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What Inventors Should Know About The PTAB

By Cecily Capo

Obtaining patent protection is a complex process requiring a lot of time, money, and patience. If a patent is finally issued, a common misconception is that patent protection is guaranteed to last the maximum duration of 20 years for a utility patent, and 15 years for a design patent. The patent holder is not always aware that even if a patent is granted, it is subject to being invalidated. This can happen after infringement litigation in federal district courts, or after a post grant review decision at the Patent Trial and Appeals Board (PTAB).

The PTAB is the United States Patent and Trademark Office (USPTO) tribunal that reviews decisions made by patent examiners. It traditionally hears reviews of rejected patent applications. Applicants are able to seek review from the PTAB after a second or final rejection of their patent application[1]. Both the appellant and the patent examiner submit briefs where they explain their respective position on the patent application. The appellant can also request an oral hearing. Following the submission of written arguments and an oral hearing, the Board will affirm or reverse, in whole or in part, the examiner’s rejection. If the rejection is not reversed and the appellate wishes to seek reconsideration, they can do so with the Board, a federal court review, or both.[2]

A second set of proceedings – post grant review proceedings – are also available at the USPTO pursuant to the America Invents Act (AIA). These proceedings allow a third party to challenge the validity of an issued patent. The post-grant review proceedings include inter partes review (IPR), a post-grant review (PGR), and covered business method review. Under the provisions for these proceedings, a member of the public can file a petition with the PTAB challenging the patentability of claims in an issued patent. In an IPR, the petitioner can challenge an issued patent based on the patent being anticipated by prior art, or being obvious in light of prior art. A PGR can be initiated based on any properties that can be used to challenge the validity of a patent claim, e.g. written description support or subject matter eligibility of claims. The petitions identify patent references and publications constituting prior art that do not appear to have been considered by the examiner.

Inter partes reviews are the most common type of appeal, making up 93% of proceedings in the 2021 fiscal year.[3] Inter partes reviews are akin to trials and consist of the PTAB re-examining an issued U.S. patent and rendering an opinion as to whether the patent is valid or not, and in some cases stripping a patent owner of their rights. A common misconception is that once a patent is obtained, the inventor or assignee is free from challenges, but patents are often under review and subject to being invalidated.[4] If a patent is invalidated, it does not mean that every claim is invalid. In a scenario where a company is accused of infringing a patent and that company seeks to have the patent invalidated, only one claim in the patent needs to be valid in order for the infringer to be found liable. Therefore, even if one or multiple claims in a patent are invalidated, the patent holder can still be awarded remedies.[5]

There are two phases to post grant review proceedings. First, the PTAB decides whether to institute a trial based upon the petition and response from the patent owner. The patent owner responds to the petition filed by the third party (the petitioner) and the Board will decide whether to initiate an AIA trial. If the Board decides to move forward with a trial, both the petitioner and the patent owner present evidence to the Board to aid in their decision. After trial is concluded, the PTAB issues a final written decision as to whether the claims of the patent should stand. Once a final decision is made, the unsatisfied party can seek further relief through the Board, a federal court review, or both.[6]

Post-grant proceedings offer an alternative to district court litigation with several advantages. The PTAB trials are conducted before a panel of three technically trained administrative patent judges. In district court, the proceedings may be in front of a jury not familiar with the technology analysis. Discovery before the PTAB is more limited, and therefore less costly. Finally, PTAB trials take less time, usually within 12 months whereas court litigation often takes several years before a decisionis rendered.

Patent protection requires a great amount of effort to obtain and maintain, even after the patent is granted. As a result, patent holders are well advised to periodically perform a prior art search to be aware of the existence of potentially infringing patents. For more information, the USPTO offer an Inventors Assistance Center on their website.


[1] 35 U.S. Code § 134 – Appeal to the Patent Trial and Appeal Board

[2] What are Ex Parte Appeals?, USPTO (2021), https://www.uspto.gov/patents/patent-trial-and-appeal-board/appeals/what-are-ex-parte-appeals.

[3] PTAB Trial Statistics FY21 End of Year Outcome Roundup IPR, PGR, CBM, UPSTO (2021), https://www.uspto.gov/sites/default/files/documents/ptab_aia_fy2021__roundup.pdf.

[4] What is an Inter Partes Review (IPR) of a Patent?, Winston & Strawn LLP, https://www.winston.com/en/legal-glossary/inter-partes-review.html.

