U.S. Undersecretary and Director John A. Squires Provides Remarks on U.S. Innovation

On September 15, 2026, the Undersecretary for Intellectual Property and Director of the U.S. Patent and Trademark Office John A. Squires gave a speech titled, “Protecting U.S. IP and Tech Leadership through International Trade Policy Tools,” at the USC Gould School of Law IP conference in Washington DC.  Some of his comments concerned the United States’ work and intentions with respect to its international agenda, AI regulation and name, image and likeness rights.  The full speech is available, here.  Here are parts of his remarks:

At the 68th Assemblies of the Member States of the World Intellectual Property Organization (WIPO) held in July, we insisted that the organization focus on the needs of companies and individuals who are managing increasingly complex patent portfolios.

We want the Patent Cooperation Treaty, signed by 159 contracting states, to work not only for the big guys, but for the small and medium-sized companies and individuals who are on the forefront of innovation.

We want WIPO to move past the outdated and archaic requirements that discourage trademark owners’ full use of the Madrid system in pursuing important branding rights across the globe.

We also were instrumental in kicking off WIPO’s “IP Growth Initiative,” focusing on using IP as a strategic “power tool” to drive innovation and economic growth. And not in 10 years, but now.

The world’s inventors, creators, and entrepreneurs cannot wait. The onrush of technology has never even heard of the word “wait.” Innovation only knows “now.”

In every global forum, and through our IP attachés located in all of the important global markets, we have insisted on ensuring that it is well understood that robust IP protection fosters innovation, incentivizes research and development, maintains competitive markets, and ensures fair and appropriate renumeration for our innovators and rights holders—reciprocation and respect.

And we have made the case in every international forum that IP systems, such as the one we have in America, are the strongest engines for growth ever created, both for economies and for personal accomplishment and success. We have also taken steps to broaden the base of IP rights holders in our own country.

We just opened an Emerging Technologies Office in San Francisco as part of the agency’s efforts to advance the use of AI and engage with the AI industry.

This office serves as a hub to convene our stakeholders involved in AI, enabling them to work with federal officials on how best to steer AI adoption for American dominance.

It will help U.S. companies gain a foothold in the federal marketplace and assist them in exporting their AI products and systems to other countries.

And we are focused on protecting the rights of individuals.

For the first time ever, we participated in the NFL Draft in Pittsburgh to work with student athletes and others about the legal right to their name, image, and likeness. And like I said, filings are up 11%.

This is a huge and growing area of IP protection, and we want to make sure people are aware of their potential.

Of course, challenges remain. For example, earlier this year, a federal court of appeals held that trademarks lack the full set of constitutional protections afforded physical property rights because trademarks are “intangible property.”

That case involves a trademark registered by the USPTO years ago in the name “Roberto Clemente,” one of Puerto Rico’s favorite sons who was a hall of fame baseball player and humanitarian who died in a plane crash bringing aid to earthquake victims in Nicaragua. I remember vividly when his plane went down.

The case is now on appeal at the Supreme Court, and it is certainly a matter of substantial interest to many people in my office, for we think not only that the intangible property rights issued by our office are deserving of full constitutional protections as property, but also that such rights are essential to a modern, 21st-century economy. Just ask the S&P 500.

Beyond personal branding such as the one memorializing Roberto Clemente, the legal protections afforded by IP laws do much more. They enable our nation’s gifted writers, musicians, and artists to break into regional and national markets, and for those who are truly gifted to reach much broader audiences around the globe.

USPTO Proposes Rule Requiring Representation by Registered USPTO Practitioner for All Foreign Applicants and Patent Owners

The United States Patent and Trademark Office issued a press release concerning a new rule regarding foreign applicants and patent owners that is open for comment.  Details can be found here.  The press release states:

USPTO issues NPRM requiring foreign patent applicants to be represented by registered practitioners

Today, the United States Patent and Trademark Office (USPTO) is issuing a notice of proposed rulemaking (NPRM) directed to requiring foreign applicants and patent owners to be represented by a registered patent practitioner before the Office. 

The USPTO is proposing to amend the Rules of Practice in Patent Cases before the Office to require patent applicants and patent owners whose domicile is not located within the United States or its territories to be represented by a registered patent practitioner. The proposed requirement would bring the United States in line with the predominant global practice in jurisdictional patent offices that maintain requirements that such parties be represented by a licensed or registered person of that country. Moreover, this requirement would additionally increase efficiency and enable the USPTO to better use available mechanisms to enforce compliance with U.S. statutory and regulatory requirements and practice in patent matters and to respond and take appropriate actions with respect to false certifications, misrepresentations, and fraud.

USPTO Issues New Guidance on AI Assisted Inventions

The USPTO has rescinded its prior guidance on AI assisted inventions which relied on the Pannu factors when determining if a human sufficiently contributed to an AI-assisted invention to be considered an inventor.  The USPTO will continue to look to the Pannu factors in cases involving multiple humans to determine joint inventorship.  The USPTO will now focus on conception as the main test to determine whether a human is an inventor when using AI.  I understand why the USPTO is following this approach, but I did find the Pannu test helpful for ascertaining inventorship with AI assisted inventions.  My belief is that the USPTO’s new approach will result in more AI assisted inventions resulting in patentability.  The guidance applies to utility, design and plant patents.  Here is the updated guidance:

Revised Inventorship Guidance for AI-Assisted Inventions

AGENCY: United States Patent and Trademark Office, Department of Commerce. ACTION: Examination guidance.

SUMMARY: The United States Patent and Trademark Office (USPTO) had issued inventorship guidance for AI-assisted inventions on February 13, 2024.1 The USPTO hereby rescinds the previously published Inventorship Guidance for AI-Assisted Inventions and replaces it with the guidance below. . . .

I. Purpose

This notice provides further guidance on the proper legal standard for determining inventorship in patent applications for AI-assisted inventions.

