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Director's Forum: A Blog from USPTO's Leadership

Tuesday Nov 18, 2014

Patent Pro Bono Program Expansion to Benefit Inventors Nationwide

Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee

Helping small businesses and independent inventors with limited resources is an important goal of the USPTO, and supports the Administration’s commitment to balance the playing field for all entrepreneurs looking to innovate. It also supports the White House executive actions issued to improve the patent system. One of those executive actions aims to expand coverage of the Patent Pro Bono Program to all 50 states, and I am pleased to announce that we are making great strides towards bringing pro bono assistance to inventors across the country.

Because patents fuel our economy and stimulate job creation, the USPTO wants to make sure the patent system is accessible to all. With this in mind, the USPTO works with intellectual property law associations and local bar associations across the country to help them establish pro bono inventor assistance programs in their specific regions. The Patent Pro Bono Program provides free legal assistance to under-resourced inventors and small businesses interested in securing patent protection for their inventions. By working closely with these associations, we are spreading the word about the importance of intellectual property and USPTO services, and in turn supporting the innovation economy.

Currently, patent pro bono assistance is available in Alaska, Arizona, California, Colorado, the District of Columbia, Hawaii, Idaho, Louisiana, Maryland, Massachusetts, Minnesota, Montana, Nevada, New York, North Carolina, Ohio, Oregon, South Carolina, Texas, Virginia, and Washington. To establish coverage in the remaining states, the USPTO has formed a Pro Bono Team which is working with non-profit organizations and local bar associations to devise strategies for providing the needed assistance. Please join us in this worthy effort and help support American innovation by contacting the Pro Bono Team at PatentProBono@uspto.gov. The USPTO values assistance from stakeholders and partners in these important efforts, because strengthening our patent system is something we will accomplish together.

Let me tell you a little more about how the Patent Pro Bono Program works. Independent inventors may apply to receive pro bono attorney representation in one of two ways – either through the National Clearinghouse administered by the Federal Circuit Bar Association or by contacting the regional program in their state. Program requirements vary, but generally, they require that: (1) the inventor reside in a participating state; (2) earn less than a gross household income limit; (3) demonstrate minimal knowledge of the patent system; and (4) have an invention to patent (as opposed to a mere idea). If an inventor meets these requirements, and any other ones set by the regional program, then the regional program will attempt to match the inventor with a local volunteer patent attorney to represent the inventor.

I want to acknowledge the success that the Patent Pro Bono Program has had thus far. Minnesota was the first state to setup a Patent Pro Bono Program in 2011, and since then, Minnesota volunteer attorneys have helped 14 Minnesota inventors secure patent protection for their inventions. Additionally, 35 other Minnesota inventors, represented by Minnesota volunteer attorneys, have patent applications pending before the USPTO. These results are testimony to the utility and need for the Patent Pro Bono Program.

I’m excited to announce that on November 18, 2014, the State Bar of Michigan’s Intellectual Property Law Association and Pro Bono Initiative kicked off the Michigan Patent Pro Bono Program at the Elijah J. McCoy USPTO Satellite Office in Detroit. Stay tuned as we expand the Patent Pro Bono Program to more states.

The Patent Pro Bono Program serves a vital role in the marketplace of innovation. Visit our website for more information on how to volunteer to represent an under-resourced inventor.

Thursday Nov 06, 2014

Patent Examiner Technical Training: Connecting Scientific Experts with Patent Examiners to Strengthen the Patent System

Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee

In February of this year, the White House issued three new executive actions aimed, in part, at strengthening the quality and accessibility of our patent system. One of these initiatives focused on the critical need for examiners to stay up-to-date in their technical fields of expertise through more robust technical training to enable them to perform the best examination possible. We address this request from the president via our Patent Examiner Technical Training Program (PETTP).

PETTP allows scientists, engineers, professors, industrial designers, and other technology experts the opportunity to provide technical training directly to patent examiners. Specifically, volunteer guest lecturers share their expertise on technical developments, the state of the art, emerging trends, maturing technologies, and recent innovations. Just this year, more than ninety experts have provided training to examiners on topics ranging from nanotechnology to virtual reality welding to the chemistry of chocolate. We thank those individuals who have already participated in the program and are eager to add new volunteers to our training roster going forward.

PETTP events are hosted throughout the year to meet the scheduling needs of presenting volunteers and our staff. Experts who are willing to give their time and incur any travel expenses can visit the USPTO in Alexandria, one of our satellite offices in Denver and Detroit, or present via Webcast from their own location.  In calendar year 2015 our satellite offices in Silicon Valley and Dallas will also be open to host PETTP events.  Presentation formats are flexible and generally are up to two hours in length, including a question and answer session.

