O&R Patent Law

New: USPTO July 2024 Guidance for Subject Matter Eligibility of AI inventions

What does the SCOTUS opinion in Loper Bright mean for patent law? By Faustino Lichauco #patents The Supreme Court recently decided a case that, on the surface, has nothing to do with patent law. But scratch a bit deeper, you can see that the case provides patentees a new argument for pushing back on PTO rejections. Loper Bright v. Raimondo concerns who gets to pay for federal observers who join a fishing expedition. It’s all about executive branch agencies (like the PTO) and their “Rules.” The U.S. government works like a software company. Congress writes the code (a.k.a. “statutes”) and the executive branch (like the PTO) executes it. In doing so, bugs arise, most often because Congress was ambiguous or omitted details. When this happens, an aggrieved member of the public goes to the “QA Group” (i.e., the judicial branch). The judge then tries to write a patch that reflects Congress’ intent. Sometimes, an agency pre-emptively writes its own patch. These come under the guise of agency “Rules.” These are supposed to capture what Congress intended. But these “Rules,” like the “Statutes” can also have bugs. When this happens, one goes to the QA group for a patch. Now for the catch. Forty years ago, the Court ruled that an agency is presumed to be better than the rest of us at ascertaining Congressional intent. This is called “Chevron deference.” Ever since then, it has been very hard to use the judicial branch to challenge an executive-branch agency. Those who defend Chevron suggest that one should trust agencies because they know more about their technical fields than judges do. On the other hand, many people say that Chevron erodes separation of powers. The Court apparently agreed. The Court’s ruling provides an opportunity to push back against PTO rejections based on “abstract ideas.” Many computer-related inventions that are otherwise patentable wither away when an examiner pronounces them to be “abstract.” The Court’s ruling renders PTO rules and guidelines somewhat more vulnerable to challenge without Chevron’s shield to protect them. It also provides a basis to push back against prospective rules. One particularly unpopular example is a proposal to prevent people from patenting an invention that is just an obvious variant of something that the inventor already patented. For patent prosecution, Loper Bright is likely to instigate change at a glacial pace. For rules that have yet to be made, we can expect Loper Bright to inject some caution in the rule-making process. Existing PTO rules will likely follow Newton’s First Law: no changes unless a “bug report” filed with the QA group (i.e., the judicial branch) triggers an external force. 

Drafting tips: more than the sum Case #14 - Pyramids By Faustino Lichauco In poker, two-of-a-kind can win. But a favorite rejection among examiners is to say, “mere duplication of parts has no patentable significance” unless something interesting happens. These cheese-like pyramids demonstrate how this could happen. By itself, a pyramid is about as useful as a lone chopstick. At best, it might lure a near-sighted mouse into a mousetrap. But put two or more together and you’ll find the pointy tips and the holes useful for supporting freshly-painted structures while you watch the paint dry. If you just looked at a single pyramid, the idea of using two or more for support probably wouldn’t leap to mind. This shows that even if a single object isn’t patentable, a combination of two or more might be. The Patent Office recognizes “kit claims” for such cases. A “kit,” like an “apparatus,” has many parts. They just aren’t coupled so tightly.

There is no minimum age requirement for great ideas - you can get a patent at any age!

Drafting tips: Drawing a structure with words Case #13 - Calf stretcher By Faustino Lichauco January starts the season for breaking New Year’s Resolutions, many of which involve exercise equipment, like this “calf stretcher.” Fortunately, writing a patent claim for something like this is much easier than actually using it. The process amounts to drawing the structure with words. But for odd shapes like this, the vocabulary doesn’t quite exist. Instead, you work the way sculptors do: add too much and chisel away what you don’t need. This device’s shape is a good example. Its underlying form is a circle with two intersecting chords. But much of the circle is missing. And each chord is missing a chunk of its length. On the other hand, we really need to keep the “circle.” Without it, we can’t talk about “chords.” A bit of syntactic engineering turns the circle and chords into an imaginary skeleton: “A device having a rocker that follows an arc of a circle that has first and second chords that meet at an angle” So far, only the “rocker” is real. The circle and its chords are imaginary. They’re not part of the device. But they remain available for construction. We need to add two other real things: the heel and toe platforms. Once again, we build something real by using our imaginary skeleton: “and platforms that extend from ends of the rocker partway along the first and second chords, respectively.” Put these together and it’s a respectable patent claim. And it’s much easier than balancing on that thing.

In the popular television series "The Gilded Age" one of the characters files a patent application, generating excitement and anticipation as viewers await the PTO's response. Patent law can be dramatic.

Drafting tips: Patenting two-of-a-kind if one-of-a-kind is known Case #12 - Glove lights By Faustino Lichauco The road to patentability for these finger-mounted lights leads right past the Croc-mounted lights that we looked at in April. It also leads past headlamps and the like. You could claim the idea of having two lights instead of just one. But examiners are on to this. They often say, “If one is obvious, then so are two or more.” This is actually a good point. A thing can only be new once in the course of human history. It’s hard to think of why just mass producing a thing isn’t obvious once the thing itself is known. So if you are going to claim an invention for what amounts to “two of a kind,” there had better be some way to articulate something interesting about how they cooperate to give something more than their sum. The keyword examiners look for is “synergy.” In this case, the word “articulate” is itself the clue. These lights happen to be mounted to articulating structures, namely one’s fingers. This means that they can point in different directions. We might still have to distinguish the 1948 “Tucker Torpedo.” An examiner could say it’s obvious to duplicate its sole steerable headlight. But the resulting pair would still move together, like your eyes. In contrast, these finger-mounted lights can point in different directions with two degrees-of-freedom each: azimuth (left to right) and elevation (up and down). That’s not remotely true of even a pair of headlights or footlights.

Congratulations to the world-changing inventors honored at the 50th annual National Inventors Hall of Fame Induction Ceremony in Washington, DC.