Director's Forum: David Kappos' Public Blog

No Time for Gridlock at USPTO

In an era where bitter partisan divide can often inhibit action in Washington, one need look no further than the United States patent system to observe how government can work to provide real and meaningful results for Americans. Since the enactment of the Leahy-Smith America Invents Act—bipartisan legislation signed into law by President Obama last September—USPTO in cooperation with our stakeholder community has been launching transformative initiatives to improve the way Americans innovate, and the way the USPTO handles those innovations. And before the ink of the President's signature had even dried, we hit the ground running in rebuilding our intellectual property system from the ground up.
 
We have already implemented eight provisions of this huge federal legislation—all on time—and we are in the process of getting draft rules out for ten more right now. We're building out a dynamic IT infrastructure and we've been hiring more examiners to aggressively tackle our patent backlog. We've submitted two studies to Congress, analyzing rights available to manufacturers (prior user rights) and international protections for small businesses. And just yesterday, I joined Chief Judge Randall Rader of the Court of Appeals for the Federal Circuit and Chief Judge James Smith of the Board of Patent Appeals and Interferences to welcome 14 new administrative jurists to the Board. These new judges will help the Office aggressively tackle the backlog of appeals waiting at our Board.

More generally, our Board will be instrumental in shaping a new in-house review process for challenging granted patents—a process that is much faster and less expensive than litigation. For both our post-grant review process and our inter partes review process, we’re building state of the art procedures that will balance the interests of third party challengers and patent owners—all within a 12-month time frame.

We have also launched an examination acceleration program (Track I) that is allowing patent applications to be reviewed in 12 months, and offers small businesses a discount on this service. We have already started putting out office actions and even issuing patents under Track I, which is enabling new technologies, new industries and new markets to blossom quicker than ever before. And we’ve pushed our unexamined patent application backlog down to about 660,000.

Our Trademarks team continues to perform at world-best level, handling record numbers of new applications last year, launching a 21^st century total quality program that would keep pace with any private sector equivalent, and serving as voice and conduit for US brand-owners small and large, west and east, south and north.

This is action. These are results. The growing, dedicated, professional staff of the USPTO is unquestionably productive and is meeting the challenges before us. Yes, there is much left to do and many challenges ahead. But I simply can’t stress enough that the USPTO is on the move. Even in an era of partisan rifts, government can and is working to advance American industry and American ingenuity.

Posted at 02:08PM Jan 26, 2012 in USPTO  |  Comments[1]

Remarkable Performance Results in Trademarks

Guest blog by Commissioner for Trademarks Debbie Cohn
 
There’s no question that electronic filing has changed the nature of trademarks, and a look at our performance dashboard for the first quarter of fiscal year 2012 really shows some remarkable results. Trademark pendency is at historically low levels and much of the reason for this is because some 75% of all trademark applications are filed and processed electronically. We’re particularly proud to report that disposal pendency – the time from when an application is filed until a trademark is registered or abandoned – is the lowest it’s ever been at 10.2 months. In fact, it’s been under 11 months for the past seven quarters in a row.

Likewise, pendency for applications involved in inter partes proceedings or appeals have also been reduced to an all-time low of 12.1 months. All of this while the number of application filings have increased 7.8% over the same period last year. First action pendency, which measures the time it takes for a new application to receive an initial response from our office was at 3.2 months at the end of the first quarter.

Aside from speed, trademark quality is another critical measure we consistently seek to improve. When you study the dashboard, you’ll see our quality results are mixed. Our first and final action quality are slightly less than target, although a more rigorous measure that defines the “excellence” of a first office action is above target. This new measure was introduced last year to set a higher standard in evaluating an examiner’s writing, evidence, and search strategy and the results exceed our target by 11 percent.

Our evaluation of quality is an ongoing process, with final results measured at the end of the fiscal year. Results are used for improving and developing policy and training guides and manuals to reinforce and ensure the quality of the trademark register. We welcome any feedback you have on how we can improve the presentation or information presented. We have a dedicated mailbox for your comments and we look forward to hearing from you.

Posted at 04:02PM Jan 20, 2012 in trademarks  |  Comments[0]

The Patent Prosecution Highway—Scaling a Sensible Approach to Worksharing

In recent years, the Patent Prosecution Highway (PPH) has proven to be one of the most significant worksharing initiatives for the USPTO, and a successful vehicle enabling faster and less expensive multi-country patent prosecution for the IP community. It began as a very small pilot project in 2006 between the USPTO and the Japan Patent Office and grew modestly over the next three years, as international filers became more comfortable with this new process for quickly obtaining patent rights across the globe. As the project has grown, getting the word out about the substantial benefits of PPH has been one of our highest priorities.

As of the end of 2011, more than 9,000 applications at the USPTO have been processed within the PPH program. This represents a 100%+ increase in usage, two years running. Users benefit not only by fast portfolio-building but also by enjoying the collective savings of millions of dollars in the process. A recent study by our user community demonstrated that—in a single application—anywhere from $2,000 to $13,000 in reduced prosecution costs can be realized through PPH, depending on the complexity of the invention. For international filers of all sizes, that level of savings adds up quickly.

