Deferred Subject Matter Eligibility Program

The USPTO is implementing a pilot program called the Deferred Subject Matter Eligibility response.

The point of the program is to defer the whole question of subject matter eligibility until a later stage of patent prosecution.  Deferring subject matter eligibility allows examiners to first check to see if the invention clears the other hurdles, of §§ 112, 102, and 103. If it is struck down in one of those categories, then no time is wasted arguing over the more difficult question of the eligibility.

For more information, check out the USPTO page:


European Unified Patents Update

We posted an update on this back in November 2021, but all 13 countries have now ratified the Protocol on Provisional Application of the Unified Patent Court Agreement. The European Union is now in the process of putting the court together and it may be ready within the year.

The proposals include both a Unitary Patent covering participating member states, as well as a Unified Patent Court with jurisdiction over the litigation aspects. There is also a provision to opt out of this. In practice, there may be a cost savings only in the event the patent would be sought in four or more countries. So if, for example, you were only seeking patent protection in one country, it would be cheaper to prosecute in that country alone, rather than the unified patent.

But this could be a great option for those seeking protection across Europe when the details are all worked out.

It should also be noted that Unified Patent challenges will eventually be heard only in the Unified Patent Court, but there will be a temporary hybrid situation allowing litigation through national courts.

More information is available through the European Patent Offices page.

Venner-Shipley, one of our UK associates has provided an in-depth analysis found here.

Valentine’s Day Video

We’ve put together a little video about Valentine’s Day. 

First, we give the historical background about who Saint Valentine was, and how he came to be celebrated. Then the transformation from a feast day to a commercial holiday for lovers. Finally, we give you some Valentines-related patents, and then wish a happy valentines to all of our inventors trying to make the world a better place. Happy Valentine’s Day! 

Supreme Court: Less focus on patent matters post-Alice

Alice v CLS (2014) was a landmark case for patent eligibility. The decision held that Alice’s patents were invalid because the claims were drawn to an abstract idea and implementing them on a computer wasn’t enough to transform the abstract idea into patentable subject matter.

The Supreme Court saw numerous patent related cases in the wake of Alice, but since then there has been much less focus on patent matters. 2014 saw 6 patent related matters appear, Alice being the first. The subsequent years saw: 
2015 3 cases
2016 2 cases
2017 0 cases
2018 3 cases
2019 3 cases
2020 1 case
2021 2 cases

Artificial Intelligence as Inventor

DABUS (Device for the Autonomous Bootstrapping of Unified Sentience)

An AI machine program called DABUS (Device for the Autonomous Bootstrapping of Unified Sentience) was created as a series of neural networks trained with general information. One of the support team, Dr. Stephen Thaler, claims DABUS was not made to solve a specific problem in a particular technology area, and was never trained with specific technical data relevant to the invention. However, DABUS, without human assistance, created a novel solution to a problem that has been the subject of patent applications in Europe, the UK, and the US, and in South Africa.

Human Inventor Requirement

Most patent offices have a requirement that inventors be individual human persons. The US, the UK and Europe all rejected Thaler’s patent application on behalf of DABUS for that reason. South Africa has granted the patent application, but their procedures don’t require a substantive search and examination of patent applications. If the paperwork is in order and the requirements are met, the patent will be granted.

There are various traditional reasons for requiring individual humans as inventors, going back to Benjamin Franklin and the idea that the act of invention was a mental activity that could only originate from humans. The language of the Patent Act seems to require a natural person due to terms such as “whoever”, “himself/herself”, and “individual” in referencing the inventor. There are also actions described that can only be performed by a human being, such as directing an inventor to execute an oath or declaration.

There is a further consideration based on the legal tests for ‘conception’. According to the USPTO, these tests consider conception in the human mind, meaning only natural persons can be considered inventors.

The Challenge of AI

These traditional arguments, however, are running up against the evolving nature of general artificial intelligence. Narrow artificial intelligence environments have been used to identify compounds for use in some drugs. Human input, however, set up the parameters and human input was required to test the compounds. Such discoveries really don’t meet the kind of inventive conception patent offices are referring to. But in the case of general AI, the environment itself was created by humans, but not to solve specific problems. In this case, the AI generated an invention- came up with a solution to an existing problem- without specific prompting. As Dr, Thaler argues, while he can claim inventor status for the AI, he had no conceptual inventive step in the particular invention, therefore it wouldn’t be just to list him as the inventor.