[5] Timothy P. McAnulty & David F. Klodowski, Three Things Medical Device Companies Should Know About the Patent Trial and Appeals Board, Medical Design & Outsourcing (June 15, 2021), https://www.medicaldesignandoutsourcing.com/3-things-medical-device-companies-should-know-about-the-patent-trial-and-appeal-board/.

[6] Id.

Should Social Media Companies Be Regulated?

By: Claire Denny

In the fall of 2021, a former employee of Facebook provided the United States Senate Committee on Commerce, Science and Transportation with written testimony illustrating the harmful effects caused by the Facebook algorithm. In addition, she provided the Committee thousands of leaked pages of internal documents to substantiate her concerns. One leaked page included a slide from an internal presentation by a Facebook executive that stated, “Our algorithms exploit the human brains attraction to divisiveness. If left unchecked it will feed more and more divisive content in an effort to gain user attention and increase time on the platform.” Additional documents leaked by the Facebook whistleblower included internal research showing that the algorithm caused harmful effects on the platform’s teenage users by promoting harmful content on the platform. Other documents showed that the Facebook algorithm tends to spread misinformation, hate speech, and polarizing user content. Despite this, the Facebook algorithm remains unchanged.

The Facebook whistleblower, Frances Haugen, is an American data scientist and computer engineer. After graduating from Harvard, Haugen gained expertise in computer sciences and data engineering while working for numerous tech companies including Google, Yelp, and Pinterest. However, Haugen was drawn to working for a social media platform because she wanted to play an active role in establishing a better social media environment online. In 2019, Haugen was hired as an algorithm product manager for Facebook and handled data science issues pertaining to the spread of misinformation and counterespionage. She described her job as being “largely focused on algorithmic products, like Google Plus Search and recommendation systems like the one that powers the Facebook news feed.”

While at Facebook, Haugen worked on a team that addressed issues of civic integrity and civic misinformation. This position allowed Haugen to develop a first-hand understanding of the how the Facebook algorithm operates and how it has caused harmful effects on the platform’s users. Although the algorithm was initially designed for the Facebook website, the company uses the same algorithm across all of its platforms, including Instagram. The algorithm currently operates in a way that maximizes engagement in the platform by promoting and amplifying content that is likely to elicit a response from users. However, the content that is being amplified and is therefore shown more frequently to users across the platform, is problematic and harmful content. Internal research conducted by Facebook on its algorithm has shown that the algorithm expands and amplifies “hate speech, misinformation, violence inciting content, and graphic and violent content” because the algorithm recognizes that users are more likely to engage in and react to this type of content. Despite this, Facebook executives have consciously chosen to continue utilizing the algorithm because it leads to increased user engagement on the platforms, ultimately leading to increased company profits.

Facebook and Instagram have also conducted extensive internal research on the effects of social media use on teenage users. Haugen explained that Facebook’s own research shows that the use of their social media platforms by teenagers increases the risk of mental health issues, eating disorders and depression. Teenage users repeatedly reported that Instagram made them feel bad about their bodies and that they were “unhappy when I use Instagram and I can’t stop.”. Although Facebook executives are aware of the harmful effects of their platforms, users accounts are pushed towards radical or harmful content by the same algorithm that is causing and perpetuating these issues. In her testimony, Haugen stated “I saw Facebook repeatedly encounter conflicts between its own profits and our safety. Facebook consistently resolved these conflicts in favor of its own profits.”                                                                                        

Under current United States law, social media platforms like Facebook can continue to operate and implement harmful algorithms because there is very little congressional oversight on these issues. Regulation of social media content and use has been especially problematic because it inevitably implicates issues involving intellectual property ownership as well as First Amendment Rights. In addition, drafting and implementing effective regulations requires significant expertise in computer science and data engineering.

One current federal law, Section 230 of the Communications Decency Act, shields internet companies from liability for content posted by its users. 47 U.S.C.A. §230. Numerous individuals have called for reform of this Act in order to hold social media platforms to a higher standard of accountability.  In addition, there are two bills before the House of Representatives aimed at restricting algorithm usage by social media platforms. One act, the Filter Bubble Transparency Act, would require social media platforms to offer a version of their platform that does not utilize engagement-based rankings to promote certain content to users. Instead, users would be able to use the app without algorithm generated recommendations. The second bill is the Algorithmic Justice and Online Platform Transparency Act which states its purpose as: “To prohibit the discriminatory use of personal information by online platforms in any algorithmic process, to require transparency in the use of algorithmic processes and content moderation, and for other purposes.”

