first amendment.
USPTO AI subject matter eligibility guidance
The US Patent Office continues to issue guidance on subject matter eligibility under 35 USC 101. This latest July guidance addresses AI-assisted inventions, and adds very little to what we already know. Basically, AI cannot be named as an inventor, and otherwise AI-assisted inventions are prosecuted the same as non-AI assisted inventions.
Invention Subject Matter Eligibility
All kinds of things are eligible for patentability under the guidelines of the USPTO: process, machine, manufacture, or composition of matter. There are some judicial exceptions that the courts have determined are the basic tools of scientific and technological work, and as such, are excluded from patentability since monopolization of these tools would tend to impede innovation more than promote it. Those judicial exceptions are laws of nature, natural phenomena, and abstract ideas.
But the courts have decided that if a patent claim can recite “additional elements” that integrate the judicial exception into a practical application, then such a claim can be eligible for patentability.
First Prong: Claims Directed Towards Judicial Exceptions
In the first prong, there is an evaluation of whether a claim recites an abstract idea.
It is common for claims to AI inventions to involve abstract ideas, but PTO personnel must draw a distinction between a claim that recites an abstract idea, and one that is merely based on an abstract idea.
The USPTO has defined three groupings of abstract ideas: mathematical concepts, methods of organizing human activity, and mental processes.
Mathematical concepts
The mathematical concepts abstract idea grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations. The claim limitations do not fall within the mathematical concept grouping if it is only based on, or involves, a mathematical concept.
Methods of Organizing Human Activity
The certain methods of organizing human activity abstract idea grouping describes concepts related to fundamental economic principles (including hedging, insurance, mitigating risks); commercial or legal interactions (including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations); and managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
Mental Processes
The courts consider a mental process (thinking) that can be performed in the human mind, or by a human using a pen and paper, to be an abstract idea.
Second Prong: Additional Elements
If the claim under evaluation is directed towards one of these judicial exception areas, then the second prong of the evaluation is to identify whether there are any additional elements that would integrate the exception into a practical application. Many claims to AI inventions are eligible as improvements to the functioning of a computer or improvements to another technology or technical field. While the courts haven’t provided an explicit text for how to evaluate the improvements consideration, they have instead illustrated how it is evaluated in numerous decisions.
A key point of distinction for AI inventions is between a claim that reflects an improvement to a computer or other technology (eligible) and a claim in which the additional elements amount to no more than a recitation of the words “apply it” or are no more than instructions to implement a judicial exception to a particular technological field (ineligible).
Eligibility and AI-assisted Inventions
AI assistance is not a consideration in subject matter eligibility analysis. Patent protection can be sought for AI assisted inventions where one or more persons made a significant contribution to the claimed invention. The current guidance does not provide for recognition of tools like AI for inventorship purposes.