(of a bad or harmful act) intentional; deliberate.
“willful acts of damage”
There was a time courts treated willful infringement simply as an act of intentionally copying a patented invention. The onus was on the plaintiff to present convincing and clear evidence of an obvious infringement. Things changed; the alleged infringer now had to build a record to show that it did not act in bad faith. In 2016, the US Supreme Court issued an opinion wherein they stated that the Patent Act provides for enhancement of damages up to three times in case infringement is proved.
You can no longer ignore the infringement notice; it would be considered as a case of willful infringement!
Whether Willful Infringement or Not – Notice is here. Now What?
The logical first step would be to check the following:
Is the notice from a genuine patent holder or a patent troll?
How strong is the subject patent?
Does it really infringe?
What’s the existing prior art?
Has it genuinely been overlooked by the innovation team?
Was the innovation very easily available?
Did it not occur to the development team that something so easily available might be patented?
Once you figure out if there is any merit in the notice, it’s time to decide which route to take – settle this dispute or fight the good fight in the court?
A couple of things to remember
A settlement is almost always a good idea. Only if you see merit in the infringement notice you have received.
Taking the court route is extremely resource heavy. It will drain your enterprise of time, energy and of course, money. It might be worth depending on what’s at stake.
If you, after weighing all considerations, believe that an out of court settlement works better for you, there won’t be any need to respond to the notice. Make sure that your settlement agreement is air-tight when it comes to court claims against you though.
If you do choose to go down the legal route through courts, you must reply to the notice.
Check Patent Strength
Wonder if there’s a quick and effective way to help you decide the route? A tool that helps you gauge the strength of the patent without even employing your IP team? The IP resources should be saved to look into the matter only if the subject patent appears real strong.
Imagine a search tool that can access any technical information out there – patent as well as non-patent literature. A search tool that has the most advanced algorithm to find you only the most relevant results. To top it all – conducting search on such a platform is a piece of cake. Sounds unbelievable?
We hear you, however it’s possible to create such a tool with the advances in AI capability to interpret the patent language. In fact we’ve taken the first step towards building such a tool. We call it PQAI – Patent Quality Through Artificial Intelligence.
PQAI is a collaborative initiative that aims to leverage AI to create a tool we just described. We envision – “A universal repository of humanity’s entire technical knowledge efficiently accessible to everyone and anyone.”.
At the moment, PQAI is far from perfect but it’s definitely promising. We say that with confidence because of the results that various validation test cases we have run have given us. A few months ago, we identified some IPR cases and ran the subject patents through PQAI. In some of these cases we observed that PQAI was able to find the prior art cited by the sued party to invalidate the subject patent. We’re sharing one of those cases with you right here:
Facebook VS Villmer LLC Inc
Facebook had received an infringement notice over Oculus Go from Villmer. We used PQAI to run a prior art search to see if it could have helped locate prior art. It gave us results that matched the prior art that was submitted to have the patent invalidated.
The patent that was the subject matter of the litigation bore the number US9618747. The patent broadly pertains to head-mounted displays. Villmer’s infringement allegations focused on Facebook’s head-mounted virtual reality (VR) devices, the Oculus Go and the Oculus Quest. The ’747 Patent was valid, enforceable, and was duly issued in full compliance with
We picked up claim 1 from patent number US9618747 and pasted it in the PQAI query box. Here’s a screenshot of one of the prior art that Facebook listed during IPR to have ‘747 invalidated.
Here’s the prior art PQAI spotted against our search for Claim 1 from ‘747. The spotted patent bears no. US2012005053A1, one of prior arts listed by Facebook:
PQAI is a search tool that is a work in progress. We would like to see it get to a stage where prior art like this ranks higher and results are even more efficient. And we are constantly working toward perfecting the system.
Get Involved – Join the PQAI Initiative
PQAI is a collaborative initiative to build an AI-powered prior art search tool accessible to all involved. We would love all stakeholders to come forward and join the initiative. You as a corporate can contribute too! The question is why would you….
Well with PQAI, we aim to create a more stable and transparent patent ecosystem for corporations. We believe it will make R&D investments more predictable, increase confidence in patents, and make risks and opportunities more visible. We could use all the resources we can get in making this initiative a success. You could be part of this revolution by funding the development of the tool. In return, you will give to yourself, and the world at large a system to file better patents.
Disclaimer – “The statements and views expressed in this post are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”
If our era is the next Industrial Revolution, as many claim, AI is surely one of its driving forces.
– Fei-Fei Li
AI is no more limited to sci-fi movies. The endeavor to replicate or simulate human intelligence in machines has led to AI being mainstream in the last decade. AI has left a lasting impact on all our lives. From being a figment of our imaginations to becoming an intrinsic part of our every day, the AI revolution is real and is here to stay.
We looked back at 2020 and put together a list of the top 20 inventors to Artificial Intelligence.
An Application Architect and seeker of solutions, Sarbjit Rakshit is an IBM Master Inventor with a degree in mechanical engineering from the Indian Institute of Engineering, Science and Technology.
He was awarded 163 U.S. patents in 2019, the highest ever awarded to a citizen of India in a single year. His patent portfolio contains 359 patents in Artificial Intelligence globally belonging to 271 unique patent families.
The most valuable patent in Sarbajit’s portfolio is US20160070439A1 – Electronic commerce using augmented reality glasses and a smartwatch. This patent family is the most cited (47 times), by companies Ariadne’s Thread (USA) Inc., Microsoft Technology Licensing Llc, Siemens Ag, Ebay Inc, Lucyd Ltd.
Before we look at the rest of the list, here’s an interesting insight. 11 of the top 20 AI inventors are either currently at StradVision or have worked there previously. 10 of these inventors are co-inventors on a patent. Not just any patent, it’s their most cited patent. Let’s find out what StradVision does and what their most cited patent is about.
StradVision is a fairly new company, founded in late 2014. Their goal is to bring powerful and safe ADAS (Advanced driver-assistance systems) & self-driving technology to the masses. StradVision’s technology utilizes a novel perception algorithm allowing autonomous vehicles to reach the required level of safety, accuracy, and driver convenience. This is achieved through safe & reliable real-world object detection, tracking, segmentation, and classification. They have an auto labeling system that produces training data with minimal human input, and a semi-supervised learning-based training tool, enabling autonomous vehicles to detect and perceive environments in real-time.
The most cited patent for these 10 inventors is US10169679B1. The patent is for – “Learning method and learning device for adjusting parameters of CNN by using loss augmentation and testing method and testing device.
Yongjoong Kim, Woonhyun Nam, Sukhoon Boo, Myungchul Sung, Donghun Yeo, Wooju RYU, Taewoong Jang, Kyungjoong Jeong, Hongmo Je, Hojin Cho are co-inventors on the said patent.
The said patent family has been cited 27 times, by companies Didi Res America Llc, Stradvision Inc, and Beijing Didi Infinity Technology. The patent’s geographical coverage extends to the United States, China, Japan, and Korea.
Wooju Ryu is a Korean inventor and holds a master’s degree in Computer Engineering from Pohang University of Science and Technology.
He is presently an Algorithm Engineer at StradVision and works in areas of Deep Learning, Computer Vision, ADAS, Text Recognition and Automatic Driving. He has been associated with Intel, Olaworks, and Samsung as a Senior Researcher between 2007 and 2016.
His patent portfolio consists of 831 patents in the AI domain globally, which belong to 267 unique patent families.
Woonhyun Nam is a Korean inventor and holds a bachelor’s degree in Computer Science Engineering and a Doctor of Philosophy (Ph.D.) Computer Science and Engineering from the Pohang University of Science and Technology.
He is presently the Director, Lead of Algorithm Engineering at StradVision, Inc. His work profile is deeply seated in AI, with him being responsible for engineering, researching, investigating, and deploying algorithms across company products and services.
His portfolio consists of 826 patents in the AI domain globally which belong to 266 unique patent families. Most of his inventions are in the field of Instruments Technology.
Hongmo Je is a Korean inventor and holds a degree in Computer Science from the Pohang University of Science and Technology.
Presently, he is the CTO of Stradvision and leads the RnD Integration/Engineering Team developing camera-based perception SW stack for ADAS/Autonomous Driving applications. He has previously been the Engineering Manager at Intel and the head of RnD at Olaworks.
Hongmo Je’s patent portfolio consists of 824 patents in the Artificial Intelligence (AI) domain globally which belong to 264 unique patent families. He holds 256 patents in the Instruments domain.
Donghun Yeo is a Korean inventor and holds a bachelor’s degree in Computer Science and a Ph.D. in Computer vision from Pohang University of Science and Technology.
Yeo is presently a Senior Researcher at the Hana Institute of Technology. Previously, he was an algorithm engineer at StradVision.
Yeo’s patent portfolio consists of 824 patents in the Artificial Intelligence domain globally belonging to 264 unique patent families. The major chunk of his portfolio consists of innovations in Instrument Technology (255).
Myungchul Sung is a Korean inventor and holds a master’s degree in Computer Science Engineering from the Pohang University of Science and Technology. He is an Algorithm Engineer at StradVision.
He holds 824 patents in the Artificial Intelligence domain globally which belong to 264 unique patent families. The largest chunk of his patent portfolio is innovations in the Instruments Technology domain, amounting to 255.
Yong-Joong Kim is a Korean inventor with a master’s degree in Computer Science from Yonsei University. He is presently an algorithm engineer at Stradvision. In the past, he has been a researcher at Pohang University of Science and Technology, and an IT coordinator at the National Institute for International Education. He has interned at the MARG Lab at Seoul National University.
Taewoong Jang is a Korean inventor with a bachelor’s degree in Physics & Math, who graduated Magna Cum Laude from the Pohang University of Science and Technology. He was an Algorithm Engineer at StradVision and is now a Software Engineer at Coinone.
He holds 824 patents in the Artificial Intelligence domain globally across 264 unique patent families. The majority of his patent portfolio (255 patents) are innovations related to Instruments Technology.
Kyungjoong Jeong is a Korean inventor who is an Algorithm Engineer at Stradvision. He graduated from the Ulsan University as an Electrical Engineer as the Dean’s Honoured Graduate. He has previously been at Samsung Techwin and a Researcher at POSTECH from where he earned his Master’s degree. His research interests are in Deep Learning, Computer Vision, Machine Learning.
Kyungjoong Jeong’s patent portfolio has 824 patents in the Artificial Intelligence (AI) domain globally which belong to 264 unique patent families. 255 of these patents are innovations in the field of Instruments Technology.
Hojin Cho is a Korean inventor and holds a degree in Computer Science Engineering and Doctor of Philosophy (Ph.D.) Image Processing, Computer Graphics, and Computer Vision from the Pohang University of Science and Technology. He is an Algorithm Engineer at StradVision.
His portfolio consists of 824 patents in AI belonging to 264 unique patent families, of which 255 are in the sub-domain of Instruments Technology.
Sukhoon Boo is a Korean inventor associated with StradVision Inc. His portfolio consists of 824 patents in AI belonging to 264 unique patent families, of which 255 are in the sub-domain of Instruments Technology.
Hak-Kyoung Kim is a Korean inventor and is an algorithm engineer affiliated with Stradvision Inc.
His portfolio consists of 758 patents in Artificial Intelligence globally, belonging to 251 unique patent families. He has 242 innovations in the domain of Instruments Technology.
The most valuable patent in Hak-Kyoung Kim’s portfolio is US10229346B1 –
Learning method, learning device for detecting object using edge image and testing method. This is his most cited patent having been cited 13 times. The patent’s geographical coverage is in the United States, China, Korea, and Japan.
Kye-Hyeon Kim is a Korean inventor and holds a bachelor’s degree in Computer Science and a Ph.D. in Computer Science (Machine Learning) from the Pohang University of Science and Technology.
Currently, he is the Chief Research Officer at Superb AI Inc. He has previously been associated with StradVision as an Algorithm Engineer, SK Telecom as a Research Scientist, Intel, and Samsung as a Senior Software Engineer.
He holds 754 patents in the Artificial Intelligence domain globally which belong to 251 unique patent families. The largest chunk of his innovations is in the domain of Instruments Technology (242).
The most valuable patent in his portfolio is US10229346B1, same as Hak-Kyoung Kim. They are co-inventors with a few more inventors on this patent.
John M Ganci Jr
John M Ganci Jr is an American inventor affiliated with IBM. His patent portfolio has 223 patents filed globally which belong to 145 unique patent families. He holds 102 patents in the Instruments Technology domain.
John M Ganci Jr.’s most cited patent is US20160070439A1, same as Sarbajit Rakshit. They are co-inventors on this patent with a few others.
Craig Trim is an American inventor and holds a Bachelor’s degree in Computer and Information Sciences from Cal Poly Pomona and a Master of Science, MS, Data Analytics from Capella University.
He is currently with Causality Link as a Senior Engineer. His past experiences include being at IBM as a Lead Data Scientist and Dristi as a CTO.