A Congressional report titled: Social Media: Misinformation and Content Moderation Issues for Congress report issued last year further explores the issue. Other proposals include breaking up big tech companies, shrinking the shield against liability when the content pushed causes harm, or creating a regulatory body to oversee the industry. It appears likely that reforms in social media will continue to be debated as internet usage continues to pervade daily lives.

What Is Patent Invalidity and What Do Entrepreneurs Need to Know About It?

By Hailey Pooler

Patent applications are reviewed by examiners who work at the United States Patent and Trademark Office (USPTO). The patent examiner completes research to determine if the invention was already publicly known before the application was filed. The examiner searches for patent references, publications, and available products—collectively known as “prior art”—indicating a claimed invention already exists.

Patent examiners have many applications to review and research. In some instances, the patent examiner may fail to identify prior art that shows the invention is not novel and/or non-obvious. Unaware of the prior art, the patent application may be granted. In these situations, an invalid patent may have been awarded. Situations like this created the need for “patent invalidity searches,” which can lead to litigation.

Before further examining patent invalidity, it is useful to review some basic patent application information:

Q: What are the requirements for a valid utility patent?

A: To be valid, a patent must …

  1. Have patent-eligible subject matter—Some subject matter is not patentable. In the United States, for example, laws of nature, physical phenomena, and abstract ideas cannot be patented.
  2. Be properly disclosed—A patent must disclose the “inventive aspects” of the invention and include an “enablement” in the application. The applicant is obliged to disclose any art they are aware of and indicated how the invention is distinct from prior art.
  3. Not already be patented—There cannot be multiple patents for the same invention.
  4. Be novel—The invention must be new and not incorporate all the elements of a previously disclosed invention.
  5. Serve some predetermined and “useful” purpose.
  6. Be non-obvious—The invention cannot be one “that would be obvious to a person of ordinary skill in the art at the time of the invention.”

Q: How long is a utility patent valid for?

A: A US utility patent is usually valid for 20 years from the patent priority date. The patent priority date is typically the date that the patent was filed, but that is not always the case.

Q: What is a patent invalidity search?

A: Patent invalidity searches are generally conducted by competitors or defendants in an infringement claim, and they are conducted after a patent is issued. This “extensive prior art search” has the goal of invalidating a patent using any prior art that may have been missed by the USPTO. A patent invalidity search differs from a normal prior art search in that a patent invalidity search focuses on the claim language of the patent instead of the overall invention idea.

Q: What is the purpose of a patent invalidity search?

A: The purpose is to find any important prior art that had been missed by the patent examiner. This search can support a challenge to another person’s patent or can help defend against an allegation of patent infringement.

When considering a challenge to—or defense of—a patent’s validity, it is essential that there be a good understanding of the patent in question. There are multiple ways to invalidate a patent:

  1. Examine the “file wrapper”—Every patent examined at the USPTO has a file wrapper that documents its history. This includes all the communications and documentation relating to the application by both the examiner and the applicant. A review of the initial claim rejections, the reason for such rejections, and the listed prior art already given in the history may point to similar claim language in other patents signaling a possibly weak patent with a high chance of being invalidated.
  2. Conduct an extensive prior art search—Looking at prior art in the same family as the patent at issue (or looking at any citations for the patent or even citations of the cited patents) also can be useful for an invalidation claim.
  3. Prove that the invention was on sale or available for public use—A patent can be invalidated if, within the 12 months prior to the filing of the patent application, the invention was on sale or available to the public in the United States, patented in another country, discussed in a publication, or recognized by other inventors in the US before invention by the applicant.

Ultimately, a patent invalidity search is similar to a general prior art search, but with a more specific goal. Instead of trying to find all prior art that relates to an invention or potential patent, invalidating a patent involves research specific to a single patent that is either being defended as valid or prosecuted as invalid.

This type of specific search underscores the importance of completing a comprehensive search for prior art as part of an well-developed intellectual property strategy. The Innovation Law Center (ILC) at Syracuse University College of Law can help innovators with this process by conducting general prior art searches as part of its services.

The Eyes Have It: How Data Privacy Laws Interact with Biometric Data

By Samantha Palladino

To read this article, I am willing bet at least half of you unlocked your smart device using fingerprint or facial recognition. Welcome to the world of biometric data!