And even while the PPH has grown tremendously in usage, we’ve continued the mission, working with our partner offices—which now total 21—to further improve the program. One of the first major steps taken was expansion of the PPH into the PCT system. This has opened up the advantages of PPH to an entire sector of international filers, and also paved the way for making the PCT system the worksharing model it was originally intended to be.

Recently, we reached agreement with several other large offices to streamline the PPH entry process and open the system to yet many more filers, mainly in Europe. In July we began testing the elimination of the office-of-first-filing to office-of-second-filing directional requirement of the PPH model. Under this more flexible on-ramp approach, PPH may be entered on the basis of positive outcomes from an office which first indicates allowable subject matter, whether or not that office happened to be the office of first filing. This improvement is known as the “Mottainai” PPH model. Mottainai is a Japanese term meaning that something useful should not be left unused. For our European constituents, this means that work done by the EPO (as an office of second filing) will be available as a basis for PPH entry both here and in Japan.

At the end of January, we will begin what we call PPH 2.0, which reduces the paperwork requirements by cutting documentation, allowing for use of machine translations for some purposes, and allowing for self-certification of claims correspondence. PPH2.0 will save participants even more money, while further reducing the processing time here at USPTO. Details on the Mottainai and PPH 2.0 pilots can be found on our website.

Finally, we are working with all PPH offices to realize a common set of fundamental requirements—“one PPH”—intended to vastly simplify the process for all users by creating a single, universal set of rules for the program globally.

The Patent Prosecution Highway is a growing success story—but only for those who are using it. Your competitors are taking advantage of the major cost savings and many other plusses of the program. So much so, that we are expecting another doubling of the program for 2012. If you aren’t yet using PPH, we invite you to take a fresh look at how it can be a positive contributor in both speed and cost to your international patent protection strategy.

Posted at 04:10PM Jan 13, 2012 in patents  |  Comments[4]

Full Speed Ahead for 2012

Happy New Year and welcome back from what I hope was a restful holiday break!
 
As I wrote in my last blog entry, 2011 was a year of historic achievements for our Agency, none of which would have been possible without the hard work and dedication of the entire USPTO team.  Once again, and simply: THANK YOU. 
 
We have strong momentum heading into 2012, and I want to capitalize on that momentum to the fullest. In that spirit I’d like to take a few moments to discuss what lies ahead and how we can make this another great year for the American inventor, the American economy and the American intellectual property community.
 
The mission of the USPTO is clearly stated in our Strategic Plan: fostering innovation, competitiveness and economic growth, domestically and abroad, by delivering high quality and timely examination of patent and trademark applications, guiding domestic and international intellectual property policy, and delivering intellectual property information and education worldwide, with a highly skilled, diverse workforce. It is important to remind ourselves of these words at the beginning of a new year, as they orient our efforts toward a common purpose.
 
Consider the superb progress we are making to reduce our backlog of unexamined patent applications, with an emphasis on resolving the oldest cases as expeditiously as possible. While reducing the backlog is an important goal in itself, it is absolutely critical to our Agency’s mission of fostering innovation, competitiveness and economic growth. Our daily work here is vital to the nation’s economic recovery.
 
Similarly, in our Trademarks operation, we will keep up the stellar momentum in excellent office actions, responding to increased filings, and leading the way on global enforcement issues such as in areas of counterfeiting and piracy, to ensure that American businesses can protect their brands and reap the full rewards of their initiative and creativity.
 
The continuing implementation of the America Invents Act (AIA) makes it imperative that our employees be prepared with the training, knowledge, and hands-on experience necessary for us to crisply implement this landmark legislation.
 
In our legal department, we'll be advocating for strong and balanced IP legal interpretations and advancing the IP laws generally, through close cooperation between the Solicitor's Office and the Trademarks and Patents teams as applicable, and with proactive policy support from our External Affairs team.
 
Our productive engagements with partner agencies overseas will continue as we collaborate on key projects like our Cooperative Patent Classification (CPC) initiative with the European Patent Office, the Patent Prosecution Highway (PPH) with a growing host of countries as diverse as Japan, Australia, China, and Russia. We’re also looking forward to working with the other members of the World Intellectual Property Organization (WIPO) to advance an international treaty protecting the rights of audio/visual performers, at what will be the first IP diplomatic conference in a decade.
 
Long gone are the days when patent and trademark offices worked in isolation from one another. Now more than ever, we must think and act as concerned citizens of a global IP community. That’s also why we will continue to advance our global patent law harmonization agenda that works towards greater efficiency and quality in patenting across multiple jurisdictions—and does so in a way that incorporates the views, processes, and perspectives of both developing and developed nations.
 
Finally, we will continue to deploy new, state-of-the-art technologies at the USPTO to improve our information technology systems and support infrastructure which is instrumental to optimizing the quality of our trademark and patent examination work, and the efficiency with which our user communities conduct business with the Office.
 
We have made a lot of progress with an extremely talented team of dedicated professionals. With the increased confidence that comes from success, I have no doubt we will go even farther in 2012.
 