II. Recission of Prior Guidance

The guidance issued on February 13, 2024, titled “Inventorship Guidance for AI-Assisted Inventions” is rescinded in its entirety. The approach set forth in that guidance, which relied on the application of the Pannu factors to AI-assisted inventions, is withdrawn. The Pannu factors only apply when determining whether multiple natural persons qualify as joint inventors. Pannu is inapplicable when only one natural person is involved in developing an invention with AI assistance because AI systems are not persons and therefore cannot be “joint inventors” so there is no joint inventorship question to analyze.

III. Governing Legal Standards

The same legal standard for determining inventorship applies to all inventions, regardless of whether AI systems were used in the inventive process. There is no separate or modified standard for AI-assisted inventions.

The Federal Circuit has held that AI cannot be named as an inventor on a patent application (or issued patent) and that only natural persons can be inventors. Artificial intelligence systems, regardless of their sophistication, cannot be named as inventors or joint inventors on a patent application as they are not natural persons.

The Federal Circuit has centered its inventorship inquiry around “conception,” characterizing conception as “the touchstone of inventorship.” Conception is “the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.” Conception is complete when “the inventor has a specific, settled idea, a particular solution to the problem at hand, not just a general goal or research plan.”

Determining inventorship is highly fact intensive. The question is whether the natural person possessed knowledge of all the limitations of the claimed invention such that it is so “clearly defined in the inventor’s mind that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation.” Analysis of conception turns on the ability of an inventor to describe an invention with particularity. Absent such a description, an inventor cannot objectively prove possession of a complete mental picture of the invention at a later time.

IV. Inventorship Guidance for AI-Assisted Inventions

Generally, the USPTO presumes those inventors named on the application data sheet or oath/declaration are the actual inventor or joint inventors of the application. A rejection under 35 U.S.C. 101 and 115, or other appropriate action, should be made for all claims in any application that lists an AI system or other non-natural person as an inventor or joint inventor.

AI systems, including generative AI and other computational models, are instruments used by human inventors. They are analogous to laboratory equipment, computer software, research databases, or any other tool that assists in the inventive process. As the case law establishes, inventors may “use the services, ideas, and aid of others” without those sources becoming co-inventors. The same principle applies to AI systems: they may provide services and generate ideas, but they remain tools used by the human inventor who conceived the claimed invention. When one natural person is involved in creating an invention with the assistance of AI, the inquiry is whether that person conceived the invention under the traditional conception standard set forth above in Section III.

When multiple natural persons are involved in creating an invention with AI assistance, the traditional joint inventorship principles apply, including the Pannu factors to determine whether each person qualifies as a joint inventor. Each purported inventor must “(1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.” The fact that AI tools were used in the development process does not change the joint inventorship analysis among the human contributors. . . .

USPTO Stands Firm for Strong Patent Remedies

USPTO states that strong remedies for patent infringement are necessary to protect the public interest.  The Press Release states:

The United States Patent and Trademark Office (USPTO) today submitted a Joint Public Interest Comment to the U.S. International Trade Commission in Inv. No. 337-TA-3854, emphasizing that the public interest is best served when valid U.S. patent rights are fully and effectively enforced.

The USPTO’s filing explains that patents are constitutional property rights that have powered America’s leadership in technologies “from Morse’s telegraph to modern semiconductors, biologics, and artificial intelligence.” Strong patent protection encourages the investment-based risk taking needed to create and bring to market new technologies.

The Joint Comment with the Department of Justice cautions against approaches that would transform public-interest considerations into preliminary hurdles or de facto barriers to enforcement. Congress designed patent remedies—including injunctions and exclusion orders—to operate as reliable tools for protecting innovation and fueling economic growth.

The USPTO noted that weakening remedies undermines America’s innovation ecosystem, which depends on predictable, enforceable patent rights. The Office recently expressed similar views in its June 2025 Joint Statement of Interest filing with the Department of Justice in Radian Memory Systems v. Samsung, highlighting that patents are unique assets whose value is often not captured through monetary damages alone.

USPTO Director Reclaims Authority to Institute IPRs

The new Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, John Squires, has reclaimed authority to institute IPRs. Here is his letter regarding the subject:

An Open Letter From America’s Innovation Agency

Bringing the USPTO Back to the Future: Return of Institution Authority under 35 U.S.C. §§ 314 and 324 to the Director

Dear Colleagues, Inventors, and Americans,

Under the America Invents Act (AIA), Congress entrusted the United States Patent and Trademark Office with several mandates to ensure the timely and fair adjudication of patent validity challenges through post-grant review (PGR) or inter partes review (IPR) mechanisms and priority contests via derivation proceedings. As to IPRs specifically, under 35 U.S.C. § 314(a), Congress made plain that: The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition … shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. This statutory language expressly vests the authority to institute IPRs and PGRs in the USPTO Director. While 35 U.S.C. § 3(b)(3)(B) permits delegation of that authority, such delegation is non-exclusive. Statutorily, the Director retains full and concurrent authority over whether an IPR or PGR shall proceed. Since the AIA’s enactment, initial operational choices led to the delegation of institution decisions to the Patent Trial and Appeal Board, where panels then adjudicated the merits once instituted. Although this delegation was initially practical, experience has raised structural, perceptual, and procedural concerns inconsistent with the AIA’s design, clear language, and intent affecting, among other things, the public’s rightful expectation of impartiality. Given the statutory charge, my aim as Director is to address these concerns. Under oath in my confirmation hearing before the Senate Judiciary Committee and thereafter in my submitted Questions for the Record responses, I expressed discomfort that data seemed to be “skewed” in favor of certain provisions (namely IPRs over PGRs and a very high invalidation rate). To me, this raised questions about both the administration of IPR proceedings and their institution in particular. I vowed to administer the AIA as the statute provides and as Congress intended.