For the first time this year, we are hosting a Tech Week for our examiners to offer training during a concentrated span of five days. From December 1 to 5, speakers from all technical fields will give lectures to the examiners in all of the USPTO’s Technology Centers. We are especially in need of speakers in the biotech, chemical, communications, design areas, so I invite those of you with expertise in these fields to consider participating.

It’s easy to volunteer for PETTP training—either for Tech Week or any other time of year; simply sign up through an online form or email us at Examiner_Technical_Training@uspto.gov. Together, we are building an even stronger patent system through initiatives like PETTP. Be part of this development by volunteering as a PETTP technical lecturer.

Tuesday Oct 28, 2014

PTAB Hits the Road Again in November 2014 for Detroit Region Roadshows about the AIA Trials

Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee

Stakeholder engagement is a critical mission of the USPTO, and I am excited to share that the Patent Trial and Appeal Board will visit the Great Lakes region to provide more training about the AIA trials. In November, the board will visit Detroit, Cleveland, Pittsburgh, Chicago, Milwaukee, and Minneapolis for afternoon, interactive programs. Earlier this spring, the board engaged with stakeholders in a variety of cities on a listening tour to consider revisions to the AIA trial rules and guidance. In these upcoming sessions, the board is focused on teaching the public how to strengthen their AIA trial filings.

In particular, stakeholders will hear a “State-of-the-Board” address, providing an update on recent developments including the volume of AIA trial filings and administrative patent judge hiring. The board also will host a “PTAB Feud” game show in which members of the public compete to answer questions and learn about the AIA trials. Lastly, the board has developed an AIA trial workshop involving a mock scenario in which a petitioner wishes to assert a challenge against a patent. The audience will break into teams, each facilitated by a judge, to discuss which type of petition to file and what issues might arise from both the petitioner’s and patent owner’s perspectives. Topics of discussion will include bars to filing, real party-in-interest and joinder considerations, and claim construction. The teams likewise will decide whether to institute an AIA trial, and if so, on what grounds and for which claims. In Detroit, the PTAB will host an actual AIA trial hearing in lieu of the workshop.

Besides the roadshows, the PTAB continues to hire more talented IP practitioners as judges. In fiscal year 2014, the board brought on 44 new judges, raising the total to 214. This fiscal year, the board is eager to continue growing, both in the Alexandria headquarters as well as all our satellite office locations. If you enjoy high end legal work involving cutting edge science, then an administrative patent judge position may be just for you.

In sum, I encourage you to take part in one of the Detroit Region Roadshows so that you can become even more versed in the nuances of the AIA trials. To learn more about a judge position, please visit www.usajobs.gov. Our AIA trial proceedings help strengthen our patent system, and we’re thankful for the stellar leadership demonstrated by our administrative patent judges on the PTAB.

Thursday Sep 18, 2014

Roundtables Engage the Public on Digital Copyright Policy

Guest blog by Chief Policy Officer and Director for International Affairs Shira Perlmutter

As part of the U.S. Department of Commerce’s Internet Policy Task Force, the USPTO and the National Telecommunications and Information Administration (NTIA), have been traveling around the country over the past few months, holding roundtables to hear from the public on a number of important digital copyright policy issues first set forth in the Green Paper on Copyright Policy, Creativity, and Innovation in the Digital Economy.

We hosted roundtables in Nashville, Tennessee; Cambridge, Massachusetts; and Los Angeles and Berkeley, California, to discuss issues relating to: 1) the legal treatment of remixes; 2) the relevance and scope of the first sale doctrine in the digital age; and 3) the appropriate calibration of statutory damages in the context of individual file sharers and of mass online services. We were pleased that the Copyright Office was able to join us for the Nashville and Los Angeles roundtables.

I am happy to report that we had a high level of participation at the roundtables. More than 60 people joined the panel discussions, and more than 750 observed, either in person or online. We heard from a diverse group of stakeholders from across the U.S., including composers in Nashville, technology companies in Berkeley, publishers and librarians in Cambridge, independent filmmakers in Los Angeles, as well as academics, public interest advocates, and representatives from major copyright industries at all four locations.

We were able to learn a great deal from the in-depth, constructive engagement at each of the roundtables. Both the participants and the public provided many helpful ideas that offered us a wide range of views, considerations and policy options. We are now working to absorb and evaluate all of this valuable input, in addition to the written public comments we received in response to our two Notices of Inquiry. In early 2015, we plan to issue a paper presenting our conclusions and recommendations, and look forward to sharing updates on this initiative in the future.

Tuesday Sep 16, 2014

Expanded 2014 Edison Scholars Program to Focus on Litigation Issues

Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee

I’m delighted to welcome our 2014 Thomas Alva Edison Visiting Scholars to the USPTO. The Edison Scholar program, which began in 2012, enlists the services of distinguished academic researchers to study intellectual property issues that further the USPTO’s mission and the public interest. The scholars devote up to six months of full time service to the agency, or up to a year in part-time service.

