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Submit Topic Ideas for New Quality Case Studies Pilot Program
Guest blog by Deputy Commissioner for Patent Quality Valencia Martin Wallace
The USPTO is dedicated to providing the best work products and services at every stage of the patent process. Over the past year, we have worked diligently on the evolving programs of our Enhanced Patent Quality Initiative (EPQI) that we developed in response to our stakeholder’s feedback. In December, we initiated a new program, the Topic Submission for Case Studies Pilot Program and through it we invite our stakeholders to submit patent quality-related topics that you believe should be the subject of a USPTO case study by Friday, February 12, 2016.
The USPTO anticipates these case studies will help us better understand the quality of our work products and, where appropriate, take action to remediate quality issues. We expect these case studies to assist us in formulating best practices to enhance patent quality by improving our patent work products and examination processes, as well as recognizing areas where further examiner training may be needed.
Case study topic submissions should (1) set forth a patent quality-related issue; (2) propose how the USPTO should study the issue; and (3) discuss how such study could lead to improvement in the quality of patents issued by the USPTO. Topic submissions should not focus on particular applications, examiners, art units, or other purely managerial concerns.
For more guidance on types of topics to submit and the form in which topics may be submitted, visit Topic Submission for Case Studies Pilot Program on our website. Submissions for the program should be emailed to TopicSubmissionForCaseStudies@USPTO.gov. All qualifying submissions will be posted publically on our website.
Enhancing patent quality is central to fulfilling the mission of the USPTO (Read more in Director Lee’s blog update from November 2015) and we value your participation in this new pilot program. It is of upmost importance to us to involve you in our quality improvement processes, and also maintain transparency in our quality efforts.
Leadership in All USPTO Regional Offices
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee
After much excitement in the last few months of 2015 with the opening of our final two regional offices—the West Coast Regional Office in Silicon Valley in October and our Texas Regional Office in Dallas in November—I’m happy to announce that Molly Kocialski will be the Director of the Rocky Mountain Regional United States Patent and Trademark Office in Denver, Colorado. With Molly’s addition, all four of our regional offices now have directors, making us well-positioned to fully advance the mission of the USPTO as America’s Innovation Agency.
As the new director, Molly will spearhead the Rocky Mountain Regional Office’s efforts to bring the USPTO’s resources directly to the local innovation community, helping to fuel economic growth and innovation in the region, as well as oversee the local team of patent examiners and PTAB judges. Molly is an established IP leader in the Rocky Mountain region, having served as the Chair of the Intellectual Property Section of the Colorado Bar Association and currently on the Colorado Bar Association’s Board of Governors. Moreover, Molly brings to bear more than 20 years of experience in intellectual property. Most recently, she was the Senior Patent Counsel for Oracle America, Inc. in Denver, responsible for managing an active patent prosecution docket and all of the post-grant PTAB proceedings and patent investigations for Oracle and its subsidiaries. Prior to Oracle, she worked at Qwest Corporation and was in private practice both in New York and in Colorado focusing on intellectual property litigation for multiple high-tech companies while maintaining an active prosecution docket. Her extensive experience and familiarity with the region’s unique ecosystem of industries and stakeholders will be an asset to the USPTO.
Molly joins a group of exceptional office directors already in place, including Hope Shimabuku, Director of our Texas Regional Office in Dallas, whom I recently swore in on January 3, Christal Sheppard, Director of the Elijah J. McCoy Midwest Regional Office in Detroit, and John Cabeca, Director of the West Coast Regional Office in Silicon Valley.
The establishment of four USPTO regional offices fulfills a commitment dating to September 16, 2011, when President Obama signed the Leahy-Smith America Invents Act into law. These offices serve their region’s innovation and intellectual property communities and put tools into the hands of individuals who need assistance at every step of the business lifecycle. I am proud of the historic progress we have made over the last four years in establishing and growing these offices, and as we continue to bring resources to the doorsteps of innovators and serve entrepreneurs from coast to coast.
All of our offices will continue to hire talented and dedicated professionals to join their teams. For more information about openings, go to www.usajobs.gov, keyword: USPTO.
Five Largest Trademark Offices Hold Annual Meeting at the USPTO
Guest Blog by Commissioner for Trademarks Mary Boney Denison
The USPTO is dedicated to working closely and regularly with its trademark office counterparts worldwide to cooperate on processes and exchange best practices. With that in mind, we hosted the 2015 TM5 Annual Meeting at USPTO headquarters December 1-2. The TM5 comprises the five largest trademark offices in the world: the USPTO, the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the European Union’s Office for Harmonization in the Internal Market (OHIM), and the Trademark Office of the State Administration for Industry and Commerce of the People’s Republic of China (SAIC). The annual meeting saw progress on a number of cooperative projects, including a vote to expand invitations to other countries to participate in the USPTO-led ID List Project, (which I’ll tell you more about below).
The TM5 is an outgrowth of the Trademark Trilateral, a cooperative framework established by JPO, OHIM, and the USPTO in 2001. That framework was expanded to include KIPO and SAIC in 2011 and 2012, respectively, and the group became known as TM5. The TM5 framework allows the partner offices to exchange information on trademark-related matters and to undertake cooperative activities aimed at harmonizing or improving their respective trademark protection systems and procedures. The 2015 TM5 Annual Meeting also included sessions with users, designed to obtain feedback on the existing efforts and to generate ideas and discussion about future work.
