Mr. Doster is a graduate of Vanderbilt Law School where he was a Robert L. Sullivan Intellectual Property Law Scholar. With degrees in Physics from Florida State University and Michigan State University, he is also a Registered Patent Attorney. Mr. Doster is admitted to practice in Florida and Texas, and concentrates in Intellectual Property Litigation. Before practicing law, he worked as an Adjunct Professor of Physics at Gulf Coast State College and as a research assistant in Nuclear Physics at the National Superconducting Cyclotron Laboratory (NSCL) in East Lansing, Michigan.
The United States Patent & Trademark office (USPTO) is running a study on patent eligibility jurisprudence in the United States, and how the current jurisprudence has impacted investment and innovation. The USPTO is particularly interested in the impact on the following technologies: quantum computing, artificial intelligence, precision medicine, diagnostic methods, and pharmaceutical treatments.
The USPTO is accepting comments until September 7, 2021. All comments must be submitted through the Federal eRulemaking Portal at www.regulations.gov and all comments will be made available for public inspection.
The U.S. Patent & Trademark Office is drafting rules for two new proceedings that will be available to the public by December 27, 2021: Expungement proceedings and Reexamination proceedings.
In the future Expungement proceedings, third parties will be able to request cancellation of some or all of the goods or services in a registration because the registrant never used the trademark in commerce with those goods or services.
In the future Reexamination proceedings, third parties will be able to request cancellation of some or all goods or services in a registration on the basis that the trademark was not in use in commerce with those goods or services on or before a particular relevant date.
The USPTO believes that these new proceedings will give U.S. businesses “new tools to clear away unused registered trademarks from the federal trademark register.”
The U.S. Copyright Office states that the new Copyright Claims Board (CCB) will be available to hear claims by December 27, 2021.
The CCB will serve as a nationwide “small claims court” for copyright infringement lawsuits claiming no more than $30,000 in damages. The CCB will not replace federal district courts, which means copyright owners will still be able to bring such “small claims” copyright infringement lawsuits before federal courts. Complainants will not be required to bring claims to the CCB instead of federal courts, and Respondents who are served a claim can opt out of the CCB’s jurisdiction.
However, the Copyright Office intends to create streamlined procedures that would make the CCB a less expensive venue for litigation than a federal district court.
In April of this year, IBM and IPwe announced a project to use Non-Fungible Tokens (NFTs) to record the ownership of patents on a blockchain run by IBM. This development is meant to make it easier to buy, sell, and license patents.
Patent ownership is transferred through legal documents known as “assignments,” which function similarly to deeds for real property. Just as a deed is recorded at your local county courthouse to prove the ownership of real property, so are patent assignments recorded at the U.S. Patent & Trademark Office (“USPTO”) to prove the ownership of patents and trademarks.
The issue is that the process of drafting, signing, and recording assignments can be slow. Because of this, buying and selling patents may feel more like the slower speed of buying and selling a house, instead of feeling like the faster speed of buying and selling a financial asset (i.e. a publicly-traded stock or bond). The benefit of such a slower process is, like for real property, the chain of title for a patent can be seen on the USPTO database of assignment records.
Now, this project between IBM and IPwe attempts to combine the transparency of a recordation system with the speed of modern financial transactions by representing the ownership of a patent with an NFT, and recording that NFT on a public blockchain. IPwe plans on using its “Global Patent Marketplace” platform as the online marketplace for buying and selling patent NFTs, which IPwe expects to be working by the last quarter of 2021.
If you want to buy corporate stocks, you can go to a licensed stock broker who has access to a stock exchange. If you want to buy U.S. Treasury bonds, you can go to the TreasuryDirect online marketplace and purchase them directly from the U.S. government. If you want to buy physical gold or silver, you can go to a precious metals dealer. If you want to buy bitcoin, you can go to an online cryptocurrency exchange.
But where do you go if you want to buy a patent?
According to one website, there are 23 online marketplaces where you can buy and sell patents.
Below is a small sampling of online intellectual property (IP) marketplaces and the number of patent listings as of the publication of this article:
- Tynax Patent Brokers: 562,894 listings
- IdeaConnection: 13,780 listings
- PatentAuction.com: 5,774 listings
- IP Marketplace: 858 listings
- IAM Market: 768 listings
- PCTXS.com: 350 listings
- The Patent Exchange: 7 listings
Some IP marketplaces offer additional services such as IP valuation, facilitating IP licensing, facilitating IP investing, and IP litigation financing.
IP marketplaces are still relatively new. The U.S. government has issued patents for over 230 years, but IP marketplaces appeared in the last 20 years during the rise of the internet.
At least one marketplace is exploring the use of blockchain technology, by way of Non-Fungible Tokens, to facilitate and record the sale of patents. We will explore these new developments in the next blog post.
U.S. Patent X1 (issued July 31, 1790)( https://commons.wikimedia.org/wiki/File:United_States_Patent_X1.png)
As detailed in an article published by Firm Associate, H. Jared Doster, in The IP Examiner, the Federal Bar Association Intellectual Property Law Section’s publication (see full article here: https://bit.ly/3wKOJIr), the U.S. Copyright Office will establish a Copyright Claims Board in Washington, D.C. This Board is designed to provide a venue for Copyright holders to file small claims while avoiding the expense of litigation in the Federal Courts. The Register of Copyrights is expected to issue regulations governing the procedures of the Board, but the forum will likely apply relaxed evidentiary standards and expedited determinations. This is an interesting development for individuals and small businesses, as well as overburdened Federal Courts.
Professor Dennis Crouch, Law Professor at the University of Missouri Law School, recently published the below chart showing an approximately linear increase in named inventors on published U.S. patent applications over time.
According to the U.S. Patent & Trademark Office’s 2019-2020 Telework Annual Report, “[i]n 2019, more than 11,000 employees agency-wide are teleworking between one and five days per week. Of these, more than 7,000 employees work from home four to five days per week and have completely relinquished an assigned workspace at the USPTO facility.” Now, in 2021, the USPTO operates with nearly all of its employees teleworking. “Today, in response to the pandemic, virtually all of our employees telework full time, and USPTO operations have been able to continue without interruption.”
In light of the new telework regime, the USPTO is considering reducing the amount of its available office space.
1] See 2019-2020 Telework Annual Report at 3 ( https://www.uspto.gov/sites/default/files/documents/Telework_Annual_Report_2019-2020.pdf).
 See 2019-2020 Telework Annual Report at 3.
When a copyright owner discovers that its copyrighted material is reproduced on a website without the owner’s permission, the Digital Millennium Copyright Act (DMCA) allows the owner to send to a website host, or other service provider, a “DMCA request” to remove the infringing content.
The Google search engine receives many of these DMCA takedown requests, and it recently received its 5 billionth such request to delist URLs that point to allegedly infringing content. Additional details can be found on Google’s “Transparency Report,” found at https://transparencyreport.google.com/copyright/overview.
On January 16, 2021, the USPTO issued Design Patent D908,917 to SkyRise Global, LLC in Coconut Grove, FL. The patent claims the “ornamental design for a building, as shown and described” in the patent. Two figures from the patent are shown below
It appears that the building is planned to be constructed in downtown Miami and is meant to be a “1,000 foot high vertical entertainment center.”