Trim’s patent portfolio consists of 223 patents in the AI domain globally which belongs to 144 unique patent families. He holds 116 patents in the Instruments Technology domain.
Craig’s most cited patent is US20160070439A1, Craig is a co-inventor on this with Sarbajit Rakshit, John Gangci and few others.
Corville O Allen
Corville Allen is an American inventor and holds a degree in Computer Science, Mathematics from Lona College. He has 17 years of experience in Enterprise Software Development including web-based software, Application Server infrastructure, Business Application Integration, and Cognitive Systems. He is a Senior Technical Staff Member and Master Inventor, 5-time North Carolina Inventor of the Year at IBM.
His specialities include Application Integration, API Development, Agile Methodologies, SDLC, WebSphere, Connectivity, Architecture.
His patent portfolio consists of 232 patents globally which belong to 142 unique patent families. He holds 120 patents in the domain of Instruments Technology.
Allen’s most valuable patent is US9369488B2 – Policy enforcement using natural language processing. The said patent family has been cited 119 times by company Onetrust Llc. The patent’s geographical coverage extends to the United States and China.
Martin G Keen
Martin Keen is an American inventor and with a degree in Computer Science from Southampton Solent University. He has been associated with IBM as a Technical Content Creation Leader & Video Production Leader.
Martin is an IBM Master Inventor and was conferred the Honorary award in 2016 by IBM. He holds over 200 patent applications issued specializing in areas such as big data, cognitive systems, mobile devices, and predictive analytics. Martin is a Technical Content Creator Leader including the development of dozens of published books. He is also a Videographer and Video Production Lead specializing in corporate video creation and online learning course development.
His patent portfolio has 201 patents filed globally which belong to 138 unique patent families. He holds 90 patents in the domain of Instruments Technology.
The most valuable patent in Martin Keen’s portfolio is US9473819B1 – Event pop-ups for video selection. The said patent family has been cited 16 times by companies IBM, Sony Interactive Entertainment Llc, Amazon Tech Inc, Dish Network Llc.
Jeremy Fox is an American inventor who holds a degree in BBA, Computer Information System from the University of Texas at El Paso. He has been associated with IBM since 2001. He has been accorded the title of Master Inventor at IBM.
Jeremy has also been serving as the IBM Commerce IDT Chair for over 3 years.
His patent portfolio consists of 128 patents in AI globally belonging to 110 unique patent families. 68 patents have been filed in the domain of Instruments Technology.
The most valuable patent in Jeremy Fox’s portfolio is US9826500B1 – Preventing driver distraction from incoming notifications – cited 8 times by Nocell Technologies Llc.
Don’t we agree – those smartphone notifications while driving can be dangerously distractive? Jeremy Fox’s thought process behind this patent is quite appreciable. His ingenious idea is to adjust the intensity of notification alerts based on the driving conditions is remarkable. For example: changing loud beep to just a vibration alert for a certain type of notification. A few examples of conditions include driving:
in fair/poor/good weather
Yasuaki Yamagishi is a Japanese inventor who is currently a Senior Research Scientist at Sony Corporation.
His patent portfolio there consists of 614 patents globally which belong to 104 unique patent families. He has 99 patents in the domain of Electronics Communication Technique.
His patent US10178148B2 – Content supply device, content supply method, program, and content supply system – is his most cited (13 times), by Sony Corporation, Saturn Licensing LLC. The patent’s geographical coverage extends to the United States, Brazil, India, China, and Russian Federation.
Joydeep Ray is an American inventor with a master’s degree in Computer Engineering from the Carnegie Mellon University. He is a Graphics Architect at Intel Corporation and has previously been associated with AMD as an MTS Design Engineer, Standard Performance Evaluation Corporation as a Technical Representative in CPU Sub-committee, Carnegie Mellon University as a Research Assistant, and IBM as a Design Engineer.
Ray’s patent portfolio has 293 patents in the Artificial Intelligence domain globally belonging to 84 unique patent families. 77 inventions are related to instruments belonging to the Instruments Technology domain.
His patent US10108850B1 – Recognition, reidentification, and security enhancements using autonomous machines – is his most valuable. It has been cited 10 times and has geographical coverage in the United States and China.
Let’s Sum it Up
It was interesting to note that most inventors among the top 20 AI inventors across the globe are Korean. 12 out of 20 are either working at StradVision or have worked at StradVision in past. It’s intriguing to know what StradVision is upto. There is a commonaliity in many of these inventors’ most cited patents as well. It’s the object recognition in a video.
Country of Origin
Present Place of Work
Past Places of Work
Intel, Olaworks, Samsung
Hana Institute of Technology
Superb AI Inc.
StradVision, SK Telecom, Intel and Samsung
John M Ganci Jr
Corville O Allen
Martin G Keen
Advanced Micro Devices Inc., IBM
What kindled your interest in this article. Are you currently working on any AI projects?
Since you showed an interest in this article, we wish to share an AI-based initiative with you. It’s called Patent Quality through Artificial Intelligence. The initiative is focussed on inventors and the core value that drives the initiative is “Prior Art Search for Everyone”. At PQAI, we studied patent rejection stats. We observed that most patents receive 102/103 type rejections. This means the invention described in the patent is either not new or obvious based on a combination of one or more previous inventions/literature. Many inventors apply for patents without conducting a thorough prior art search. Usually, this is because there is a lack of budget or patent searching skills. Also, it’s quite difficult to search for non-patent literature while performing a prior art search. These reasons triggered in us an urge to develop an inventor friendly prior art search engine. And what better than AI to turn to for help?
If you feel the pain inventors go through on receiving a patent rejection, we urge you to join the initiative and contribute the best way only you can!
On May 5, 1809, Ms. Mary Dixon Kies became the first woman to receive a patent in the United States of America for her technique of weaving straw with silk. Women, from time immemorial, have been innovating and making breakthroughs in the technological world. From windshield wiper to coffee filter paper, women have contributed significantly with their inventions to make this world a better place.
March is observed as the women’s history month, to reflect on the often-overlooked contributions of women in history. To mark women’s history month, we honor the contributions of these 15 female inventors who have been driving innovation.
#1. Catia Bastioli
Ms. Catia Bastioli is an Italian inventor, chemist, researcher, and entrepreneur. She holds a degree in pure chemistry from the University of Perugia, Italy. Ms. Bastioli also attended the School of Business Administration (“Alti Potenziali Montedison”) at the Bocconi University in Milan. Ms. Bastioli is the CEO of Novamont S.p.A. She is also the president of Terna Spa of the Kyoto Club Association and of the Italian Technological Cluster of Green Chemistry SPRING and member of the Board of Directors of Fondazione Cariplo.
Awards & Honors:
European Inventor of the Year Award in 2007 in the category “SMEs/research”
Honoris Causa Degree in Industrial Chemistry (2008, University of Genoa)
Honorary title of Knighthood (“Cavaliere dell’Ordine al Merito della Repubblica Italiana”), 2013
Honoris Causa Degree in Materials Engineering (2016, University of Palermo)
Appointed as “Cavaliere del Lavoro” by the President of the Italian Republic in 2017
Honoris Causa Degree in Business Economics (2018, University of Foggia)
Honorary Doctoral Degree in Civil, Chemical, Environmental, and Materials Engineering (2019, University of Bologna)
Her most valuable patent is US5412005A for biodegradable polymeric compositions based on starch and thermoplastic polymers.
Ms. Bastioli’s patent portfolio has 1291 patents globally which belong to 186 unique patent families. She is an individual inventor of 4 and a co-inventor in the rest of the 182 core patents.
#2. Esther Sans Takeuchi
Dr. Esther Sans Takeuchi is an American inventor. She completed her graduation from the University of Pennsylvania. She completed her Ph.D. in organic chemistry from Ohio State University, under the direction of Dr. Harold Shechter in 1981. She has been a Professor at the State University of New York at Buffalo since September 2007. Prior to this, she has worked with Electrochem as a Chief Scientist and at Greatbatch Inc. for more than two decades as a Director of Research & Development.
She has also served as a postdoctoral research associate in electrochemistry, first at the University of North Carolina at Chapel Hill from 1982 to 1983, and then at the State University of New York at Buffalo from 1983 to 1984.
Dr. Takeuchi is a member of the US National Academy of Engineering. After 40 years in industry and academia, she continues to work at the forefront of battery technology innovation.
Awards & Honors:
National Medal of Technology and Innovation in 2010 awarded by President Obama
European Inventor Award in 2018
The most valuable patent in Ms. Takeuchi’s portfolio is US4964877A for a non-aqueous lithium battery.
Ms. Takeuchi has 584 patents globally which belong to 153 unique patent families in her patent portfolio. She is an individual inventor of 5 and a co-inventor in the rest of the 148 core patents.
#3. Joy Mangano
Ms. Joy Mangano is an American inventor and entrepreneur. She was the president at Ingenious Designs LLC. She completed her graduation in business administration from Pace University.
In 1990 after growing frustrated with ordinary mops, Ms. Mangano developed her first invention, the Miracle Mop. It is a self-wringing plastic mop with a head made from a continuous loop of 300 feet (90 meters) of cotton that can be easily wrung out without getting the user’s hands wet. David O. Russell directed an Oscar-nominated movie based on her life, Joy. Ms. Mangano has also written a best-selling book, Inventing Joy which she says is for those who want to build a brave and creative life.
Named the Long Island Entrepreneur of the Year by Ernst & Young in 1997
Ranked number 77 on Fast Company’s list of the 100 Most Creative People in Business in 2009
Included in Fast Company’s list of the 10 Most Creative Women in Business in 2010
The most valuable patent in Ms. Mangano’s portfolio is US5722260A for reversible jewelry clasp for necklaces and/or bracelets.
Ms. Mangano’s patent portfolio consists of 121 patents globally which belong to 68 unique patent families. She is an individual inventor of 55 and a co-inventor in the rest of the 13 core patents.
#4. Helen Lee
Dr. Helen Lee is a medical researcher. She obtained her Ph.D. in biology, microbiology, and parasitology from Cornell University. Dr. Lee is the Associate Professor in Medical Biotechnology at the University of Cambridge. She is also the President and CEO of Diagnostics for the Real World Ltd (DRW), Sunnyvale, USA, and its wholly-owned subsidiary, DRW-Europe, Cambridge, UK. She has also worked with Abbott Laboratories from 1991 to 1995, as a General Manager, Probe Diagnostics Business Unit.
Awards & Honors:
National Honor Society of Sigma Xi, 1967
Who’s Who of American Men in Science, 1970
The Entrepreneurial Award (Abbott Laboratories), 1988
The Phoenix Award (Abbott Laboratories), 1991
Finalist, YWCA Women of Achievement Award, 1994
Best Diagnostic Innovation Award (Medical Futures Innovation Competition), 2003
Lord Lloyd of Kilgerran Award (British Foundation for Science & Technology), 2005
British Female Inventor in Industry Award, 2006
European Women of Achievement Award 2006
Asian Women of Achievement Award, 2007
Tech Museum of Innovation Award, 2007
European Inventor Award, 2016
Appointed as a judge for the European Inventor Award, 2019
Recognized on the Times’ Science Power List in May 2020
Her invention, the diagnostic kit SAMBA II is being repurposed for use in COVID-19 testing. The most valuable patent in Ms. Lee’s portfolio is US6521747B2 for haplotypes of the AGTR1 gene.
Her invention of mixing steel wire elements into concrete has improved the stability of structures where it is used and reduced building costs. This invention, which is patent no. US6235108B1 is the most valuable patent in her portfolio. Her invention increases the bending tensile strength of concrete by 32%, enabling more pioneering projects to be built.
Ms. Lambrechts patent portfolio has 232 patents globally, which belong to 28 unique patent families. She is an individual inventor of 10 and a co-inventor in the remaining 18 core patents.
#6. Ursula Keller
Dr. Ursula Keller is a Swiss inventor. She obtained her Ph.D. in engineering physics/applied physics from Stanford University.
Dr. Keller joined ETH Zurich as a professor of physics in 1993, where she leads the Ultrafast Laser Physics group. She currently serves as a director of the NCCR MUST (Molecular Ultrafast Science and Technology), an interdisciplinary research program supported by the Swiss National Science Foundation, bringing together 15 Swiss research groups in ultrafast physics and chemistry. She has published more than 330 peer-reviewed journal papers and 11 book chapters.
Awards & Honors:
Weizmann Women and Science Award, 2017
European Inventor Award, 2018 for laser technology in the category “lifetime achievement”
IEEE (Institute of Electrical and Electronics Engineers) Photonics Award, 2018
IEEE (Institute of Electrical and Electronics Engineers) Edison Medal, 2019
SPIE (the international society for optics and photonics) Gold Medal, 2020
The most valuable patent in Dr. Keller’s portfolio is US6834064B1 for the semiconductor saturable-absorber mirror technology used in mode-locking ultrafast solid-state laser systems.