The work of the TM5 is structured through cooperative projects designed to improve users’ interactions with national trademark offices and the World Intellectual Property Organization (WIPO). These projects include, among others, minimizing bad faith filings, TMview, common status descriptions and ID List, and comparison of examination results and Madrid Protocol procedure.
Minimizing Bad Faith Filings
The TM5 partners continue to make efforts to minimize the incidence of bad faith trademark filings around the world by exchanging best practices in order to provide more transparent information to users. To that end, the TM5 published a report summarizing the partners offices’ best practices. The TM5 agreed at the 2015 Annual Meeting to continue to hold seminars with users and other national trademark offices to generate recommended solutions to this global problem. The next seminar for the TM5 partners to engage with users will be held in Tokyo, on March 1, 2016.
In order to make it easier for trademark applicants to access trademark information and to conduct global trademark clearance searches, the TM5 partners provide their trademark data to OHIM, the designated project leader for “User Friendly Access to Trademark Information.” The project, also known as “TMview,” allows users to conduct a single search of multiple databases, including data from OHIM, WIPO, and 43 trademark offices (which includes the USPTO, JPO, and KIPO). The TM5 partners expect that the trademark data from SAIC will be added to the system in 2016. TMview also provides a link to access the trademark prosecution history and all associated documents of an application file, if that information is provided by the national office.
Common Status Descriptors and ID List
To help make the search results of TMview or TM5 partner offices more understandable for users, the TM5 partners are developing and implementing “common status descriptors,” or uniform terms and icons that multiple national offices can use to signify the particular status of trademark registrations and applications. The USPTO is the designated lead for this project.
To improve global filing, the USPTO also leads a project to develop a harmonized global “pick list” of preapproved and pre-classified identifications (IDs) of goods or services and their translations, called the “TM5 ID List.” All of the TM5 partners participate in this project, as well as the national trademark offices of Canada, the Philippines, Singapore, Mexico, the Russian Federation, Colombia, and Chile. The ID List is now available online and is fully searchable. By including entries from this list in trademark applications filed in any of the participating countries, trademark applicants may avoid a refusal on the ground that the identification is indefinite or otherwise unacceptable. One significant development at this year’s TM5 Annual Meeting was a decision by the partners to expand the project to additional countries so that the TM5 ID List can be a truly global tool for use in offices around the world.
Comparison of Examination Results and Madrid Protocol Procedure
The TM5 partners are now comparing examination results for applications filed before each of the partners’ offices to see where practices might diverge or converge, in order to gain a better understanding of the partners’ practices and policies. The applications currently being reviewed were filed in all of the partner offices using the Madrid Protocol. Such analysis could provide helpful information to users, as well as to the partner offices regarding the ability to register applied-for marks.
Additionally, JPO leads a project to standardize information provided by the TM5 partner offices regarding practice and procedure related to designations under the Madrid System. This project will make it easier for global users to understand how to navigate prosecution in the various TM5 partner offices when filing via the Madrid Protocol.
A full list of the topics discussed at the TM5 Annual Meeting, as well as more information about TM5 in general, may be found on the TM5 website. SAIC will act as Secretariat in 2016 and will host the TM5 meetings, including the TM5 Annual Meeting, in China.
Power and Systems Update
Guest blog by Deputy Director Russell Slifer
I wanted to take this opportunity to thank all of our stakeholders and employees for their patience and support as we worked to repair USPTO operations to full functionality. I also want to extend our sincere appreciation to the hundreds of employees, contractors, and service providers who have been working around the clock, through the holidays, to restore operation of thousands of servers, network switches, firewalls, databases, and their connections.
The USPTO contracts, through service providers, for clean uninterrupted power from state of the art, redundant, uninterrupted power supplies for our data systems. On December 22, both of these power supplies were damaged, resulting in a complete power outage to our data systems. Analysis of the damage over the last week confirms our earlier assessments and eliminates any concerns of foul play. We will take this opportunity to work with our service providers to ensure that lessons are learned and improvements are made.
We regret that any interruption occurred, and we strive to provide service equal to the best in government and industry. The USPTO continues to invest in improving our IT systems and many of these improvements allowed the agency to bounce back more quickly. I am proud to say that the USPTO teams returned operation to many systems as early as the next day, successfully restored data from our backup systems, and made all the necessary hardware repairs to return to nearly 100 percent operations by December 28th. Thanks to the tireless dedication of so many people, the USPTO is again operating on an uninterrupted power supply.
USPTO Releases its FY 2015 Performance and Accountability Report (PAR)
Guest Blog by Tony Scardino, Chief Financial Officer
I’m pleased to announce that the USPTO has published its Performance and Accountability Report (PAR) for fiscal year (FY) 2015. The PAR serves as the USPTO’s annual report, similar to what private sector companies prepare for their shareholders. Each year the USPTO publishes this report to update the public on our performance and financial health.
Our PAR charts the agency’s progress toward meeting goals outlined in our 2014-2018 USPTO Strategic Plan: optimizing patent quality and timeliness; optimizing trademark quality and timeliness; and providing domestic and global leadership to improve intellectual property policy, protection, and enforcement worldwide. These goals govern the quality and quantity of our service to intellectual property stakeholders. In addition, the PAR provides information on the USPTO’s progress towards a broader management goal: achieving organizational excellence.