We get big things done around here. If you thought 2011 was a great year for team USPTO, you ain’t seen nothing yet!

Posted at 09:48AM Jan 06, 2012 in USPTO  |  Comments[0]

USPTO Track I: The Agency’s Self-Report on Implementation Performance Through Year-End 2011

Guest blog by USPTO Commissioner for Patents Peggy Focarino

Following passage of the Leahy-Smith America Invents Act in September 2011, the United States Patent and Trademark Office (USPTO) began accepting requests for prioritized examination of patent applications through the Track I Prioritized Patent Examination Program. Track I allows inventors and businesses, for a fee, to have their patents processed to completion in 12 months. No examination support documents or other admissions are required.

The required petition is very simple, and to date, 1,694 Track I petitions have been submitted to the USPTO. On average it is taking 40.8 days to move Track I cases from receipt of petition to completion of pre-examination processing (which includes deciding on the petition). The longest it has taken is 95 days. While on average only 10 of those 40.8 days are consumed in handling the Track I petitions, and while 40.8 days in pre-exam for Track I compares favorably with our normal pre-exam processing time of 69.6 days, we are not satisfied and are working to cut this time further.

Initial substantive results for Track I have been quite positive. Specifically, 1,218 of the 1,231 requests of the prioritized examination (that have been decided) were granted. This represents a 98.9% approval rate. Furthermore, 648 have already received a first office action, and another 34 will be mailed within days. On average we are getting the first action out in Track I cases just 30.7 days after approval of the petition – for a total elapsed period to first action of 66.4 days after filing of the request-petition. (The reason 66.4 does not correspond precisely to 40.8 plus 30.7 is because 40.8 is the average time from filing to granting the request for all applications, including those which have not yet received a first action.) And the longest it has taken us to get a first action out is 70 days from grant of the petition. So we are easily beating our target to get a first action out within an average of three months from the time the petition is granted. In fact, we have beaten it in every case so far.

More importantly, 23 allowances have already been mailed on Track I applications, the fastest of which was mailed just 37 days after the application was filed. And seven more allowances are currently in our pipeline, scheduled to be mailed within days. Of the Track I cases allowed so far, the average time to allowance is 39.2 days from petition approval. As for rejections, so far there have been three final rejections issued on Track I applications. The average time to final rejection has been 34.3 days, and the longest time to final was 50 days, both measured from approval of the Track I petition. It is worth noting that the first Track I application is due to issue on Jan. 10, 2012. This application was filed Sept. 30, 2011.

For those applicants or practitioners concerned about whether Track I applications will be treated differently from others in terms of grant/denial rate, our examiners are being given exactly the same training, credits and incentives to accurately examine Track I cases as for all other cases, and no training, credits or incentives are being given to bias examiner decisions in any way. And as for the data, given the statistics provided above, so far there is no basis to believe there is any difference in result for Track I versus non-Track I processing, other than the significantly faster responsiveness.

So we feel it is fair to say that while we are still in the early days of examining Track I applications, and are continuously working to address bottlenecks where they exist, we are proceeding apace with super-fast processing through the first three months of the program.

For more information about Track I, or if there is any other information you would like the USPTO to report on Track I, please contact Eugenia A. Jones in the USPTO Office of Patent Legal Administration at (571) 272-7727.

Posted at 11:54AM Jan 03, 2012 in patents  |  Comments[0]

2011 Was Quite a Year

As December draws to a close and we reflect on all that we’ve accomplished, it’s difficult to imagine a more historic year for the United States Patent and Trademark Office than 2011. The dedication and hard work of our talented public servants has enabled the Agency to make significant strides in the quality, efficiency, and certainty of patents and trademarks granted to technological enterprises. And our collaboration with the small business community has allowed us to level the competitive playing field by offering new tools and resources for independent inventors to acquire intellectual property rights with more ease. So with the holiday season upon us, I want to take a moment to recount what our extended USPTO family has helped accomplish for American inventors and American innovation.

For the first time in several years, the Patent and Trademark Office was able to reduce the backlog of unexamined patent applications to below 665,000, a remarkable achievement considering the 5 percent increase in patent applications filings in FY2011. Through improved practices and processes, we are on track to push the backlog down even further, helping deliver new technologies to the marketplace faster, which in turn spurs job creation and drives economic growth for our country.

Moreover, under our Green Technology Pilot Program, the USPTO recently issued the program’s 500th patent for a wind turbine rotor blade—yet another important step forward in advancing the Administration’s goal of doubling our nation’s renewable energy capacity. Through our commitment to green technologies, environmental quality and renewable energy, we are able to spur innovation and help create new jobs that provide our world with sustainable alternatives to harmful energy practices.

We’ve even harnessed the power of the Internet and the global technology community to strengthen the patent examination process by expanding our Peer-to-Patent (P2P) pilot program. This initiative improves the quality of the American IP process by allowing outside subject matter experts to contribute prior art—expanding the scope of our examination process. In an era of Wikipedia and crowd-sourcing, not only does this model allow the USPTO to stand ahead of the patenting curve by including inventive ways to improve patent quality, but it also increases our overall transparency—a goal vital to the Administration’s Open Government initiative.