In an attempt to reduce the amount of fraud experienced by consumers across the globe, many companies have turned to some form of biometric identification, such as face, hand, voice, or even iris recognition.[1] This trend toward implementing biometric identifiers is on the incline—Global Market Insights estimates that the biometrics market will surpass $50 billion by the year 2024.[2]

Biometric data is considered the physical characteristics or behavioral characteristics of a human being that can be used for recognition purposes. It is therefore highly personal information.[3]

When companies begin to collect such information from their customers, they must take into consideration the data privacy laws that are triggered around the world. Two of the most prominent regulatory landscapes that companies will encounter are that of the European Union (EU) and individual states within the United States.[4] The EU implemented the General Data Protection Regulation (GDPR) on May 25, 2018.[5] GDPR provides protection to EU citizens regarding the use of their personally identifiable information (PII), which includes biometric data.[6]

Now, if you are thinking that GDPR does not apply to you because you are not located in the EU, think again! GDPR applies to any company, regardless of where you are located, if it targets or collects data from EU citizens.[7] Therefore, if you wish to collect biometric data from EU citizens, you must comply with GDPR or fall into one of their categorical exceptions to the GDPR’s general denial of collection of PII, mainly consent. In addition to obtaining consent, the GDPR requires companies to allow EU citizens the right to erasure of their PII from the company’s records.[8]

The United States’ regulatory framework is more complex due to the fact that there is no overarching, all-encompassing federal level data privacy law. Instead, each individual state has the right to enforce their own data privacy regulations.[9] For example, there is the California Consumer Privacy Act (CCPA), which regulates the use of PII of the citizens of California. CCPA allows Californians the right to know what PII is being collected, the right to delete this PII, and the right to opt-out of the sale of such PII.[10] PII, includes biometric data.[11]

California is just one of the numerous states within the US that have already enacted such forms of data privacy law. Elsewhere, Illinois enacted the Biometric Information Privacy Act (BIPA), the first state law to specifically regulate biometric data and provide a private cause of action for consumers,[12] and New York reintroduced the New York Privacy Act (NYPA)—a comprehensive consumer privacy act similar to CCPA—in May of 2021.[13] As the use of biometric data continues to grow, it is likely that other states will implement similar data privacy regulations in the near future.[14] Biometric data is inherently useful, and the number of ways companies can implement it into their everyday business functions, and their respective intellectual properties, will inevitably rise, especially following the shift to a virtual lifestyle due to the COVID-19 pandemic. However, if companies wish to avoid lofty money damages—damages as high as €20 million in the case of the GDPR alone[15]—it is important that the data privacy regulatory landscape is closely watched and strictly adhered to. For more information regarding biometric data and its ethical use, visit the Biometrics Institute’s organization webpage


[1] See Brett Beranek, AI and Biometrics in 2021: Predictions, trends, and insights for what may lie ahead, Security Magazine (Feb. 9, 2021), https://www.securitymagazine.com/articles/94548-ai-and-biometrics-in-2021-predictions-trends-and-insights-for-what-might-lie-ahead.

[2] Preeti Wadhwani & Saloni Gankar, Biometrics market will exceed USD 50 billion by 2024, Global Market Insights (Aug. 10, 2017), https://www.gminsights.com/pressrelease/biometrics-market.

[3] Ryan N. Phelan, Data Privacy Law and Intellectual Property Considerations for Biometric-Based AI Innovations, Security Magazine (Jun. 12, 2020), https://www.securitymagazine.com/articles/92559-data-privacy-law-and-intellectual-property-considerations-for-biometric-baseed-ai-innovations.

[4] Id.

[5] Id.

[6] Id.

[7] Id.

[8] See GDPR Art. 6 §1(a) & Art. 17 §1.

[9] Angelique Carson, Data privacy laws: What you need to know in 2021, OSANO (last updated Jul. 20, 2021), https://www.osano.com/articles/data-privacy-laws.

[10] California Consumer Privacy Act (2018), State of California Dept. of Justice (last visited Jul. 27, 2021), https://oag.ca.gov/privacy/ccpa.

[11] Id.

[12] Woodrow Hartzog, BIPA: The Most Important Biometric Privacy Law in the US, Regulating Biometrics: Global Approaches and Urgent Questions 96, 96-7, https://ainowinstitute.org/regulatingbiometrics-hartzog.pdf.