Today, in keeping with my vow and having now taken the Oath of Office as USPTO Director, I have ordered changes pursuant to my memo to the Board (attached). Below, I describe the reasons for my action today. Over the past several years, the delegated-institution model has given rise to the following difficulties: 1. Perception of Self-Incentivization – While the Board has done an admirable job, performance metrics and workload structures have created the appearance that institution decisions affect docket size, credit, and resource allocation—inviting concern that the Board may be “filling its own docket.” – This may be unfounded, but nevertheless such a perception undermines public confidence in the integrity of our Office’s adjudicatory functions with respect to IPRs. 2. Bifurcated Procedures for Discretionary Considerations – The evolution of the bifurcated processes, which were smart and necessary, was never intended to be permanent. Under those processes, a preliminary review precedes Board referral. However, this appears to have inadvertently produced extraordinarily high institution rates (at one point exceeding 95 percent) for referred cases. 3. Statutory Adherence and Administrative Clarity – Congress expressly charges the Director—not the Board as delegees —to make institution determinations. Returning this function to the Director re aligns our Office’s procedures with the clear language and intent of the statute and returns accountability for such decisions to the Director just as the framework of the AIA provides. In sum, reclaiming the Director’s statutory role is intended to: • Eliminate the appearance of self-interest by separating the power to institute from the body that conducts the trial; • Remove a perceived referral-signal bias by centralizing the decision point; • Enhance transparency and public trust through a single line of authority; and • Re-align the duties and responsibilities of the Director, as a Presidentially appointed and Senate-confirmed officer, to be accountable for this threshold determination and properly effectuate the clear language of the AIA and thus Congress’s intent.

This action aligns the USPTO’s administration of IPRs with both the letter and the spirit of 35 U.S.C. § 314 and strengthens the integrity of the Office’s adjudicatory processes. In closing, the mission of America’s Innovation Agency is to lead the world in intellectual property protection. We can do so and serve the public interest only by maintaining a patent system that is fair, predictable, and respected. Returning institution authority to the Director bolsters our mission because it restores the statutory framework mandated by Congress in the America Invents Act.

Decluttering the US Trademark Register from Fraudulent Filings

The United States Trademark Office has terminated over 52,000 trademark pending registrations and registrations based on widespread fraud by a foreign-filing entity.  Notably, the sanctions order states the following administrative sanctions:

(1) Permanently preclude Respondents from submitting trademark-related documents on behalf of Respondents or others; (2) Strike or otherwise give no weight to all trademark-related documents submitted by Respondents; (3) Deactivate any USPTO accounts in which contact information related to Respondents appears, and take action to prevent Respondents from creating or activating further accounts; (4) Block future financial transactions from credit cards used to pay filing fees associated with the improper submissions and/or associated with Respondents; (5) Terminate all pending proceedings identified by Serial Numbers in Exhibit A because they contain submissions filed by Respondents. . .; (6) For trademark proceedings later found to involve Respondents or containing submissions filed by Respondents, continue to strike documents, remove information, deactivate accounts, block financial transactions, and terminate proceedings.

The Press Release states:

On August 6, 2025, the U.S. Patent and Trademark Office (USPTO) issued sanctions against a foreign filing firm and terminated over 52,000 applications and registrations connected to the firm. The firm submitted documents on behalf of others without the proper authority or qualifications. To conceal this, they: Sought out the cooperation of U.S.-licensed attorneys and then misused their credentials and faked their electronic signatures; Repeatedly signed documents using other people’s names; Submitted fake specimens of use; and Misused USPTO.gov accounts. By removing these records from the trademark register, the USPTO is helping ensure the register accurately reflects trademarks that are actually being used in commerce.

US PTO Releases Guidelines on AI Assisted Inventions

The United States Patent Office has issued Guidelines on AI Assisted Inventions.  The press release concerning the guidelines provides:

To incentivize, protect, and encourage investment in innovations made possible through the use of artificial intelligence (AI), and to provide the clarity to the public and United States Patent and Trademark Office (USPTO) employees on the patentability of AI-assisted inventions, the USPTO has published guidance in the Federal Register. This guidance delivers on the USPTO’s obligations under the Executive Order on the Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence.

“The patent system was developed to incentivize and protect human ingenuity and the investments needed to translate that ingenuity into marketable products and solutions,” said Kathi Vidal, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “The patent system also incentivizes the sharing of ideas and solutions so that others may build on them. The guidance strikes a balance between awarding patent protection to promote human ingenuity and investment for AI-assisted inventions while not unnecessarily locking up innovation for future developments. The guidance does that by embracing the use of AI in innovation and focusing on the human contribution.”

The guidance, which goes into effect February 13, makes clear that AI-assisted inventions are not categorically unpatentable. The guidance provides instructions to examiners and stakeholders on how to determine whether the human contribution to an innovation is significant enough to qualify for a patent when AI also contributed. It builds on the existing inventorship framework by providing instructions to examiners and applicants on determining the correct inventor(s) to be named in a patent or patent application for inventions created by humans with the assistance of one or more AI systems. It states that patent protection may be sought for inventions in which a human provided a significant contribution to the invention.

Additionally, in order to further assist our examiners and applicants in their understanding of this guidance, examples of hypothetical situations of how the guidance would apply are available on our AI-related resources webpage.

To learn more about what the guidance is and is not, and to get your questions answered and provide feedback, we invite you to attend our upcoming public webinar on March 5 from 1-2 p.m. ET. We also invite you to read the Director’s Blog on AI and inventorship guidance: Incentivizing human ingenuity and investment in AI-assisted inventions.

The full text of the inventorship guidance for AI-assisted inventions and the corresponding examples are available on our AI-related resources webpage. The USPTO will accept public comments on the inventorship guidance and the examples until May 13, 2024. Please see the Federal Register Notice for instructions on submitting comments.