Past Edison Scholars have studied ways to improve the USPTO’s efficiency and performance, decrease burdens on applicants, and improve patent quality and clarity. Their work has generated concrete proposals for patent policy and continues to deliver exceptional results.

Because of its success, the White House Task Force on High-Tech Patent Issues directed the USPTO to expand the Edison Scholars program to study an issue that is of particular and urgent interest, abusive patent litigation. Last fall, the USPTO issued a call for proposals and began a competitive selection process to fulfill this mandate. We have five Edison Scholars this year, including three “Research Fellows” who were selected to specifically develop and publish robust data and research on litigation issues. They’ll be working within our Office of Policy and International Affairs, led by Chief Policy Officer Shira Perlmutter. We look forward to the contributions of all the 2014 Edison Scholars on these essential topics.

2014 Thomas Alva Edison Visiting Scholars

Graeme Dinwoodie is professor of Intellectual Property and Information Technology Law at the University of Oxford, Director of the Oxford IP Research Centre, and a Professorial Fellow of St. Peter’s College. Professor Dinwoodie is an international authority on comparative IP law and is the author of five casebooks. He earned his J.S.D. from Columbia Law School.

Research topic: Professor Dinwoodie will study the role of trademark registrations in defining rights as to infringement, whether to confirm market usage rights already in effect or to provide broader protections that enable economic expansion.

Joshua Sarnoff is professor of law at the DePaul University College of Law. Professor Sarnoff has published widely on patent and administrative law and innovation policy, and has been a frequent source of expert testimony on legislative reforms and amicus briefs in the Supreme Court. He earned his J.D. from Stanford Law School and has served on the faculties of American University and the University of Arizona.

Research topic: Professor Sarnoff will study the impact of differing legal standards for patent validity in administrative and judicial settings. 

Jonas Anderson* is an assistant professor of law at the American University Washington College of Law. Professor Anderson is a past Microsoft Research Fellow at the Berkeley Center for Law and Technology. After earning his J.D. from Harvard Law School, he clerked for Judge Alan Lourie at the U.S. Court of Appeals for the Federal Circuit.

Research topic: Professor Anderson will classify and evaluate which types of patent claim terms are particularly difficult for courts and innovators to construe in determining the scope of patent rights. 

Joseph Bailey* is a Research Associate Professor at the University of Maryland Smith School of Business and Executive Director of the interdisciplinary QUEST course of study in innovation and quality systems management. Dr. Bailey studies the economics and public policy of interoperability and e-commerce. He earned his Ph.D. in Technology, Management and Policy from MIT.

Research topic: Professor Bailey will study how machine reading and process improvement can help refine patent examination, particularly in identifying the prior art that legally limits the scope of patent rights. 

Deepak Hegde* is an assistant professor of Management and Organizations at the NYU Stern School of Business. Dr. Hegde has previously served as a visiting scholar in the USPTO Office of Chief Economist and has published on innovation and business strategy in high-technology industries. He earned his Ph.D. in Business Administration from the Haas School of Business at UC-Berkeley.

Research topic: Professor Hegde will study patent examination quality by analyzing of how past policies have affected the USPTO patent quality metrics, with a focus on the downstream incidence of patent litigation.

*Research Fellow focusing on abusive patent litigation

Learn more about the Edison Scholars Program.

Monday Sep 15, 2014

USPTO’s Plain Language Toolkit Empowers Public on Patent Litigation

Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee

Following President Obama’s 2014 State of the Union call to curb abusive patent litigation, I joined with the National Economic Council and Secretary of Commerce Penny Pritzker to announce the progress the USPTO had made in response to some of the president’s executive actions on the subject. This included one to publish an online Patent Litigation Toolkit to empower and inform “Main Street” retailers and consumers that may have been threatened with a patent lawsuit or received a demand letter. It was developed to provide plain language answers to key questions. Today I would like to provide further detail on the toolkit and how it might be useful to you.

The online toolkit features several Web pages containing plain language answers to commonly asked questions about demand letters and patent infringement complaints, such as:
• what a patent is,
• what to do if sued for patent infringement, and
• what to do after receiving a demand letter.

To the extent that legal terms are included, the toolkit has a useful glossary to ensure that consumers and “Main Street” retailers are on the same page. By presenting the information in as straightforward a manner as possible, the USPTO sees this toolkit as a first-stop for people learning about their rights and trying to understand the various courses of action available under their circumstances.

The toolkit also features links to many external websites offering certain services free of charge (some with site registration required) that may assist persons faced with demand letters or infringement suits. 

For example, if you’ve received a demand letter or patent infringement complaint and want to determine how best to proceed, it’s useful to collect as much information as possible about the patent being asserted. With this in mind, the toolkit provides links to sites that help identify whether others have been sued regarding the same patent. This can help you locate parties who might have faced similar issues. Additionally, the toolkit links to sites with information about other legal proceedings involving the patent, including proceedings before the USPTO.