It’s also why we’re proud of tools like our Dashboard and our newly revamped website. Such features give visitors real access to tools for navigating the IP system, and real insight into our performance, whether it’s the state of our backlog, inventory positions, or pendency. Ultimately, this doesn’t just show the public where we stand, it also motivates us to take an honest look at how differing processes are faring in terms of efficacy and efficiency—and improve upon them. Measures like the Dashboard and P2P help make our government more transparent and accountable to the American people.

And in Trademarks, for the fifth consecutive year, our outstanding Trademark Organization exceeded its pendency targets for first action and final disposition. Notably, the new “Excellent Office Action” quality measure—which indicates comprehensive quality of the First Office Action search strategy, evidence, writing and decision making—came in at 23.6 percent, handily exceeding the goal of 15 percent. In addition, Trademarks continued to meet and exceed its pendency goals and achieved an increase in the use of electronic filing and processing.

I am also very proud of the teamwork behind the highly successful 2011 National Trademark Expo, which attracted more than 15,000 people—our largest attendance to date—and featured more than 27 exhibitors, a 50 percent increase from previous years. Events like this help educate the public about the importance of IP and its ubiquitous role in our society.

In addition to these accomplishments, this year also marked the historic passage of the America Invents Act. This sweeping legislation, signed into law by President Obama in September, equips the USPTO with the resources necessary to operate an efficient IP system that processes patent applications and issues high-quality patents quickly. By transitioning to a simpler, more objective, and more inventor-friendly system of issuing patents, the new law helps ensure that independent inventors and small entities have greater clarity and certainty over their property rights and will be able to navigate the patent system on a more equitable footing with large enterprises.

The AIA also allows the USPTO to implement a fast-track examination option under which the patent examination process will be completed within 12 months. Getting a key patent can be critical to an entrepreneur hoping to raise capital and grow their business, with 76 percent of startups in the US reporting that venture capital investors consider patents when they make funding decisions. So with over 2,000 applications already submitted under the new acceleration program, many hundreds of office actions mailed and over 20 notices of allowance, businesses of all sizes are already leveraging the new tool to develop, grow and market their products and services with unprecedented swiftness, under the AIA.

For the first time, the USPTO has the ability to recover the actual costs of the services it provides, and a reserve fund, solely for the Agency’s use, to access all of those fees. These provisions have allowed us to hire and train new personnel, educate examiners and the public about changes to the USPTO review process, aggressively modernize our IT infrastructure, expedite application processing and issue higher-quality patents—all without adding a dime to the national deficit.

The bi-partisan passage of the Leahy-Smith American Invents Act and its tangible impact on the way we do business shows that government can work, fostering innovation, investment and job creation for the benefit of all. It has also led to strengthened work-sharing programs with other patent agencies overseas through the Patent Prosecution Highway (PPH), which allows each office to benefit from work previously done by others, reducing examination workload and improving patent quality. The expedited examination in each office also allows applicants to obtain corresponding patents faster and more efficiently in each country. 

In the last few weeks alone we’ve announced a number of PPH programs with our international partners, including a landmark work-sharing agreement with China’s State Intellectual Property Office (SIPO) under the Paris Convention (“Paris Route”) and the Patent Cooperation Treaty (PCT). The agreement comes at a very opportune time as China and the United States together make up a significant global market share for patent stakeholders.

For a more exhaustive look at these and other accomplishments, I encourage you to take the time to read our Performance and Accountability Report for 2011.

While all of these efforts point to our country’s commitment to innovation, perhaps no one event of the year tells that story better than the USPTO’s issuance of Patent No. 8,000,000—a sight restoration tool that gives the blind greater independence in their daily lives. It took 75 years to get from patent No. 1 to patent 1 million, yet just over five years to go from patent 7 million to 8 million. So beyond aiding the blind, this remarkable milestone is a testament to the enduring American spirit of innovation—a spirit that continues to unleash new breakthroughs, new markets and new economic opportunities.

That’s why we remain committed to building the world’s strongest Patent and Trademark Office, and that’s why we’re excited about some of the new challenges we face in the year ahead. For the first time in the history of the Agency, the USPTO will be opening a satellite office outside of the nation’s capital. The Elijah J. McCoy U.S. Patent and Trademark Office in Detroit will provide a significant boost to that city’s innovation economy with more than 100 technologically-focused, secure jobs. And more satellite offices will soon follow, in other cities throughout the nation. The goals of this ambitious expansion are to improve the hiring, recruitment and retention of top-quality Patent Examiners, to recruit directly in other geographic areas in the U.S. where engineering talent exists, and to increase our interaction with the IP community. 

While continuing to improve the diversity and talent of our workforce, we are also drafting a “Green Paper” on copyright policy in the digital era, in order to ensure that the 21st century best balances strong IP protections with the free flow of information over the Internet. Additionally, in 2012 we’ll draft a broader-based “National IP Strategy” to outline this Administration’s key IP priorities, our plan to improve patent protection for small businesses at home, and our efforts to increase our engagement with China on issues of IP enforcement.

