Strategic Goal 3: Provide Domestic and Global Leadership to Improve Intellectual Property Policy, Protection and Enforcement Worldwide
Under Secretary Kappos testifies at a House Subcommittee Hearing on Intellectual Property, Competition, and the Internet on Capitol Hill, January 25, 2011.
In addition to the examination and issuance of patents and trademarks, the USPTO promotes the protection and enforcement of the IP of American innovators and creators on both the domestic and international levels. Under the AIPA of 1999 (Pub. L. No. 106-113), the USPTO is directed to advise the President, through the Secretary of Commerce, and all Federal agencies, on national and international IP policy issues including IP protection in other countries. The USPTO is also authorized by the AIPA to provide guidance, conduct programs and studies, and otherwise interact with foreign IP offices and international intergovernmental organizations on matters involving the protection of IP.
As described below, during FY 2011, the USPTO provided domestic and global leadership on a broad range of IP issues. The USPTO played a very active role in advising Congress on critical IP legislation, including patent reform, and the Federal Courts on major IP litigation. The USPTO continued to engage with other Federal agencies in bilateral, plurilateral, and multilateral negotiations involving the protection and enforcement of IP around the globe. The USPTO’s cooperation with IP offices was greatly expanded during FY 2011, including an expansion of the PPH program to several new partner offices. Through the USPTO’s Global IP Academy (GIPA), we greatly expanded IP rights training, capacity building, and technical assistance offerings to promote improved IP protection and enforcement. The USPTO also continued to work closely with the White House’s IP Enforcement Coordinator (IPEC) to implement the Administration’s IP enforcement plan, including improving the USPTO IP Attaché Program and establishing a U.S. Government-wide database of training and capacity building efforts.
Objective 1: Provide Domestic Leadership on IP Policy Issues and Development of a National IP Strategy
Supplying America with a National IP Strategy
The USPTO committed in its 2010-2015 Strategic Plan to develop a National IP Strategy for the 21st Century (Strategy) as a central component of the President’s evolving Strategy for American Innovation. To date, the USPTO has formed an internal task force composed of representatives from all business units, and has conducted a series of internal meetings in which the task force has fully developed the outline and fundamental narrative for the Strategy. The Strategy will address: (a) how the IP system promotes innovation, economic growth, and competitiveness; (b) the necessity of building the IP infrastructure; (c) the importance of improving the operation of the IP system; (d) the need to show global IP leadership; and (e) using IP to support national technology priorities. The task force is in the process of drafting the Strategy. The draft document is slated to be completed and – after internal USPTO review – submitted for interagency review in the fall of 2011.
Monitoring and Providing Policy Guidance on Key IP Issues in Cases
The USPTO continues to heavily shape IP law and policy through domestic litigation, both as a party and as an amicus curiae. The Agency’s IP litigation responsibilities fall primarily on the Office of the Solicitor within the Office of General Counsel (OGC). The Solicitor’s Office defends, among other things, the decisions of the Agency’s two administrative boards (i.e., the BPAI and TTAB), decisions of the Director, and the Agency’s rulemaking and policies in court. These cases involve a wide variety of issues, affecting both substantive IP law and Agency practice concerning patent applications and trademark registrations. As the BPAI has tripled the number of decisions it has issued in recent years, the Solicitor’s Office has seen a dramatic increase in the number of appeals it is litigating in FY 2011. Whereas the Solicitor’s Office typically defended 50-60 BPAI and TTAB decisions annually over the past 10 years, the number of appeals being handled by the Solicitor’s Office topped 100 cases at the beginning of the fourth quarter. Larger numbers of appeals are expected for next year. Despite budget cuts and hiring freezes, the Solicitor’s Office has not seen any significant decrease in its litigation success.
OGC also plays an important role advising the Solicitor General of the United States on IP matters before the U.S. Supreme Court. The Solicitor’s Office aided the Solicitor General in developing the Government’s amicus position in Microsoft Corp. v. i4i Limited Partnership, which challenged the presumption of validity accorded patents under 35 U.S.C. § 282. Specifically, Microsoft challenged the strength of that presumption – arguing that a low “preponderance” standard for proving invalidity should be sufficient rather than the higher “clear and convincing” standard required by the U.S. Court of Appeals for the Federal Circuit – when evidence raised during litigation was not expressly considered by the USPTO during the original examination. A unanimous Supreme Court rejected Microsoft’s argument and, in straightforward language, wrote: “We consider whether § 282 requires an invalidity defense to be proved by clear and convincing evidence. We hold it does.” The decision in i4i represents an important vote of confidence by the Supreme Court in the ability of the USPTO to correctly perform its core patent examination functions.