Here at the USPTO, we take pride in producing a PAR that meets the highest standards of transparency, quality, and accountability. The PAR contains a wealth of data and historical information of interest to our stakeholders, including data on patent and trademark examining activities, application filings, and agency staffing levels. This information is conveniently presented in the Workload Tables section at the end of the PAR.
On the issue of financial performance, FY 2015 marks the 23nd consecutive year that the USPTO’s financial statements have received an unmodified audit opinion. Our clean audit opinion gives the public independent assurance that the information presented in the agency’s financial statements is fairly presented and follows generally accepted accounting principles. In addition, the auditors reported no material weaknesses in the USPTO’s internal controls, and no instances of non-compliance with laws and regulations affecting the financial statements.
While the PAR is a record of our achievements, it is also an honest discussion of the challenges we face as an agency moving forward in FY 2016. Among our numerous challenges and opportunities, we will continue efforts in: managing the transition to a steady-state operation as the patent business comes closer to achieving its pendency and inventory targets; establishing an Office of the Deputy Commissioner to ensure that the growing Trademark organization has the resources and knowledge it needs to continue to modernize; attaining and maintaining full sustainable funding in an era of increased budgetary pressures; and providing IT support for a nationwide workforce with a “24/7/365” operational capability.
The PAR is a faithful snapshot of the USPTO’s FY 2015 performance. I hope you find value in this document, and that it allows you to glean greater insights into the agency’s activities and achievements.
A Historic Moment for the USPTO and Innovators Everywhere
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee
It’s been a momentous time for the U.S. Patent and Trademark Office in recent weeks, as we officially opened our West Coast Regional Office in Silicon Valley on October 15 and our Texas Regional Office in Dallas on Nov 9. And today we are announcing the hire of the first Director of our Texas Regional Office, stellar engineer and intellectual property attorney Hope Shimabuku. Her hire comes at a time of historic achievement, as we have completed the establishment of four USPTO regional offices, a commitment dating to September 16, 2011, when President Obama signed the America Invents Act into law. The regional offices embody the Administration’s commitment to promoting innovation and entrepreneurship across the United States. Of course, we at the USPTO know our work has only just begun. We can now, more than ever, engage directly and meaningfully with our nation’s inventors, entrepreneurs, IP practitioners, academics, and policymakers. And we plan to take full advantage of that opportunity.
Hope is a critical player in that mission. She brings to the Texas Regional Office nearly two decades of professional experience, with the added bonus of being a native Texan. Most recently, Hope was part of the Office of General Counsel at Xerox Corporation serving as Vice-President and Corporate Counsel responsible for all intellectual property matters for Xerox Business Services, LLC. She also worked for Blackberry, advising on U.S. and Chinese standards setting, cybersecurity, technology transfer, and IP laws and legislation. She was also an engineer for Procter & Gamble and Dell Computer Corporation, and holds a B.S. in Mechanical Engineering from the University of Texas at Austin and a cum laude J.D. from the Southern Methodist University Dedman School of Law.
As a veteran of the innovation ecosystem in Texas, she is well aware of the dynamic variety of economic giants as well as up-and-comers across the broader region, in industries ranging from semiconductors to bioengineering. She knows the emerging economic opportunities in that region, and is committed to advancing the mission of the USPTO as America’s Innovation Agency by assisting entrepreneurs to unleash game-changing innovations while creating high-paying jobs and fueling economic growth.
When Hope comes on board in January, she will actively engage with innovation communities in many states across the broader region, promoting USPTO services and initiatives that match the exact needs of those audiences. She will educate but she will also listen, the USPTO’s model of 21st Century governance. And she’ll supervise a stellar team of hard-working employees. The Texas Regional Office already boasts many Patent Trial and Appeal Board judges, with the first patent examiner class onboarding January 11, 2016. Once fully staffed, the Texas Regional Office will have more than 100 examiners, judges, and outreach and administrative staff.
The West Coast Regional Office, when fully staffed, will have approximately 125 employees, comprised of 80 patent examiners, over 25 Patent Trial and Appeal Board Judges, and outreach and administrative staff. The office has already been active in outreach efforts with organizations across Silicon Valley, the state of California, as well as across the other states in its region.
Despite having only been officially open in our permanent location for a month, the West Coast Regional Office has already provided assistance to over 100 walk-in visitors, trained new patent examiners, provided tours for local elected officials, and hosted patent and trademark learning events. U.S. Secretary of Commerce Penny Pritzker recently visited the office and spent time meeting with employees, and the office also hosted dignitaries in a World Intellectual Property Organization (WIPO) roundtable. Prior to the official opening of the permanent space, the office was already hard at work engaging with startups and incubators, providing technology focused and industry specific workshops and presentations specific to Silicon Valley and the region.
The Rocky Mountain Regional Office in Denver has also been busy, most recently hosting a Patent Quality roundtable on October 21, in conjunction with the IP Committee of the Colorado Chapter of the Association for Corporate Counsel (ACC) and the IP Section of the Colorado Bar Association. Members of the bar, local patent community and public-at-large are invited to come together with USPTO officials and share ideas, experiences and insights on patent quality. The Rocky Mountain, Midwest, and West Coast regional offices are now staffed with outreach officers who are dedicated to building relationships with innovators and partners in their regions.