Since 1983 she has had her own laboratory for molecular genetics at the University of Antwerp, and since 2005 is focussing her research on neurodegenerative brain diseases. She is an associate editor of the scientific journal Genes, Brain, and Behavior.
Dr. Broeckhoven has over 35 years of experience in molecular genetics research of neurodegenerative brain diseases such as Alzheimer’s disease, frontotemporal lobar degeneration, amyothrophic lateral sclerosis, lewy bodies disorders, and Parkinson’s disease.
Awards & Honors:
Belgian Quinquennial Prize of the Belgian National Science Foundation
Potamkin Prize (The Potamkin Prize for Research in Pick’s, Alzheimer’s, and Related Diseases),
The Arkprijs van het Vrije Woord
European Inventor Award 2011.
The most valuable patent in Dr. Broeckhoven’s portfolio is EP561087B1 for a mutated form of the beta-amyloid precursor protein gene.
Her patent portfolio has 77 patents globally which belong to 20 unique patent families.
#8. Margarita Salas
Late Dr. Margarita Salas (30 November 1938 – 7 November 2019) was a Spanish inventor. Margarita had graduated from the Complutense University of Madrid with a B.A. in chemistry and obtained a Ph.D. in 1963. She started her career in the US-based laboratory of Nobel-prize winner Severo Ochoa. She returned to her native Spain in 1967 to establish the country’s first research group in the field of molecular genetics.
Dr. Salas led the breakthroughs that have since made DNA testing fast, reliable, and used in a wide range of applications.
Awards & Honors:
Carlos J. Finlay Prize, UNESCO, 1991
Medal of Principality of Asturias, 1997
National Research Award Santiago Ramon y Cajal, 1999
L’Oreal-UNESCO Award for Women in Science, 2000
Selected among the 100 women of the twentieth century that paved the way for equality in the XXI Century by the Council of Women of the Community of Madrid, 2001
Isabel Ferrer Award of the Generalitat Valenciana, 2002
Gold Medal of the Community of Madrid, 2002
Grand Cross of the Civil Order of Alfonso X, the Wise, 2003
International Prize for Science and Research Cristóbal Gabarrón Foundation, 2004
Gold Medal for Merit in Work, 2005
Medal of Honor of the Complutense University of Madrid, 2005
Award of Excellence granted by FEDEPE (Spanish Federation of Women Directors, Executives, Professionals, and Entrepreneurs), 2006
First Spanish woman to become a member of the National Academy of Science (United States), 2007
Gold Medal of the College of Veterinarians of the Principality of Asturias, 2009
Title of Honorary Ambassador of the Spain Brand, category of Science and Innovation, which fails Leading Brands of Spanish Forum with the approval of the Ministry of Foreign Affairs and Cooperation, 2009
Women Leader Award, awarded by the Rafael del Pino, Aliter and Merck Foundation, 2009
Award “An entire professional life” of the Mapfre Foundation, 2009
Chemistry Excellence Award, awarded by the General Council of Associations of Chemists of Spain, 2014
Medalla Echegaray, the highest award from the Spanish Royal Academy of Sciences, 2016
ManchaArte Award 2018, 2018
European Inventor Award Lifetime Achievement Award and Audience Award by European Patent Office, 2019
The most valuable patent in Dr. Salas’s portfolio is US5198543A for an improved method for determining the nucleotide base sequence of a DNA molecule.
Her patent portfolio has 80 patents globally which belong to 19 unique patent families.
#9. Marissa Mayer
Ms. Marissa Mayer is an American inventor. Marissa studied symbolic systems and computer science with an emphasis on artificial intelligence, receiving a B.S. degree in 1997 and an M.S. degree in 1999 at Stanford University. She is the co-founder of Sunshine Contacts. She has worked with some of the major corporate giants like Walmart, Yahoo, and Google. Ms. Mayer designed the search interface of Google’s home page. During her tenure at Google, Ms. Mayer helped create a number of patented inventions related to web-browsing software, including a program that searches saved articles.
Ms. Mayer actively invests in technology companies, including crowd-sourced design retailer Minted, live video platform Airtime.com, wireless power startup uBeam, online DIY community/e-commerce company Brit + Co., mobile payments processor Square, home décor site One Kings Lane, genetic testing company Natera, and nootropics and biohacking company Nootrobox.
The most valuable patent in Ms. Mayer’s portfolio is US7096214B1 for a system and method for supporting editorial opinion in the ranking of search results.
Ms. Mayer has 63 patents globally which belong to 14 unique patent families in her patent portfolio.
#10. Annegret Matthai
Ms. Annegret Matthai is a German inventor, working with Audi AG, Germany. She is involved and working on inventions related to the motor industry. The most valuable patent in her portfolio is DE102008004049A1 for a laminated glass unit for use as a windshield in a motor vehicle.
Ms. Matthai has 32 patents globally in her patent portfolio, which belong to 13 unique patent families.
#11. Ann Tsukamoto
Dr. Ann Tsukamoto is an American inventor with a Ph.D. in microbiology and immunology from the University of California. She is a stem cell researcher, who started her career with SyStemix in 1989.
With her husband, Professor Irv Weissman, as co-patentee, Dr. Tsukamoto’s patent for stem cell isolation was awarded in 1991. Their discovery gave people with blood cancer another chance at life and has since saved hundreds of thousands of lives. Her work with Stem Cells, Inc. involves the isolation of liver and neural stem cells as they pertain to a variety of diseases.
Her most recent position was executive vice president for Scientific and Strategic Alliances at StemCells, Inc. During her 18-year tenure at StemCells, Dr. Tsukamoto led the scientific team that discovered the human central nervous system stem cell (HuCNS-SC®) and a second candidate stem cell for the liver and that transitioned the human neural stem cell into early clinical development in all three components of the CNS: brain, spinal cord, and eye. The biological potential and activity of these HuCNS-SC® cells were demonstrated in some patients and reflected results seen in preclinical rodents’ studies. The many challenges of developing a cell therapy in a small biotech firm led to the closure of StemCells, Inc., in August 2016.
She successfully invented the method to isolate blood stem cells in the body and obtained patent no. US5061620A.
This is the most valuable patent in her portfolio. Dr. Tsukamoto has 48 patents globally in her portfolio, which belong to 8 unique patent families.
#12. Laura Johanna van ‘t Veer
Dr. Laura Johanna van ‘t Veer is a Dutch Molecular Biologist and inventor of MammaPrint. Her research focuses on personalized medicine, to advance patient management based on knowledge of the genetic make-up of the tumor as well as the genetic make-up of the patient. She completed her Ph.D. in oncology and cancer biology from the Leiden University.
Laura is the Professor Laboratory Medicine and Director Applied Genomics Cancer Center at the UCSF (University of California San Francisco) since 2010. She has earlier worked with Agendia and the Netherlands Cancer Institute. Laura was also a Postdoctoral Fellow at Harvard Medical School(HMS) from 1989 to 1991.
Award & Honors:
European Society of Medical Oncology (ESMO) LifeTime Achievement Award, 2007
Second prize EU Women Innovator Award, 2014
European Inventor Award in the category Small and Medium-sized Enterprises, 2015
European CanCer Organization Clinical Research Award, 2017
Precision Medicine World Conference Luminary Award, 2020
Recognized as one of the ’32 Amazing Women Inventors’, a group of women who succeeded in fields that are overwhelmingly dominated by men
The most valuable patent in Laura Johanna van ‘t Veer’s portfolio is US7171311B2, for methods of assigning treatment to breast cancer patients.
In Laura Johanna van ‘t Veer’s patent portfolio there are 40 patents globally, which belong to 8 unique patent families.
#13. Macinley Butson
Ms. Macinley Butson is an Australian inventor and holds a bachelor’s degree in science from the University of Wollongong. She is the founder of Passionately Curious, which provides access and opportunity to STEM, sparking curiosity for a generation of young minds. Prior to starting Passionately Curious, Ms. Butson has worked with Scilutions Pty Ltd as a Director.
She is notable as the youngest female inventor and scientist. She came up with her first invention at the age of 6. Ms. Butson has received numerous awards and honors as an inventor.
Awards & Honors:
Marie Claire + Bumble Glass Ceiling Awards, 2019 – The Future Shaper award winner
Australian Stockholm Junior Water Prize Winner, 2019
Instyle and Audi Women of Style Awards Judges Choice Winner, 2019
Instyle and Audi Women of Style Next-Gen Innovator (Science) Award Winner, 2019
1st Place in Translational Medicine at Intel International Science and Engineering Fair
Australian Stockholm Junior Water Prize Winner
4th Place in Energy: Physical at Intel International Science and Engineering Fair
1st Place at the BHP Billiton Foundation Science and Engineering Awards
In Ms. Butson’s patent portfolio there are 6 patents globally and all the patents belong to unique patent families. She is an individual inventor of all 6 core patents. She invented an ultraviolet radiation sticker that measures the solar UV exposure required to sanitize drinking water, and a smart shield to protect women undergoing radiotherapy against excess radiation.
Ms. Patricia Billings is an American inventor and businesswoman. She completed her study in Arts at Amarillo College in Texas. Her detour from art into technology came in the late 1970s, when a swan sculpture, after months of work, fell and shattered. Ms. Billings, who knew that Michelangelo and other Renaissance sculptors used a cement additive to give their plaster longevity, set out to create a modern equivalent.
Her specialty was plaster of Paris sculptures and Ms. Billings filed several patents for building materials including modular wall panels and roofing tiles.
The most valuable patent in Ms. Billings’s portfolio is US5647180A for a fire-resistant building panel marketed by the name Geobond®.
Geobond® products are so resistant to heat that after being torched with a 2,000°F flame for four hours, it remains lukewarm.
Ms. Billings in her patent portfolio has 8 patents globally, which belong to 5 unique patent families.
#15. Lynn Ann Conway
Ms. Lynn Ann Conway is an American inventor. After earning her BS and MSEE from Columbia University’s School of Engineering and Applied Science, Ms. Conway joined IBM Research. There she made foundational contributions to computer architecture, including the invention of multiple-out-of-order dynamic instruction scheduling. Fired by IBM as she underwent gender transition in 1968, Ms. Conway secretly started her career over again in ‘stealth mode’, soon becoming a computer architect at Memorex. She has also worked at MIT as a Vis. Assoc. Professor of EECS, Xerox Palo Alto Research Center, and DAPRA. At present, she is a Professor of Electrical Engineering and Computer Science at the University of Michigan.
Her specialties are computer science, systems architecture, electrical engineering, microelectronic design, research management, engineering education, human rights advocacy.
Awards & Honors:
Electronics 1981 Award for Achievement
Harold Pender Award of the Moore School, University of Pennsylvania
IEEE EAB Major Educational Innovation Award, 1984
Fellow of the IEEE, 1985, “for contributions to VLSI technology”
John Price Wetherill Medal of the Franklin Institute, with Carver Mead, 1985
Secretary of Defense Meritorious Civilian Service Award, 1985
Member of the National Academy of Engineering, 1989
National Achievement Award, Society of Women Engineers, 1990
Presidential Appointment to the United States Air Force Academy Board of Visitors, 1996
Honorary Doctorate, Trinity College, 1998
Electronic Design Hall of Fame, 2002
Engineer of the Year, National Organization of Gay and Lesbian Scientists and Technical Professionals, 2005
The most valuable patent in Ms. Conway’s portfolio is US5652849A for an apparatus and method for remote control using a visual information stream.
In Ms. Conway’s patent portfolio there are 5 patents globally, which belong to 5 unique patent families.
These are some of the female inventors from among numerous women who have contributed to the world of innovation. These women are an inspiration for young girls around the world. Women continue to disrupt the patent industry and make life easier with their inventions. We at PQAI salute and celebrate all the female inventors around the world.
Got a patent rejection? Almost 90% of patent applications receive at least one non final patent rejections! Let’s dig deeper to understand the best practices while filing patent applications.
You have invested your retirement savings developing your idea and have spent years perfecting your invention. After fine tuning your invention, you assist your patent professional with drafting your patent application, toiling to put together the perfect words to describe your invention. Your patent drawings are detailed and meticulous. After investing hours going over every word of your patent claims, you file your patent application. Now, after years of waiting, you receive a notice from the Patent Office rejecting your invention. Time to give up?
No. First, there are a number of resources that can assist you with understanding what the rejection is and how you might be able to overcome this rejection. We will identify various resources that can assist you. Reliance on these resources can be important since you might have a limited patent prosecution budget. Also, it is likely that not only will you receive a first rejection (i.e., a first Office Action), but is also very likely that you will also receive a second rejection (i.e., a second Office Action) in the same application. For example, according to a recent study by the US Patent Office, the average number of Office Actions that a patent examiner will prepare per issued utility patent where the patent finally issued in fiscal year 2019 was 1.7. That is, on average, every patent that was issued in 2019 received at least one office action rejecting the patent claims.
