What's New in Patent Law, 2018 to 2021

Check out these important court decisions and other developments in U.S. patent law over the last few years.

By , Attorney


Some of the major legal changes in U.S. patent law between 2018 and 2021 include the following.

An inventor must be a natural person

The U.S. Patent, Copyright, and Trademark Office (USPTO) rejected a patent application because the applicant failed to name a natural person (a human being) as the inventor. The application documentation listed the inventor's given name as "DABUS," and the family name as "Invention generated by artificial intelligence." The assignee (and the person who supplied the application) stated that artificial intelligence created the invention autonomously.

The USPTO pointed out that the patent statute identifies the "inventor" as an individual, under 35 U.S.C. Section 115a. (In re Application No. 16/524,350, July 29, 2019.)

Evidence of competitor copying can be used to show nonobviousness

Fighting against patent invalidity (due to nonobviousness), a hair-care company offered proof that its hair-bleaching process was copied by a competitor using confidential information. The Patent Trial and Appeals Board (PTAB) concluded that the evidence was irrelevant. On appeal, the Court of Appeals for the Federal Circuit (CAFC) disagreed with the PTAB, holding that copying confidential information without authorization from the patent applicant should be included as a "secondary consideration" when determining nonobviousness.

The CAFC remanded the case to the PTAB to consider the evidence of competitor copying. (Liqwd, Inc. v. L'Oreal USA, Inc., No. 18-2152 (Fed. Cir. 2019).)

Inequitable conduct may taint a family of patents

When someone applying for a patent commits fraud or inequitable conduct when communicating with the USPTO or during the patent application process, a court may later refuse to enforce that patent (the patent is invalidated).

Often the tainted patent is part of a group of patents owned by the same party; that is, patents covering similar subject matter. If inequitable exists only during the prosecution of one patent, associated patents will still be enforceable. However, if the conduct was so bad that the owner's "unclean hands" tainted a family of patents, then, under the doctrine of "infectious unenforceability," all of the patents will be judged to be unenforceable.

In a 2020 case, a Delaware District Court cited this doctrine when it refused to dismiss claims that a family of patents could be invalidated. The court rejected the argument that inequitable conduct must be related only to patent prosecution. (Guardant Health, Inc. v. Foundation Medicine, Inc., 1-17-cv-01616 (D.C. Del. Jan 7, 2020).)

A patent owner is bound by an admission to the USPTO regarding prior art

The plaintiff in this case, a paint company, had previously admitted that a prior art document disclosed a BPA-free coating to the USPTO. The statement was made during a reexamination proceeding that was later vacated. A federal district court determined that a prior admission to the USPTO during a vacated reexamination proceeding is binding on the parties. (The Sherwin-Williams Company v. PPG Industries, Inc., 2-17-cv-01023 (W.D. PA 2021-01-21, Order).

Patent refused for invention lacking scientific support

A group of inventors applied for patents for inventions related to "quantum entanglement." In reviewing the claims, the USPTO determined there was no scientific evidence to support the invention claims. The examiner stated that the claims violated the first law of thermodynamics, fundamental chemistry laws, classical physics laws, and the principle of conservation of mass.

On appeal, the CAFC supported the USPTO position, stating "concepts that strain scientific principles are properly held to a heightened standard, typically measured by reproducibility of results." The CAFC referred to inventions for perpetual motion machines and cold fusion as having similar patentability problems.

For more information on this ever-changing area of U.S. law, see the Patent section of Nolo's website.