The Elijah J. McCoy Midwest Regional Office in Detroit, staffed with 154 employees, continues to hold frequent events and actively engage with the innovation community. In 2015, since Director Christal Sheppard came on board, the office has engaged with over 10,000 stakeholders and held over 120 outreach events for audiences of senior citizen entrepreneurs to K-12 future innovators and everyone in between. The office’s Saturday seminars, free and open to the public, are a very popular event. One important focus of the Midwest Regional Office has been on K-12 STEM (science, technology, engineering, and mathematics) outreach. The office is working with local school districts and after-school programs to encourage innovation with K-12 education, particularly focusing on children and teens that, currently and historically, are underrepresented in STEM and the innovation economy. Since 2012, the office has reached over 700 K-12 students in underserved communities.
In each of the offices, we continue to look for talented and dedicated employees to join our team. If you are interested in working for the USPTO in one of these regional offices, please refer to www.usajobs.gov for openings.
We are very excited about the important role the USPTO regional offices will play in supporting the overall mission of the Agency including ensuring easier access by innovators and entrepreneurs to resources and intellectual property protections they need to compete in today’s global economy. Look for me to provide a new update on regional office activities in the spring, as the USPTO embarks on our next phase of community engagement with four permanent regional offices up and running.
Enhanced Patent Quality Initiative: Moving Forward
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee
Patent quality is central to fulfilling a core mission of the USPTO, which as stated in the Constitution, is to “promote the Progress of Science and useful Arts.” It is critically important that the USPTO issue patents that are both correct and clear. Historically, our primary focus has been on correctness, but the evolving patent landscape has challenged us to increase our focus on clarity.
Patents of the highest quality can help to stimulate and promote efficient licensing, research and development, and future innovation without resorting to needless high-cost court proceedings. Through correctness and clarity, such patents better enable potential users of patented technologies to make informed decisions on how to avoid infringement, whether to seek a license, and/or when to settle or litigate a patent dispute. Patent owners also benefit from having clear notice on the boundaries of their patent rights. After successfully reducing the backlog of unexamined patent applications, our agency is redoubling its focus on quality.
We asked for your help on how we can best improve quality—and you responded. Since announcing the Enhanced Patent Quality Initiative earlier this year, we received over 1,200 comments and extensive feedback during our first-ever Patent Quality Summit and roadshows, as well as invaluable direct feedback from our examining corps. This feedback has been tremendously helpful in shaping the direction of our efforts. And with this background, I’m pleased to highlight some of our initial programs under the Enhanced Patent Quality Initiative.
First, we are preparing to launch a Clarity of the Record Pilot, under which examiners will include as part of the prosecution record important claim constructions and more detailed reasons for the allowance and rejection of claims. Based on the information we learn from this pilot, we plan to develop best examiner and applicant practices for enhancing the clarity of the record.
We also will be launching a new wave of Clarity of the Record Training in the coming months emphasizing the benefits and importance of making the record clear and how to achieve greater clarity. Recently, we provided examiners with training on functional claiming and putting statements in the record when the examiner invokes 35 U.S.C. 112(f), which interprets claims under the broadest reasonable interpretation standard and secures a complete and enabled disclosure for a claimed invention. Training for the upcoming year includes an assessment of a fully described invention under 35 U.S.C. 112(a) and best practices for explaining indefiniteness rejections under 35 U.S.C. 112(b).
Second, we are Transforming Our Review Data Capture Process to ensure that reviews of an examiner’s work product by someone in the USPTO will follow the same process and access the same facets of examination. Historically, we have had many different types of quality reviews including supervisory patent examiner reviews of junior examiners and quality assurance team reviews of randomly selected examiner work product. Sometimes the factors reviewed by each differed, and the degree to which the review results were recorded. With only a portion of these review results recorded and different criteria captured in those recordings, the data gathered was not as complete, useful, or voluminous as it could have been. As a result, the USPTO has been able to identify statistically significant trends only on a corps-wide basis, but not at the technology center, art unit, or examiner levels. We are working to unify the review process for all reviewers and systematically record the same review results through an online form, called the “master review form,” which we intend to share with the public.
What are the implications of this new process and new form? This new process will give us the ability to collect and analyze a much greater volume of data from reviews that we were already doing, but that were not previously captured in a centralized, unified way. As we roll out this new review process the amount of data we collect will significantly increase anywhere from three to five times. This will allow us to use big data analytic techniques to identify more detailed trends across the agency based upon statistically significant data including at the technology center, art unit, and even examiner levels. Also, this new process will give us better insight into not just whether the law was applied correctly, but whether the reasons for an examiner’s actions were spelled out in the record clearly and whether there is an omission of a certain type of rejection. For example, for an obvious rejection we are considering not only whether a proper obvious rejection was made, but whether the elements identified in the prior art were mapped onto the claims, whether there are statements in the record explaining the rejection, and whether those statements are clear.
The end results will be the (1) ability to provide more targeted and relevant training to our examiners with much greater precision, (2) increased consistency in work product across the entire examination corps, and (3) greater transparency in how the USPTO evaluates examiners’ work product. You can read more about these and our many other initiatives, such as our Automated Pre-examination Search pilot and Post Grant Outcomes, which incorporates insight from our Patent Trial and Appeal Board and other proceedings back into the examination process on our new Enhanced Patent Quality Initiative page on our website.