Second, once you receive a rejection of your invention, you are typically offered an opportunity to amend your application. You can also argue against the Examiner’s rejections. However, before you can make these types of arguments, you must have an understanding as to WHY the patent examiner has rejected your patent. Such an understanding will allow you to engage the Patent Office in an effort to find some common ground in order for you to earn your patent. Such an understanding will also allow you to seek assistance with overcoming this rejection and perhaps taking certain precautionary steps so as to avoid the same rejection pitfalls in the future. Finally, we will identify certain precautionary steps that will assist you in overcoming these rejections, not only for the same patent application, but also for your future patent filings.
Patent Rejections Are Common
Patent rejections are very common. According to a recent study at Yale University, almost 90% of all patent applications receive some type of patent claim rejection. So, you are not alone. There is also hope since 60% of all patent applications will eventually (after an initial rejection) issue as a patent. So, do not lose hope since the rejection that you received from the Patent Office is not a death knell to your invention. Rather, a rejection is just the beginning of a process of negotiation with the patent office. In this post we discuss both: precautionary measures you can take to avoid rejections as well as measures to take after receiving a (non-final) rejection.
Initial Precautionary Measures
There are a number of initial precautionary measures that you might want to consider before you file your patent application. For example, one way to achieve a timely, cost effective resolution to seeking a patent is to hire a knowledgeable patent attorney before you begin to prepare your patent application. A patent attorney will prepare your patent application for the rigors that it will experience during a patent examiner’s review. Once the application is filed, the patent attorney will work with the Patent Office to marshal your invention forward so that your application will hopefully eventually mature as an issued patent. Engaging a knowledgeable patent attorney will reduce the number of patent rejections that you receive, reducing the overall costs of patent “prosecution.” In addition, your patent attorney will also hopefully expedite the process to eventually receiving an issued patent from the patent office.
Precautionary Measures While Drafting Utility Patent Applications
The utility application accounts for the majority of applications that are filed in the US Patent Office and therefore will be the primary focus of the present article. For example, according to recent statistics published by the US Patent Office, the Patent Office received roughly 621,000 utility applications in 2019. (https://www.uspto.gov/web/offices/ac/ido/oeip/taf/us_stat.htm)
Let’s understand the main components of utility patent applications and how can those be best presented in the application. Your utility application will generally include three principal components: a detailed written description, figures or drawings, and patent claims.
Detailed Written Description
The detailed written description provides a list of all the elements of your invention. The written description may include a description of how to make those elements, how to assemble those elements, and how to use the elements of the invention. The written description explains what is illustrated in the figures and what the invention is as expressed by the words of the claims. For example, the detailed explanation may include certain descriptors or headings such as the title of the invention, the technical area of the invention, background of the invention, a list of included drawings, and most importantly an in-depth, detailed description of your invention.
One precautionary step that you might consider in order to avoid rejections based on your detailed description is to verify that all of the elements and components that you describe in your detailed description appear somewhere in your figures. This also relates to any process or method steps. Make sure each process or method step explained in your specification appears somewhere in one or more of your figures or drawings.
Conversely, you should also confirm that all of the elements appearing in your figures are described or explained somewhere in our detailed description. Also, when preparing the detailed specification understand that one purpose of the detailed description is that it should provide an understanding to a person of “ordinary” (not extraordinary) skill in the art on how to use and understand your invention. So, if you think something should not be included in the detailed specification because you think everyone might already know how to perform a certain function, that is not the test. If in doubt, include it in your detailed description. This will help others understand your invention, and it may even help the Examiner when he or she reads your patent application.
The drawings should illustrate all of the components parts of your invention as explained in your detailed description and as recited in the claims. Similarly, each element identified in your drawings should be mentioned in your detailed description. Drawings should be included to understand your invention and must be included with your original patent application filing.
One precautionary step that you might want to consider in order to avoid rejections based on your patent figures is to engage a professional draftsperson to prepare your drawings. As they say, drawings may be worth a thousand words so it typically pays to get this portion of your patent application correct. For patent drawings, like the words of your patent claims and like the words of your detailed specification, there are a set of rules and requirements that must be followed with your patent submission. Those drafting professionals that prepare patent drawings are typically experts when it comes to these set of rules. A true professional has a solid grasp on these patent regulatory norms but also a sufficient amount of artistic skills as professional patent illustrators and that can create patent drawings that are acceptable to the respective patent office. Moreover, not only do they have the artistic skills, they are also typically well acquainted with computer design software. Now, there are many types of software and computer systems that enable a professional draftsperson to create error-free patent drawings. For utility applications, a typical draftsperson will charge about $30-50 per figure and for design patent drawings, about $40-60 per figure. Of course, the complexity of your invention or the length of your application may require a higher charge.
The last few paragraphs of your application are the patent claims. These are the most important part of your application because they define the legal boundary of your invention. Your patent claims are different from your detailed description. For example, your patent claims may be amended during your correspondence with the patent office. In contrast, aside from amending typographical errors and the like, you cannot substantively amend your detailed description. And, you cannot add new subject matter to your detailed description after you file your application.
The patent claims of your patent application define exactly the limits of what your filed patent application does and does not attempt to cover (i.e., the “scope” of your invention). As the owner of your patent, you have the right to exclude others from making, using or selling, only those items or things that are adequately described in your patent claims. Because of the importance of the claims, your patent claims will receive the most amount of scrutiny from the patent Examiner.
Filing Broad Patent Claims
The patent claims are prepared as the last few paragraphs of your patent application. There are many strategic reasons to pursue broad patent claims when you initially file your patent application. Naturally, the broader your patent claims, the broader the “scope” of your legal protection. However, your broad claims must not cover what was known before you filed your patent application (i.e., the prior art). Therefore, if you file broad claims, your broad claims will typically receive the most amount of rejections from your patent examiner.
Filing Narrow Patent Claims
Alternatively, you may file narrow claims that try to capture only a narrow subset of technology. For example, you may file a narrow “picture” claim that captures each and every technical aspect of a preferred design or application as it is illustrated in your patent application. However, narrow patent claims could allow your competitors to avoid or “design around” your patent claims, giving competitors an opportunity to use your invention without technically violating your patent claims. However, narrow claims typically will receive a lesser amount of rejections from your patent examiner. As such, by submitting narrow claims, you may receive your patent earlier from the patent office.
Patent Office Review
All three components of the Utility Application can receive “objections” or “rejections.” As such, the Examiner can also take issue with your detailed description and/or the figures. The key here to understand is that most, if not all patent application objections and/rejections can be overcome with changes made to your patent application detailed description, the figures, and/or the patent claims.
One of the first things that the Patent Office will review is to see if you filed a complete application that includes all the necessary application parts. After receiving an application, the Patent Office will review the patent application for completeness. In order for your application to be complete and move on to the prosecution process where the Examiner will begin to scrutinize the actual technical substance of your patent application, your application must be complete.
A complete application includes:
at least one patent claim,
an inventor’s oath or declaration,
payment of the required governmental filing fees,
and drawings, if necessary to convey the invention.
The inventor’s oath or declaration is a document that identifies the inventors, and must contain certain required statements. The oath or declaration must:
identify the inventor executing the oath or declaration by his or her legal name;
identify the patent application;
include a statement that the person executing the oath or declaration believes the named inventor to be the original inventor of a claimed invention in the application for which the oath or declaration is being submitted; and
state that the application was made or authorized to be made by the person executing the oath or declaration.
If you file your application and your application papers do not include the inventor’s oath or declaration, or requisite fees, the Patent Office will send you a notice that you have submitted an “incomplete” application and that you are being required to provide the missing information. If you receive one of these notices it is imperative that you respond and correct the deficiency noted by the patent office. Typically, you are given two months from the mailing date of the notice to file the requested information with the patent office.
Group Art Unit
After you file your complete application, your application will be assigned to one of the many Technology Centers at the Patent Office. The Technology Center will review the application papers to determine what technical or group art unit the application should be assigned to. Once the Technology Center identifies the proper technical subject matter of your invention, it will assign your patent application to a group of Examiners who have experience with the technology related to your invention.
Patent Examiner Review
A typical patent application will undergo multiple levels of review by the Examiner during his or her substantive examination of an application. First, the Examiner will determine whether to reject your application and issue a restriction requirement. Second, the Examiner will review your application and analyze whether one of the primarily four types of rejections are applicable.
For example, an initial examination next step in the patent application review process is for the Examiner to review your application for a potential restriction requirement. The most common type of restriction is when you attempt to claim multiple inventions that are either independent (i.e., completely unrelated) or distinct (i.e., related but capable of separate manufacture and separate use). The Examiner will determine if your patent claims are trying to capture more than one invention. The theory here is that examination would be too time consuming and burdensome for the Examiner to search for more than one invention when the fees that you paid when you filed your application only paid for the Patent Office to perform a single prior art search, not multiple searches for multiple inventions.
For example, let’s say you submit a patent application that is directed to a new idea for making orange juice. Your patent application includes a number of patent claims. Specifically, your patent application includes a first patent claim that is generally directed to your orange juice making machine and includes the following elements:
1. a mechanism for selecting an orange,
2. a mechanism for squeezing the orange,
3. a collection device for collecting the orange juice, and
4. a disposing device for disposing the now empty orange peel.
Your patent claims also include a claim that is generally directed to your method of making the orange juice and includes the following four steps:
1. selecting an orange,
2. squeezing the selected orange,
3. collecting the juice from the squeezed orange, and
4. disposing of the empty orange peel.
As you have presented a machine patent claim and a method patent claim, the Examiner may issue a restriction requirement and thereby reject your claims. Such a rejection may require that you “restrict” your proposed patent claims to proceed with selecting either your orange juice machine related claim or your orange juice making method claims.
By selecting one claim over the other claim, you are not sacrificing the unselected claim. For example, if you opt to pursue your orange juice making machine of claim 1, you will not be sacrificing your method claims. You can file what is called a “divisional” patent application to seek protection of your unselected method claim set.
Once you have successfully narrowed your application down to a single invention, the Examiner will move onto the substantive examination phase. During the examination phase, the Examiner may issue formality rejections and these are generally related to Sections 101 and 112 of the Patent Act. For example, as noted in the graph provided below, the Section 101 and 112 type formality rejections account for almost 30% of all rejections, with Section 101 rejections accounting for only about 8% of all Examiner rejections.
For rejections based on the prior art, there are two primary rejections: a novelty rejection under Section 102 and an obviousness rejection under Section 103, both under the Patent Act. Again, as noted in the graph provided above, rejections based on Section 102 account for roughly 21% of all rejections whereas rejections based on Section 103 account for roughly 47% of all rejections.
So, let’s take a quick look at each of these rejections and why the Examiner might issue such a rejection. After discussing the substance of the rejection, we will identify certain precautionary measures you might use to avoid receiving these types of rejections in your current patent application as well as potential future patent applications that you might file.
Section 101 Rejections
Rejections according to Section 101 relate to the idea of “double patenting.” A patent is a government grant that gives you the exclusive rights to your invention, for a limited period. According to Section 101, you should not be allowed to extend the time limit by obtaining multiple patents for the same invention or for obvious variations of your invention.
There are two kinds of double patenting: one based on the law and the other based on a question of obviousness. First, there is “statutory” double patenting which prevents you from having two patents with the same invention. The prohibition against statutory double patenting arises from the Patent Act, which states that an inventor can “obtain a patent.” Because double patenting requires the same claim in two patents, a statutory double patenting rejection is relatively easy to avoid and is fairly uncommon.
The second type of Section 101 rejection occurs much more frequently. “Obviousness-type” double patenting prevents you from obtaining a patent with a claim that is obvious over a claim in another of your patents. The principle behind the doctrine is that you should not be able to extend the life of your first patent by obtaining a second patent with a claim to an obvious variation of your previous invention.
One way to overcome these “double patenting” rejections is to file a legal document called a “terminal disclaimer.” In the disclaimer, you agree that your second patent will expire at the same time as your first patent. The Patent Office provides a standard form for filing such a terminal disclaimer. A copy of this form can be found here.
Patentable Subject Matter
When the Examiner reviews your patent application, the Examiner will ensure that your application meets the legal requirements for patentability. This includes whether your patent application is the right subject matter for protection under Section 101 of the Patent Act. Section 101 states that patents may be granted on “any new and useful process, machine, manufacture, or composition of matter.” If your invention is not a process, machine, manufacture, or composition of matter, your invention is not patentable because your invention is not the right type of invention and will therefore be rejected.
While most inventions fall within one of these categories, some inventions do not. For instance, if your patent application claims that your invention is an electromagnetic wave having certain characteristics, your application will be rejected because a wave is not a “process, a machine, a manufacture, or a composition of matter.” Pure data (meaning data claimed alone as opposed to data residing on a computer or data being manipulated during a computer process) is also unpatentable and will be rejected.