[13] Maya Atrakchi, Jason Gavejian, Joseph Lazzarotti, & Damon Silver, Is New York Next? A Comprehensive Consumer Privacy Bill Reintroduced, JDSupra (May 26, 2021), https://www.jdsupra.com/legalnews/is-new-york-next-a-comprehensive-5376834/.

[14] Ryan N. Phelan, Data Privacy Law and Intellectual Property Considerations for Biometric-Based AI Innovations, Security Magazine (Jun. 12, 2020), https://www.securitymagazine.com/articles/92559-data-privacy-law-and-intellectual-property-considerations-for-biometric-baseed-ai-innovations.

[15] Elizabeth C., Costs of Non-Compliance with Privacy Laws, Privacy Policies (May 21, 2021), https://www.privacypolicies.com/blog/costs-non-compliance-privacy-laws/#Gdpr.

For Innovation Law Center Clients, ILC Research Reports Pave the Road to Success

By Dylan Williams

As the Fall 2021 semester draws to a close, College of Law Innovation Law Center (ILC) students are starting to wrap up their client presentations. Under faculty supervision, the students have spent the semester researching the best possible methods of commercialization for new technologies and drafting presentations to the ILC clients on the technologies’ intellectual property, regulatory, and marketing landscapes.

Novel technologies the students addressed this semester cover a range of concepts in medical technology and mechanical engineering:

mindtrace.ai | LinkedIn

MindTrace

MindTrace is a software-based tech company with a potentially wide range of neurosurgical applications. The developers are sophisticated medical professionals and programmers who have worked together to create a product that solves a problem encountered regularly by neurosurgeons when planning surgeries.

This technology is the subject of a pending patent, and ILC research is focused on estimating both the protectability of their invention under patent and trade secret laws and the prospects for producing and selling the product without infringing on the intellectual property competitors.

Endeavos Innovations Inc. Logo

Endeavos

Endeavos Innovations, Inc. is a mechanical and systems engineering consulting company, focusing on research innovation and product development. Specifically, Endeavos has developed a method/algorithm that calculates the precise preload necessary to optimally tighten industrial style bolts that are used in, for example, wind turbine assemblies.

The novel method allows for much greater precision when fastening components together and requires less manpower during installation, thereby resulting in higher revenues due to less field costs and/or maintenance and repairs. Endeavos’ method applies to a variety of energy and aerospace industries, including oil and gas pipeline, aerospace/mechanical, as well as wind turbines.

Endeavos is currently working with the ILC to determine the best method of IP protection: patent, trade secret, or both. ILC researchers are also examining possible strategy for commercial exploitation; for instance, whether Endeavos may potentially license its technology to third parties for enhanced market stability. Foreign regulations are also important to consider in determining whether international sales are an option.

Wolf Medic

Dr. Blake Lopez, a medical doctor at Weill Cornell in New York City, has developed a chest compression device for CPR capable of integrating enhanced biological indicators.

Prior to coming to the Innovation Law Center, Dr. Lopez filed two provisional patents with the US Patent and Trademark Office on his technology. He seeks review on the strength of his applications as well as an assessment on the relevant regulatory landscape and marketability of his device. The ILC report will aid Dr. Lopez in his goal to bring a safer, more accurate CPR device to the market.

Brian J. Gerling L’99 Named Executive Director of Innovation Law Center

Brian J. Gerling L'99

Syracuse University College of Law alumnus Brian Gerling L’99 is the new Executive Director of the Innovation Law Center (ILC). Gerling, who brings nearly two decades of intellectual property and commercial litigation experience to the role, takes the helm from M. Jack Rudnick L’73, who will remain engaged with the ILC as Senior Advisor.

Gerling most recently served the College of Law as an adjunct professor, teaching innovation law and technology law courses. In his new role, he will continue to teach as a member of the College of Law faculty. He also will retain his Of Counsel affiliation with Syracuse, NY-based law firm Bond, Schoeneck & King PLLC, where his practice focuses on IP, data privacy, emerging technology, and economic development.

Gerling serves on the Board of the Central New York International Business Alliance and on the Technology Council of the Manufacturers Association of Central New York, and he holds other ex officio board positions. In addition to his J.D., cum laude, from Syracuse University College of Law, Gerling holds a B.S. in Biology from the State University of New York at Binghamton.