Finally, let me close by emphasizing that our Enhanced Patent Quality Initiative is not a “one-and-done” effort. Coming from the private sector, I know that any company that produces a truly top quality product has focused on quality for years, if not decades. The USPTO is committed to no less. The programs presented here are just a start. My goal in establishing a brand new department within the USPTO was to focus exclusively on patent quality and the newly created executive level position of Deputy Commissioner for Patent Quality will ensure enhanced quality now, and into the future. With your input we intend to identify additional ways we can enhance patent quality as defined by our patent quality pillars of excellence in work products, excellence in measuring patent quality, and excellence in customer service.
To that end, we will continue our stakeholder outreach and feedback collection efforts in various ways, such as our monthly Patent Quality Chat webinars. The next Patent Quality Chat webinar on November 10 will focus on the programs presented in this blog and our other quality initiatives. I encourage you to join in regularly to our Patent Quality Chats and visit the Enhanced Patent Quality Initiative page on our website for more information. The website provides recordings of previous Quality Chats as well as upcoming topics for discussion. We are eager to hear from you about our Enhanced Patent Quality Initiative, so please continue to provide your feedback to WorldClassPatentQuality@uspto.gov. Thank you for collaborating with us on this exciting and important initiative!
Icons for Intellectual Property Concepts Unveiled
Guest blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Russ Slifer
With startup activity in the United States surging and small inventors changing the global economic landscape, entrepreneurial spirit is thriving. Each day, more people are entering a sometimes unfamiliar world of intellectual property (IP). The USPTO is committed to explaining that world, and ensuring that current and future inventors, innovators, entrepreneurs, and business owners understand IP concepts. One way we are doing this is by creating a universal language to help describe these concepts via graphic design. By putting a visual mark on common intellectual property notions, we hope to help spread awareness about IP while engaging with the public.
Enter the USPTO Iconathon, a workshop to create a set of icons that universally represent intellectual property. Partnering with the Noun Project, we called on students, civic activists, artists, and intellectual property enthusiasts to collaborate, brainstorm, and sketch designs. The result: 19 new icons that are now in the public domain, ready for use around the world.
To make the language universal, it was critical to include members of the public, not typically working in the intellectual property field, to create and select icons that would resonate with all stakeholders, including international audiences.
Sitting at round tables with sketchbooks and pencils, participants tackled concepts including infringement, invention, pro se, patent pending, STEM, trademark, and counterfeit. The workshop was an opportunity for us to consider each concept and discuss how to capture it as an image that would appeal to various audiences. This type of interaction is at the root of building a culture of open government and greater understanding of government actions.
At the conclusion of the workshop, all the sketches were displayed for workshop participants and intellectual property experts to review. After all the votes were in, the group discussed the strengths and weaknesses of each of the sketches.
Thank you to all the participants who joined us in Alexandria, Virginia on August 28. Your collective talent and experience yielded high-quality, well designed icons.
New Patents Petitions Timeline
People have asked us for more information on the patents petition process, and based on that input, I’m pleased to announce that the USPTO has developed a new Patents Petitions Timeline. This new timeline gives you easy-to-use information in a single page on our website about petitions filed with the Office. Petitions (for example, to revive an application, for correction of inventorship, or to file a Track One request) can be submitted during each stage of the patent prosecution process, and the timeline provides applicants with information on each specific petition and deciding office, as well as information on both the historical grant rates and the pendency of decided petitions.
By supplying as much detailed information as possible at every stage of the patent prosecution process, our customers will be able to make more informed decisions on when and how to file a petition and who to contact with questions. Users can also click on each petition type to link directly to specific sections of the Manual of Patent Examining Procedure (MPEP) or other pages of the USPTO website. For example, if an applicant seeks to secure small entity status, the Patents Petitions Timeline contains a specific link for this type of filing to educate the applicant on the requirements contained in the MPEP for such a petition. Additionally, the applicant can see from the timeline that a small entity petition is pending on average for 89 days with a 100 percent grant rate.
The Patents Petition Timeline supports the USPTO’s Enhanced Patent Quality Initiative, which strives to enhance the quality of our patent examination process while providing excellent customer service. The timeline also comes on the heels of another outreach project related to petitions—namely status updates on petitions data posted on our Patents Dashboard. And it’s another step towards increasing the transparency of the USPTO and making our data open and accessible to the public. We hope our users will find the Patents Petitions Timeline useful and informative, and we look forward to receiving your comments and suggestions, which you may send to Patents Petitions.
Posted at 03:03PM Sep 03, 2015 in patents |
PTAB Update: Proposed Changes to Rules Governing PTAB Trial Proceedings
When the Leahy-Smith America Invents Act of 2011 (AIA) created three new kinds of post-patent issuance review proceedings to be conducted by the Patent Trial and Appeal Board (PTAB), it also explicitly gave the USPTO broad regulatory authority to create and improve these new proceedings. As such, since we first issued rules and guidance for the proceedings in 2012, the agency has engaged the public and received extensive input through events like our eight-city public listening tour and responses to our request for formal comments last year. Based on this input, in March, we issued a first set of changes – or “quick fixes” – that were relatively simple in scope, and I promised that the agency would have a second package of more involved proposed rules ready to share with you this summer. So today, I am pleased to tell you about that promised set of additional proposed improvements (as further detailed in our Federal Register Notice) as well as share some key PTAB statistics to date, and detail some further opportunities for public input that are coming up.