If your invention is going to be patentable, your invention must also avoid falling under a judicially created “exception” to patentable subject matter. While the articulation of these exceptions has varied over the years, what is clear is that abstract ideas, laws of nature, and natural phenomenon are exceptions to statutory subject matter. Inventions that are considered abstract ideas or laws of nature are not patentable because they are not the right type of invention.
These exceptions to subject matter eligibility have become much more important in the last few years, especially for software inventions. In fact, according to a recent post at ipWatchdog, approximately 60% of software patent applications reviewed by the Patent Office are initially rejected under Section 101 because the software invention is considered to be directed toward an abstract idea. (https://www.ipwatchdog.com/2019/08/13/update-101-rejections-uspto-prospects-computer-related-applications-continue-improve-post-guidance/id=112132/)
If your application has received a Section 101 rejection, that means the Examiner believes that your claims relate to a type of invention that is ineligible for patent protection. There are really two different types of Section 101 rejections. First, either the Examiner is saying that your invention does not fall within one of the four statutory categories. Or second, the Examiner is saying that your invention falls under one of the patent ineligible exceptions (which is usually either an abstract idea or a natural law/phenomenon). In either case, such a rejection does not have to be the end of your patent application, although the rejection can sometimes be difficult to overcome a Section 101 rejection.
Section 101 Precautionary Steps
As a precautionary measure, you may consider reviewing your claims before you file with the patent office with an eye towards a potential 101 rejection. In most cases, these types of 101 rejections can be overcome by revising your application to explicitly claim one of the four statutory classes: a “process, a machine, a manufacture, or a composition of matter.” For instance, instead of claiming an electromagnetic wave having certain characteristics (which is a non patentable invention), you can revise your claims to cover a method for creating that wave (statutory under the “process” category). Alternatively, you can revise your claims to cover a device that creates the wave (statutory under the “machine” category).
In some cases, the broadest reasonable interpretation of a claim may cover both statutory subject matter and subject matter that does not fall within one of the four classes. For instance, claims to “machine-readable media” include both physical computer memory and transitory electromagnetic waves. These claims should be revised to remove the possibility of the claims covering subject matter that falls outside the four statutory classes.
Section 102 – Novelty of Invention
Prior art rejections are the most common rejections issued by US Patent Examiners. For example, as noted in the graph reproduced below, almost 70% of all rejections issued by Examiners are based on some prior art that is used to reject patent claims.
In order to obtain a patent on your invention, one of the legal requirements is that your claimed invention (i.e., the one defined by your patent claims) must be “new” or “novel.” In other words, you must be the first inventor to have invented your invention before anyone else. So, there can be no prior invention before you filed your patent application. A prior invention is typically something that was publicly known or publicly available before your invention.
These are very common rejections. Indeed, roughly 21% of all Examiner rejections are related to novelty rejections under Section 102 of the Patent Act. So, one of the more common rejections is that the Examiner will say that your patent claim is not novel or is not new because someone somewhere was the first to practice or teach your invention. They were the first to invent your invention. You were the second to come up with this invention. Therefore, your patent claims will be rejected.
For example, returning to our sample claim, let’s assume that you have decided to pursue your orange juice making machine invention. The Examiner will review your claim and then search through the prior art in effort to determine if he or she can find the following in the prior art:
An orange squeezing apparatus that includes
1. a mechanism for selecting an orange,
2. a mechanism for squeezing the orange,
3. a collection device for collecting the orange juice, and
4. a disposing device for disposing the now empty orange peel.
The Examiner will search available sources (e.g., granted patents, scholarly publications, industry publications, etc.) in order to ensure that your application’s claimed orange squeezing invention deserves patent protection.The Examiner may also use non-patent literature including magazine articles, newspaper articles, electronic publications, on-line databases, website, or internet publications. If the Examiner identifies prior art that he or she believes shows an orange juice making machine including all four machine elements that are recited above, your claims will be rejected as lacking “novelty.” Basically, the Examiner is saying that your invention is not “new” or “novel.”
One Reference Showing All Elements
Patent novelty, therefore, refers to the uniqueness of your invention. Your invention will be novel if no single prior art reference discloses all the elements that form your claimed invention. So, there are two critical pieces of information that you must analyze to determine novelty. First, you must identify the expressed words of your patent claims and all its limitations. Second, you must review the cited printed publication that the Examiner relies upon and understand what the printed publication teaches. An application may be rejected under Section 102 only if a single prior art reference matches each and every element of your claimed invention.
Another important issue is that the printed information that the Patent Examiner is relying upon must be “prior” to your invention. That is, the printed information must bear a publication date that is earlier or “prior“ to your filing date. If the date of the cited information is not earlier than your filing date, the cited information is not “prior art” and therefore must be removed from the Examiner’s analysis.
Here is an example of a hypothetical anticipation rejection. Recall our hypothetical invention for your orange juice machine. As noted, your orange juice machine invention includes four components: 1. a mechanism for selecting an orange, 2. a mechanism for squeezing the orange, 3. a collection device for collecting the orange juice, and 4. a disposing device for disposing of the empty orange peel.
Now let’s say the Examiner rejects your orange juice machine claim. Specifically, the Examiner states that your orange juice machine is not patentable as your invention is lacking novelty over a patent published in the United Kingdom and that names John Smith as an inventor (i.e., “the Smith patent”). The Smith patent, written in English, is entitled “Orange Juice Making Machine.” Upon a review of the Smith patent, you recognize that, yes the Smith patent is generally directed to an orange juice machine. However, you recognize that the Smith patent does not teach any type of mechanism that allows for the selection of one orange over another orange prior to the orange being squeezed.
As you describe in your detailed explanation of your patent application, one of the advantages of your invention is that the selection of an orange is based on the size, the color, or some other characteristic of the orange. Your invention allows your apparatus to select a higher quality orange over a lesser quality orange. In contrast, you note that the Smith patent merely describes an orange juice maker that randomly selects oranges, irrespective of the color, the size, or some other characteristic of the orange. In the Smith patent, there is simply no “selection of an orange.” And since your patent claim expressly recites “a mechanism for selecting an orange,” the Smith patent does not anticipate because Smith does to disclose at least the noted important limitation of your patent claims.
Since anticipation requires that all of the elements in your claim must be found in a single prior art printed document, you can argue to the Examiner that the Smith patent does not “anticipate” because Smith lacks a teaching of some type of mechanism that selects an orange.
Another option to address the Examiner’s anticipation rejection is to amend or clarify your orange juice apparatus patent claim. For example, you can amend your orange juice machine claim to clarify an element, add a new element, or do both. You must, however, have support for your proposed clarification in your application as filed. In our example, if the Smith patent fails to disclose “a mechanism for selecting an orange,” you can amend your claim to further differentiate your invention from the orange juice machine disclosed in the Smith patent.
As one example, you could amend your “selection mechanism” claim limitation to now read: “a mechanism for selecting an orange based on a characteristic of the orange.” (claim clarification shown in underline). The amendment would further distinguish your claimed invention from that taught by Smith’s patent.
Reference Must Be Prior Invention
Another important issue is that the printed information that an Examiner is relying upon as “prior” art must bear a publication date that is “prior to” or “before” your invention. If the date of the cited information is not earlier than your filing date, the information is not a “prior” invention since the information was published after your invention. And since the cited information is not “prior art,” the cited information cannot be considered by the Examiner since the information cannot anticipate your invention since the information was not “before.”
Returning to our hypothetical rejection of your orange juice machine, let’s say that upon a closer review of the Smith patent, you observe that the patent was originally filed in the UK. As is typical with UK or European type documents, you note that the Smith patent uses a European date format. That is, the Smith patent references a publication date by way of a date format where the day comes first, then the month is referenced, and then the year is listed. The Smith patent identifies a publication date as: “01/10/2020.” Well, this UK styled publication date means that the publication date of the Smith patent is the first (1) day in October (the tenth month) in the year 2020. The date does not mean that the publication date of the Smith patent is January (the first month) 10, 2020.
However, you note that the Examiner’s rejection states that the Smith patent is “prior art” to your invention because the Smith patent was published before your patent application. But your patent application was filed on April 1, 2020. A proper reading of the Smith patent would show that Smith is not “prior” to your invention since you filed for your invention a full six months before the Smith patent was published on October 1, 2020, and not January 10, 2020. Therefore, the Smith patent must be removed as an “anticipating” reference since Smith is not prior art to your patent application filing.
Section 102 – Precautionary Steps
If you do not have a budget to hire a patent attorney, another way to achieve a timely, and cost effective resolution to seeking a patent is to engage a patent professional searching company to perform prior art search. There are many prior art search firms and companies that perform these types of searches. A typical prior art search typically costs on the order of about $300-500 for a typical mechanical invention. There are a number of benefits to performing a precursory prior art search, one conducted before expending the time and resources to prepare and submit a patent application for review by the Patent Office. For example, the benefits of conducting a preliminary prior art search include:
1. Avoid submitting patent applications with claims that are not patentable and will be easily rejected.
2. Determine whether your invention is novel compared to public prior art.
3. Develop a strong patent claim strategy before you file your patent application (and reduce the chance of extensive amendments).
4. Account for close prior art when drafting your patent application. For example, you might want to describe advantages or improvements over relevant prior art, as this can help persuade the patent office that your invention is “non-obvious.”
5. Understand how your idea fits into the technological field.
6. Be better prepared to discuss your invention with a patent examiner and explain what aspects of your work might be patentable.
Basically, a patent search will give you an idea about whether it even makes sense to pursue a patent in the first place. Unfortunately, patent searches do not come with guarantees. However, the goal of a patent search is to reach perhaps a 75-80% level of confidence threshold. To reach a higher confidence level would take thousands of dollars, and to reach near certainty would require many thousands of dollars, so the search that is undertaken is reasonable given the value of the invention. It is also reasonable given that the prior art represented in patent applications filed for the first time within the last 18 months are simply not searchable because they are required by law to be kept secret. So a “no stone unturned” search is not possible and not economically wise. But a thorough search of what can be reasonably found leads to better decisions and always leads to a better written patent application that takes into account the prior art. Without knowing what is in the prior art, there is simply no way to accentuate what is most likely unique in comparison to the prior art. In other words, without a search you are describing your invention in a vacuum. Indeed, returning to our hypothetic rejection over the Smith reference, perhaps a basic search would have identified this reference. With this knowledge in hand, perhaps you would have crafted your patent claims to already include a patent claim limitation that is not taught by this reference, saving you both time and money.
If you do not have a budget to fund a third party prior art search, you can perform your own patent search which will allow you to gain a better understanding of the prior art. For example, there are multiple resources that can assist you with this basic search including at least the following: Google Patents, USPTO search interface, Espace (European Patent Office), WIPO search interface etc. There are a few more free search tools available. Performing such a search will allow you to prepare and submit a higher quality patent application since you now know what the patent Examiner may cite against your patent claims. This will also allow you to familiarize yourself with certain prior art that the Examiner may use in rejecting your claims. Performing a prior art search is yet another method that will reduce the number of patent rejections that you receive, reducing the overall costs of patent “prosecution”.
Another cost effective pre-filing resource for low budget patent filings is Project PQAI. Project PQAI is a collaborative initiative to build a common AI-based prior art search tool. PQAI stands for Patent Quality through Artificial Intelligence. One of the advantages of PQAI is that it attempts to make the patent process more transparent for all involved, and to significantly grow the number of inventors, thereby accelerating the pace of innovation while simultaneously improving the overall quality of patents. By using PQAI and its AI based searching algorithms, cost free searches of hundreds and thousands of potentially relevant references can be reduced to a best of prior-art collection in a top-10 results format. By providing you with a “top-10” search result format, this will save you the aggravation, time, and expense of refining and detailing your search queries over and over in an attempt to find the best prior art references.
Moreover, with PQAI, you are provided with a query mapping table. With such a table, you are provided with a first column that shows a part of the invention query and a second column that shows the relevant text from the search result. This mapping is not just word-to-word but it is highly contextual, unlike many other search results provided by third party search firms.
A rejection under Section 103 of the Patent Act is the most often type of rejection that an Examiner will issue.
Combination of References
An Examiner may reject your patent claim based on Section 103 when your claimed invention is not identically disclosed so the reference teachings must somehow be modified in order to meet the claims.
Recall from our example that the Smith patent describes an orange juice maker that randomly selects oranges, irrespective of the color, the size, or some other characteristic of the orange. We already noted that in the Smith patent, there is simply no “selection of an orange.” And since your patent claim expressly recites “a mechanism for selecting an orange,” the Smith patent does not anticipate because Smith simply fails to disclose the important claim limitation.
In response to your claim modification, lets say that the Examiner issues a second Office Action and cites the Smith patent in combination with a second patent: the Jones patent. Specifically, in the Office Action, the Examiner notes that the Smith patent might not expressly teach a “selection mechanism,” but the Jones patent makes up for the missing element. Now, the Examiner states that the combination of these two patents teaches all of the elements of your orange juice making machine and therefore issues an “obviousness rejection” of your claims.