As ILC Executive Director, Gerling oversees the center’s applied learning course—the Innovation Law Practicum—in which students from the College of Law and across Syracuse University gain practical skills and experience assisting companies with IP, regulatory, and market landscape research, as well as capital sourcing.

Gerling will work with Professor Shubha Ghosh and the Syracuse Intellectual Property Law Institute to administer the College’s Curricular Program in Technology Commercialization Law Studies. He also will direct the New York State Science and Technology Law Center (NYSSTLC), which is a grantee of the Empire State Development´s Division of Science, Technology, and Innovation (NYSTAR).

“As one of ILC’s brightest alums and biggest advocates—and a former student of its founder Ted Hagelin—Brian brings expertise and enthusiasm to the center. His deep and wide-ranging practice experience in IP law, and especially emerging technology, will enrich our students’ educational experiences,” says College of Law Dean Craig M. Boise. “I look forward to working with Brian to build on Jack Rudnick’s remarkable work expanding ILC and NYSSTLC so that our students continue to get real world experience working with a wide variety of technology clients.”

“It is an honor to direct the ILC; it has had such a profound effect on my career. It was my interest in marrying my passion for biotechnology and law that brought me to Syracuse, and Professor Hagelin left an indelible impression on me. I have used the principles and values that I learned at Syracuse Law throughout my career,” says Gerling. “To return to my alma mater in this capacity and to continue Ted’s and Jack’s legacies are both a privilege and deeply satisfying honor. I look forward to working with students interested in technology commercialization and the innovation economy and giving them the skills and practical tools they need for successful careers.”

Jack Rudnick became ILC’s second director in 2013. Since then, he has dramatically increased the number of clients served by the ILC and NYSSTLC, across green and clean tech, biotech, autonomous systems, and other industries; expanded the range of innovation ecosystem partnerships among ILC and New York-based economic development organizations; and helped launch graduates into careers at companies such as Deutsche Telekom, Eli Lilly, IBM, Johnson & Johnson, Proctor & Gamble, and the US Patent and Trademark Office.

Who’s In Charge? Addressing the US Supreme Court’s Decision in United States v. Arthrex Inc.

By Cecily Capo

In the recent case of United States v. Arthrex Inc., the US Supreme Court held in a 5-4 decision that the appointment of administrative patent judges as “principle officers” by the Secretary of Commerce violates the Appointments Clause of the United States Constitution.

Before this ruling, administrative patent judges, or APJs, sat on the Patent Trial and Appeals Board (PTAB) by appointment of the US Secretary of Commerce, and not by the President directly, to preside over adversarial proceedings, called an inter partes review.

Essentially challenges to the validity of a granted US patent, inter partes reviews are akin to trials and consist of the PTAB re-examining an issued US patent and rendering an opinion as to whether the patent is valid or not, in some cases stripping patent owners of their rights. A common misconception is that once a patent is obtained, the inventor or assignee is free from challenges, but as shown in Arthrex, patents are constantly under review and capable of being invalidated.

In 2015, Arthrex—a global medical device company—received a US patent for a device that reattached soft tissue, known as the ’907 patent. Arthrex later accused competitors—Smith & Nephew, Inc. and ArthroCare Corp.—of infringing the ’907 patent. In response, and as is their right, the accused infringers commenced an inter partes review of the ’907 patent. As a result, the APJs of the PTAB were called upon to decide whether Arthrex’s patent claims were invalid.

The PTAB ruled that the ’907 was invalid. Arthrex appealed that decision to the US Circuit Court for the Federal Circuit, arguing—among other issues—that the APJs were not appropriately appointed under the Appointments Clause in the US Constitution. The Appointments Clause gives the President the authority to “nominate and … appoint Officers of the United States,” including, for instance, Ambassadors and Justices of the Supreme Court.

It was Arthrex’s view that APJs must be appointed by the President, and that this exclusive authority could not be delegated to the Secretary of Commerce. The Federal Circuit held in favor of Arthrex, ruling that the appointment of APJs was indeed unconstitutional under the Appointments Clause of the Constitution.