First, by way of additional background, I wanted to share with you a few key statistics. The AIA created three new post-issuance review proceedings in 2011, which the PTAB practice rules govern: inter partes review (IPR); post-grant review (PGR); and the transitional post-grant review for covered business method patents (CBM).
While we have only three years’ worth of data at this point, the following provide a helpful picture of the significant activity occurring before the PTAB to date – and, in particular, how and by whom these proceedings are being used:
• As of July 31, 2015, the PTAB has received a total of 3,655 petitions, of which 3,277 are IPRs, 368 are CBMs, and 10 are PGRs.
• Of all of the AIA petitions filed so far, 63 percent were filed in the electrical/computer technology centers (TCs), 23 percent in the mechanical/business methods TCs, 9 percent in the bio/pharma TC, and 5 percent in the chemical TC.
• Trials have been instituted on 1,389 of 3,277 IPR petitions, 185 of 368 CBM petitions, and 2 of 10 PGR petitions.
• Of the first IPRs to reach a conclusion, 12 percent of total claims available to be challenged (4,496 of 38,462), were determined by the PTAB to be unpatentable in a final written decision. Other claims were either not challenged, resolved by settlement, cancelled, or upheld as patentable.Of the first IPRs to reach a conclusion, 25 percent of claims actually challenged (4,496 of 17,675) were found to be unpatentable.
More PTAB data and statistics (as of the end of July 2015) are available here.
Although the total number petitions filed to date reflect around three times more than what we initially anticipated, we are especially pleased that the PTAB has nonetheless maintained a perfect record in rendering all its final decisions within the mandated time frame of one year. (And without using the six-month “good cause” extension for any trial or employing the temporary safety-valve “cap” provided by Congress to decline further petitions.) We are also pleased that those final PTAB decisions that have been appealed to the U.S. Court of Appeals for the Federal Circuit (CAFC) have been affirmed at a very high rate. Taken together, the demand for these new proceedings (as reflected by the large number of filings) and the results we are seeing at the CAFC appear to indicate that the PTAB proceedings are succeeding in their Congressional mandate to effectively and efficiently resolve patent validity disputes, while providing timely, low-cost alternatives to district court litigation.
We recognize that, while we believe the proceedings are working well, there are improvements that could be made based on our and the public’s experiences with the proceedings. Along with the PTAB’s refinement and improvement of its proceedings that it has made through specific decisions, today’s proposed rules represent the next step in making improvements to these proceedings. In particular, the package of changes:
• Proposes to allow patent owners to include, with their opposition to a petition to institute a proceeding, new testimonial evidence such as expert declaration. This change responds to commentary raising concerns that patent owners are disadvantaged by current rules that let petitioners’ evidence go unanswered before a trial is instituted.
• Proposes a new requirement on practitioners before the PTAB, akin to the Rule 11 requirements in federal courts, to give the USPTO a more robust means with which to police misconduct.
• Proposes to clarify that the PTAB will use the claim construction standard used by district courts for patents that will expire during proceedings and therefore cannot be amended, while confirming the use of broadest reasonable interpretation (BRI) for all other cases.
• Notes the PTAB’s development of motions-to-amend practice through its own body of decisions, including a recent decision that clarified what prior art a patent owner must address to meet its burden of proof.
In addition, the proposed rulemaking in this Federal Register Notice also addresses comments made about requests for additional discovery, live testimony, and confidential information.
I encourage you to review the proposed rule package which addresses the comments provided to us during our listening tour and request for comments. We welcome your comments to our proposed rules, and ask that you submit them on or before October 19, 2015.
In addition to this current Notice, we are also considering issuing a request for comments related to the staffing of the PTAB panels for the institution phase of the proceedings shortly. Given the still-continuing rise in petitions being filed, the agency is seeking sensible ways to proactively manage its operations and resources by making these proceedings more efficient, while being fair and continuing to provide decisions of high quality. Please consider filing comments in this upcoming request. (Update: the request for comments on a pilot program has now been posted and is available here. Comments are due on October 26, 2015.)
And finally, in cooperation with the American Intellectual Property Law Association (AIPLA), we will conduct further public road shows later this month to discuss these proposed rules and improvements to PTAB proceedings, continuing to gain your valuable feedback. The road shows, entitled “Enhancing Patent Quality and Conducting AIA Trials,” will be held: August 24th in Santa Clara, CA, August 26th in Dallas, TX, and August 28th at USPTO headquarters in Alexandria, VA. Our goal is to issue final rules, based on the input we receive on these proposals, before the end of the year.
Thank you to all who provided feedback during our listening tours and/or request for comments. We are committed to working with you, now and in the future, to ensure that the PTAB proceedings are as effective and fair as possible within the Congressional mandate, and we look forward to continuing this productive partnership as we review and improve the PTAB trial proceedings to better meet your needs.