Finally, after soliciting public comment on the America Invents Act and seeking input from a variety of stakeholders, we will complete the rulemaking to establish a new post-grant review process that is faster and significantly cheaper than costly and prolonged litigation—resolving questions about patent rights more efficiently. Unlike the re-examination process available today, the new post-grant review will allow issues of “subject matter” to be looked at and revamp the existing inter partes review system to adjudicate claims within 12 months; earlier resolution of disputes will weed out poor-quality patents sooner and add greater certainty to the US patent system.   

For all that we’ve accomplished and the great things yet to come, the credit is due to the talent, dedication, and innovative spirit of USPTO employees who are working hard every day to produce positive results for the American people and our economy. I couldn’t be more proud to be part of such an outstanding team of professionals, and I truly look forward to another historic year with the world’s first and only 21st Century Patent and Trademark Office.

Happy Holidays!

Posted at 12:51PM Dec 21, 2011 in USPTO  |  Comments[0]

A Farewell Message

Guest blog by USPTO Commissioner for Patents Bob Stoll 

Earlier this month, with a mixture of excitement and sadness, I submitted my letter of resignation as Commissioner for Patents, effective Dec. 31. I can say without reservation that it was an honor to serve as Commissioner for the past two years and at the USPTO for the bulk of my career. During my tenure leading the Patents organization we achieved some lofty goals, including the reduction of our patent backlog to less than 670,000, in spite of a five percent increase in filings, and we are on a trajectory to eliminate unacceptable backlogs in the future.

But the achievement that cheers me the most is the major culture shift we nurtured in the USPTO toward a more collaborative environment—supervisors mentoring examiners, examiners helping applicants, and the technical support folks helping move applications through the system. Through training, educating, establishing joint work efforts, and undertaking listening campaigns we have created a truly 21st-century agency that is lauded for its service and highly praised by applicants, bloggers, unions and the public at large. The USPTO is now regarded as a top employer, listed 19th in the annual ranking of Best Places to Work in the Federal Government.

The bi-partisan passage of the America Invents Act was a seminal event in patent history, the culmination of many years of discussion within the diverse patent community. Together we created a patent system that provides inventors with more certainty that they will reap the benefits of their labors while at the same time providing more information and products to the citizens of the world. This new patent framework will aid in the creation of new jobs and the recovery of our economy, and I am very proud to have been a part of its enactment and implementation.

I want to acknowledge the contributions of my mentor, boss and friend, Director Kappos, to my success as Commissioner for Patents. His leadership and vision are unparalleled in government service. He encourages thoughtful risk-taking and creative solutions to cure the ills of the agency. I will truly miss the almost hourly discussions, including weekends and holidays, about ways to improve the USPTO.

As I move on to other opportunities, I will also miss the rest of my friends at the USPTO and Department of Commerce, but I will still be a strong proponent of the great work being done here and a vocal participant in the patent dialogue as we continue to improve this system for the benefit of all.

Good luck to you all, and thank you for your great work and friendship.

Posted at 12:18PM Dec 19, 2011 in USPTO  |  Comments[2]

Investing in our Newest Employees Pays Dividends

I have some good news to share about our efforts to improve the retention of patent examiners past their probationary period. New employees seem to be most vulnerable to attrition during their first three years with the USPTO. So a little over a year ago, we established the New Examiner Mentoring Program pilot, designed to help new employees transition into the USPTO and even the Washington, D.C. area if they were moving to the community as new residents. Fifty of the examiners who joined us on either August 30 or September 27 last year requested a mentor. Most mentors were selected from the agency’s network of 11 affinity groups.

Throughout the probationary period for these new employees, affinity groups held structured enrichment sessions on soft topics – things of interest in D.C., transitioning to the technology center, etc. In the end, attrition of examiners with mentors was 4% (2 out of 50), compared to 8.4% (7 out of 83) for examiners without mentors. The program sustained itself without use of nonproduction time.

These results are leading us to expand the New Examiner Mentoring Program pilot to 200 new examiners in FY 2012, partnering with the Patent and Trademark Office Society, and acquiring mentor-matching software. When we look at the benefits associated with retaining examiners who are costly to recruit and on-board, we are quite optimistic about expanding this pilot project.

Posted at 08:53AM Dec 09, 2011 in USPTO  |  Comments[1]

Simplifying the Ex Parte Appeals Process and Reducing the Burden on Appellants and Examiners

Guest blog by Chief Administrative Patent Judge James Donald Smith

As the Chief Judge of the Board of Patent Appeals and Interferences, I am excited to be working with Director Kappos and Deputy Director Rea to advance their goals of being more responsive to the Office’s stakeholders and to improve the appeals process. In the few months that I have been at the Board, I have gained much more insight on the challenges that face the Board. I look forward to working with our stakeholders and the dedicated, hard-working professionals at the Board in addressing these challenges.