The Guidelines provide a nonexhaustive list of principles to use when analyzing ai-assisted inventorship:

1. A natural person's use of an AI system in creating an AI-assisted invention does not negate the person's contributions as an inventor.^[53] The natural person can be listed as the inventor or joint inventor if the natural person contributes significantly to the AI-assisted invention.

2. Merely recognizing a problem or having a general goal or research plan to pursue does not rise to the level of conception.^[54] A natural person who only presents a problem to an AI system may not be a proper inventor or joint inventor of an invention identified from the output of the AI system. However, a significant contribution could be shown by the way the person constructs the prompt in view of a specific problem to elicit a particular solution from the AI system.

3. Reducing an invention to practice alone is not a significant contribution that rises to the level of inventorship.^[55] Therefore, a natural person who merely recognizes and appreciates the output of an AI system as an invention, particularly when the properties and utility of the output are apparent to those of ordinary skill, is not necessarily an inventor.^[56] However, a person who takes the output of an AI system and makes a significant contribution to the output to create an invention may be a proper inventor. Alternatively, in certain situations, a person who conducts a successful experiment using the AI system's output could demonstrate that the person provided a significant contribution to the invention even if that person is unable to establish conception until the invention has been reduced to practice.^[57]

4. A natural person who develops an essential building block from which the claimed invention is derived may be considered to have provided a significant contribution to the conception of the claimed invention even though the person was not present for or a participant in each activity that led to the conception of the claimed invention.^[58] In some situations, the natural person(s) who designs, builds, or trains an AI system in view of a specific problem to elicit a particular solution could be an inventor, where the designing, building, or training of the AI system is a significant contribution to the invention created with the AI system.

5. Maintaining “intellectual domination” over an AI system does not, on its own, make a person an inventor of any inventions created through the use of the AI system.^[59] Therefore, a person simply owning or overseeing an AI system that is used in the creation of an invention, without providing a significant contribution to the conception of the invention, does not make that person an inventor.

Additionally, the guidelines, related to the duty of candor and reasonable inquiry, state:

For example, patent practitioners who are preparing and prosecuting an application should inquire about the proper inventorship.^[74] Given the ubiquitous nature of AI, this inventorship inquiry could include questions about whether and how AI is being used in the invention creation process. In making inventorship determinations, it is appropriate to assess whether the contributions made by natural persons rise to the level of inventorship as discussed in section IV above.

US leadership through promoting what works best for International Standards

The United States Government National Standards Strategy for Critical and Emerging Technology calls for a whole of government approach to reinvigorate its rules-based and private sector-led approach to standards development. The strategy seeks to prioritize efforts for standards development that are essential for US competitiveness and national security including communication and networking technologies, semiconductors and microelectronics, artificial intelligence and machine learning, biotechnologies, clean energy, and quantum information technologies.[1] 

The International Trade Administration (ITA), The National Institute of Standards and Technology (NIST) and The United States Patent and Trademark Office (USPTO) have asked a dozen questions in their request for public comments on the strategy. I responded with my in-depth submission which can be downloaded, here. 

In this, my focus is on technical standards providing interoperability in communications and networking technologies. These have been most significant technically, economically and in improving consumer welfare in the US and globally over several decades. Purely national or geographically limited technical standards might make sense in limited cases for reasons of national security, but there is broad consensus that standardizing globally is most effective and efficient due to economies of scale and the universal interoperability provided. Various “International Standards” have also flourished because, in accordance with World Trade Organisation (WTO) Technical Barriers to Trade (TBT) requirements, these also foster various competing business models. Some industry participants are dependent on generating licensing royalties, others move fast and succeed in downstream product markets by licensing-in standard-essential technologies and incorporating semiconductor chips and other components that already include them. Many other companies have hybrid business models that operate in both ways concurrently.[2]

My responses explain that what is good for International Standard development with Fair, Reasonable and Non-Discriminatory (FRAND) licensing of Standard-Essential Patents (SEPs) is also good for America. The US is the world leader in various advanced technologies — as a technology developer, and as an implementer. For market leaders, more can usually be gained by growing the pie than by simply taking share from others.

The US should promote predictability with legal certainty in institutions and open market processes that have proven successful in the development of International Standards by private sector companies. Intellectual property rights (IPR) policies and legal rulings in foreign jurisdictions are threatening US leadership and development of International Standards overall by eroding and potentially severely undermining the value of patented standard-essential technologies. While these actions might provide some short-term advantage to certain implementers; for example in Asia where the overwhelming majority of consumer electronics products implementing Standard Essential Patents (SEPs) are manufactured, in the medium and long term these policies and rulings impede technical and market developments across the entire ecosystem, and in turn harm consumer welfare.

---

[1] United States Government National Standards Strategy for Critical and Emerging Technology, May 4, 2023.

[2] These important distinctions are explicitly recognized by competition authorities; for example, in the EU’s 2023 Horizontal Guidelines, paragraph 440.

Bipartisan Letter from U.S. Senators on Drug Patent Thickets

In June, U.S. Senators Leahy (Democrat) and Cornyn (Republican) (and others) sent a letter to the United States Patent and Trademark Office requesting that the USPTO review practices concerning granting “an excessive” amount of patents on pharmaceuticals, such as biologics, that may be driving up drug pricing costs. 

The press release concerning the letter states:

Senators Patrick Leahy (D-VT) and John Cornyn (R-TX) led a bipartisan letter Wednesday asking the U.S. Patent and Trademark Office to address an issue that is a significant cause of soaring drug prices.  Senators Richard Blumenthal (D-CT), Susan Collins (R-ME), Amy Klobuchar (D-MN), and Mike Braun (R-IN) also joined the letter.