Another Supreme Court matter being handled by OGC, this time as a party, is Hyatt v. Kappos. The Hyatt case concerns the circumstances under which new evidence of patentability may be introduced by a patent applicant in a civil action in federal district court under 35 U.S.C. § 145 for review of the BPAI decision affirming the rejection of its patent claims by the USPTO. In late 2010, the Federal Circuit issued an en banc decision in Hyatt, holding that under Section 145, an applicant can introduce new evidence, even if that evidence could have been submitted to the USPTO during its proceedings. At the USPTO’s request, the Supreme Court granted certiorari to consider: (1) Whether the plaintiff in a Section 145 action may introduce new evidence that could have been presented to the Agency in the first instance, and (2) Whether, when new evidence is introduced under Section 145, the district court may decide de novo the factual questions to which the evidence pertains, without giving deference to the prior decision of the USPTO.
OGC established the Law School Clinic Certification Pilot Program in 2008 to give law students an opportunity to practice patent and trademark law before the USPTO (e.g., by drafting applications, filing applications, responding to Agency actions). The Program benefits the IP community by increasing the number of highly-qualified IP attorneys, and encourages participating students to consider a career with the USPTO when they graduate. The Program began with six schools and expanded to include 16 schools in FY 2011.
Providing Domestic Education Outreach and Capacity Building
The USPTO, through the GIPA in the Office of Policy and External Affairs, provides IP educational opportunities to domestic small and medium-sized enterprises, universities, foreign officials, and the public. The GIPA provides expertise on administration, protection, and enforcement in all areas of domestic and international IP. In FY 2011, the GIPA conducted more than 120 training programs with more than 5,500 attendees from 138 different countries. The attendees included officials from foreign IP offices, law enforcement authorities (including prosecutors, police, and customs officials), and members of the judiciary. Domestic opportunities include outreach to Native American tribes, educational programs on IP awareness, and China Road Shows providing IP information to small and medium-sized enterprises seeking to do business in China. Additionally, the GIPA partners to develop and deliver educational outreach programs with other areas of the United States Government (USG), in particular the Small Business Administration, bureaus of the DOC including the Minority Business Development Agency, and the U.S. Export Assistance Centers of the U.S. Commercial Service. The GIPA also worked with the Office of the White House IPEC to coordinate all USG IP training including hosting a database of all training and capacity building activities. The efforts by the USPTO will facilitate the export capabilities of domestic industry and small and medium-sized enterprises, and ensure their competitiveness around the world. As illustrated in Figures 14, 15, and 16, these charts provide the number of programs, officials, and countries trained by the GIPA. These data reflect USPTO’s contributions to the development of strong IP systems, domestically and abroad.
Engaging USG Agencies and Congress on Legislation that Improves the IP System
Throughout FY 2011, the USPTO continued its engagement with the Congress, other USG agencies, and its stakeholders to promote effective IP legislation. Patent reform legislation continued to be the focus of the first session of the 112th Congress. The AIA, as signed into law (Pub. L. No. 112-29) on September 16, 2011, supports USPTO’s efforts to improve patent quality, reduce the backlog of patent applications, reduce domestic and global patenting costs for U.S. companies, provide greater certainty in patent rights, and offer effective alternatives to costly and complex litigation.
Director Kappos, Deputy Director Rea, Commissioner for Patents Stoll, and USPTO staff conducted numerous briefings and meetings with hundreds of Members of Congress, Senators, and congressional staff to discuss the intricacies of proposed patent reforms. USPTO staff will work closely with stakeholders on implementation of this important legislation.
During the year, the USPTO provided policy guidance on various other IP bills, including legislation to crack down on rogue websites that traffic in counterfeit merchandise.
In FY 2011, Under Secretary Kappos testified on Capitol Hill on three occasions – including twice before the House Judiciary Committee on “How an Improved U.S. Patent and Trademark Office Can Create Jobs” and on patent reform legislation. The Director also testified before the House Appropriations Committee on USPTO’s FY 2012 budget request.
The USPTO also increased its engagement with Members of Congress and their Staff. Senator Mary Landrieu was the keynote speaker at the Women’s Entrepreneurship Symposium; Representative Jim Moran was the keynote speaker at the opening ceremonies of the USPTO Trademark Expo; and Senator Mark Warner of Virginia and Congresswoman Sandy Adams of Florida also visited the USPTO for meetings with the Under Secretary. Twice this year the USPTO hosted congressional staffers for “A Day in the Life” of a typical patent and trademark examiner. The USPTO also hosted several staff from the Senate Small Business Committee.