I am pleased to announce that, in an effort to further simplify and streamline the appeals process, the USPTO has published a notice of final rulemaking that makes changes to the rules currently governing ex parte appeals. These changes were prompted by comments that we received at the public roundtable of January 2010 and in response to the advance notice of December 2009 and the notice of proposed rulemaking of November 2010.

In short, the notice of final rulemaking:

• Withdraws the indefinitely-delayed 2008 Final Rule. The current rulemaking effort takes into consideration the public’s comments and concerns regarding the 2008 Final Rule.
• Eliminates a number of briefing requirements that ask for information that is readily available in the file history (e.g., statements of the status of claims, status of amendments, and the grounds of rejection to be reviewed on appeal; the evidence appendix; and the related proceedings appendix).
• No longer requires examiners to “acknowledge” receipt of reply briefs before jurisdiction passes to the Board, thus giving the Board jurisdiction immediately upon filing of the reply brief or upon the expiration of the time to do so.
• Provides that the Board will presume that all claims under rejection are on appeal unless the applicant cancels the claims by amendment, thereby eliminating the unintended cancellation of claims by the examiner.
• Creates a specified procedure for seeking review of an undesignated new ground of rejection in an examiner’s answer, which will toll the time for filing a reply brief and thereby eliminate the need to seek an extension for the reply brief.
• Clarifies that, for purposes of the examiner’s answer, any rejection that relies upon evidence not relied upon in the Office action from which the appeal is taken shall be designated as a new ground of rejection (the notice also includes a useful survey of case law to help in the determination as to what constitutes a new ground of rejection).

These are just some of the changes in the notice which we think will improve appellate practice. Thank you for the constructive comments and for your continuing desire to improve the Board’s processes.

Posted at 09:32AM Dec 05, 2011 in patents  |  Comments[2]

Our Growing Partnership with China

Guest blog by Deputy Director Teresa Stanek Rea

I find it hard to believe that I have been at the USPTO for almost ten months. When I started here at the USPTO, I knew I would be a part of a great organization – one that I worked with as a practitioner for many years. But I had no idea I would be a part of history as we implement the most significant patent reform legislation in history. What amazes me more, however, is that the America Invents Act is just one of many efforts we work on for our stakeholders.

Tomorrow (December 1, 2011), the USPTO and SIPO (State Intellectual Property Office - China) will begin a landmark worksharing initiative. The two new Patent Prosecution Highway (PPH) pilot programs will apply to qualifying applications filed under the Paris Convention and the Patent Cooperation Treaty (PCT).

I had the honor of representing the USPTO at a ceremony in Beijing on November 8, where I signed the Joint Statement of Intent with SIPO Deputy Commissioner Yang Tiejun to launch these PPH worksharing initiatives. This trip marked my second time visiting China as the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO. You can read about my first trip here.

This PPH agreement is a milestone in bilateral cooperation between the USPTO and SIPO. PPH programs, such as this one, permit each office to benefit from work previously done by the other office, reducing the examination workload in each office, aiding patent examiners and improving patent quality. The one-year pilot program will end on November 30, 2012. The trial program will gauge the interest of applicants and evaluate the programs for patent quality, efficiency and the reduction of the workload at the USPTO and SIPO. Both offices may extend the one year trial period upon mutual agreement. We believe the PPH Program has been overwhelmingly successful and it’s my pleasure to contribute to the program’s success by joining my counterpart in China and signing such an important document.

During this past trip I also spoke at the US-China Joint Commission on Commerce and Trade (JCCT) Intellectual Property (IP) Working Group Vice Minister level meeting. The USPTO, along with the Office of the United States Trade Representative, is co-chair of the JCCT IP Working Group, the main bilateral mechanism by which IP experts from the US and China seek to resolve IP concerns to US businesses. This meeting was a prelude to the recent 22nd Session of JCCT plenary meeting in Chengdu, China that newly appointed US Secretary of Commerce John Bryson attended.

One thing I’ve discovered in my time at the USPTO is that when I travel to a place like China, there is never a shortage of people who want to hear about what we do. So while in China, I also spoke about the America Invents Act at two Chinese universities, Renmin University and Nanjing University of Science and Technology. I also met with IP officials from various provincial level IP agencies of Jiangsu province, one of the most prosperous provinces of China. During our meetings, we discussed how we can collaborate to improve the IP protection and enforcement environment in Jiangsu province for the benefit of US and Chinese rights holders.

Our China team, a group of attorneys with specific expertise on China IP matters in the USPTO’s Office of Policy and External Affairs, will be busy following up on the USPTO-SIPO PPH pilot. I look forward to working with members of this Office and our business community in the coming months as we continue to develop this and other initiatives.

Posted at 01:47PM Nov 30, 2011 in ip  | 

Aiding our Future IP Practitioners

Helping the next generation of IP professionals learn to practice before the USPTO, our Law School Clinical Certification Pilot Program may be little known, but it has shown great success in providing benefit to the public and the IP community. The program allows law students enrolled in a participating law school’s clinical program to practice intellectual property law before the USPTO under close guidance of the law school clinic’s supervisor.