The senators explained that drug companies and other large companies sometimes artificially extend the period in which they can charge high prices by filing many patents on nearly the same invention, creating a so-called patent thicket of dozens of patents on a single drug.  Those thickets make any challenge to the patents, or to the drug companies’ pricing of the covered drug, nearly impossible.  Because of the exorbitant cost of taking on each of the patents in these patent thickets, generic manufacturers are impeded from entering the market, hurting competition and raising prices for American consumers.  The secondary patents, which are similar to the originals, often receive less scrutiny from the Patent Office but have an outsized effect on everyday Americans who struggle to afford expensive medication.

Leahy believes the Patent Office has the ability to address this abusive practice, and he is asking the agency to take action to rein in this misuse of the patent system.  The letter requests that the Patent Office look into specific ideas for curbing the abuse and “take regulatory steps to improve patent quality and eliminate large collections of patents on a single invention.”  The Patent Act clearly states an inventor may obtain a single patent for a single invention, not dozens.  The senators believe the Patent Office can and should stop these large companies from undermining the patent system, obstructing appropriate competition, stifling innovation, and hurting Americans, who end up paying for all of this at the pharmacy.

The letter contains several ideas for the USPTO and the public to consider concerning future potential rule-making:

1. Terminal disclaimers, allowed under 37 C.F.R. 1.321(d), allow applicants to receive patents that are obvious variations of each other as long as the expiration dates match. How would eliminating terminal disclaimers, thus prohibiting patents that are obvious variations of each other, affect patent prosecution strategies and patent quality overall?

2. Currently, patents tied together with a terminal disclaimer after an obviousness-type double patent rejection must be separately challenged on validity grounds. However, if these patents are obvious variations of each other, should the filing of a terminal disclaimer be an admission of obviousness? And if so, would these patents, when their validity is challenged after issuance, stand and fall together?

3. Should the USPTO require a second look, by a team of patent quality specialists, before issuing a continuation patent on a first office action, with special emphasis on whether the claims satisfy the written description, enablement, and definiteness requirements of 35 U.S.C. § 112, and whether the claims do not cover the same invention as a related application?

4. Should there be heightened examination requirements for continuation patents, 2 to ensure that minor modifications do not receive second or subsequent patents?

5. The Patent Act requires the USPTO Director to set a “time during the pendency of the [original] application” in which continuation status may be filed. Currently there is no time limit relative to the original application. Can the USPTO implement a rule change that requires any continuation application to be filed within a set time frame of the ultimate parent application? What is the appropriate timeframe after the applicant files an application before the applicant should know what types of inventions the patent will actually cover? Would a benchmark (e.g., within six months of the first office action on the earliest application in a family) be preferable to a specific deadline (e.g., one year after the earliest application in a family)?

6. The USPTO has fee-setting authority and has set fees for filing, search, and examination of applications below the actual costs of carrying out these activities, while maintenance fees for issued patents are above the actual cost. If the up-front fees reflected the actual cost of obtaining a patent, would this increase patent quality by discouraging filing of patents unlikely to succeed? Similarly, if fees for continuation applications were increased above the initial filing fees, would examination be more thorough and would applicants be less likely to use continuations to cover, for example, inventions that are obvious variations of each other?

Senators Tillis and Leahy Propose to Improve U.S. Patent Quality

Senators Tillis, a Republican, and Leahy, a Democrat, have introduced legislation in Congress designed to improve patent quality at the USPTO.  The bipartisan nature of the legislation, hopefully, means it will be quickly adopted. [I am an optimist.] Senator Tillis’ press release states:

This legislation would evaluate prior and current initiatives and pilot programs relating to the quality of patents. It would evaluate the need for greater clarity in terms of what constitutes patent quality, the setting of patent quality metrics, and how the quality of work product performed by patent examiners is measured within the office. The bill would evaluate the need for recording examiner interviews via audio files or automated transcriptions, how the assignment of patent applications to examiners is undertaken, and the creation of a group that looks at real-world circumstances and uses that information to perform targeted review of certain patent applications. Furthermore, the bill would also study any evidence of fraud in the patent application process and suggest avenues to address such fraud.  

“If the United States is going to continue to be the world’s leading innovation economy, then we have to first make sure our patent system is strong and instills confidence,” said Senator Tillis. “We only have strong patents when those patents are of the highest quality and meet all the requirements of patentability. I’m proud to introduce this measure with my good friend Senator Leahy to improve the quality of patent examinations and ensure that the USPTO issues strong patents. This legislation is a step further in continuing our work to strengthen our intellectual property rights.” 

“I am proud to cosponsor this commonsense legislation with Ranking Member Tillis,” said Senator Leahy. “This bill follows up on our hearing last year on patent quality, which put a spotlight on the fact that many U.S. patents represent brilliant inventions and drive our economy.  Unfortunately though, some are issued by mistake and can cause great expense for unsuspecting Americans and small businesses.  I look forward to advancing legislative solutions that will help make sure that the patents that are issued are valid and to continuing my work supporting American creators and innovators.” 

Background:

For decades there has not been a major change to the time afforded to patent examiners for the examination of patent application, yet the nature of the technology from which these patent applications are derived and the complexity of this technology have only increased. In addition, the proliferation of prior art, which patent examiners must search for and review in order to make patentability determinations, has only increased and it has done so at a rapid pace. This complexity can and does lead to the necessity for patent examiners to raise more complex prior art rejections. And because of this patent examiners must be afforded the necessary amount of time so as to generate quality work products. 

This bill would require that not later than 1 year after the date of enactment of this Act the Comptroller General of the U.S. submit to the Senate Committee on the Judiciary and House the Committee on the Judiciary a report detailing this evaluation on patent examination improvement. Not later than 1 year after the date on which the Comptroller General of the U.S. submits their report the USPTO Director shall develop guidance for patent examiners focused on patent examination improvement. Finally, not later than 2 years after the date of enactment of this Act the USPTO Director, after soliciting public comment, shall submit to Congress a report that includes how the Office will improve the technical training of patent examiners with respect to emerging areas of technology, the status of office IT systems, a 5-year IT modernization plan, an accounting of the use by the office of advanced data science analytics and a 5-year modernization plan regarding advanced data science analytics, and finally how the result of the application of advanced data science analytics can be regularly shared with the public.