Objective 2: Provide Leadership on International Policies for Improving the Protection and Enforcement of IP Rights
Leading efforts at the World Intellectual Property Organization (WIPO) and other Intergovernmental/International Organizations to Improve International IP Rights Systems
Throughout FY 2011, the USPTO continued to seek enhanced cooperation and improved protection for IP multilaterally in several fora including the WIPO, the World Trade Organization (WTO), and other intergovernmental organizations. The USPTO continued its efforts to improve the WIPO filing and registration systems. In the copyright area, the USPTO advanced work on issues relating to the protection of broadcasting, the protection of audio-visual performers, and the access to copyrighted works by persons with print disabilities. Within the WIPO Standing Committee on Copyright and Related Rights, the USPTO brokered a deal to end the 11-year stalemate on conclusion of the WIPO Audiovisual Performers’ Treaty, a treaty effort that has been dormant since a failed diplomatic conference in 2000. Separately, the USPTO participated in “four way” meetings between a group of Latin American countries, the European Union, African countries, and the U.S. to forge a common text for an international instrument addressing copyright exceptions for the benefit of blind persons and the cross-border sharing of special format copies for the blind.
Senator Mary Landrieu of Louisiana speaks at the USPTO’s Women’s Entrepreneurship Symposium March 11, 2011, in Alexandria, Virginia.
The International Union for the Protection of New Plant Varieties (UPOV) is celebrating its 50th anniversary this year. To help commemorate this anniversary, the USPTO and the Department of Agriculture’s Plant Variety Protection Office hosted the 45th Technical Working Party on Vegetable Crops in Monterey, California, on July 24-29, 2011. The USPTO and UPOV also worked together in providing assistance to the African Regional IP Office and its members in drafting and adopting plant variety protection laws in conformity with the UPOV Convention. The USPTO and UPOV also worked with Japan in supporting the Association of South East Asian Nations’ countries plant variety testing and application examination under the UPOV Convention.
Improving Efficiency and Cooperation in the Global IP System
Throughout FY 2011, the USPTO continued to emphasize work-sharing among patent offices as a key to efficient management of office workloads, reduction of backlogs and pendency, and improvement of the international patent system. The USPTO’s primary work sharing vehicle—the PPH—has proven to be a major success, producing significant efficiency gains in terms of higher allowance rates, fewer office actions per disposal, and substantially lower percentages of appeals and continuation applications. The USPTO has doubled the total number of PPH requests in 2011 that it has received in the preceding four years combined.
Under Secretary Kappos, Japan Patent Office Commissioner Yoshiyaki Iwai, and President of the European Patent Office Benoît Battistelli celebrate further work sharing agreements, November 14, 2010, in Alexandria, Virginia.
The USPTO continues to work with its international partners to evolve and improve the PPH and, to this end, began testing a new approach in July 2011 that enhances flexibility and expands PPH eligibility. In parallel, the offices are working out details of a USPTO proposal for a next-generation framework—PPH 2.0—that will replace the existing network of bilateral arrangements with a more centralized, easy-to-use system incorporating the new approach being tested, as well as other user-friendly enhancements.
As illustrated in Figure 17, this chart provides the number of PPH requests filed with the USPTO. PPH is a framework in which an application whose claims have been determined to be patentable in one country’s patent office is eligible to go through an accelerated examination in another country’s patent office.
The USPTO, along with its Trademark Trilateral partners, i.e., the JPO, and the Office for the Harmonization of the Internal Market, have been accelerating work on one particular Trilateral Project, known as the “Trilateral ID Project.” The Trademark Trilateral partners have collaborated to compile a list of identifications of goods and services (IDs) that are acceptable in each of their respective offices. The USPTO, with the approval of the Trilateral partners, is taking the lead to invite other national trademark offices to participate in the project. To date, Canada, Philippines, South Korea, Mexico, Singapore, and the Russian Federation have joined the project.
The USPTO also worked with WIPO to ensure that the Trilateral ID list is incorporated into the Madrid System for the International Registration of Marks to provide applicants with IDs that will be accepted by certain national offices. Additionally, upon request by the USPTO, WIPO has started to revise the Madrid application forms to better accommodate some U.S. application requirements.
