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PTAB Update: Proposed Changes to Rules Governing PTAB Trial Proceedings
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee
When the Leahy-Smith America Invents Act of 2011 (AIA) created three new kinds of post-patent issuance review proceedings to be conducted by the Patent Trial and Appeal Board (PTAB), it also explicitly gave the USPTO broad regulatory authority to create and improve these new proceedings. As such, since we first issued rules and guidance for the proceedings in 2012, the agency has engaged the public and received extensive input through events like our eight-city public listening tour and responses to our request for formal comments last year. Based on this input, in March, we issued a first set of changes – or “quick fixes” – that were relatively simple in scope, and I promised that the agency would have a second package of more involved proposed rules ready to share with you this summer. So today, I am pleased to tell you about that promised set of additional proposed improvements (as further detailed in our Federal Register Notice) as well as share some key PTAB statistics to date, and detail some further opportunities for public input that are coming up.
First, by way of additional background, I wanted to share with you a few key statistics. The AIA created three new post-issuance review proceedings in 2011, which the PTAB practice rules govern: inter partes review (IPR); post-grant review (PGR); and the transitional post-grant review for covered business method patents (CBM).
While we have only three years’ worth of data at this point, the following provide a helpful picture of the significant activity occurring before the PTAB to date – and, in particular, how and by whom these proceedings are being used:
• As of July 31, 2015, the PTAB has received a total of 3,655 petitions, of which 3,277 are IPRs, 368 are CBMs, and 10 are PGRs.
• Of all of the AIA petitions filed so far, 63 percent were filed in the electrical/computer technology centers (TCs), 23 percent in the mechanical/business methods TCs, 9 percent in the bio/pharma TC, and 5 percent in the chemical TC.
• Trials have been instituted on 1,389 of 3,277 IPR petitions, 185 of 368 CBM petitions, and 2 of 10 PGR petitions.
• Of the first IPRs to reach a conclusion, 12 percent of total claims available to be challenged (4,496 of 38,462), were determined by the PTAB to be unpatentable in a final written decision. Other claims were either not challenged, resolved by settlement, cancelled, or upheld as patentable.Of the first IPRs to reach a conclusion, 25 percent of claims actually challenged (4,496 of 17,675) were found to be unpatentable.
More PTAB data and statistics (as of the end of July 2015) are available here.
Although the total number petitions filed to date reflect around three times more than what we initially anticipated, we are especially pleased that the PTAB has nonetheless maintained a perfect record in rendering all its final decisions within the mandated time frame of one year. (And without using the six-month “good cause” extension for any trial or employing the temporary safety-valve “cap” provided by Congress to decline further petitions.) We are also pleased that those final PTAB decisions that have been appealed to the U.S. Court of Appeals for the Federal Circuit (CAFC) have been affirmed at a very high rate. Taken together, the demand for these new proceedings (as reflected by the large number of filings) and the results we are seeing at the CAFC appear to indicate that the PTAB proceedings are succeeding in their Congressional mandate to effectively and efficiently resolve patent validity disputes, while providing timely, low-cost alternatives to district court litigation.
We recognize that, while we believe the proceedings are working well, there are improvements that could be made based on our and the public’s experiences with the proceedings. Along with the PTAB’s refinement and improvement of its proceedings that it has made through specific decisions, today’s proposed rules represent the next step in making improvements to these proceedings. In particular, the package of changes:
• Proposes to allow patent owners to include, with their opposition to a petition to institute a proceeding, new testimonial evidence such as expert declaration. This change responds to commentary raising concerns that patent owners are disadvantaged by current rules that let petitioners’ evidence go unanswered before a trial is instituted.
• Proposes a new requirement on practitioners before the PTAB, akin to the Rule 11 requirements in federal courts, to give the USPTO a more robust means with which to police misconduct.
• Proposes to clarify that the PTAB will use the claim construction standard used by district courts for patents that will expire during proceedings and therefore cannot be amended, while confirming the use of broadest reasonable interpretation (BRI) for all other cases.
• Notes the PTAB’s development of motions-to-amend practice through its own body of decisions, including a recent decision that clarified what prior art a patent owner must address to meet its burden of proof.
In addition, the proposed rulemaking in this Federal Register Notice also addresses comments made about requests for additional discovery, live testimony, and confidential information.
I encourage you to review the proposed rule package which addresses the comments provided to us during our listening tour and request for comments. We welcome your comments to our proposed rules, and ask that you submit them on or before October 19, 2015.
In addition to this current Notice, we are also considering issuing a request for comments related to the staffing of the PTAB panels for the institution phase of the proceedings shortly. Given the still-continuing rise in petitions being filed, the agency is seeking sensible ways to proactively manage its operations and resources by making these proceedings more efficient, while being fair and continuing to provide decisions of high quality. Please consider filing comments in this upcoming request. (Update: the request for comments on a pilot program has now been posted and is available here. Comments are due on October 26, 2015.)
