• Lumenci

USPTO Director's Austin Visit - Lumenci thoughts

Updated: Jul 4, 2019

Lumenci Principals Kalyan Banerjee and Vamsi Krishna attended the Fireside chat event on Monday (2/11/2019) organized by the USPTO at Silicon Labs, Austin. The event was attended by patent attorneys, entrepreneurs and technologists in the Austin area. The event ran for over an hour, and the attendees really commended the USPTO and Director Andrei Iancu’s work in clarifying a variety of issues in recent months, and most prominently, two issues.

First, more clarity on 101 issues. Director Iancu spoke in some detail about the four categories that constitute subject matter not eligible for patenting – natural phenomenon, mathematical concepts, methods of organizing human activity, and mental process. He also emphasized that being eligible for patenting (101) is a different inquiry than whether the claim is novel (102) and non-obvious (103) and is supported by specifications (112), and these areas shouldn’t be conflated. Even if a claim recites one of the judicial exceptions above, patent examiners need to evaluate the claim has elements for practical application. The full USPTO guidance is available here.

Second, another huge problem for patent practitioners has been that the PTAB applied the BRI (Broadest Reasonable Interpretation) standard while the Courts applied the Phillips standard. Now, even the PTAB needs to apply the Phillips standard.

Three other issues were also discussed and brought to everyone’s attention –

This audience was the first public audience to hear about the Study conducted by the USPTO (which is now publicly available) on Women Inventors. The major, and disappointing, finding of the study is that even though female participation in engineering fields and entrepreneurship has increased, those gains have not translated into increase in female inventors. Women inventors still make only 12% of all patents issued in 2016. Eric Gould Bear, a prolific inventor and investor, also raised this issue during the Q&A session, which led Director Iancu to also suggest that girls in middle schools and high schools need role models of women inventors for them to pursue innovation, and if they don’t by college it’s probably a little late. Full Report here.

The USPTO is also using AI and Machine Learning to develop tools that help augment patent examiner’s work. Though in this meeting the Director only touched upon this topic briefly, in an earlier address specifically on Artificial Intelligence (link here), he did outline in some detail those areas - a new cognitive assistant called “U” or “Unity" to conduct federated search, semi-automated tools for search query expansion, use of robotic process automation, and use of AI to route the right case to the right examiner.

Austin isn’t a regional center for USPTO (even though it is a fairly sophisticated tech hub, and only increasing in reach every year), and alas it wouldn’t be so for some time based on what we heard.

Overall, it was great Q&A with the USPTO Director and we at Austin hope to have more conversations like these.