Improving Enforcement and Providing Capacity Building and Technical Assistance to Key Countries/Regions
The USPTO continued to work closely with other USG agencies to increase the accessibility, efficiency, and effectiveness of civil, border, and criminal enforcement mechanisms in global trade, foreign markets, and electronic commerce, and to encourage foreign trading partners to adopt laws against illegal camcording of movies. The USPTO also continued to organize capacity-building activities for foreign officials on IP enforcement topics, effective border enforcement, investigation and prosecution of digital piracy, and combating counterfeit medicines and infringing hard goods. Domestically, the USPTO played a key role in assisting small businesses to protect and enforce their IP, and regularly participated in the IP Theft Enforcement Teams training programs organized by the National IPR Coordination Center for Federal, state and local law enforcement personnel.
The GIPA offers training programs on protection, utilization, and enforcement of IP rights including patents, trademarks, and copyrights (Table 15). It is through the GIPA training programs that the USPTO is instrumental in achieving its objectives of advancing IP right policies and halting IP theft. The USPTO is developing survey tools to evaluate the effectiveness and impact of these training programs. These evaluation and survey tools provide methodologically rigorous data collection and analyses in place of more subjective, ad hoc, non-standardized anecdotal materials. The survey questions have been approved by the Office of Management and Budget (OMB). The tools will include pre-program, post-program, and alumni surveys. The use of the three surveys will allow the USPTO to collect data spanning the life of the GIPA training cycle.
1: FY 2011 is a baseline year for this new measure. A target will be assigned after baseline data has been analyzed, and actuals reported subsequently in FY 2012. (back to text)
Providing Policy Advice and Expertise to Other USG Agencies
The USPTO continued to provide policy advice and technical expertise on IP administration, protection, and enforcement in several contexts, including in the consideration of domestic legislation involving IP and in the formulation and negotiation of bilateral and multilateral agreements and initiatives.
The USPTO worked with the U.S. Trade Representative (USTR), the State Department, the Department of Health and Human Services and several other agencies, as well as U.S. stakeholders, to finalize a draft framework agreement in the World Health Organization (WHO) on the sharing of influenza samples and related benefits. The framework agreement was adopted by the General Assembly of the WHO in April 2011.
The USPTO also worked closely with the USTR throughout FY 2011 in ongoing IP discussion in the WTO in seeking to maintain the integrity of the Trade-Related Aspects of IPR (TRIPS) Agreements and defeat attempts to weaken it. The USPTO also advised the USTR during the WTO accession process of several countries in evaluating IP laws, regulations, and practices of countries in the process of accession, and advising the USTR as to their TRIPS-consistency.
The range of policy advice and expertise provided by the USPTO included:
- Legislative and regulatory analysis and drafting;
- Identification of deficiencies and needed improvements to foreign laws and regulations;
- Identification of potential administrative improvements to existing foreign IP regimes; and
- Technical and strategic policy advice in international IP negotiations.
Providing Technical Expertise in Negotiation and Implementation of Bilateral and Multilateral Agreements
The USPTO continued to provide expert technical advice on the full range of substantive IP protection and enforcement issues to the USTR in connection with on-going trade negotiations. The USPTO played an active role in the successful conclusion of the Anti-Counterfeiting Trade Agreement negotiations, the ongoing Trans-Pacific Partnership negotiations, and the implementation and monitoring for compliance of other bilateral and free trade agreements.
Increasing the effectiveness of IP Attachés in Prioritized Countries/Regions
The USPTO places a high priority on increasing the effectiveness of IPR in prioritized countries/regions. In FY 2011, the USPTO established an IP Attaché Task Force to explore options to improve and expand the Attaché Program. The task force has developed 19 proposals and is currently working to implement many of these proposals. As part of this work, IP attachés and their country/region teams at USPTO headquarters have developed Master Action Plans that eliminate any inconsistencies and redundancies between the numerous work plans at USPTO in Alexandria, Virginia and at post, and serve as blueprints that guide the work of the country team and the attaché. Standardized operating procedures and standardized performance measures have also been developed.
Through its attachés, USPTO has met a number of important objectives in host countries. For example, an agreement was signed with the Russian Federal Service for IP, Patents and Trademarks (Rospatent) in which Rospatent agreed to undertake international search and international preliminary examination for international applications filed with the USPTO as the receiving office. This will be beneficial for U.S. applicants as it will provide them with an additional choice of international authorities for searches and preliminary examinations based on the field of technology of the invention, as well as the speed and cost of service. Other accomplishments include the introduction of legislation to improve Brazil’s criminal IP laws and the government of India’s decision to maintain patent protection for certain computer-related inventions. The implementation of country-specific action plans in prioritized countries is shown in Table 16. This reflects the USPTO’s continued efforts in engaging foreign IP offices, enforcement entities, and their respective legislative organizations.