And finally, in cooperation with the American Intellectual Property Law Association (AIPLA), we will conduct further public road shows later this month to discuss these proposed rules and improvements to PTAB proceedings, continuing to gain your valuable feedback. The road shows, entitled “Enhancing Patent Quality and Conducting AIA Trials,” will be held: August 24th in Santa Clara, CA, August 26th in Dallas, TX, and August 28th at USPTO headquarters in Alexandria, VA. Our goal is to issue final rules, based on the input we receive on these proposals, before the end of the year.
Thank you to all who provided feedback during our listening tours and/or request for comments. We are committed to working with you, now and in the future, to ensure that the PTAB proceedings are as effective and fair as possible within the Congressional mandate, and we look forward to continuing this productive partnership as we review and improve the PTAB trial proceedings to better meet your needs.
Modernization of Electronic Patent Application Process
Guest Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Russ Slifer
I’m excited to let you know about one of our newest initiatives, eCommerce Modernization (eMod), which will improve the electronic patent application process by modernizing the filing and viewing systems. Development will start later this summer, with the initial pilot program anticipated to start in the summer of 2016. The new system will be implemented in phases over the next few years, and once completed, will replace our current EFS-Web, Public PAIR, and Private PAIR.
For patent applicants, eMod will help provide a simpler authentication process, improved functionality, and a more user friendly interface and documents. For patent examiners, the updated systems will streamline patent submission, review, and management processes, and increase accuracy of application processing and publication. Overall, a more easy to use electronic patent application process will improve efficiency, communication, and patent quality.
We want to hear from you as we proceed with modernizing our filing and viewing systems. We have already started receiving feedback from the IP community and the public, and are incorporating these suggestions into the development process. I encourage you to review the ideas that have already been submitted on our Ideascale page and vote or comment on them. You can also share your thoughts with us through our eMod mailbox or by attending one of our outreach events.
Find more information about eMod on our website , or contact us directly at eMod@USPTO.gov. I will continue to share updates with you on eMod, as we work to make our patent application process as effective, efficient, and user friendly as possible.
25th Anniversary of the Americans with Disabilities Act
Guest Blog by Director of the Office of Equal Employment Opportunity and Diversity Bismarck Myrick
At the United States Patent and Trademark Office, (USPTO) we derive our strength from the vast array of backgrounds and experiences of our employees, including those with disabilities. We are proud to be one of the most diverse workforces in the federal government, ranked the #2 best place to work in the federal government for employees with disabilities as well as the #2 place to work overall in the agency subcomponents class by the Partnership for Public Service in 2015. On the 25th Anniversary of the ADA, it is important to re-dedicate ourselves to providing equality of opportunity and to eradicating myths, fears, and stereotypes about people with disabilities.
The USPTO takes an innovative approach to accessibility in the workplace. In August 2014, we deployed an online, self-service system called Accommodation Point, which initiates and manages reasonable accommodation requests from employees and job applicants with disabilities. The system makes requesting, evaluating, and deploying requests for reasonable accommodations easier and more efficient. This is a unique system within the federal government, and the only system known to be in use by a federal agency that allows job applicants to easily and electronically request an accommodation needed for pre-hiring situations, such as a sign language interpreter or wheelchair escort during job interviews.
According to the most recent U.S. Census Bureau data, 1 in 5 Americans had a disability, and 1 in 10 had a severe disability that substantially limits one or more basic life activities. The most recent study on disability employment, the Kessler Foundation 2015 National Employment and Disability Survey, showed that the most requested accommodation for people with disabilities in the workplace is a flexible schedule or the ability to work from home. At the USPTO, our employees are able to take advantage of these benefits regardless of disability status.
The USPTO sees hiring disabled employees as a smart business decision. The USPTO relies on a highly trained, specialized workforce to carry out our mission to protect innovation in the United States and provide global leadership in intellectual property policy. The USPTO recognizes that people with disabilities are an incredibly important talent pool that goes underutilized.
Both in the private and public sectors, people with disabilities in the workplace tend to go underreported and under-accommodated. Oftentimes, employees with disabilities do not come forward with requests until their performance has been significantly affected and their jobs are in jeopardy. The reason for this hesitance is varied, from employee fear that an accommodation will negatively impact their organization to pre-existing negative attitudes in the workplace regarding disability. Sometimes, employees will not request an accommodation because they perceive the process to be a greater inconvenience than the lack of accommodation.
The key is to empower employees to understand how and when to request an accommodation so that they can continue to perform at an acceptable level before a major problem arises. Accommodation Point at the USPTO helps facilitate this, and provides employees and prospective employees with disabilities the tools and resources they need to excel in their positions and contribute to the agency’s mission. To learn more, visit the Office of Equal Employment Opportunity and Diversity page of the USPTO website.