Our Clinical Pilot Program began in 2008 with six schools selected to allow students to practice before the Agency in both patents and trademarks. In 2010, the Program expanded to include 16 schools. To date more than 200 students have participated. The students are granted limited recognition to practice, providing them with the opportunity to draft and file patent and trademark applications. The program also provides experience interacting with patent examiners and trademark examining attorneys by responding to office actions. By engaging in the office action response process, the students learn how to craft effective responses that actively address real world issues raised by our examiners.

Aside from the practical experience students receive from participation in the Pilot Program -- experience that will serve them well after graduating from law school -- another public benefit is to the clients of the law school clinics who receive pro bono services. All of the law schools participating in the Pilot Program provide services to clients on a pro bono basis. In the fiscal year that ended September 30, students participating across the Program filed 83 trademark applications and 29 patent applications. These law school clinics are thus providing a much-needed service to independent inventors and small-entities that may not otherwise be able to afford IP legal services.

Will Covey, Deputy General Counsel for Enrollment and Discipline and Director of Enrollment and Discipline, visited the University of Richmond School of Law (one of our Program law schools) recently, where students unanimously praised their involvement in the Program, observing that they found great value in the opportunity to gain practical training in practicing before the Office. Richmond’s clinic director, Professor John Carroll, praised how the Program gives students the responsibility of providing seamless representation for their clients, from initial advice to prosecuting the application before the USPTO.

You can learn more about the program and the latest news about it on our website. And as always, your comments and questions are most welcomed.

Posted at 07:45AM Nov 23, 2011 in ip  |  Comments[1]

Office of Policy and External Affairs Fiscal Year 2011 Dashboard Overview

Guest blog by Al Tramposch, OPEA Administrator

The 2011 fiscal year recently came to a close and the Office of Policy and External Affairs (OPEA) is excited to share its progress in strengthening and enforcing intellectual property policy and protection both domestically and internationally. OPEA has had an especially productive year by supporting passage of the America Invents Act in Congress and taking initial steps to implement the new law, while continuing our goal of increased collaboration with global IP Offices. The latest comprehensive statistics on OPEA’s efforts can be found on our Policy and External Affairs dashboard.

As I explained in previous blog posts, the dashboard provides you with access to important metrics we track – such as the number of Patent Prosecution Highway (PPH) cases filed with the USPTO, as well as the number of programs, officials, and represented countries trained by the Global Intellectual Property Academy (GIPA). We believe collaboration with other countries can result in more efficient global intellectual property protection and enforcement systems so we are active participants in the PPH and the Patent Cooperation Treaty – Patent Prosecution Highway (PCT-PPH) projects.

PPH is a framework in which an application whose claims have been determined to be patentable in one country’s patent office is eligible to go through an accelerated examination in another country’s patent office. Under the PCT-PPH, patent applicants can request a fast-track examination procedure in participating offices where patent examiners can make use of the work products from other offices.

This past fiscal year the number of requests for PPH has increased by greater than 67%, and the number of requests for PCT-PPH has increased by nearly 300%.

Educational programs are instrumental in our efforts to strengthen intellectual property protection and enforcement worldwide. Through GIPA programs, foreign officials learn about international IP obligations and norms, and are exposed to a U.S. model of protecting and enforcing IP rights and discussion of IP issues in a collaborative learning environment.

In fiscal year 2011, OPEA staff conducted 149 programs for more than 5,300 participants. These programs included foreign officials from 138 countries – 16 more than last year. We are proud to report that this is a 100% increase in the number of training programs from last year with an increase of nearly 20% in participants. Our dashboard also provides specific countries represented by attendees each month here.

Thank you for following the OPEA’s progress and please contact us with any feedback on how we could improve our public access dashboard.

Posted at 02:39PM Nov 09, 2011 in USPTO  | 

Fourth Quarter Trademarks Dashboard Overview

Guest blog by Commissioner for Trademarks Debbie Cohn
 
The USPTO first introduced the Trademarks Dashboard this past year with quarterly updates to trademark metrics. This month, we are pleased to announce that for the fiscal year that ended September 30, 2011, trademark pendency, quality, electronic processing, and efficiency have met or exceeded performance targets. Performance results this year are all the more impressive considering that new application filings increased by 8.1 percent to 398,667 classes, which was slightly more than 4 percent above plan.
 
Trademark pendency continues to be maintained at historically low levels as measured by the time from filing to first action, and, at disposal or total pendency, the average time from filing to registration, notice of allowance or abandonment of the application. First action pendency ended the fiscal year at 3.1 months. Disposal pendency reflects low first action pendency and lower overall time to registration or notice of allowance, as more applications are filed and processed electronically – 10.5 months on average, and 12.6 months on average when including applications that were either suspended or involved in inter partes. 
 
Trademark quality is considered a critical measure and one we seek to continuously improve upon. The new “excellent office action” measure adds rigorous criteria regarding quality of an examiner's writing, evidence, and search strategy – setting a high standard defined as “excellence.” First year results surpassed the baseline target by nearly 7 percentage points – exceeding our initial expectations! The current first and final action compliance measures each delivered quality results above 96 percent. The evaluation of quality results are used for improving and developing policy and training guides and manuals.
 