The toolkit provides access to a patent attorney database, and it features information about law school clinics that have programs to advise and/or represent entities such as small inventors and entrepreneurs who otherwise would not have access to high-quality intellectual property law services.

While nothing in the toolkit constitutes legal advice or should be considered to replace advice from an attorney, I hope that you find the toolkit a helpful resource of information to get started. I applaud the efforts of those in the private sector making information publicly available so that everyone can better navigate the ever-evolving intellectual property landscape and together build an ever-stronger intellectual property system.

Thanks to the ongoing input we have received, we continually hone this “evergreen” resource to provide plain language information to empower the public. I encourage you to continue to help make the toolkit an even more powerful resource by sharing the challenges you may be facing by using the comment/suggestion box at the bottom of each page of the toolkit. What you share with us gives us ideas on how to make the toolkit even more useful.

Visit the Patent Litigation Toolkit website, and join us for a webinar on Thursday September 18 at 12:00pm ET to learn more.

Tuesday Aug 05, 2014

The USPTO-MBDA Webinar Series Continues in August

Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee

The USPTO remains committed to helping America’s inventors, small business owners, and entrepreneurs accelerate their innovative products and technologies to the marketplace. Earlier this year we launched a free webinar series in collaboration with the Minority Business Development Agency (MBDA) as part of our ongoing efforts to extend education and outreach on intellectual property (IP) protection and to better assist the public in navigating the systems for acquiring patents, trademarks, and copyrights.

Each hour-long webinar focuses on specific IP topics. The next installment, “Filing an IP Application Electronically,” will run August 12 through 14 and participants will learn how to use the USPTO’s online tools for filing a patent or trademark application. Online filing is simply the easiest, fastest, and most cost-effective way for filing a patent or trademark application. In 2013, 98.1 percent of all U.S. patent applications were filed with the USPTO Electronic Filing System (EFS-Web) and more than 99 percent of all trademark applications were filed via the Trademark Electronic Application System (TEAS). Filing online reduces processing costs through discounted fees and promotes efficiency for the USPTO and our customers.

While there is no cost for the next USPTO-MBDA webinar, virtual space is limited, so you’ll want to register as soon as you can. Speakers will include experts from our Trademarks, Patents, and Patent Information Management offices along with a representative from the U.S. Copyright Office to discuss the system used for registering copyrights.

Our agency’s core mission is to foster American innovation and competitiveness by ensuring that current and future inventors have access to the resources they need to succeed. Working closely with our Department of Commerce partner agency, the USPTO-MBDA webinar series is another example of our commitment in providing those resources. I encourage everyone to take advantage of this opportunity. It’s never been easier to learn how to protect your IP!

Monday Aug 04, 2014

Update on USPTO's Implementation of 'Alice v. CLS Bank'

Guest blog by USPTO Commissioner for Patents Peggy Focarino

Today I would like to address our ongoing implementation of the June 19, 2014, unanimous Supreme Court decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. (Alice Corp.). In the decision, the court held claims to a computerized scheme for mitigating settlement risk patent-ineligible because they are drawn to an abstract idea. I want to share with you the steps we’re taking to implement the decision.

First, on June 25th, we issued preliminary examination instructions to assist examiners when evaluating subject matter eligibility of claims involving abstract ideas, particularly computer-implemented abstract ideas, in view of Alice Corp.

Second, the USPTO has applications that were indicated as allowable prior to Alice Corp., but that have not yet issued as patents. Given our duty to issue patents in compliance with existing case law, we have taken steps to avoid granting patents on those applications containing patent ineligible claims in view of Alice Corp. To this end, our primary examiners and supervisory patent examiners (SPEs) promptly reviewed the small group of such applications that were most likely to be affected by the Alice Corp. ruling.

We withdrew notice of allowances for some of these applications due to the presence of at least one claim having an abstract idea and no more than a generic computer to perform generic computer functions. After withdrawal, the applications were returned to the originally assigned examiner for further prosecution. Over the past several days, our examiners have proactively notified those applicants whose applications were withdrawn. (Applicants who had already paid the issue fee for applications withdrawn from allowance may request a refund, a credit to a deposit account, or reapplication of the fee if the applications return to allowed status.)

This limited action was closely-tailored and taken specifically in reaction to the Alice Corp. decision. We do not anticipate further review of any applications indicated as allowable under this process, as examiners are currently following the Alice Corp. preliminary instructions during examination (i.e., prior to allowance).

Third, as we continue to study Alice Corp. in the context of existing and developing precedent, public feedback will assist us in formulating further guidance for our examiners. On June 30th, a Federal Register Notice was published to solicit written comments from the public on the preliminary examination instructions. The period for submitting those comments ended July 31, 2014. We appreciate the comments we have received to date. All input will be carefully considered as we work to develop further examination guidance, which we anticipate issuing this coming fall.