The Federal Circuit reasoned that APJs are considered “principle officers” and, therefore, could only be appointed by the President. The portion of the Patent Act that restricted the removal of APJs was stricken by the court. The Supreme Court then granted certiorari and Chief Justice John Roberts issued the majority opinion for the Court. The majority held that the United States Patent and Trade Office’s Director has the “ultimate authority” to review the final outcome of an inter partes review of a patent, not the APJs. The Court relied on Edmond v. United States to justify their decision, which stated that inferior officers—i.e., the APJs—must be subject to some sort of supervision by an officer appointed by the President and confirmed by the Senate, i.e., the USPTO Director. It is a violation of the US Constitution to impose restrictions on the Director and allow the APJs to issue decisions without the Director’s supervision.

Additionally, since Congress has given the power and duties of the Patent and Trade Office to the Director in §3(a)(1), it follows that the Director has the authority to review PTAB decisions. The majority reiterated that the Director does not have to review every PTAB decision, but the Director must have the ability to as needed. Justice Breyer issued a concurring opinion, joined by justices Sotomayor and Kagan, approving of the remedy but disagreeing with the overall holding.

In short, this ruling implements an additional step for patentability disputes requiring that the APJ’s decisions are reviewed by the USPTO Director before the decision can then be appealed to the Federal Circuit.

Since the Arthrex ruling, various commentators and scholars have argued that this ruling could either have a chilling effect or further incentivize parties to file for an inter partes review of a granted US patent. Some posit that it may become part of an anti-competitive strategy to simply challenge the validity of the patent because of the amount of time it will take to receive a final decision, which may thereby reduce the overall lifespan of the challenged patent.[1]

On the other hand, this additional step in the appellate review process may benefit patentees because it will significantly increase the amount of time and costs associated with challenging a patent, and these factors may force challengers to reconsider whether such a strategy is prudent.   


[1] IP Watchdog, “Industry Reacts to the Supreme Court’s Arthrex Ruling: Chaos Averted – or Just Delayed?” (June 21, 2021).

AI v. IP: If You’re Here and I’m Here, Then Who’s Flying the Plane?

By Kant Nguyen

Companies use artificial intelligence (AI) for conducting business and invest billions into the technology. In fact, research reveals a greater than 300% increase in investment in AI in 2017 compared to the previous year, and another study estimated the AI market will grow from $8 billion in 2016 to more than $47 billion in 2020.[1] Moreover, a recent report predicted the global AI market to be 228 billion by 2026.[2]

This explosion in AI investment prompts questions: Why are businesses so interested in AI? And, how is AI understood in an intellectual property context?

Defined as “the capability of a machine to imitate intelligent human behavior,”[3] AI is a field of computer science that includes machine learning, deep learning, natural language processing, speech processing, and machine vision.[4] AI tools automate decision making using programming rules and training data sets.[5] In businesses, this involves the use of intelligent computer software with human-like capabilities to boost revenue, improve customer experience, increase productivity and efficiency, and drive business growth and transformation.[6]

A simple example of AI utilized in businesses is automated customer service chat bots, used by many major retail companies, such as Amazon, Target, and Wal-Mart. Instead of companies hiring customer support specialists, data used by AI can analyze sets of questions to redirect a prospective customer to an answer.[7] Even if a human agent needs to intervene and provide customer support, these “chatbots” cut the workload and allow agents to focus on more critical steps to finding solutions to customers’ problems.[8] Current studies show that in 2020, 85% of customer interactions were managed without a human.[9] On a global scale, AI researchers predict that there is a 50% chance of AI outperforming humans in all tasks in 45 years and of automating all human jobs in 120 years.[10]

One issue with the relationship between IP and AI is inventorship. Computer implemented inventions (CII) have yet to be recognized as an “inventor”. In the United States, under 35 U.S.C § 100(f), an “inventor” is defined as an individual—or if there is a joint invention, the individuals—who invented or discovered the subject matter of the invention.[11] As AI becomes more and more complex, there may be a situation in which potentially patentable subject matter is invented without human intervention. For example, what if an AI algorithm – without any human intervention – develops a new drug, a method of recognizing diseases in medical images, or a new blade shape for a turbine?[12]

However, the US Patent and Trademark Office (USPTO) rejected an attempt by a team of researchers from the University of Surrey to name an AI system as the inventor in two patent applications. USPTO concluded that the statutory provisions governing patents precluded a finding that the term “inventor” can refer to an AI system. The researchers argued that the AI system named “Device for the Autonomous Bootstrapping of Unified Sentience” (“DABUS”) had “identified the novelty of its own idea before a natural person did” and the AI system should be recognized as the inventor.[13]

The USPTO rejected this argument by analyzing the plain language of 35 U.S.C. § 101, which states that, “Whoever invents or discovers and new useful process, machine, manufacture, or composition of matter …” USPTO concluded that this language indicates that “whoever” must refer to a natural person.[14] Additionally, 35 USC § 115 refers to individual pronouns such as “himself” or “herself” when identifying possible inventors. Still, the USPTO left open the question of the extent of protections available to owners of inventions created with the assistance of AI.[15] This has also been the case in the European Union [16] It remains to be seen what the international system will do.