Posted at 09:03AM Aug 19, 2015 in ip |
Modernization of Electronic Patent Application Process
Guest Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Russ Slifer
I’m excited to let you know about one of our newest initiatives, eCommerce Modernization (eMod), which will improve the electronic patent application process by modernizing the filing and viewing systems. Development will start later this summer, with the initial pilot program anticipated to start in the summer of 2016. The new system will be implemented in phases over the next few years, and once completed, will replace our current EFS-Web, Public PAIR, and Private PAIR.
For patent applicants, eMod will help provide a simpler authentication process, improved functionality, and a more user friendly interface and documents. For patent examiners, the updated systems will streamline patent submission, review, and management processes, and increase accuracy of application processing and publication. Overall, a more easy to use electronic patent application process will improve efficiency, communication, and patent quality.
We want to hear from you as we proceed with modernizing our filing and viewing systems. We have already started receiving feedback from the IP community and the public, and are incorporating these suggestions into the development process. I encourage you to review the ideas that have already been submitted on our Ideascale page and vote or comment on them. You can also share your thoughts with us through our eMod mailbox or by attending one of our outreach events.
Find more information about eMod on our website , or contact us directly at eMod@USPTO.gov. I will continue to share updates with you on eMod, as we work to make our patent application process as effective, efficient, and user friendly as possible.
Posted at 11:51AM Aug 06, 2015 in patents |
25th Anniversary of the Americans with Disabilities Act
Guest Blog by Director of the Office of Equal Employment Opportunity and Diversity Bismarck Myrick
At the United States Patent and Trademark Office, (USPTO) we derive our strength from the vast array of backgrounds and experiences of our employees, including those with disabilities. We are proud to be one of the most diverse workforces in the federal government, ranked the #2 best place to work in the federal government for employees with disabilities as well as the #2 place to work overall in the agency subcomponents class by the Partnership for Public Service in 2015. On the 25th Anniversary of the ADA, it is important to re-dedicate ourselves to providing equality of opportunity and to eradicating myths, fears, and stereotypes about people with disabilities.
The USPTO takes an innovative approach to accessibility in the workplace. In August 2014, we deployed an online, self-service system called Accommodation Point, which initiates and manages reasonable accommodation requests from employees and job applicants with disabilities. The system makes requesting, evaluating, and deploying requests for reasonable accommodations easier and more efficient. This is a unique system within the federal government, and the only system known to be in use by a federal agency that allows job applicants to easily and electronically request an accommodation needed for pre-hiring situations, such as a sign language interpreter or wheelchair escort during job interviews.
According to the most recent U.S. Census Bureau data, 1 in 5 Americans had a disability, and 1 in 10 had a severe disability that substantially limits one or more basic life activities. The most recent study on disability employment, the Kessler Foundation 2015 National Employment and Disability Survey, showed that the most requested accommodation for people with disabilities in the workplace is a flexible schedule or the ability to work from home. At the USPTO, our employees are able to take advantage of these benefits regardless of disability status.
The USPTO sees hiring disabled employees as a smart business decision. The USPTO relies on a highly trained, specialized workforce to carry out our mission to protect innovation in the United States and provide global leadership in intellectual property policy. The USPTO recognizes that people with disabilities are an incredibly important talent pool that goes underutilized.
Both in the private and public sectors, people with disabilities in the workplace tend to go underreported and under-accommodated. Oftentimes, employees with disabilities do not come forward with requests until their performance has been significantly affected and their jobs are in jeopardy. The reason for this hesitance is varied, from employee fear that an accommodation will negatively impact their organization to pre-existing negative attitudes in the workplace regarding disability. Sometimes, employees will not request an accommodation because they perceive the process to be a greater inconvenience than the lack of accommodation.
The key is to empower employees to understand how and when to request an accommodation so that they can continue to perform at an acceptable level before a major problem arises. Accommodation Point at the USPTO helps facilitate this, and provides employees and prospective employees with disabilities the tools and resources they need to excel in their positions and contribute to the agency’s mission. To learn more, visit the Office of Equal Employment Opportunity and Diversity page of the USPTO website.
Posted at 03:15PM Jul 27, 2015 in ip |
Joint Communique Between U.S. and Brazil on Patent Work Sharing
Guest blog by Chief Policy Officer and Director for International Affairs Shira Perlmutter
Under the U.S.-Brazil Commercial Dialogue IPR working group, the U.S. Patent and Trademark Office (USPTO) and the Brazilian National Institute of Industrial Property (INPI) have a long history of working together to exchange best practices aimed at capacity building and reducing each country’s patent backlogs. During President Rousseff’s visit to the United States on June 30, Commerce Secretary Penny Pritzker and the Brazilian Minister of Development, Industry & Foreign Trade (MDIC) Armando Monteiro signed a Joint Statement on Patent Work Sharing. This agreement is part of broader government-wide efforts to expand trade and investment with Brazil and is something the private sector has been urging both governments to adopt for some time. The USPTO’s Office of Policy and International Affairs (OPIA) and the International Trade Administration’s Brazil Desk facilitated the completion of this Joint Statement.
The Joint Statement emphasizes the importance and value of work sharing to improve efficiency in the patent application process—a benefit to patent applicants as well as patent offices. For applicants, work sharing facilitates the granting of patent rights and reduces the cost of obtaining patent protection in multiple jurisdictions. For patent offices, work-sharing mechanisms are effective in grappling with increased workload demands, leading to improved efficiencies in patent examination practice. More broadly, patent work sharing will help boost the economic growth and development of both the United States and Brazil.