Joint Communique Between U.S. and Brazil on Patent Work Sharing
Guest blog by Chief Policy Officer and Director for International Affairs Shira Perlmutter
Under the U.S.-Brazil Commercial Dialogue IPR working group, the U.S. Patent and Trademark Office (USPTO) and the Brazilian National Institute of Industrial Property (INPI) have a long history of working together to exchange best practices aimed at capacity building and reducing each country’s patent backlogs. During President Rousseff’s visit to the United States on June 30, Commerce Secretary Penny Pritzker and the Brazilian Minister of Development, Industry & Foreign Trade (MDIC) Armando Monteiro signed a Joint Statement on Patent Work Sharing. This agreement is part of broader government-wide efforts to expand trade and investment with Brazil and is something the private sector has been urging both governments to adopt for some time. The USPTO’s Office of Policy and International Affairs (OPIA) and the International Trade Administration’s Brazil Desk facilitated the completion of this Joint Statement.
The Joint Statement emphasizes the importance and value of work sharing to improve efficiency in the patent application process—a benefit to patent applicants as well as patent offices. For applicants, work sharing facilitates the granting of patent rights and reduces the cost of obtaining patent protection in multiple jurisdictions. For patent offices, work-sharing mechanisms are effective in grappling with increased workload demands, leading to improved efficiencies in patent examination practice. More broadly, patent work sharing will help boost the economic growth and development of both the United States and Brazil.
At the White House, President Obama and Brazilian President Rousseff issued a Joint Communique which specifically referenced the Joint Statement, and recognized each country’s work sharing potential. The Joint Communique is an important milestone for the USPTO. It emphasizes the importance of intellectual property in bilateral discussions with partner nations, while highlighting the central role OPIA serves in providing expert IP advice to the various branches of the U.S. government, as well as the patent offices of foreign governments.
Pursuant to the goals outlined in the Joint Statement, OPIA is now working closely with counterpart officials in the Brazilian patent office -- the National Institute of Intellectual Property (INPI) -- to establish a technical framework for a future patent work-sharing program between the two offices. We hope to finalize an agreement on such a work-sharing program by the end of summer.
USPTO Offering Expedited Patent Appeals
Guest Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Russ Slifer
The USPTO recently launched a new pilot program that will allow appellants with multiple ex parte appeals pending before the Patent Trial and Appeal Board (PTAB) to expedite review of one appeal in return for withdrawing another appeal. This pilot program—a first for the PTAB—offers several advantages while being simple to use.
The Expedited Patent Appeal Pilot is designed to allow appellants having multiple ex parte appeals currently pending to have greater control over the priority with which their appeals are decided. It also serves to reduce the backlog of appeals pending before the PTAB. Additionally, this pilot program will permit an appellant having multiple appeals pending to accelerate the PTAB’s decision on an appeal involving an invention of greater importance to the appellant.
Appeals to the PTAB are normally taken up for decision in the order in which they are docketed. The current average pendency of an ex parte appeal at the PTAB is approximately 30 months. An appeal that is accorded special status under the Expedited Patent Appeal Pilot Program will be advanced out of turn for a decision on the appeal. The goal of the pilot is to render a decision on the appeal accorded special status no later than six months from the date of filing of the petition. Thus, participation in the pilot could save up to 2 years in wait time for a decision on an appeal.
Appellants wishing to participate in the pilot program need only make a certification and file a petition to the Chief Judge. We have waived the petition fee and provided a form-fillable PDF (Form PTO/SB/438) for use in filing the certification and petition. Although an application having no allowed claims becomes abandoned upon withdrawal of an appeal, applicants are permitted under the pilot program to file a Request for Continued Examination (RCE) in the application of the appeal sought to be withdrawn to continue prosecution and avoid abandonment of that application.
As well as the Expedited Patent Appeal Pilot, the USPTO is working on other initiatives to reduce the ex parte appeal backlog, which the agency will release soon. The PTAB continues to hire administrative patent judges, patent attorneys, and paralegals. In addition, the PTAB is starting a law clerk fellowship pilot program and is identifying further ways to provide more support to administrative patent judges to increase efficiency.
Update on our Enhanced Patent Quality Initiative
Guest blog by Deputy Commissioner for Patent Quality Valencia Martin Wallace
I am encouraged that we have received more than 1,100 comments and suggestions about our Enhanced Patent Quality Initiative in response to our Federal Register notice, internal Patents Forums, and Patent Quality Summit. We have taken the ideas and suggestions you provided and are making improvements in all aspects of patent quality.