We look forward to working with our stakeholders in refining our examination guidance, and will continue to seek feedback as we implement changes as the laws evolve.

Monday Jul 14, 2014

Help Improve our AIA Trial Proceedings

Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee

In the spirit of transparency and collaboration with stakeholders in forming an even stronger patent system, I am pleased to share that the USPTO is seeking your written comments about the America Invents Act (AIA) trial proceedings conducted by the our Patent Trial and Appeals Board (PTAB). The USPTO's request for this input follows the series of AIA Trial Roundtables we conducted in April and May of this year. The purpose of these roundtables was to educate the public about the trials and to hear thoughts on what’s working well with them, and what are some areas for improvement.

The PTAB has been conducting AIA trials for nearly two years. During this time, the PTAB has gained experience and insights about the trial proceedings. The same is true for the public. As a result, the USPTO is eager to learn about these experiences and consider ways to increase the efficiency and effectiveness of these PTAB trial proceedings.

Late last month, we published a Federal Register Notice identifying a variety of topics for written comments, including claim construction, amendment practice, and management of concurrent proceedings before the office. The topics identified in the notice reflect subject matter raised most often by the public at the roundtables, as well as additional areas the USPTO believes public input would be helpful. Here is a selection of the questions presented for your comment:

  • Under what circumstances, if any, should the PTAB decline to construe a claim in an unexpired patent in accordance with its broadest reasonable construction in light of the specification of the patent in which it appears?
  • What modifications, if any, should be made to the PTAB’s practice regarding motions to amend?
  • How should multiple proceedings before the USPTO involving the same patent be coordinated? Multiple proceedings before the USPTO include, for example: (i) two or more separate AIA trials; (ii) an AIA trial and a reexamination proceeding; or (iii) an AIA trial and a reissue proceeding.

After carefully reviewing the written comments along with the oral feedback from the roundtables, we will consider what, if any, changes to the trial proceedings would help improve the speed and effectiveness of the proceedings. Use this opportunity to share your experiences and recommendations. Both positive comments and constructive criticism are welcomed, as the PTAB needs to know what aspects of the trial proceedings are working well in addition to aspects that may require some fine tuning. We have a world class patent system, and this is a golden opportunity to make it even better. I encourage you to take advantage of it, and let your voice be heard by submitting written feedback in response to the USPTO’s request for comments. The deadline is September 16, 2014.

Thursday Jul 03, 2014

Continued Progress Toward Implementing Patent Quality Executive Actions

Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee

Last June, the White House issued a number of executive actions aimed, in part, at ensuring the highest quality patents possible. One of the executive actions addresses the possibility of overly broad patent claims, particularly in the context of software, and called for the USPTO to provide new targeted training to its examiners on scrutiny of functional claims.

I am pleased to report that we are delivering targeted training to the examining corps on this topic. We will have more to report at our next Software Partnership meeting, but I wanted to take the opportunity to provide you with some information now.

Over the last year, we’ve rolled out four training modules focused on examining functional claim limitations that fall under 35 U.S.C. § 112(f)—so-called “means-plus-function” claim limitations. The four training modules cover the basics of interpreting functional limitations under § 112(f), including identifying when § 112(f) is or is not invoked, establishing the broadest reasonable interpretation of the limitation, and determining whether a § 112(f) limitation, especially a software-related limitation, has definite boundaries. Additionally, and most importantly, the training provides tools for examiners to clarify the prosecution record and thereby positively affect the clarity of the claims. These tools include establishing on the record whether the claim limitation is being interpreted under § 112(f), explaining the claim interpretation, and providing written remarks to help define the boundaries of the claim, when appropriate.

Such additional clarification by the examiner will create a more robust record and provide an opportunity for the applicant to provide clarifying remarks as well. We believe that spelling out how the claim language has been interpreted during prosecution will assist the public and the courts in understanding the boundaries of the issued claims.

We will soon be issuing more refresher training, for example on the fundamentals of claim interpretation, particularly with respect to functional claim limitations that do not invoke § 112(f). A list of the previous and planned upcoming training modules can be found at our Executive Actions webpage.

To ensure that training principles are applied by examiners, the Office of Patent Quality Assurance refined the metrics used to evaluate Office Actions. We will be evaluating the frequency at which the examiners are clarifying the record and the accuracy of the interpretation of § 112(f) claim limitations.

If you’d like to learn more or have questions or comments, I encourage you to attend our next Software Partnership meeting Tuesday, July 22, 2014, from 1-4:30 p.m. at our Alexandria campus. You may also attend online via WebEx.