In our hypothetical, you note that the Jones patent is generally directed to a method for making wine from squeezing grapes. In the Jones patent, a device is used to select a grape based on a characteristic of a grape. The Examiner’s position, therefore, is that a person having ordinary skill in the art would start with the teachings of the Smith patent and then make the modification as suggested by the Jones patent. Therefore, the Examiner reasons, your juice making machine patent claim is “obvious” over the combination of the Smith patent and the Jones patent.
Amend to Include Additional Claim Limitation
There are many strategies that you can use to respond to the Examiner’s “obviousness” rejection. A few of the more frequently used strategies are mentioned below.
First, if the combination of prior art really does show all the elements of a particular claim, you can amend your claim to clarify a feature or to add an element. In the above example, you can add a further element to the limitation of “a mechanism for squeezing the orange” and further specify the structure of the mechanism like, “a robotic hand for squeezing the orange.” In conjunction with the claim amendment, you could argue that the combined Smith and Jones patents altogether fail to show the new claimed combination. Of course, the Examiner may search the prior art further and find a third reference that discloses “a robotic handle.”
No Motivation to Combine References
Alternatively, you could argue that there would be no motivation to combine the Smith and Jones patents together as suggested by the Examiner. For example, if the Smith patent expressly states that certain features should be avoided (like the use of selection mechanism), there would be no motivation to combine the primary Smith patent with a secondary Jones Patent disclosing the very feature to be avoided. One way to argue against the motivation to combine is to study the intended purpose of each prior art reference. Would the Examiner’s combination go against the intended purpose of one or more prior art references?
The Examiner’s reliance on 103 rejections has been slightly increasing over the last two-three years. For example, the graph provided below shows the percentage trend of 103 rejections issued by patent examiners:
Section 103 – Precautionary Steps
As noted in the graph provided above, there is almost a 50% chance that the rejections you receive for your patent application is related to Section 103 of the Patent Act. As such, you should consider utilizing PQAI which will help you identify the combinational prior-art that could be cited as the basis for a 103 type rejection. PQAI has an open-source search engine that has the capability to identify the combinational prior art. For example, if we were to input our hypothetical “orange juice” making machine as an idea query into PQAI, we would receive a first combination of results, which may have identified the Smith and Jones references, as described above. As such, running your original “orange juice” making machine thought PQAI once to look for potentially relevant combinational prior art thereby allowing you to identify potential roadblocks to you seeking a patent. Once these potential roadblocks are identified, you can draft your patent claims accordingly to avoid such potential 103 rejections.
When faced with a rejection of your invention, you must try to understand the basis for the rejections and what is required to overcome these rejections. You should not lose hope since changes can be made to address the typical rejections raised by the Examiner.
Sam Zellner is a Prolific Inventor, an Entrepreneur, Adept Portfolio Manager, Product Lead for PQAI and Ex Director Innovation at At&T.
Mr A: Core innovation happens when we stop believing in the societal norms of accepting ‘that’s how it works’.
Sam Zellner: “The corollary to this is believing long held assumptions can’t change. Ken Olsen, CEO of Digital Equipment Corporation (DEC) said in 1977, ‘there is no reason anyone would want a computer in their home’. The challenge for all of us is realizing when a basic assumption is no longer true. The funny thing is it’s always obvious later on!”.
Samuel N Zellner is a prolific American inventor with more than 200 issued and pending patents worldwide. He has held many prestigious positions in the IP fraternity. Sam Zellner retired as Executive Director, Innovation at AT&T in January, 2010. During his tenure at AT&T he created state of the art platforms utilizing Artificial Intelligence (AI). He also developed new approaches in advanced big data concepts to develop high-value patent portfolios and monetize these Intellectual Property (IP) assets.
His current projects involve creating an open source combinational prior art search engine utilizing AI called PQAI, which stands for Patent Quality through Artificial Intelligence. Sam Zellner is also working on InspireIP, an invention disclosure system making invention management easy for inventors and IP counsels.
Sam Zellner is a board member on a number of the state IP Alliances as well as the newly formed US Intellectual Property Alliance. He has also been recognised as IAM 300 Top Strategist 2019. He is experienced in planning and strategizing in high tech. Sam is also on the board of directors of the Licensing Executive Society (LES), Atlanta chapter since January, 2018.
Exclusive Interview With Sam Zellner
We asked some questions from Sam Zellner and through his experience, he has provided some brilliant insights for the inventors and patent portfolio managers.
#1. What challenges do you face in your daily life as an inventor?
My big joke is that the inventors are some of the loneliest people as they are not able to find support for their ideas. As an inventor, you come up with an idea and if you present your idea to someone, they tend to discount it as being bizarre or incorrect.
For example, way back when the inventors were thinking about putting cameras on cell phones, everybody was like why would we put cameras on cell phones? data transmission is expensive, cell phones cannot hold much data and At the time it seemed like a crazy idea.It is hard as an inventor to share ideas with other people, as inventors typically base their inventions on assumption sets different from the accepted norms. Battery technology will improve (think electric cars), people will change their behavior (think buying online), laws will change (think Uber and taxi licenses). This is why most people can’t see or accept inventors’ visions. Later on, when hopefully the idea is adopted, everyone’s lense looks at the concept with the new assumption set will say that either ‘I was also thinking of this idea back then’ or that ‘it was obvious’. It is really hard as an inventor to get credit. With the patent system, the inventor gets some credit as they are recognised with the patent.
Generally, it’s sort of a lonely life as an inventor, a tough life because very rarely do people acknowledge that you had a good idea. Rarely do you get recognised as doing something novel, rather you are recognised as crazy, which is the common thought process.
#2. Are you part of any inventor groups or community?
I am not aware of a lot of communities. Maybe, the individual inventors are a part of some communities. My experience with corporate inventors is that they tend to talk to their associates, but I am not familiar with the corporate inventors being part of a specific group. You might check with the inventors’ association to see if there are any particular groups that they are pushing towards. I think in Atlanta there are some incubators that have events, which are fairly popular. Tech Village in Atlanta is one.
#3. What motivates you to invent?
As a lot of people say, engineers like solving problems, I think it’s a mixture of curiosity and wanting to solve problems. Patents are about solving problems, so it comes naturally that way. I look at problems and try to think of how to solve them.
#4. When do the best ideas occur to you?
I think most people say that when you are in the shower. On the contrary, I think typically, like I said it’s about solving problems, so the best ideas come a few hours after you see a problem or run into a problem. As they say, your mind is thinking about a problem and to invent, sometimes you really need, almost, the subconscious to be helping you. Because unfortunately, the assumptions that most of us go around with are so strong that it’s really hard to see past those assumptions. Particularly, what are called the ‘old assumptions’ – assumptions that might have been good a year ago but now because of new technologies, change in economic factors or regulatory landscape or something in the environment. Now the old assumption that – ‘we can’t do this’, is probably no longer valid. Then all of a sudden, when you think of assumptions as walls and when you move that wall away, then a whole gamut of opportunities open up.
It reminds me of location services, I did a lot of patents around location services. Before, we had no real in-location services capability, GPS came and then we had the enhancements with cellular, allowing us to do location for 911. The general thinking of the people was that ‘I don’t know where somebody is when they call, when they are using a phone’, now all of a sudden, anybody can know exactly where the other person is. As an inventor, now you wonder as to what you can do with that. What came to my mind, at the time when it started off, was that the cellular network moves when I leave the house. The cellular network knows when I leave the house, it can see me driving my car, location is changing, then it should know how to change the thermostat in my house. So it’s more efficient, I am saving energy because it used to always bother me that when I leave the house, since in Atlanta it’s very hot, the air conditioning is always on and wasting power that way. So it could let the house get a little warmer when I am not there, there’s no harm and I am saving money, energy. And ideally the cellular network could see when I am coming back again so it could turn the air conditioning on and when I get home, the house would be cool again. So it’s a simple example, once it’s realised that location can be used to control things, now it opens up all kinds of opportunities.
Another thought was now that the cellular network can see me arriving in a city, if there’s a hotel in that city, it can automatically register me for the hotel because it can see that I am coming for my hotel room. So it’s amazing, once I start realising and accepting the fact that I can know where people are, now I can make some assumptions about what should be done based on where I am. So that’s what I mean about the whole idea of changing assumptions and opening up more opportunities.
#5. Is there a systematic approach to coming up with innovations?
There are a lot of techniques out there, it depends on the person what technique works well. Everybody is different in how they think so it can be different. There are really two parts to this, one there’s getting the seed idea, identifying the problem and on the cusp of solving the problem and then there’s also sort of extending it. So the hard part is getting the seed idea and finding a problem that’s of significance, which hasn’t been solved well. For me, I go through the assumptions that I am making about the problem and test each one to see if it’s true. If I take this assumption, what it does. And that for me helps quite a bit.
The other piece, which I see a lot of people do and is easy to do, is that as in my example before, about location services and changing the thermostat, people tend to get fixated on one solution to a problem. They don’t really generalise it because again, think about it, the patent is looking into the future. As an inventor you are trying to throw a solution out into the future and it’s very hard to know how the world will change in the future. Therefore, you want to expand your idea plus you don’t know what people have really done.
That’s one of the reasons why PQAI is so helpful. When you run PQAI, you can see where the thinking is and you can modify your idea based on that. As an inventor, you might find out that people have already thought about your idea, so you might want to think about the next generation of the idea. Maybe there are some aspects of using location to control something, what would come next and where else might you apply, if it’s just thermostats. What about using location to provide package delivery notifications and you know there’s lots of other things there.
When you get a seed idea for an invention, try to generalise it. I think about it as trying to generalise it till all of sudden it’s no longer novel, it gets so broad that you’ll run into the wall that says, it sounds familiar or that’s already been done. In any case it helps you, particularly in the patent because as you know, with a patent you have your initial claim and then you have your dependent claims. Thus, it expands your idea and this way if you do a mapping, like again in the example of location services and controlling the thermostat, you might generalise it from controlling a thermostat to controlling a device and you might define control as turning on and off instead you might want to define control as adjusting or you can say controlling multiple devices. So that helps to broaden out your idea in case some prior art is already there, you can find your segment.
#6. What was your first invention and when?
First invention… I didn’t go anywhere with that but I tried. I had two ideas, one idea was in 1983, creating a phone ringer that would play tunes. My interest was particularly in the fight songs in colleges I attended school at Northwestern University. They have a big marching band and they have their own fight song like most universities do. And I thought that wow all the alumni would love to have their phones ring their school’s fight song. So that was my idea and this is prior to cell phones, so this is at the time of landline phones. At the time, the landline phones did not have any tunes playing, they were basically just a standard ringer. So I was trying to put together the electronics around it and unfortunately, I could not quite get it together.
The other idea, which sounded crazy back then, was putting TVs in an elevator. I used to work in a high rise building back then. I just noticed how much time people spend in the elevator and how uncomfortable people were in the elevator. Then, I thought to myself, wow, if you could put a TV in there and show some news or something, that would be actually welcome, since people are looking around uncomfortably in the elevator. I actually talked to the city of Chicago elevator commission about putting TVs in the elevators and they thought I was crazy. Now the ironic thing is, I haven’t seen that many but there are a few TVs in the elevators but you see TVs in public places. It is one of the examples where I should have been thinking broadly because now you see TVs at the airport, gas stations, pumps, and in a lot of different places. It goes back to thinking broadly because sometimes your initial use case is not the most important use case.
#7. What shall be your advice for budding inventors?
Run your idea through PQAI and gather some knowledge about how other inventors have tried to solve the problem. Keep an open mind. Don’t get totally stuck on your one use case. Listen to people, share your idea, obviously in a way that it is protected but maybe after your provisional application or with your close friends to try and get a sense of how people are reacting to your idea. A lot of times it will give you clues as to maybe where you are a little off in your idea. It’s very rare, in my experience, that people have hit it right in their initial idea. They are in the right area, they have the right basic building blocks but it needs to be adjusted in some way. My advice is be open and listen carefully to people’s reactions as it might give you clues for where you should be going.
The other thing is that inventing is very hard. Don’t be discouraged if your first idea might not be novel. It is very hard, you are competing against all the inventors in the world. That’s very tough so don’t get discouraged.
#8. How was your experience as an inventor at AT&T?
My experience at AT&T was very good. AT&T has a very energetic, creative environment and very smart people. We could talk about the new ideas and people were very open to it. We were working with a lot of cutting edge technologies at AT&T. So I found it very easy to come up with new ideas in that environment.
#9. What are some tips you would like to give to a patent portfolio manager?