Counter arguments for these might be a less textual, broader interpretation of the language, the fact that AI was inconceivable when the original tests were outlined, and that inventor identity requirements have more to do with dispute resolution than determining the source of innovation.

Should We Expand Inventorship?

Why should the system be opened up to include AI environments as inventors?

One argument, by Ryan Abbot, is that patent protection for AI generated works will incentivize innovation. No one is suggesting that patent protection would motivate an AI. Expanding inventorship would motivate those who develop inventive AI to continue doing so, which, in the end, would benefit society.

The patent system is designed to protect inventors, while disclosing information that would be of value to society. Failing to allow AI generated inventions would discourage businesses from using it, even if it proves more effective than people in solving certain problems.

There is also an interesting twist to allowing AI to be listed as the inventor. It may protect the rights of human inventors. Listing the owner of the AI as the inventor for an AI generated invention isn’t unfair to the AI. It can’t have any concern about such a matter. But it does allow people to take credit for work they didn’t do. This may ultimately devalue human inventorship, by putting the work of someone who asks an AI to solve a problem on the same level as someone legitimately inventing something new.

AI systems would still not own patents since they lack the legal and moral rights to own property. But listing an AI as the inventor isn’t about providing rights to machines. It’s about protecting the rights of human inventors and the integrity of the patent system.

Appealing Patent Decisions- How likely are they to be reversed?

Over the last 5 years (FY 2017-2021) about 61 percent of the cases at the Court of Appeals for the Federal Circuit (CAFC) concern patents. There are three sources for those cases: District Courts, the PTO, and the International Trade Commission (ITC). 
Of those three sources, the PTO has provided 63% of the cases, the District Courts have provided most of the remainder, and the ITC has provided a handful.

How many of these cases were reversed? Roughly 12% were overturned overall. Of the cases that came from the PTO, 11% were reversed. Of the cases that came from the District Courts, 13% were reversed. Finally, of the handful of cases that came from the ITC, 12% were reversed. But the last two years produced no reversals from the ITC-originated cases. 2018 saw 33% of the ITC-originated cases reversed, while 2017 and 2019 saw 14% and 13% respectively.
So overall, patent related appeals take up just under 61% of the CAFC’s total cases, and of those, only about 12% are reversed.

All data was taken from the US Court of Appeals for the Federal Circuit’s Reports and Statistics pages.

De Minimis Defense Doesn’t Necessarily Mean Minimal Use

There is a Latin maxim: de minimis non curat lex: The law does not care about the smallest thing. De minimis, in legal terms, means the thing is too trivial or minor to merit consideration. In the context of intellectual property infringement, the de minimis defense has commonly been understood to mean that a defendant carrying out a small number of activities within the scope of a claim might avoid liability for infringement.

But in a recent judgment, the US Court of Appeals for the Ninth Circuit reversed a district court’s decision in favor of a defendant’s minimal use defense. A retired lawyer took a photo of a skyline and published it on various websites. He registered the photo with the copyright office 11 years later. Then he did an online reverse image search to identify infringers, and subsequently filed over a 100 infringement suits.

One of those defendants filed to have the charges dismissed using the minimal use defense and the District Court agreed. The plaintiff appealed and the Court of Appeals reversed the decision.

They ruled that the de minimis defense wasn’t viable because the ‘degree of copying’ was total. It was an identical copy of the picture. The court reasoned that the de minimis defense isn’t a defense of infringement. It was meant to answer whether the infringing work is substantially similar to the copyrighted work. If a similar work is different enough in substance, then infringement did not occur. But once infringement is established, de minimis is not a defense.

This case clarifies that a de minimis analysis applies to whether similarities between an alleged infringing work and the copyright work are too trivial or minor to merit consideration. It does not allow defendants to escape from liability for trivial amounts of infringement.