At the White House, President Obama and Brazilian President Rousseff issued a Joint Communique which specifically referenced the Joint Statement, and recognized each country’s work sharing potential. The Joint Communique is an important milestone for the USPTO. It emphasizes the importance of intellectual property in bilateral discussions with partner nations, while highlighting the central role OPIA serves in providing expert IP advice to the various branches of the U.S. government, as well as the patent offices of foreign governments.
Pursuant to the goals outlined in the Joint Statement, OPIA is now working closely with counterpart officials in the Brazilian patent office -- the National Institute of Intellectual Property (INPI) -- to establish a technical framework for a future patent work-sharing program between the two offices. We hope to finalize an agreement on such a work-sharing program by the end of summer.
USPTO Offering Expedited Patent Appeals
Guest Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Russ Slifer
The USPTO recently launched a new pilot program that will allow appellants with multiple ex parte appeals pending before the Patent Trial and Appeal Board (PTAB) to expedite review of one appeal in return for withdrawing another appeal. This pilot program—a first for the PTAB—offers several advantages while being simple to use.
The Expedited Patent Appeal Pilot is designed to allow appellants having multiple ex parte appeals currently pending to have greater control over the priority with which their appeals are decided. It also serves to reduce the backlog of appeals pending before the PTAB. Additionally, this pilot program will permit an appellant having multiple appeals pending to accelerate the PTAB’s decision on an appeal involving an invention of greater importance to the appellant.
Appeals to the PTAB are normally taken up for decision in the order in which they are docketed. The current average pendency of an ex parte appeal at the PTAB is approximately 30 months. An appeal that is accorded special status under the Expedited Patent Appeal Pilot Program will be advanced out of turn for a decision on the appeal. The goal of the pilot is to render a decision on the appeal accorded special status no later than six months from the date of filing of the petition. Thus, participation in the pilot could save up to 2 years in wait time for a decision on an appeal.
Appellants wishing to participate in the pilot program need only make a certification and file a petition to the Chief Judge. We have waived the petition fee and provided a form-fillable PDF (Form PTO/SB/438) for use in filing the certification and petition. Although an application having no allowed claims becomes abandoned upon withdrawal of an appeal, applicants are permitted under the pilot program to file a Request for Continued Examination (RCE) in the application of the appeal sought to be withdrawn to continue prosecution and avoid abandonment of that application.
As well as the Expedited Patent Appeal Pilot, the USPTO is working on other initiatives to reduce the ex parte appeal backlog, which the agency will release soon. The PTAB continues to hire administrative patent judges, patent attorneys, and paralegals. In addition, the PTAB is starting a law clerk fellowship pilot program and is identifying further ways to provide more support to administrative patent judges to increase efficiency.
Posted at 09:23AM Jul 14, 2015 in patents |
Update on our Enhanced Patent Quality Initiative
Guest blog by Deputy Commissioner for Patent Quality Valencia Martin Wallace
I am encouraged that we have received more than 1,100 comments and suggestions about our Enhanced Patent Quality Initiative in response to our Federal Register notice, internal Patents Forums, and Patent Quality Summit. We have taken the ideas and suggestions you provided and are making improvements in all aspects of patent quality.
The USPTO is committed to providing the most current and robust training for our patent examiners. In view of the U.S. Supreme Court’s recent decisions in Alice Corp., Myriad, and Mayo, we are now offering our examiners additional training on subject matter eligibility and claim clarity issues related to 35 U.S.C. § 101 and § 112. We are also further enhancing our training for patent examiners on search skills and the interviewing process.
In order to streamline our patents organization, we have consolidated the Office of Process Improvement, Office of Patent Quality Assurance, Office of Patent Training, and Office of Patents Ombudsman and Stakeholder Outreach into our newly created Office of Quality Management. I am confident this will also improve oversight and coordination of our quality processes.
We continue to provide helpful resources for the public, and recently launched a monthly “Patent Quality Chat” webinar series. The topic of our first webinar on June 9 was clarity of the record, our next webinar on July 14 will focus on in-person patent examiner interviews, and our August 11 webinar will discuss measuring patent quality. For those of you who were not able to tune into the clarity of the record webinar, you can view the PowerPoint slides and recording on the Patent Quality Chat page of the USPTO website. Be sure to check our online events calendar for more details on upcoming webinars and other events.
To better serve patent applicants, practitioners, and stakeholders, we are offering expanded business hours to contact our Patents Ombudsman in our regional offices. I encourage you to take advantage of this program, which assists applicants or their representatives with issues that arise during patent application prosecution. The ombudsman representatives help improve communication between the applicant and examiner, more quickly address issues that arise during prosecution, and reduce unnecessary delays during the process.
Finally, we will be embarking on a Patent Quality Roadshow this summer to update our stakeholders about our efforts and to hear your thoughts. The roadshow will visit Silicon Valley on August 24, Dallas on August 26, and Alexandria on August 28.
The USPTO is dedicated to issuing the highest quality patents possible. We hear you, we thank you, and we will continue to update you on our progress on our Enhanced Patent Quality Initiative.
Posted at 10:09AM Jul 13, 2015 in patents |