Patent Licensing and Transactions

In June 2021, the Supreme Court ruled in U.S. v. Arthrex that the statutory scheme appointing Patent Trial and Appeal Board administrative patent judges to adjudicate IPRs violates the appointments clause of the U.S. Constitution. Specifically, the Court concluded that because APJ decisions in IPR proceedings are not reviewable by a presidentially appointed and Senate-confirmed officer, such determinations are not compatible with the powers of inferior officers. The PTO later decided that it would not accept requests for director review of institution decisions. This policy is now also being questioned in Arthrex's wake.

Regardless of whether a patent practitioner's clients favor a stricter or more lenient eligibility regime, patent eligibility decisions continue to evolve. We need a line drawn for what practitioners expect to be clearer. Hardware inventions are facing patent eligibility challenges that would have seemed more likely in software inventions. Recent court decisions have shown that what once made a hardware invention eligible may no longer fly.

A recent Federal Circuit opinion sheds light on the process for settling co-ownership disputes pursuant to an underlying agreement. Although the precedential opinion does not change the rules of contract interpretation, it suggests considerations when drafting ownership agreements.

When deciding whether to apply for patent protection on an innovation or whether to keep the innovation confidential as a company trade secret, there are many considerations that a business must take into account stemming from the different characteristics of each.

The murkiness around patent eligibility is one reason innovators have been turning more toward trade secret law to protect their inventions.

For the foreseeable future, patent applications involving artificial intelligence technologies, including machine learning, will increase with the continued proliferation of such technologies. However, subject matter eligibility can be a significant challenge in securing patents on artificial intelligence and machine learning.

For the foreseeable future, patent applications involving artificial intelligence technologies will increase with the continued proliferation of such technologies. However, subject matter eligibility can be a significant challenge in securing patents on artificial intelligence and machine learning.

The Supreme Court is considering a petition in a §101 case, in which the Federal Circuit split six-to-six in denying rehearing en banc, and in which the Supreme Court recently called for the views of the Solicitor General.