The Trump Administration is discussing a significant change to patent fees, according to a recent Wall Street Journal report. The Commerce Department are considering the addition of an annual tax to patent holders equal to 1% to 5% of the overall value of the patent. This tax would be in addition to the existing maintenance fees that are paid every 3.5, 7.5, and 11.5 years, after patent issuance.
The proposed tax could raise some concerns for patent holders.
First, it’s difficult to ascertain how valuable a patent is as each patent is unique and generally directed towards a different invention. Without a publicly available baseline to serve as a measure for the value of a patent, the value of the patent cannot be determined. For example, in the stock market, millions of identical shares in companies are traded daily and are therefore easy to value. Likewise, in the real estate industry, houses can be compared to similar houses with similar features in the same area that have recently sold in order to determine value. In contrast, individual patents are sold or licensed in private transactions, making valuation hard to determine.
Second, many patents are filed on inventions that never make it to market. In fact, these patents arguably have “negative value” because of the costs associated with them (e.g., maintenance fees). They bring in no revenue in the form of royalties or by protecting a particular product or line of business.
If the Trump Administration is successful with implementing this tax, patent owners will need to be strategic in how they manage their portfolio. Although it’s too early to know if this proposed tax will be implemented, and what consequences may arise, Thomas Horstemeyer will continue to follow this news. For questions and guidance on your patent, email us at info@thip.law.
On April 18, the Federal Circuit Court released its decision in Recentive Analytics, Inc., v. Fox Corp., Fox Broadcasting Company, LLC, and Fox Sports Productions, LLC. In Recentive, the patents claimed the use of machine learning to solve problems confronting broadcasters, such as the Defendants (collectively “Fox”), related to determining the scheduling of live events and optimizing network maps, which determine the programs or content displayed by a broadcaster’s channels within certain geographic markets at particular times. The Federal Circuit held that certain types of machine learning patents are per se patent-ineligible. However, the Court also noted that the decision does not apply to all machine-learning patents.
This decision arose from an appeal of a District Court decision on a motion to dismiss by Fox. In that decision, the District Court ruled that the four patents asserted by Recentive Analytics were not direct to patent-eligible subject matter. The Federal Circuit affirmed the decision of the District Court, stating that “today, we hold only that patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied, are patent ineligible under § 101.”
Many have questioned whether the holding in Recentive heralds the end of patenting machine learning related inventions. However, Recentive is consistent with previous decisions by the Federal Circuit on subject-matter eligibility. As an example, independent claim 1 of U.S. Patent No. 10,911,811 (one of the four patents asserted) recites:
A computer-implemented method for dynamically generating a network map, the method comprising:
receiving a schedule for a first plurality of live events scheduled to start at a first time and a second plurality of live events scheduled to start at a second time;
generating, based on the schedule, a network map mapping the first plurality of live events and the second plurality of live events to a plurality of television stations for a plurality of cities,
wherein each station from the plurality of stations corresponds to a respective city from the plurality of cities,
wherein the network map identifies for each station (i) a first live event from the first plurality of live events that will be displayed at the first time and (ii) a second live event from the second plurality of live events that will be displayed at the second time, and
wherein generating the network map comprises using a machine learning technique to optimize an overall television rating across the first plurality of live events and the second plurality of live events;
automatically updating the network map on demand and in real time based on a change to at least one of (i) the schedule and (ii) underlying criteria,
wherein updating the network map comprises updating the mapping of the first plurality of live events and the second plurality of live events to the plurality of television stations; and
using the network map to determine for each station (i) the first live event from the first plurality of live events that will be displayed at the first time and (ii) the second live event from the second plurality of live events that will be displayed at the second time.
In this claim, if one were to replace the bolded phrase “machine learning technique” with “human,” the entire method could be implemented by a person using pen-and-paper. The computer generally, and machine learning specifically, is only recited as the mechanism or vehicle by which the abstract idea is applied or implemented. Viewed another way, it could be said the claim anthropomorphizes the computer, which is often an indication that the claim may be too general to be patent eligible. It is therefore unsurprising that this claim was found to be subject-matter ineligible by the court, as well as claims with similar scope in the other asserted patents.
There are several conclusions for clients to consider moving forward.
First, inventions that use or rely on machine learning are still patentable. The Federal Circuit limited their holding only to patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied. So, the door is still open to machine learning patent applications that disclose, and claim, improvements to the machine learning models being used. Moreover, other tests for subject-matter eligibility, such as the machine-or-transformation test, are still good law and therefore offer alternative avenues for proving patent-eligibility.
Second, patents that simply claim the application of a business method or other abstract idea using a machine learning model are unlikely to be granted or to survive motions to dismiss in litigation. This is consistent with prior case law on subject matter eligibility. For example, in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), the Supreme Court stated that it is not enough to render a claim patent-eligible by stating an abstract idea and adding the words “apply it with a computer.” The Federal Circuit’s decision in Recentive is consistent with the holding in Alice – holding the claims that recite an abstract idea applied with a machine learning model to similarly be patent ineligible.