Whether you are a patent applicant or litigant or a representative of either, we welcome your input on any of the above. All of the training materials are posted on our Examiner Guidance and Training Materials webpage, which can also be accessed from the USPTO.gov home page using the “Patent Examiner Guidance” button. We have also created a designated email box for comments at TrainingComments112f@uspto.gov.

We at the USPTO remain committed to issuing the highest quality patents possible. This training is but one part of a much broader initiative to enhance quality, and to do so in concert with the public. I look forward to your continued input.

Monday Jun 16, 2014

Update on Our Satellite Offices

Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee

Welcome to the latest in a regular series of updates on the status of our satellite offices in Dallas, Denver, Detroit, and Silicon Valley. As you know, the Leahy-Smith America Invents Act of 2011 (AIA), signed into law by President Obama, requires the USPTO to establish regional satellite locations as part of a larger effort to modernize the U.S. patent system. These offices are so important to inventors, entrepreneurs, and small businesses in the surrounding regions—and to our agency’s core mission of fostering American innovation and competitiveness.

If you haven’t already heard, June 30, 2014 is the date we’re opening our permanent satellite office in Denver, Colorado. Located in the Byron G. Rogers Federal Building in the city’s central business district, the new office will help the region’s entrepreneurs get cutting-edge ideas to the marketplace faster, grow their businesses, enable them to create new, high-skilled jobs in the Rocky Mountain region, and allow them to more efficiently navigate the world’s strongest intellectual property system.

The other big news is that we have hired a Regional Director for the Denver office—Russell Slifer, who has practiced intellectual property law for the last 20 years. For the past eight years, Russ served as the Chief Patent Counsel for Micron Technology in Boise, Idaho. He also was a design engineer for Honeywell and spent more than nine years in private practice in Minnesota helping high technology clients, including individual inventors, universities, and Fortune 100 companies, build patent portfolios to protect their innovations. Russ is an active member in the legal and innovation communities. These experiences make Russ an ideal person to serve as the inaugural leader of our new satellite office for the Rocky Mountain region, and I look forward to him transitioning in as part of our senior leadership team.

Keep in mind our Denver office needs more than just a director. We’re currently accepting applications for Administrative Patent Judges, a Deputy Regional Director for Outreach, Computer Engineering Patent Examiners and Electrical Engineering Patent Examiners. The deadlines to apply for these jobs vary and some are coming soon, so if you want to apply, please do so quickly.

The Elijah J. McCoy Satellite Office in Detroit opened for business in July 2012 and continues to play a vital role for the agency and the local innovation community. We have hired and trained 100 patent examiners who are processing patent applications in one of our nation’s historic innovation hubs. Our eight administrative patent judges are managing appeal cases and America Invents Act trials, and this summer, will move into a new space that includes a hearing room. We recently posted a job announcement for a Regional Director of the Detroit office, who will be responsible for general oversight of the office as the most senior ranking official representing the USPTO. We have also posted an Administrative Patent Judge vacancy announcement for the Detroit office, for which relocation incentives may be authorized. Please help us spread the word about these vacancies. The application deadline for the Regional Director position is July 1, 2014, and the Administrative Patent Judge position is July 31, 2014.

In April, the San Jose City Council unanimously approved the terms and conditions for our permanent facility in the San Jose City Hall. It will include a large outreach center on the first floor of the wing that is on track to open in the spring of 2015 and office space that will open a few months later. We are also looking for a Deputy Regional Director for Outreach for this office, and the deadline to apply is June 25, 2014. We are also actively engaged with stakeholders in the Silicon Valley and across the region. Since my last update, we’ve hosted several events to gather input and suggestions from our customers as we look for ways to further improve our nation’s IP system. These included discussions on the administrative trials before our Patent Trial and Appeal Board, a focus on Trademark operations, a patent rulemaking roundtable on collecting attributable ownership information, and a multi-stakeholder forum on the Digital Millennium Copyright Act.

Finally, our Dallas satellite office is scheduled to open in the fall of 2015 in the Terminal Annex Federal Building in downtown Dallas. We have hired five Administrative Patent Judges who have been operating out of the Santa Fe Federal Building. We continue to engage with local partners such as the Dallas Entrepreneur Center to support the innovation community, start-ups, and entrepreneurs.

We continue to hire Patent Trial and Appeal Board judges for all of our satellite office locations. Our goal is to have at least 20 in each office who will work to reduce the inventory of trial and appeal cases. In addition, we expect to recruit patent examiners for Silicon Valley and Dallas offices closer to the dates when their respective permanent spaces near completion. All vacancy announcements for these offices will be posted on usajobs.gov.

I feel that these satellite offices are critical to our efforts to support innovation and creativity, help protect and foster American innovation in the global marketplace, help businesses cut through red tape, and create new economic opportunities locally. This is an exciting time, not just for the USPTO, but for the men and women from coast to coast who are building, creating, and marketing America’s future. I will continue to keep you informed about major new developments in these offices as they arise.