AI has completely revolutionized nearly every aspect of our lives. Today, marketing algorithms detect our interests and provide the targeted advertisements that we see when scrolling on social media. Produce we buy at the supermarket might be harvested from farms utilizing AI drones that can detect ideal growing conditions from weather and soil nutrients.

Whether AI will ever be recognized as a legitimate sole inventor of a patent may change over time, but right now it appears highly unlikely. USPTO has issued a request for comment on IP issues, and responses from the public included 56 individual responses and 43 from organizations, with near unanimity that AI is merely a tool, like any other tool used by humans, albeit one that is currently of philosophical interest to IP experts.[17]


[1] Gil Press, Top 10 Hot Artificial Intelligence (AI) Technologies,Forbes, https://www.forbes.com/sites/gilpress/2017/01/23/top-10-hot-artificial-intelligence-ai-technologies/?sh=f07d5f192878 (last visited July 27, 2021).

[2] Global Artificial Intelligence (AI) Market to Reach $228.3 Billion by 2026, https://www.prnewswire.com/news-releases/global-artificial-intelligence-ai-market-to-reach-228-3-billion-by-2026–301293951.html, 2021 (last visited 7/27/21)

[3] Get Ready for AI with MATLAB, https://www.mathworks.com/campaigns/offers/ai-with-matlab.html, (last visited 7/27/21)

[4] Maya Medeiros, Jordana Sanft, Artificial Intelligence and Intellectual Property Considerations, Financier Worldwide, https://www.financierworldwide.com/artificial-intelligence-and-intellectual-property-considerations (last visited 7/21/2021).

[5] Id.

[6] Business World, What Is Artificial Intelligence (AI) in Business?, https://www.businessworldit.com/ai/artificial-intelligence-in-business/#:~:text=Artificial%20intelligence%20in%20business%20simply,drive%20business%20growth%20and%20transformation. (last visited 7/21/2021).

[7] Abhishek Shanbhag, 10 Powerful Benefits of Chatbots in Customer Service, BotCore, https://botcore.ai/blog/10-powerful-benefits-of-chatbots-in-customer-service/ (last visited 7/21/2021).

[8] Id.

[9] Supra, note 2.  

[10] Grace Katja, Salvatier John, Dafoe Allan, Zhang Baobao, Evans Owain, When Will AI Exceed Human Performance? Evidence from AI Experts, Future of Humanity Institute, Yale University Department of Political Science, (2018).

[11] 35 U.S.C § 100(f)

[12] Frank A. Decosta, III, Ph.D, Aliza G. Carrano, Intellectual Property Protection for Artificial Intelligence, Westlaw Journal Intellectual Property, https://www.finnegan.com/en/insights/articles/intellectual-property-protection-for-artificial-intelligence.html (last visited July 29, 2021).

[13] Imogen Ireland, Jason Lohr, ‘DABUS’: The AI Topic that Patent Lawyers Should be Monitoring, https://www.managingip.com/article/b1n8q624s4vyv4/dabus-the-ai-topic-that-patent-lawyers-should-be-monitoring (last visited July 27, 2021).

[14] Jones Day, Reboot Required: Artificial Intelligence System Cannot Be Named As An Inventor Under U.S. Patent Law, USPTO Says, Jones Day, https://www.jonesday.com/en/insights/2020/05/reboot-required-artificial-intelligence-system-cannot-be-named-as-an-inventor-under-us-patent-law-uspto-says (last visited July 27, 2021).

[15] Id.

[16] AA Thornton, An interview with Mike Jennings of AA Thornton—Patenting AI and computer simulation, https://www.aathornton.com/patenting-ai-computer-simulation/, (last visited 7/21/2021)

[17] Christopher King, Inventorship, Patenting and AI: The Public Comments on Patenting Artificial Intelligence Inventions, JD Supra, https://www.jdsupra.com/legalnews/inventorship-patenting-and-ai-the-15657/ (last visited 7/28/2021).