We welcome any feedback you have on how we can improve the presentation or information presented. A dedicated mailbox has been set up for your comments. We look forward to hearing from you.

Posted at 03:11PM Oct 20, 2011 in trademarks  | 

Quality Continues to Rise

I thought I would return to the topic of patent quality, a topic that frankly can’t get enough attention. While speed is essential to a well-functioning USPTO, patent quality is the sine qua non of our success, and we are all deeply committed to ensuring patent quality. Since 2006, the USPTO has conducted a semi-annual External Quality Survey administered to practitioners and inventors who have had the most contact with the USPTO through the prior year. By incorporating their comprehensive feedback, we’re able to understand and respond to their concerns, and of course amplify those things we’re doing well.

Interestingly -- and positively -- per the most recent survey results, we are seeing a substantial positive shift in the public’s perception of overall examination quality.

The survey report, which we invite you to view, is based on a statistically-sound, neutral approach that collects a wide range of views on quality. We’re quite pleased to see that stakeholder perceptions of examination quality are the highest since the inception of the survey. The levels also represent significant changes compared to previous years.
 
How does this inform what we do? By incorporating this comprehensive feedback, we’re able to continually improve the quality of our efforts. For those who are satisfied we will do more of what is helping us turn out high quality work product. For those who are unsatisfied we will understand the root causes of their concerns and attempt to address those concerns.
 
As always, your thoughts and comments are welcome, on ways we can further improve quality, or any other topic.

Posted at 08:21AM Oct 06, 2011 in patents  |  Comments[3]

August Patents Dashboard Overview

Guest blog by USPTO Commissioner for Patents Bob Stoll

The Patent Dashboard showing our performance for the month of August has been released and is on our website. We have added several new quality measures.  As you may recall, the USPTO adopted and implemented a new set of patent quality measurement procedures for fiscal year 2011. The dashboard now shows the overall “Quality Composite Metric” as well as the seven individual factors that make up the composite.

Achieving high-quality examination is always our top priority. Previously, the USPTO measured quality through two measurements, the final rejection and allowance compliance rate and the in-process compliance rate. These measures had long been considered by the USPTO and the intellectual property community as useful—albeit insufficient—measures of quality. The Quality Composite Score, which uses these two historic metrics and five new metrics, was crafted by a joint USPTO-Patent Public Advisory Committee (PPAC) Task Force with extensive input from the intellectual property community and the public. The purpose of the new composite is to provide a more comprehensive view of quality in order to help us both address quality issues and identify and encourage best practices.

The new procedures measure seven diverse aspects of the examination process to form a balanced and comprehensive quality metric. These seven aspects include:

1. Quality of the action setting forth allowance or final rejection of the application (Final Disposition Compliance Rate- 20 percent of composite weight)
2. Quality of the actions taken during the course of examination (In-Process Compliance Rate- 15 percent)
3. Use of best search practices in the examiner's initial search for prior art (Pre-FAOM Search Review- 10 percent)
4. Use of best examination practices in the first action on the merits, (Complete FAOM Review- 10 percent)
5. Trends in compact and efficient examination as reflected in aggregate USPTO data, (Quality Index Report (QIR)- 20 percent)
6. Perceptions of applicants and practitioners as measured by surveys (External Quality Survey- 15 percent)
7. Perceptions of examiners as measured by surveys (Internal Quality Survey-10 percent)

The results of each metric are weighted and combined to determine the Quality Composite metric. The Quality Composite compares current performance against historical achievement and charts our progression towards desired levels of performance. Tracking individual components within the Composite allows us to reconcile any disjoints between outputs and desired outcomes, validate the desired correlations of metrics, and ensure quality initiatives address disparate views of examination quality. Since the beginning of FY10, the USPTO has progressed in each of the quality-related metrics for which historical data are available and we continue to be on target to meet our goals for FY 11.

The backlog of patent applications awaiting first office action by examiners dropped to 683,991 with 67,824 applications awaiting initial action following a request for continued examination (RCE) at the end of August.

Traditional First Action Pendency increased to an average of 28.2 months in August.  This increase from 27.8 last month was expected as we continue to clear up the oldest applications from the backlog through the Clearing the Oldest Patent Applications (COPA) initiative. At the end of August, there were 83,845 cases older than 16 months remaining. Meanwhile, Traditional Total Pendency increased from 33.5 months in July to 33.7 months in August.

The Preliminary UPR filing data through August shows that 455,930 applications have been received this fiscal year. Last year at this time, 437,530 applications had been received. The Office anticipates a 4.1 percent increase in filings this fiscal year over FY 2010. The allowance rate was 47.1 percent in August, which is 2.1 percent higher than this time last year. This increase is appropriate considering efforts taken to encourage examiner collaboration with applicants to practice compact prosecution.

As always, we welcome your thoughts and comments.

Posted at 02:45PM Sep 23, 2011 in patents  |  Comments[2]