Thursday Jun 12, 2014

USPTO to Launch a Glossary Pilot Program that Will Support a Better Patent System

Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee

When President Obama last year announced a handful of executive actions to build a better patent system, one of those actions focused on improving clarity in patent claims. The president recognized that patents with clearly defined boundaries help others avoid costly and needless litigation down the road. I’m excited to share with you some details on our Glossary Pilot Program. I hope many will take advantage of this opportunity to work with the office and assess the impact of glossaries on patent clarity.

First, the basics. On March 27, we published a Federal Register Notice announcing the Glossary Pilot Program. It started on June 2, 2014, and will run for six months or until 200 petitions are granted. The pilot program is designed to be flexible and accommodating to all application drafting styles, with a goal of determining if including a glossary aids in patent prosecution, and results in greater claim clarity.

To participate in the pilot program, a patent applicant must include a glossary in a designated portion of the patent disclosure that provides clear definitions for some terms used in the claims. The glossary should assist a reader in understanding the invention disclosed. Our team examining the use of glossaries found that some applicants already use them in patent applications. Therefore, the pilot program was created to promote the use of glossaries in software related technology applications to evaluate the impact definitions in the glossary section have on enhancing patent quality and improving the clarity of patent claims.

After a review of internal and external stakeholder input, the glossary pilot was designed to be flexible with regards to the types of definitions provided, so that we can see what applicants submit, and evaluate the different styles of glossaries submitted for the pilot program.

So who needs to pay attention to this? Clearly for patent applicants, owners, and practitioners, the submission of a glossary may help to provide clarity as to the claimed invention, improve prosecution, and provide a clearer issued patent. For inventors, having a better idea of what is already patented will help them to innovate, and for users of technology, clearer patents can help avoid needless litigation. Finally, for our patent examiners, providing definitions of key terminology should assist them in the examination process.

I’m looking forward to your participation in this pilot program to help evaluate the impact that a glossary has on the overall quality of patents.

Wednesday Jun 11, 2014

More Details on Trademark Fee Reductions

Guest blog by Commissioner for Trademarks Deborah Cohn

Recently, Deputy Director Lee blogged about the status of the USPTO’s operating reserves. I want to tell you more about our proposal to reduce total trademark fee collections. The reduction is possible due to efficiencies that have allowed the office to create an operating reserve. The proposed reduction maintains a reserve sufficient to manage operations and address long term investments.

The notice of proposed rulemaking was published in the Federal Register last month and the deadline for public comment is June 23. The proposal would reduce many trademark application filing fees and renewal fees by 15 to 25 percent depending on how the application is filed. We’re especially pleased to be able to offer even lower fees for filing electronically, and accepting email communications from the USPTO, options that have proven to be popular with the majority of trademark filers.

The USPTO proposes to reduce the fee for an application filed using the regular TEAS application form by $50 to $275 per class if the applicant authorizes email communication and agrees to file all responses and other documents electronically during the prosecution of the application. This option will be known as a TEAS Reduced Fee (“TEAS RF”) application. The USPTO also proposes to reduce by $50 the fee for a TEAS Plus application to $225 per class and reduce by $100 the fee for a TEAS renewal of a registration to $300 per class.

The proposed fee reductions will reduce processing costs and promote efficiency for the USPTO and our customers. The proposal will also further a USPTO strategic objective to increase the end-to-end electronic processing of trademark applications by offering additional electronic application processing options and promoting online filing, electronic file management, and workflow.

The proposed reductions were included in the USPTO’s FY 2015 budget request. Fee reductions will be implemented in accordance with the America Invents Act (AIA) following public notice, comment, and rulemaking procedures. Our plan is to have the reduced fees become effective beginning in January 2015.

We look forward to working with our customers to offer lower cost options for filing and maintaining trademark registrations. Again, written comments must be received by June 23 to ensure consideration.

Monday Jun 09, 2014

An Update on Sustainable Funding for the USPTO

Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee

I’d like to take some time today to follow up a recent guest blog about our FY 2015 budget by our Chief Financial Officer, Tony Scardino. That blog gave an overview of what the USPTO anticipates collecting in fees in FY 2015, what we plan to spend, our staffing levels, and what we intend to accomplish. It also provided a link to the full congressional budget submission

While this budget document provides great information, at 197 pages it can, admittedly, be a somewhat intimidating read. With that in mind, there is one set of numbers in particular that I think are worth noting and taking some time to discuss in the context of our new fee setting authority granted under the Leahy-Smith America Invents Act (AIA).