USPTO and WIPO on ADR for SEP Disputes

The USPTO has announced a partnership with WIPO concerning utilizing alternative dispute resolution for SEP disputes.  The Press Release states:

The United States Patent and Trademark Office (USPTO) and the World Intellectual Property Organization (WIPO) today agreed to undertake joint efforts to facilitate the resolution of disputes related to standard essential patents.

Standard essential patents, or SEPs, are patents that have been declared essential to a given technical standard. As part of the standards-setting process, patent owners may agree to license SEPs on fair, reasonable, and nondiscriminatory (FRAND) terms. Standards touch all aspects of modern life and include video compression, wireless communication technologies, computer connection standards, automotive technology, and more.

“International standards, and the role of patents that are essential to them, play an important role in promoting a strong national and global economy,” said Under Secretary of Commerce for Intellectual Property and USPTO Director Kathi Vidal. “The USPTO is grateful that Director General Tang recognized the USPTO’s leadership role in advancing discussions on standard essential patent policies. Our work with WIPO underscores the USPTO’s view that SEP policy is an international issue of international importance. This agreement will leverage existing resources at both the USPTO and WIPO, supporting options to enhance the efficiency of licensing of standard essential patents, and promote resolution of disputes related to those standards.”

The signing of the memorandum of understanding occurred during a meeting this week between Director Vidal and WIPO Director General Daren Tang on the sidelines of WIPO’s General Assembly in Geneva, Switzerland.

Under the terms of the agreement, the USPTO and WIPO will:

• Cooperate on activities that will lend efficiency and effectiveness to the resolution of disputed standard essential patent matters by leveraging existing WIPO Arbitration and Mediation Center and USPTO resources, and
• Engage in stakeholder outreach to raise awareness of the services provided by the WIPO Arbitration and Mediation Center through joint USPTO-WIPO programs.

The agreement will continue in operation for five years from the date of signing.

“We appreciate all the work Director General Tang and WIPO have done in this critical area. We look forward to a successful collaboration and engaging stakeholders to ensure we shape dispute resolution that will facilitate participation and implementation of standards by all innovators including small to medium-sized enterprises,” remarked Director Vidal.

“Alternative Dispute Resolution (ADR) has time and again demonstrated its value in the efficient and timely resolution of commercial disputes. In the last few years, the WIPO Arbitration and Mediation Center has been facilitating the resolution of SEP-related disputes and the new collaboration with the USPTO is an exciting development which will contribute to improving the efficiency of standard implementation,” noted Director General Tang.     

Small Claims Patent Courts Coming to the US Soon? RFPs and Comments Wanted.

The Administrative Conference of the United States (ACUS) is working with the United States Patent and Trademark Office to essentially determine if the benefits of small claims patent courts outweigh the costs.  The ACUS website states:

The U.S. Patent and Trademark Office (USPTO) is engaging ACUS to conduct an independent study of issues associated with and options for designing a small claims patent court. The resulting report, which will ultimately be submitted to Congress, will address, among other topics, whether there is need for a small claims patent court, the feasibility and potential structure of such a court, and the relevant legal, policy, and practical considerations in establishing a small claims court.

The ACUS is accepting comments, here. 

The Request for Proposals document for consultants to work with the ACUS states:

Since at least the late 1980s, concerns have been raised that the high cost of patent litigation deters small- and medium-sized enterprises, particularly those owned by traditionally underrepresented groups, from seeking patent protection enforcement. Policymakers, scholars, and organizations have studied whether a small-claims procedure is needed for resolving patent disputes. They have reached different conclusions and proposed different actions. . . .

[The report may discuss:] Whether there is need for a small claims patent court; • The operation and structure of similar small claims intellectual property tribunals in the United States and elsewhere; • The relevant laws that would govern the establishment of a small claims patent court, including the United States Constitution and applicable statutes and regulations; • The policy and practical considerations in establishing a small claims patent court; • The institutional placement, structure, and internal organization of a potential small claims patent court, including whether it should be established within the federal courts, as or within an Article I court, or as an administrative tribunal.

March 4, 2022, is the deadline for proposals.

USPTO Finds No One Country or Firm "Winning" 5G Tech Race

The United States Patent and Trademark Office has released a report titled, “Patenting Activity Among 5G Developers.”  Notably, the USPTO Report states:

In recent years, many studies have attempted to identify a single global leader in 5G technologies. Because it is difficult to directly determine which company owns the most patent-protected technologies used in 5G networks, existing studies have examined company activity in 5G standardization work and patents and patent applications declared potentially essential to 5G standards.

This report provides a broader perspective by examining more than one data set and by recognizing the variances in significance that patents have to a sophisticated technical standard, such as 5G.

Specifically, the report examines which companies have fled for more patents at the USPTO in four technologies that have seen the most patenting activity among declared patent flings: Management of Local Wireless Resources, Multiple Use of Transmission Path, Radio Transmission Systems, and Information Error Detection or Error Correction in Transmission Systems. This approach narrows the focus to patent flings on technologies central to 5G innovation. In addition to measuring patenting activity in these four technologies, the report also examines certain patent fling attributes associated with greater value. By analyzing the question of the 5G patenting activity from a variety of perspectives, the USPTO has generated a rich set of results that are arguably more informative of 5G competitiveness than prior studies.

The USPTO’s examination shows that six 5G companies consistently competed in patenting activity: Ericsson, Huawei, LG, Nokia, Qualcomm, and Samsung. According to the data generated for the report, no single firm dominates 5G innovation at present.