Again, to have an effective patent one really needs to be broad. So I would want to encourage the patent portfolio managers to make sure the patent is broad enough so that as the future unfolds, the patent is still relevant. I think what helps to broaden your patent out and obviously, to test it is to do some prior art searching. The prior art searching really gives you a sense of how other people are thinking about the idea. Then you can see how your idea relates to those thoughts, that usually generates more use cases and more thoughts about how to broaden out the patent and where novelty really exists.
I would encourage the patent portfolio managers to do some prior art searching and that’s where PQAI provides great opportunity as prior art search takes a lot of time. With PQAI you can do it very quickly. It is sort of a golden opportunity for patent portfolio managers to leverage it and ensure that either the ideas/inventions are new disclosures or continuations or their very best.
Sam Zellner | Patent Portfolio
The statistics and charts hereunder provide an insight into Sam’s patent portfolio, which has more than 200 issued and pending patents worldwide.
Note – Patent families represent the count of total unique patent families. Patents represent the total number of records i.e. considering all the family members of an INPADOC (International Patent Documentation) family. The following four statistics are based on unique families count.
Technology Area And Patent Families Count –
Sam’s patent portfolio has 292 patents globally, which belong to 91 unique patent families. He has worked in many areas of the tech industry but mainly, most of his inventions are related to electronic communication techniques and instruments. The count of inventions in this and related domains is 86.
The chart below details the areas of technology in which his patents have been filed:
Technology Through The Years –
This statistic is based on Sam Zellner’s patent filings periodically, indicating as to how many patents are filed year by year and in which area of technology:
Sam Zellner has patents in 91 different patent families within his patent portfolio. He is an individual inventor of 17 and a co-inventor of the rest of the 74 core patents:
Sam Zellner is affiliated with AT&T Inc, putting AT&T on the top of the list of patent assignments by Sam for his inventions. However, there are a few more names of other assignees in the list, in the cases where Sam’s inventions have been re-assigned by AT&T and all these patents were filed by AT&T. All the subdivisions of AT&T as AT&T Inc have been considered.
The term “Patent Counts” represents the counts of individual patents filed in various countries, irrespective of the patent family. The following statistic is based on the total number of patents in the portfolio:
Patent Filing Worldwide
The following graph shows Sam Zellner’s patent filing for inventions worldwide. Majority of the patents have been filed in the United States of America. Also, there are 10 patents, in which the applications have been filed before the World Intellectual Property Organization (WIPO) & the European Patent Office (EPO).
The Key Takeaways
Sam Zellner has decades of experience as an inventor and a patent portfolio manager. Sam’s advice to the inventors is to think broadly and expand the idea beyond your first use case. Sam Zellner recommends the inventors to keep an open mind and observe how the people are reacting to the idea, when shared with people in a protected way and also motivates them to not get discouraged in case their idea is not novel. He encourages the patent portfolio managers as well as the inventors to do some prior art searching, to find how other inventors are approaching the same problem.
The world is anxiously waiting for revolutionary change as Joe Biden, the 46th President of the United States and Vice President Kamala Harris prepare to make history. Topics of interest focus on how the Biden-Harris administration will deal with the impacts and consequences of the nation’s intellectual property (IP) law and policies.
This article provides some insight as publications post comments and concerns about Biden’s IP policy approach. They each share perceptions that speak to the need to fortify U.S. IP protection as an incentive to continue developing inventions, technology innovations, and research patents to retain America’s lead in advancements.
U.S. businesses and inventors are concerned about how IP laws and policies could influence opportunities for supplying goods and services to support continued growth in commerce within the public and private market sectors. Looking in from the outside, President Biden’s plan needs to facilitate a more efficient patent filing process that secures and protects IP transfer and trading practices within domestic and international markets.
Overall, the community’s consensus sees the next four years highlighting the Biden-Harris administration’s effort to improve U.S. IP policies at home and abroad contributing to America’s economic recovery.
The Diplomat – Contributing author Robert Farley commented on the influence that Vice President Kamala Harris brings to the table. Securing her position in U.S. history as Vice President, the post goes on to state how “Harris would influence both the executive branch policy and legislation while presiding over a closely divided Senate.”
As a sponsor of the DEFEND ACT during her tenure as Attorney General of California, Harris legally pursued producers in India and China for IP violations based on fair-trade and law-abiding principles. In her current position as U.S. Vice President, there is no doubt that her influence will carry both inspiration and encouragement for patents filed in the United States.
The certainty of the Biden-Harris administration’s views on IP law and policies will focus on leveling the playing field for American enterprises and research organizations looking to gain a fair share to the supply markets.
Washington Post – Covering world business Jeanne Whalen reported on the Commerce Department nominee Gina Raimondo, pledging to join the fight against unfair trade practices. Raimondo did not share any details on how she planned to proceed – instead, Rhode Island’s Governor made this statement, “I believe America has to lead in standards-setting, particularly in new technology.” Raimondo continued saying, “It’s one way we could help Americans to compete, lead and win.”
China is the target in this article, charged with intellectual theft and misuse of patents with the intent to use stolen technology as a source to spy on other nations. Historically, the United States has held the number one position globally for filing the most international patents comprised of technological advancements, making it a primary targeted.
China misjudged the strength and resilience of the United States as a global competitor in trade as U.S. enterprises continue to develop technology and venture into new research discovery.
New York Times – Ana Swanson covers trade and international economics, reported on Rohde Island’s Governor, Gina Raimondo’s discussions on the Department of Commerce’s “Entity List” prohibiting companies from selling American products and technology to individual foreign firms without a license.
The Department of Commerce added the names of IP violators to the Entity List to protect America’s technology and business invention patents allowing organizations to pursue open and fair markets actively. The Department pledged to continue its enforcement of foreign attempts of intellectual property theft and inappropriate (unlawful) acquisitions of patented data.
The article cites Raimondo’s praise by her peers for her public and private interest, dedicated to dealing with the pandemic, increase investments in U.S. businesses and promote marine and space economies.
Raimondo’s comments and the Department of Commerce’s actions to protect American intellectual property encourages new inventions and continued research advancements in an effort to drive the U.S. economy forward.
IPWatchdog – The article mentions the disarray in the U.S. patent process. Brian Pomper, Executive Director of the Innovation Alliance, sent a letter to President-elect Biden and Vice President-elect Harris outlining the need to support patent rights to meet enforcement challenges brought on by foreign competitors.
Similar upsets of the U.S. patent process were mentioned in President Biden’s Plan for Rural America, declaring a recommended change on how patents are awarded. One area pertaining to research, President Biden proposed that agricultural patents granted to private entities for inventions derived from publicly funded research deprive the public of duly earned benefits.
To protect the American people, “Biden encourages the U.S. to “re-invest in land grant universities’ agricultural research so the public, not private companies would hold title to agricultural research patents.”
The Hill – Marc L. Busch, Karl F. Landegger Professor of International Business Diplomacy at the Walsh School of Foreign Service, Georgetown University, addressed two IP concerns associated with the forced-technology transfer through joint-venture and government subsidies funding research and development.
China was accused of forcing businesses to hand over their intellectual property to access their market. China then claimed the technology benefiting from the production and sale. Developing a legal partnership is a business strategy that allows the patent holder to sell or license the intellectual property rights to an authorized party for a specified duration and receipt of payment, royalties, or fees.
Busch suggested it may be a viable solution for new or existing patent holders to participate in secondary market spillovers as the concept offers economic benefits while spearheading new market patent developments.
SHRM – Society of Human Resource Management responded to an issue closer to home for U.S. employers and its workforce. President Biden’s platform included eliminating or at least minimizing employee non-compete clauses and no-poaching agreements.
Biden, “specifically, said he would support federal legislation to eliminate most non-compete agreements – allowing only those that are necessary to protect a narrowly defined category of trade secrets.”
Employer IP practices came into play as standard employment clauses and agreements to legally deter employees from sharing company information or competitors from soliciting employees to obtain trade secrets or data. Over time, employment IP protection took on a broader role that interfered with workers’ rights to seek other employment in similar industries.
Employers could secure and protect patented investments by detailing the IP clauses and agreements to guard new technology, confidential information, trade secrets, inventions, or brand data.
In summary, President Biden made two key points in his “Made in America” program; to provide incentives and support companies sourcing and manufacturing products within the United States and to protect U.S. patent rights by challenging attempts to steal American intellectual property.
PQAI helps you identify the combinational prior-art that could be cited as the basis of an 103 type rejection on your patent application.
Looking forward to patenting your invention, the predicament of getting a rejection lingers around. Well, many a time it may be possible to overcome the rejection but it unnecessarily delays the allowance. Do you know what’s the most common reason for rejection? – It’s § 103 orobviousness.
Note: Stats are based on the rejections (Final + Non-Final) given by the Patent Examiners, for the US applications from January, 2017 to September, 2020.
Stats show that 46.95% of patent rejections are because of existing combinational prior art (§103 Type). Read on if you don’t want the examiner to reject your patent application saying – ”your invention is obvious in light of so and so references”.
§ 103 Type Rejection | Combinational Prior Art
You receive a 103 type rejection when the examiner finds more than one document that jointly represents your invention as an obvious improvement.
Let’s say the idea is – “A drone for fighting forest fires that uses canisters filled with dry ice as fire extinguishing material.”
Now if there exists two prior art documents: i) One that describes the use of aerial vehicles to fight forest fires. ii) And another that describes the use of powdered carbon-di-oxide (dry-ice) to extinguish the fire. Our idea shall be deemed obvious.
Let’s run the example through PQAI (an open-source search engine that has the capability to identify the combinational prior art) and see what happens:
So, we ran the idea query through PQAI and as a first combination of results, we got this:
One prior art is talking about fire-fighting drones and second is describing the usage of dry-ice in fighting fires.
What causes § 103 type rejection?
According to USPTO, your idea should stand these tests-
Only one reference doesn’t need to disclose your invention holistically. An examiner can use a combination of references to relate to your idea.
Rather than considering the differences between the idea and the prior arts, the claimed invention as a whole shouldn’t be obvious over the referred prior art.
Your idea as a whole shouldn’t look obvious to a person having ordinary skills in the art (PHOSITA) over existing references during the time of invention.
In our example, the drone is a combination of 2 references that together make the invention possible. The example can’t stand against these guidelines by USPTO. So, our drone is liable to get a rejection under section 103.
You might like to check the video here that shows why our fire-fighting drone with dry ice would fail the test of section 103.
How to rule out § 103 type rejection?
It might not be a bad idea to run your idea through PQAI once to look for the combinational prior art. With PQAI, we have dreamt of creating the world’s first prior art search engine that can identify the combinational prior art. We have also taken the first step to realize this dream. We have developed the first version of PQAI and continuously training our AI engine to perform better. The dream that we have seen cannot come true without the support of people from across the globe especially inventors, patent professionals, NLP practitioners, patent offices etc. In the next section of the article we are presenting a few cases where PQAI spotted the prior art cited by the patent examiner to give a 103 type rejection.
PQAI | Combinational Prior Art Validation Tests
Publication No. Prior Art
NABORS DRILLING TECH USA INC
THE BOEING COMPANY,CHICAGO,IL,US
QUALCOMM INCORPORATED,SAN DIEGO,CA,US
KOREA ATOMIC ENERGY RESEARCH INSTITUTE,DAEJEON,KR
RAYLYNN PRODUCTS LLC,GROVE CITY,OH,US
BROCADE COMMUNICATIONS SYSTEMS LLC,SAN JOSE,CA,US
For each of the listed 6 cases let’s see how PQAI spotted one of the prior arts used by the examiner to reject the patent application.
We picked up the abstract of the subject patent application – US10731375 ran it through PQAI.
PQAI spotted a US patent titled “Fast transportable drilling rig system” – US9027287B2 as one of the prior art in the resultant 10 combinations.
Case#2: US10696381B2 – “Hydraulic systems for shrinking landing gear”
For this application, we picked up the claim and ran it through PQAI.
#sidenote: When looking for prior art using PQAI for a particular patent, it’s best advised to put the invention query as (along with the priority date filter):
Independent claims one at a time
Embodiments from specifications
PQAI spotted US5908174A – “Automatic shrink shock strut for an aircraft landing gear” as one of the results in 10 combinations it presented. It’s also one of the prior arts listed by the examiner to reject the patent application.
Case#3: US10754607B2 – “Receiver and decoder for extreme low power, unterminated, multi-drop serdes”
We picked up the abstract from the patent application US10754607B2 and ran it through PQAI under the combinations (103) option.
PQAI spotted one of the prior arts – US6396329B1; it’s one of the prior arts cited by the examiner to reject the patent application US10754607B2.
We picked up the claim 1 of the subject patent application US10762997B2 and ran it through PQAI as shown below:
PQAI spotted one of the prior arts, the examiner cited to give 103 type rejection – US20140205052A1.
Case#5 US10777098B1 – “CPR training device”
We picked up the abstract of the subject patent application – US10777098B1 and ran it through PQAI to look for the combinational prior art.