In the “Sustainable Funding” section of the budget, you’ll find charts showing our patents and trademarks “operating reserve balance” (shown on pages 15 and 17, respectively). These operating reserves are a critical part of our sustainable funding model and an important component of our first fee setting in March 2013. The reserves are intended to allow the USPTO to avoid the operational starts and stops associated with the funding uncertainties faced by a fee-funded agency, as well as plan for long-term financial stability. A great example of the importance of these reserves came at the beginning of this fiscal year, when the Congress was not able to reach a budget agreement and a lapse in appropriations resulted in a 16-day shutdown of most of the federal government. Thanks to our operating reserves, the USPTO was able to stay open and continue examining patent and trademark applications during this time.

Our target has been to build an operating reserve of a minimum of three months for our patent operations and a four- to six-month reserve for our trademark operations. We’ve already reached this level in our Trademark business line, and that now has us in a position to be able to propose reducing certain trademark fees in FY 2015. 

As you’ll see on page 15, we’re projecting that our patent reserve balance will increase fairly steadily from the end of FY 2013 through FY 2019—eventually growing to $1.9 billion. While this future growth is based on a number of assumptions that could—and likely will—change, we have greater certainty about the reserve levels over the next year and a half. Based on the latest information available, we expect to be approaching a three month patent reserve balance amount by the end of the current fiscal year and will likely exceed it by the end of FY 2015.

A fair question to ask at this point—especially for those who recall the plans laid out in our 2013 fee-setting to grow the operating reserve to target levels by 2018—might be “Why is the reserve growing so quickly?” The faster than expected growth is due to several factors, including adjustments to many of the assumptions that drive our projections. For example, the economic environment and application filing growth, fee payment behavior after the fee schedule and first inventor to file implementation in March 2013, and patent production estimates have all been modified based on the information that is now available to us.

We recognize the significance of the change in our estimates and are paying close attention to the factors contributing to these changes as we gather more data to fine-tune our projections. Rest assured that the USPTO is aware of the issue and we have not forgotten the commitments we made to our stakeholders when we set our fees last year. We will soon be starting our biennial fee review, proceeding in the same transparent manner that we did in the first round of AIA fee-setting. We’ll be assessing our operating environment (e.g., economy, court decisions, and fee-paying behaviors), operating costs, our fee projections, target operating reserve level, and strategic priorities (including those in the USPTO 2014-2018 Strategic Plan) and agency needs. We will be working with our stakeholder community to gather their input.

We recognize the responsibility entrusted to us under the AIA, and we are hard at work to be good stewards of the agency, its resources, and your trust.

Friday Jun 06, 2014

IT Modernization at the USPTO Drives Productivity and Creates New Jobs

Guest blog by Chief Information Officer John Owens

Information Technology (IT) is fueling our work in an era of escalating demand for patents and trademarks, and to face this challenge, our team is continuously looking for ways to operate more nimbly and deliver services rapidly. This year, we have been working to modernize the systems that support patent and trademark examination and fee processing by using “agile” development. Many successful technology companies use agile, an IT development method which emphasizes user involvement and ongoing feedback. (Read more about USPTO’s initial rollout of agile into its processes.) By working to provide our examiners with enhanced examination tools, we are striving to improve the way that examiners work.

One new system, Patents End to End (PE2E), is already in beta use by some examiners and is targeted for a wide introduction to the examiner corps late this year. PE2E creates a more streamlined way for examiners to process patent applications, enhancing the way they view documents, search, take notes, and complete tasks. Another landmark project is Trademarks Next Generation, a faster, more feature-rich Trademarks system for both examiners and the public to use.

Systems such as PE2E and Trademarks Next Generation follow industry best practices, which include:

  • Build shared IT services and tools to support global customers and maximize cost effectiveness.
  • Use web-based systems with open technology standards that scale. 
  • Write code once and deploy everywhere for more stable, portable, and cost effective tools.
  • Provide easily searchable IP information by converting all information into searchable technology formats.

As one employee said, the new tools are designed “by examiners for examiners.” We are designing and testing our systems incrementally, and gathering input throughout the process; and this iterative development and constant interaction ensures that the end product has the necessary features. In addition, our expert team in the User Experience Division is ensuring that our products are always created for optimal engagement and efficiency, in order to deliver value to the public. Finally, cloud and open source technology will be used extensively so that we can concentrate on what we can’t buy – a Patent and Trademark examination system.

To meet our aggressive IT goals this year, we plan to continue to hire the most qualified technical staff. Attracting the right talent is critical to our mission, and so far in fiscal year 2014, we’ve already hired more than 60 new staff members. We are hosting an IT Veteran Hiring Fair on our Alexandria, Virginia campus June 13th and 14th and encourage veterans with top IT skills to join the USPTO, recently voted the #1 Best Places to Work in the Federal Government®. The registration deadline is June 10, so sign up quickly. I look forward to sharing more updates with you in the future as we continue to use the latest technology to support innovation.

United States Patent and Trademark Office
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