How significant these consequences from Recentive prove to be will remain to be seen and will probably be resolved through litigation over the next few years. We predict that machine learning patent applications will require a great degree of specificity in the claim language and the detailed description in order to be granted.
Thomas | Horstemeyer has robust experience in patent writing and patent prosecution. For questions and guidance, email us at info@thip.law.
The USPTO has announced its Notice of Proposed Rulemaking (NPRM) for raising fees in 2025. The NPRM retains most of the fee adjustments that were first proposed in 2023, with only a few changes made in response to input from the Patent Public Advisory Committee (PPAC). The fees are significant and can greatly impact some patent filing and prosecution strategies. The changes in the USPTO fees are briefly described below.
The NPRM does respond to feedback provided by the PPAC in 2023, but the fee increases generally remain unchanged. Although the USPTO is required to accept and respond to properly submitted comments from various stakeholders through the Federal eRulemaking Portal by June 3, 2024, we would expect that the USPTO is unlikely to make any significant changes given the minimal changes that were made in response to feedback from the PPAC.
The new and increased fees are likely to impact patent filing and prosecution strategies for all of our clients. However, different clients will be impacted in different ways. We invite all of our clients to arrange for a discussion with us on how to reduce or minimize the impact of the increased and new fees on their budgets.
ATLANTA, GA—Atlanta-Based IP boutique Brient IP Law recently joined Thomas|Horstemeyer, bringing with them former partners from Alston & Bird, Kilpatrick Townsend and Virginia-Based CowanPerry. Brient IP served its clients for almost 15 years, often being called on to protect the most important IP assets of Fortune 500 and well-funded startup companies.
The addition will enhance Thomas|Horstemeyer’s systems/software patent practice, expand its mechanical patent group, and add over 3,000 worldwide marks to its already robust trademark practice. With this addition, Thomas|Horstemeyer continue to provide a full spectrum of services in the areas of patents, trademarks, copyrights, trade secrets, and related litigation in support of the growing Atlanta tech scene.
“The Atlanta technical sector continues to grow at a rapid pace, and we’re growing along with it. We are excited to welcome this talented group of attorneys and look forward to having them continue to grow their practice at our firm as they serve clients in the Atlanta area and others across the country,” said Andrew Crain, Managing Partner at Thomas|Horstemeyer, LLP.
This development marks a significant milestone in Atlanta’s IP landscape. Adding a marquee player like Brient IP gives Thomas|Horstemeyer even greater depth and reach to develop and implement unique intellectual property strategies for the most complex technologies and business environments.
With a proven track record for protecting and defending intellectual property assets, Thomas|Horstemeyer services clients from Fortune 100 companies to universities, start-ups, and sole inventors around the world. Their attorneys have expertise in various industries and technologies, including chemical, biotech, electrical, software, and many more. They will continue to service clients from their Windy Hill headquarters.
The USPTO Has Issued New Guidelines for Assessing Enablement in View of the Supreme Court Decision in Amgen Inc. v. Sanofi et al.
On January 10, 2024, the United States Patent and Trademark Office (USPTO) published Guidelines for assessing enablement in view of the Supreme Court’s 2023 decision in Amgen Inc. et al. v. Sanofi et al., 143 S. Ct. 1243 (2023) (hereafter Amgen). The Guidelines are intended to guide both Examiners and the public on how to interpret and implement the Amgen opinion. The conclusion is that the USPTO will continue to use the In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (hereafter Wands) factors to ascertain whether the amount of experimentation required to enable the full scope of the claimed invention is reasonable. In other words – status quo.
In Amgen, the Supreme Court unanimously held that several of Amgen’s patent claims to a class of antibodies were invalid for lack of enablement. While Amgen’s patents specifically identified 26 amino acid sequences for antibodies that would block or inhibit PCSK9, the Court held that Amgen had not enabled “the entire genus” of antibodies that “bind to specific amino acid residues on PCSK9” and “block PCSK9 from binding to [LDL receptors].” According to the Court, Amgen attempted to claim an entire class of compounds by their function, namely antibodies that bind to the “sweet spot” of PCSK9 thereby inhibiting it from binding to LDL, while only describing 26 amino acid sequences in its specification.
The Federal Circuit had previously identified factors in Wands that can be used to assess whether the specification provides sufficient enablement to make and use the full scope of the claimed invention. While the Supreme Court did not expressly use these Wands factors in Amgen, the Guidelines concluded that they are still “probative of the essential inquiry in determining whether one must engage in more than a reasonable amount of experimentation.”
The Guidelines highlighted several Federal Circuit decisions preceding and following the Amgen decision, showing how the Wands factors were used. Notably, in all of these cases the claims were found to not be enabled. This is where the Guidelines fall short since it instructs the Examiner to apply the Wands factors without giving any examples where antibody claims would in fact be enabled. Therefore, questions still remain as to what amount of disclosure is adequate for enablement under Amgen.