PQAI spotted US5121745A – “Self-inflatable rescue mask” as one of prior arts in one of the combinationational results. It’s also one of the prior arts cited by the examiner to reject the patent application US10777098B1.
Case#6: US10778561B2 – “Diagnostic port for inter-switch and node link testing in electrical, optical and remote loopback modes”
We picked up the abstract of US10778561B2 and ran it through PQAI with a date filter. We looked for results published before 2017-09-08.
PQAI spotted US201303266307A1 as a prior art in two combinations. US201303266307A1 is one of the prior arts cited by the examiner to reject the subject patent application.
Use PQAI for Combinational Prior Art Search (103 type)
§103 type – combinational prior art is the most common type of rejection at the patent office. At PQAI, we have taken a shot at creating a prior art search engine that’s capable of spotting combinational prior art. We are continuously testing and improving our algorithm to perform an even better search. We propose that you run your idea at least once through PQAI to look for combinational prior art before applying for a patent. All that’s needed is a few minutes of your time, who knows – PQAI may become your saviour from failing at the patent office.
Informative Snippets in Results for Efficient Relevance Judgement during the Prior Art Search.
“An attempt to help people separate wheat from the chaff efficiently.”
Traditional Prior Art Search | Recursive & Time-Taking
Prior art search is a recursive process. You begin by:
articulating a technical idea in the form of a query,
feed it to a search engine,
wait for it to spit out the results
and then you go through the results one by one.
The relevance of results generally drops as you go down the list. So you refine your query to steer towards more relevant results, and the process repeats.
As you would know that only a few of these results are actually relevant and the rest are irrelevant, often termed as the “noise”. It is not uncommon to see a 50:1 noise-to-relevance ratio in your results.
Going through hundreds of documents to find one relevant piece of information ends up taking the majority of your time. Mostly you are just spending time reading documents that you are going to eventually discard. It is therefore generally beneficial to be able to judge the irrelevance of a document as soon as you can. Unfortunately, most search tools put less emphasis on this part. Either they don’t help you judge the relevancy quickly or go only as far as showing some highlighted keywords. But these approaches are seldom sufficient to inform you about the document’s relevance.
With PQAI, however, we are putting a lot of emphasis on this. We believe that enabling searchers to judge the relevance of documents quickly is one of the most impactful areas where prior art search engines need improvement.
In this article, let us analyse this problem in some detail, ponder upon possible solutions, and see how PQAI aims to be of help.
Notorious Titles & Irrelevant Text
To keep things simple let’s assume we are doing a prior art search through patent literature. Patent titles are notorious for being vague and non-informative. See this patent for example – The title of this patent is – ”Method”, that’s it. This is an extreme example, I admit, but it is generally difficult to judge patents from their titles. Even abstracts, more often than not, are difficult-to-understand. In fact, abstracts may not even relate directly to your query when you are running a search through claims/description. For a lot of results, therefore, you have to judge the relevance by opening those documents in a separate tab and then going through the full text, trying to pin down the relevant sections, if any.
A typical patent contains about 10-12 pages of text. We routinely bump into patents that are longer and have 50-60 pages of text! When looking for prior art, the information you’re looking for could be anywhere within that text. Even expert searchers spend 90% of their time searching for that crucial piece within the text.
How PQAI helps in Time-Efficient Prior Art Search?
When PQAI identifies results, it goes one step beyond. It also picks out relevant parts of the documents matching your query. We call these “snippets” or “passages” – they are complete sentences or selects parts of sentences that make sense on their own. They allow you to judge the relevance of a result directly from the search results page. Thus, you spend much less time sifting through irrelevant results is reduced. You may still need to read lengthy documents but only the ones that are relevant. The ones for which the snippets aren’t sufficiently informative, but overall, the number is greatly reduced.
The figure below shows you what PQAI snippets look like.
“A head mounted device” can be described as “an apparatus that fits on a user’s head”. Or a “housing positioned in front of eyes” can be described as “device that covers the eyes like a set of goggles”
A Quick Recap
While searching for prior art you need to spend a lot of time going through irrelevant results versus the relevant ones. Getting an idea on the irrelevance of the search result without having to read it all can help you save a lot of time. With the aim to reduce this time PQAI brings the query element mapping feature in it.
When you search with PQAI, each result is accompanied with a query mapping table. First column shows a part of the invention query and the second column shows the relevant text from the search result. This mapping is not just word-to-word but it’s highly contextual. Example: “A head mounted device” is intelligently mapped with “an apparatus that fits on a user’s head”.
Now, that sounds interesting, doesn’t it? Do give PQAI a try. We look forward to hearing your experience.
Artificial Intelligence is changing the world around you. From suggesting videos you may like, to driving cars for you. But can AI accompany you on your prior art search spree? Let’s find out.
To Pursue or Not to Pursue? – That is the question
If you are one of the inventive types, you must be having a lot of ideas as you go about your day, as if problems are just kind of waiting for you to arrive and provide a solution. You also know the power and perils of ideas. Pursue the right one and you can make a fortune, pursue a wrong one and it can lead to wasted effort.
So it is important that you pursue the ideas that are most likely to give you high returns. But how do you know in advance?
Well, there is no simple answer to this question but few loose rules of thumbs. One is that it is better to pursue ideas that are actually new and never thought of before. This is important because if you market your idea, you can also get a patent for it. If your idea is not new you won’t be able to have exclusive access to it and you may not even be able to market it.
Many inventors don’t pay sufficient attention to it. Or they assume that if an idea has not been turned into a product then they have no risk in bringing it to market. It couldn’t be farther from the truth. In fact, only a small fraction of the actual ideas that have been patented are realized in the products. Therefore, it is important to run a prior art check before you begin to pursue any idea and be sure that you would be able to patent, and thus, have exclusive rights to market it.
The Prior Art Search | Challenges
There are plenty of free resources available for you to use to run a prior art search. These give you access to thousands of patents. But navigating through that heap of documents is a task of days. Not just that, these search engines require you to create sophisticated search strings. Here is how a sophisticated boolean search string looks like:
The state-of-art patent search tools cater to those who know what to look for and how and where to look for them. But you are an inventor who might not really have a legal background. Don’t worry though, there is a prior art search engine that understands natural language and is super easy to navigate through search results. It’s PQAI – Patent Quality Through Artificial Intelligence. When AI can drive cars it can surely make prior art search less complex.
PQAI – An AI Powered Prior Art Search Tool
When using PQAI, you don’t have to worry about keywords and search strings. You also don’t have to worry about using operators to sieve your results. PQAI also helps you locate prior art without a classification search. Enter your idea into PQAI in plain English. And PQAI shall present to you only the top 10 results closest to your invention. The best part is, each result shows the relevant texts from within the document matching your query. This saves you from reading the patent documents or research papers in full detail.
It’s So Easy You Can Do It Yourself
Let’s assume that your idea is to create a light-weight, portable bluetooth speaker with an in-built light that glows like a real flame together with your music.
Before investing time and resources into this venture let’s check for related prior art using PQAI. Go to projectpq.ai and enter the description of this invention in plain English. We did it for you as shown below.
When we ran this query through PQAI the AI algorithm curated the top ten most relevant representative results. And at the 7th position we found a patent that was pretty close to the invention in question. It’s titled – “Portable Bluetooth Camping Light”. Presented below is the snapshot of the result. It also contains a table showing query element mapping with the relevant text from the patent document.
Here are a few drawings from the above mentioned patent document that match with our invention query.
Looking at the prior art shown by PQAI. The invention seems to be already patented by someone else. This means it might not be very wise to pursue the idea any further.
It’s time for you to look for prior art matching your invention for real. Based on the results you receive you can choose to modify your query. You can also save the results you like to view later. We are sure that you would be surprised to see the insightful results matching your invention.
You can further modify the results by adding filters. You can filter the results based on publication date, document type and source.
How The Dataset Of PQAI looks like?
The results that PQAI curates for you are not limited to just patents. This tool gives you results that include articles, research papers, R&D, and more. PQAI’s database as of today stands at 11 million US patents and applications and nearly 11.5 million research papers in the fields of engineering and computer science.
What really sets this apart, and allows you more time is how you consume the results you are given. The tool will provide you with representative results from different sectors that have a relevance to your idea. Further, it extracts relevant snippets and maps them to different parts of your query. This saves the time you would spend reviewing or analysing an entire document to locate possible prior art.
Let’s Sum It Up
PQAI has been created after mindful research and is still a work in progress. We have taken the concerns of inventors into consideration and are continuously training the AI engine to provide even better results. Easy, curated access to millions of documents and easy search navigation make this the ideal place to begin your patenting/entrepreneurial journey. Prior art searches don’t need to be a chore anymore, especially for inventors like you! Happy inventing!
Patent rejection statistics say: “The probability of failing at the patent office is much higher than that of receiving the patent.”
There are 88.6 % chances that you won’t get a patent on your invention.
“Your patent application is rejected!!” – No inventor wants to hear this!
But the hard truth is many inventors face rejection at the patent office. Either because their invention is not new or deemed obvious. The figure below shows patent rejection statistics for patent applications filed between 2017 – September 2020. 21.28% rejections were because the invention was found non-novel or not new (102 Type). 46.95% rejections were because the invention was found obvious due to a combination of two or more prior arts (103 Type).
Let’s Read The Inventor’s Mind
Is my idea new? Maybe…
I need to find out if someone has created a product like my invention…
Let me do a quick check on google.
……. Search in progress……..
After 15 minutes……
…….No matching results found!……
So cool, no one thought about it until now!! Yayyyy!
Let me get a patent on my invention.
Hopefully I can sell it for a good price $$$$
Let me take some help from an IP community on the internet.
……after some googling and help……
Yay! Patent application filed.
“Your patent application is rejected!!”
Oh No :(, all $$$$ went for a waste.
Would you apply for a patent if you knew that there are 88.6% chances that you won’t get it?
Probably not, alternatively, you would want to look for ways to succeed at the patent office! A few ways could be checking if:
something similar to your invention already exists in the market.
someone has already patented that invention.
someone has described an invention like yours in public.
With all this information either you would drop the idea of patenting or refine your invention.
Finding this information could be challenging. In this post we have shared a solution that can increase your chances of success at the patent office.
Before that let’s take a look at the data about issuance rate at the patent office.
Deepak Hegde, Associate Professor of Management at Yale University,
Dr. Alan Marco, Chief Economist at the USPTO, &
Michael Carley, Senior Data Analyst at T-Mobile.
The authors dived into the issuance rate at the USPTO.
Deepak et al studied 2.15 million utility patent applications filed between 1996 and 2005 and examined until June 30, 2013. The key highlight of their study is the continuous decline in allowance rate with each year.
In 1996 about 70% patent applications turned to a patent which by 2005 fell to 40%.
Further, their study points out that the chances of a patent application to get pogranted in the first go – First-Action Allowance – is only 11.4%. In other words, there are 88.6% chances that a patent application will be rejected by the examiners at the USPTO.
You might be wondering what’s the first action allowance? Don’t let the jargon bother you. The first-action allowance means the patent got granted in the first go itself.
To top it off, the situation is even worse for the inventors at small companies – companies with less than 500 employees. Their first-action allowance rate for inventors from small US companies or individual inventors was only 9.3% during the period while the inventors from large US companies had a slightly better first-allowance rate of 10.7%. Their foreign counterparts fared well, however, due to a possible reason that they file only most important patent applications in the US.
Further, there is a considerable gap of 15.8% in the allowance rate between Large (75.3%) and Small corporations (59.5%) in the US. Another striking finding of the study is that the application filed by small inventors in the biomedical domain has bleak chances of receiving a grant.
Reasons For Rejection Of The Patent Application
One plausible reason for the high rejection rate is that inventors are not aware of the existing prior art. By prior art we mean that the invention like yours exists. Either as a product in the market or as a concept disclosed in a patent or in a non-patent document. The patent rejections statistics where the popular rejection is USC 35 103 confirms this.
102 Type Rejection
The examiner gives 102 type rejections when he finds an exact prior art invalidating claims of a patent application.
103 Type Rejection
The examiner gives 103 type when he combines two or more references to prove an invention disclosed in a patent application as obvious.
Is It The Time To Rescue The Rescuer?
Increase in number of rejections shoot up the time to get a patent and also the patent filing cost. This discourages small companies, and especially startups and individual inventors that don’t have a big budget. To top it off, even if a patent is granted, its chances to make money remains slim.
Thus, if there exists a smart tool that is capable of making an inventor aware of other solutions/references that already exist and could lead to his invention deemed obvious or non-novel, he would be in a better position to make a go or no–go decision. He may share this detail with his attorney for consultation which may lead to a claim amendment before filing an application or other similar strategy.
Such an intelligent tool could have capability to clear the cloud of uncertainty from the patent filing sky. It could facilitate well-informed data backed patent filing strategies which have potential to bring down the patent prosecution cost, time, and number of rejection.