In summary, the results suggest that there remains ongoing competition among these six 5G companies in patenting activity notwithstanding media claims that a single firm may lead. Given the complexity of the results, caution is recommended when reviewing media claims of 5G dominance.

The Report also notes some key takeaways:

• Unique among studies on 5G patenting activity, this report examines both (1) overall global 5G patenting trends, and (2) patent flings and value indicators in the four most patented 5G-related technologies. • Based on the report’s analysis of patenting activity, the six most active 5G companies are Ericsson, Huawei, LG, Nokia, Qualcomm, and Samsung. • The findings of the report call into question claims that any single firm or country is “winning.”

The report is available, here. 

New Patent Search Tool Released by USPTO

The United States Patent Office has released a new patent search tool and website.  The press release states:

The United States Patent and Trademark Office (USPTO) today announced a new Patent Public Search tool that provides more convenient, remote, and robust full-text searching of all U.S. patents and published patent applications.

Based on the advanced Patents End-to-End (PE2E) search tool USPTO examiners use to identify prior art, this free, cloud-based platform combines the capabilities of four existing search tools scheduled to be retired in September 2022: Public-Examiner’s Automated Search Tool (PubEAST), Public-Web-based Examiner’s Search Tool (PubWEST), Patent Full-Text and Image Database (PatFT), and Patent Application Full-Text and Image Database (AppFT).

 “This new platform represents a significant step forward in our broader efforts to meet stakeholders where they are, especially in the pandemic,” said Drew Hirshfeld, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. “Knowing that our previous tools did not provide users with the convenience or similar functionality as those used by our examiners, it is incredibly gratifying to know that now more stakeholders can search for patents using the resources of four powerful search platforms in one expansive tool.”

In the past, users could only access legacy search tools PubEAST and PubWEST at a USPTO facility like the headquarters in Alexandria, a regional office, or a Patent and Trademark Resource Center. With the launch of the new tool, remote searching is now available to all users with internet access. Additional benefits include:

• Layouts: Multiple layouts with multiple tools to provide more data at once
• Highlighting: Multi-color highlighting that can be viewed across multiple gadgets and turned on or off
• Tagging: Ability to tag documents into multiple groups that can be renamed and color coordinated
• Notes: Ability to add notes to an image with options to include tags, relevant claims, and highlights
• Quality: Robust full-text searching of U.S. patents and published applications
• Familiar usability: Same searching syntax as PubEAST and PubWEST

In conjunction with the launch of Patent Public Search tool, the USPTO unveiled a new Patent Public Search webpage that includes FAQs, training resources, and other information to help users transition to the new tool. Upcoming public training sessions will be posted on the webpage as soon as they are scheduled.

For questions regarding Patent Public Search, please contact the Public Search Facility at psf@uspto.gov or visit the Public Search Facility and/or Patent and Trademark Resource Centers websites.

Sharp - not weak or late enforcement is required against recalcitrant SEP implementers

Public comments on SEPs and FRAND licensing sought for the US Department of Justice’s Draft Policy Statement and the UK Intellectual Property Office’s Call for Views.

It is vital that the fundamental sanction in patent law—of the temporary right to exclude—along with other remedies, including enhanced damages, are readily available against infringers when Fair, Reasonable and Non-Discriminatory (F/RAND) licensing has been offered, but is rejected, evaded or unreasonably delayed.

Technical standards confer enormous value to implementers and consumers. For example, cellular standard-essential technologies enable annual revenues exceeding a trillion dollars in operator services, several hundred billion dollars in smartphone sales and hundreds of billions more in over-the-top applications and services on those devices. Undermining the fundamental patent rights of organizations that commit large R&D resources to develop those technologies and contribute them to the standards would unfairly short-change those innovators and jeopardize ongoing investments in 5G and the Internet of Things (IoT). In addition to facilitating revenue growth and cost savings in those downstream markets, standard-essential technologies, for example, help save the planet by enabling us to fly and drive less—thus reducing our carbon footprints—and reduce deaths on the road with autonomous driving capabilities.

Innovative standard-essential technology developments result from high-value professional employment: for example, in US organizations including InterDigital, Nokia Bell Labs and Qualcomm. In contrast, most handset implementer jobs, such as those in manufacturing, are offshore.

Technology transfer from independent developers to implementers of cellular and other standards is flourishing and extensive. Intellectual Property Rights (IPR) policies—most notably including ETSI’s IPR Policy as applied to FRAND licensing of cellular Standard-Essential (SEPs)—have facilitated exceptional innovation, industry growth and vigorous competition including numerous new market entries with low barriers to entry in mobile phones (e.g. Apple in 2007, Xiaomi, Oppo and Vivo since 2011) and some notable major market participant exits (e.g. Nokia in 2013 and LG in 2021).

Aggregate royalty payments are small percentages of product costs and have declined while many implementers seek to significantly diminish, greatly delay or entirely avoid paying these altogether. This undermines competition and deprives the innovative companies—that develop the new technologies for all to share through their contributions to openly-available standards—from obtaining an adequate, fair, and timely return on their substantial R&D investments.

Increasing yet illegitimate attempts to weaken patent rights encourage free riding and unfairly advantage unscrupulously opportunistic implementers. Harm is mainly suffered in advanced nations, such as the US and in Europe, where most standard-essential technology developments occur and recompense for these patented contributions have been available, while implementers have largely taken unfair advantage elsewhere.

Patent piracy (i.e., theft) provides offenders with an unfair cost advantage over those implementers who comply by paying their dues in FRAND royalties. This disparity impairs a compliant implementer’s competitive position and has far more impact on the sales and profits it can make than any other input cost (e.g., manufacturing labor) that is paid uniformly by all implementers. It also deprives patent owners of fair and timely compensation from those free riders.

