As the prevalence of artificial intelligence has grown significantly over the last few years, the United States Patent and Trademark Office (USPTO) has taken measured steps toward its implementation within the intellectual property ecosystem. The USPTO has consistently recognized the tremendous potential for artificial intelligence “to support the agency’s mission,” yet it has exercised extreme restraint as it continues to evaluate its implementation among intellectual property practitioners, inventors, and the agency itself.
For example, in October 2020, the USPTO published its report titled Public Views on Artificial Intelligence and Intellectual Property Policy, marking one of the agency’s earliest inquiries into the intersection of artificial intelligence and the existing intellectual property framework, as well as the “reliability of IP rights for emerging technologies, such as AI.” Similarly, the USPTO previously established an Artificial Intelligence and Emerging Technologies Partnership “to gather public feedback through a series of sessions on topics related to AI and innovation[.]” Additionally, efforts by the USPTO and several other governmental agencies preceded and supported President Biden’s October 30, 2023 Executive Order titled “Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence,” which encapsulated the federal government’s perspective regarding the competing advantages and risks associated with the use of artificial intelligence:
“Artificial intelligence (AI) holds extraordinary potential for both promise and peril. Responsible AI use has the potential to help solve urgent challenges while making our world more prosperous, productive, innovative, and secure. At the same time, irresponsible use could exacerbate societal harms such as fraud, discrimination, bias, and disinformation; displace and disempower workers; stifle competition; and pose risks to national security.”
The landscape surrounding the federal government’s and the USPTO’s implementation of artificial intelligence continues to evolve; however, the principles guiding this evolution remain consistent. Since President Biden’s Executive Order, the USPTO has issued ongoing guidance emphasizing its continued concern with the reliability, accuracy, and trustworthiness of AI-based programs. For instance, the USPTO has repeatedly issued guidance—at times, warnings—regarding practitioners’ use of AI tools in proceedings before the Patent Trial and Appeal Board (“PTAB”) and Trademark Trial and Appeal Board (“TTAB”). These changes align not only with the agency’s prior findings and actions to combat risks posed by artificial intelligence to the inventive process but also with methods of addressing growing concern regarding the use of AI within the legal community, such as the American Bar Association’s initiatives “to provide the legal community with insights for developing and using AI in a trustworthy and responsible manner.”
The USPTO’s recent implementation of AI-based patent examination tools, “SimSearch” “DesignVision,” reflects both the agency’s holistic assessment of AI’s benefits and risks and the agency’s intent to maintain safeguards while enhancing its examination process through use of AI. For example, as an enhancement to the existing Patent-End-to-End (PE2E) search function, SimSearch allows examiners to input selected portions of a pending application as a query to facilitate a prior art searches amongst both “domestic and foreign patent documents.” Similarly, DesignVision allows examiners to “facilitate[e] prior art searching using images as a query” to simultaneously search multiple foreign and domestic registries via a single search interface.
SimSearch and DesignVision represent some of the USPTO’s initial efforts to tailor artificial intelligence tools for internal use, while also advancing its broader goal of preserving the United States’ position as a global leader of innovation. However, as in many industries, significant concerns remain regarding the reliability of work product generated by or reliant on AI-based programs. The USPTO’s implementation of SimSearch and DesignVision, along with its internal guidance on their use of such programs during the examination process, reflects this persistent concern, as highlighted in recent USPTO announcements:
| “SimSearch is intended to augment—not replace—other search tools and is available to examiners through our internal search tool, Patents End-to-End (PE2E) Search.” | “DesignVision will augment—not replace—design examiners’ other search tools. Examiners can continue using other PE2E search tools and non-patent literature when conducting their research.” |
While this consistency between the DesignVision and SimSearch press releases may appear minor, it reflects the USPTO’s clear stance regarding artificial intelligence. Although the implementation of these tools contributes the agency’s goal to “harness AI to support the agency’s mission,” their use—i.e., to only “augment” rather than replace examiner’s efforts—demonstrates the USPTO’s core belief that, in its current form, artificial intelligence cannot substitute the integrity, reliability, and judgement of its human workforce. Through this approach, the USPTO has reaffirmed its continued commitment to exercising caution in adopting AI within the intellectual property ecosystem.
For any inquiries related to intellectual property, reach out to us as info@thip.law.
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.
Earlier this month, the USPTO issued a notice of proposed rulemaking (NPRM) to add a new requirement to terminal disclaimers to overcome nonstatutory double patenting rejections. Specifically, if the proposed rule were to be adopted, filing of a terminal disclaimer would obligate the applicant to agree that the patent would become unenforceable if any claim in any other patent linked by a terminal disclaimer were held to be invalid or unpatentable over the prior art. The rule would only apply to terminal disclaimers filed on or after the effective date of any final rule. Comments must be submitted by July 9, 2024, to ensure consideration.
If passed, the rule would potentially have some interesting consequences for clients with respect to their continuation practice because a continuation application would only be as enforceable as the weakest claim in the family. Accused infringers could, for example, defend themselves against a patent infringement lawsuit by attempting to invalidate a broader claim in a related, but unasserted, patent. Accordingly, broadening continuations could be riskier to pursue if there are plans to assert any of the patents in the patent family.
The net benefit of this rule appears to be in favor of accused patent infringers, to the detriment of patent applicants. However, we have been advising our clients on how they could minimize the overall impact of this revised terminal disclaimer rule if it were to be implemented.
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.
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.