​Recently, the USPTO declined a petition to extend inventorship to an artificial intelligence machine named DABUS.  In the decision, the USPTO reasoned that Title 35 states "whoever invent," which suggests a natural person, and that an inventor who executes an oath or declaration must be a "person." The USPTO also referred to the Federal Circuit's decision in Univ. of Utah v. Max-Planck-Geselleschaft zur  Forderung der Wissenchaften e.V., to support its conclusion that only a natural person can be an inventor.

The Leahy-Smith America Invents Ac...

We are pleased to announce the publication of Peter's new book The Physician Inventor: The Doctor's Handbook to Patenting Medical Devices and Methods. It is a great resource for physicians and other healthcare professionals interested in inventing medical devices.  More details can be found here.

Last week, the Federal Circuit rendered an opinion in Barry v. Medtronic, in which Dr. Barry alleged that Medtronic induced surgeons to infringe U.S. Patent Nos. 7,670,358 and 8,361,121 both for "System and Method for Aligning Vertebrae in the Amelioration of Aberrant Spinal Column Deviation Conditions."

The patents relates to systems for correcting spinal column anomalies by applying force to multiple vertebrae at once.  The decision is an interesting one because of its detailed analysis of Dr. Barry's activities prior to applying for patent.

B...

Peter Sleman was featured in an article at MedicalDevicesGroup.net, which you can read here:

https://www.medicaldevicesgroup.net/medical-devices/patents/

The CardioNet case highlights some of the Alice pitfalls and how they relate to medical devices.

Many patent attorneys have never heard of Third-Party Submissions, and most have never filed one.  When properly used, anonymous Third-Party Submissions can effectively advance a client's goals.  The article was published at IPWatchdog.

If you would like to explore filing a third-party submission on your behalf, or on behalf of a client of yours, we would be happy to review your situation and devise an appropriate strategy.

Patent 10,000,000 just issued to Raytheon.

You can see it here:
https://10millionpatents.uspto.gov/docs/patent10million.pdf

The patent also has the new cover design, which you can see here: https://10millionpatents.uspto.gov/newpatentcover.html

Interestingly, Patent No. 10,000,000 had a relatively smooth and efficient prosecution.  Let us hope that this is a sign of things to come from the USPTO.

Few IP practitioners were surprised by the Oil States decision on whether inter partes review (IPR) violates Article III or the Seventh Amendment.

According to some, had the Supreme Court ruled that the current IPR procedure violates the Seventh Amendment, dead patents invalidated in previous IPRs would be resurrected, causing a great deal of uncertainty and plenty of re-litigation.  The practical effect is that the IPR system remains in place with possible tweaks to come, and that the so-called zombie patent apocalypse will not occur....

Aside from cost, the second most frequent line of questions from first-time inventors is about timing and process.  Below is a simplified flow chart of the patent process:

Preparing and drafting a patent application is a process that is within the control of the inventor.  A diligent inventor working with a responsive patent attorney can typically file a quality patent application within weeks.

Once the application is filed, however, there is a waiting period before the utility application is reviewed by a patent examiner.  That period of time w...

In Smith & Nephew, Inc. v. Hologic, the Federal Circuit looked at U.S. Patent No. 7,226,459.  Smith & Nephew owns the ’459 patent, entitled “Reciprocating Rotary Arthroscopic Surgical Instrument.”  The opinion includes an interesting discussion on the construction of claim 1 of the '459 patent. 

Claim 1 recites:

A surgical instrument, comprising:

a cutting member including an implement for cutting tissue; and

a drive coupled to the cutting member to simultaneously rotate, translate, and reciprocate the cutting member in response to...