In absence of reasonable resort to injunctions and enhanced damages, it is also implementers wielding considerable market power from downstream product sales such as of smartphones that can misuse their negotiating strength, with delay tactics and brinkmanship to force down royalty charges paid on licensing renewals to below the FRAND rates they have already used to lower payments paid to various other licensors.

 
More consultations

While copious evidence shows the success in technology transfer from developers to implementers in cellular standards, there is ongoing conflict between some SEP owners and implementers in FRAND licensing. This is in markets where cellular standards already prevail, and in markets being developed based on new cellular-based technologies (e.g., IoT in smart cities, agriculture, manufacturing, healthcare and in the metaverse). Despite various consultations and the publication of policy documents over many years, authorities in the US, European Union, UK and elsewhere have repeatedly asked for comments and views on the same issues as policies are adjusted.

The Department of Justice (DoJ), Patent & Trademark Office (USPTO) and the National Institute of Standards and Technology (NIST) in the US seek public input on various questions with publication of the DoJ’s ‘Draft Policy Statement on Licensing Negotiations and Remedies for Standard-Essential Patents Subject to Voluntary F/RAND Licensing Commitments’ (“DoJ Draft Revised Statement”). It states that this seeks to promote good-faith licensing negotiations and addresses the scope of remedies available to patent owners that have agreed to license their essential technologies on F/RAND terms. However, it threatens to weaken fundamental patent rights emphasized in the DoJ’s 2019 statement on the very same issue.

The UK Government’s Intellectual Property Office (IPO) has also launched a “Call for Views” to better understand whether the current SEP framework encourages innovation and effectively promotes competition in markets, or whether there are any barriers to innovation and competition. The IPO states that this will establish whether government intervention is required and to understand what intervention could look like.

Evidence-based analysis

Alleged opportunistic behaviors described in the DoJ Draft Revised Statement—that are commonly referred to as patent holdup and holdout—are examined in-depth in my full report on this topic. In this, I consider key issues including industrial and IPR policy, market power, and why sanctions such as injunctions and enhanced damages must be available for licensing to be widely and timely completed under FRAND terms and royalty rates.

This article was first published in RCR Wireless on 24th January 2022.

USPTO Trademark Expungement and Reexamination Guide Released

The United States Patent and Trademark Office has released a helpful 13 page guide on how to apply the new expungement and reexamination proceedings for nonuse created by the relatively new Trademark Modernization Act of 2020.  The guide is available, here. 

U.S. FDA Sends Letter to Push USPTO Concerning Drug Patents and Access

The U.S. Federal Food and Drug Administration (FDA) recently sent a letter to the U.S. Patent and Trademark Office concerning the FDA’s concerns regarding pharmaceutical patents and their impact on innovation and access. Some of the concerns include the use of continuations to build patent thickets to raise litigation costs as well as resulting in possible delays of generic entry; evergreening practices; and product-hopping.  Notably, the FDA is generally interested in increasing communication and collaboration to address those issues, including offering expertise, collecting additional information regarding IPRs and other post-grant procedures as well as inquiring whether examiners need more time to review patent applications. While the Trump Administration also had concerns regarding drug pricing, President Biden’s recent Executive Order concerning competition is the impetus for this letter’s push for increased collaboration. 

Diversity in Startups and Inventing Patented Developments

The Creator Fund has released a report titled, “State of Student Startups,” concerning university student involvement at around 545 startups in the UK.  Notably, the report states that Covid-19 has not slowed down student engagement in startups.  Moreover, some interesting statistics are that around 57% of students involved in university startups are foreign born, and pretty close to half of students involved in university startups are BAME (Black, Asian, Minority Ethnic) and are women.  Over 60% of the startups at Oxford and Cambridge “have at least one BAME founder.”  These data are very heartening given some of the other statistics about the lack of some racial and ethnic minorities and female involvement in inventing.  Indeed, in the United States, the United States Patent and Trademark Office relatively recently released a report stating that women are still not represented similarly to their percentage of the overall population in inventing demonstrated by patents (around 20%); although, the percentage of women participating as inventors is increasing.  Here are the USPTO’s report’s major findings:

• More women are entering and staying active in the patent system than ever before.
• The number of patents with at least one woman inventor increased from 20.7% in 2016 to 21.9% by the end of 2019.
• The “Women Inventor Rate” (WIR) – the share of U.S. inventors receiving patents who are women – increased from 12.1% in 2016 to 12.8% in 2019.
• The share of women among new inventors on issued patents increased from 16.6% in 2016 to 17.3% by 2019.
• The gender gap in the number of women inventors who remain active by patenting again within five years is decreasing. For new inventors in 2014, 46% of women patented again in the next five years versus 52% of men (by 2019). In 1980, the gap was 28% for women versus 38% for men. 
• Among the leading patent filers, the 3M Company showed the largest improvement in the participation of women inventor-patentees: Their average WIR increased from 15.2% over 2007-2016 to 16.6% for 2007-2019. 

USPTO Report on Patent Eligible Subject Matter: Greater Certainty Achieved?

The United States Patent and Trademark Office (USPTO) has released an eleven page report titled, “Adjusting to Alice: USPTO Patent Examination Outcomes After Alice Corp. v. CLS Bank International,” on the impact of Patent Office changes on patent eligible subject matter.  U.S. patent eligible subject matter law has been described by some as a “mess,” which breeds uncertainty and may impact incentives to innovate and patent.  To address the apparently conflicting and confusing state of the law, the Patent Office has worked hard to provide guidance to examiners and applicants concerning the application of the law.  The USPTO report notes that recent guidance provided by the Patent Office has had a positive effect on predictability and certainty concerning the doctrine.  Of particular interest, the guidance provided by the Patent Office has a positive impact on Alice-effected technologies.  The full report is available, here.  The Press Release states: 

WASHINGTON - The United States Patent and Trademark Office (USPTO) today 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.”