The USPTO is committed to providing the most current and robust training for our patent examiners. In view of the U.S. Supreme Court’s recent decisions in Alice Corp., Myriad, and Mayo, we are now offering our examiners additional training on subject matter eligibility and claim clarity issues related to 35 U.S.C. § 101 and § 112. We are also further enhancing our training for patent examiners on search skills and the interviewing process.
In order to streamline our patents organization, we have consolidated the Office of Process Improvement, Office of Patent Quality Assurance, Office of Patent Training, and Office of Patents Ombudsman and Stakeholder Outreach into our newly created Office of Quality Management. I am confident this will also improve oversight and coordination of our quality processes.
We continue to provide helpful resources for the public, and recently launched a monthly “Patent Quality Chat” webinar series. The topic of our first webinar on June 9 was clarity of the record, our next webinar on July 14 will focus on in-person patent examiner interviews, and our August 11 webinar will discuss measuring patent quality. For those of you who were not able to tune into the clarity of the record webinar, you can view the PowerPoint slides and recording on the Patent Quality Chat page of the USPTO website. Be sure to check our online events calendar for more details on upcoming webinars and other events.
To better serve patent applicants, practitioners, and stakeholders, we are offering expanded business hours to contact our Patents Ombudsman in our regional offices. I encourage you to take advantage of this program, which assists applicants or their representatives with issues that arise during patent application prosecution. The ombudsman representatives help improve communication between the applicant and examiner, more quickly address issues that arise during prosecution, and reduce unnecessary delays during the process.
Finally, we will be embarking on a Patent Quality Roadshow this summer to update our stakeholders about our efforts and to hear your thoughts. The roadshow will visit Silicon Valley on August 24, Dallas on August 26, and Alexandria on August 28.
The USPTO is dedicated to issuing the highest quality patents possible. We hear you, we thank you, and we will continue to update you on our progress on our Enhanced Patent Quality Initiative.
Update on our Regional Offices
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee
It’s an exciting time for our four regional offices as we are reaching entrepreneurs across the country, hiring new patent examiners and judges, and getting ready to open our permanent office space in Dallas and Silicon Valley later this year. In addition, June 30 marks the one-year anniversary of our Rocky Mountain Regional Office in Denver and July 12th marks the three-year anniversary of the Elijah J. McCoy Regional Office in Detroit.
We’re increasingly excited to cut the ribbon at the permanent space for our Texas Regional Office in Dallas later this year. We’ll be located in the Terminal Annex Federal Building, a prime location in Downtown Dallas. We’re currently reviewing applications for a Regional Director for the Dallas office, who will be responsible for general oversight of the office as the most senior ranking official representing the USPTO. Later this summer, we will be advertising for patent examiner positions in Dallas. These will be posted on www.usajobs.gov, so please help spread the word.
We continue to participate in high profile events such as Dallas’s first Startup Weekend Women's Edition, at which several of our top USPTO leaders spoke in late May. On July 12, Deputy Director Russell Slifer will open the second annual National Summer Teacher Institute on Innovation, STEM, and Intellectual Property at the University of Texas in Dallas. This multi-day professional development training opportunity is designed to help middle and high school teachers incorporate concepts of making, inventing, and intellectual property creation and protection into classroom instruction. On August 7-8, the USPTO, the Dallas Entrepreneur Center, and Southern Methodist University (SMU) are sponsoring the Dallas Entrepreneur Conference, which will be held at SMU’s Dedman School of Law in Dallas. The event will provide resources to help entrepreneurs protect their intellectual property and grow their businesses.
With the West Coast Regional Office in Silicon Valley opening later this year in San Jose, hiring for the office is a key priority. In March, the office held a livestreamed recruitment webinar in cooperation with the office of U.S. Representative Zoe Lofgren, where a panel of USPTO patent examiners discussed their careers, sharing their personal experiences and taking questions from prospective candidates. As a follow up, we recently held a series of recruitment events across the region to search for top talent. We are seeking patent examiners in the fields of electrical engineering, computer engineering, and mechanical engineering, and are also hiring PTAB judges for all of our regional offices. You can learn more about the role of an administrative patent judge by watching our video series.
Over the last few months, the Silicon Valley office has been active in outreach efforts with organizations including the San Francisco Economic Development Council, Maker Faire Bay Area, Licensing Executives Society, and IP law associations across the region. The office is actively engaging with startups and incubators, providing technology focused and industry specific workshops and presentations. Further, in June, the office worked with the USPTO’s IP Attaché program to hold outreach meetings in San Diego and Los Angeles. The purpose of these meetings was to hear directly from stakeholders about their international IP-related concerns and challenges, and how the IP Attaché Program can help. Read more in a recent post to this blog.
It has been a busy year since the Rocky Mountain Regional Office in Denver opened in June 2014, a one-stop shop for innovators in the region. It is currently operating with 80 patent examiners and eleven Patent Trial and Appeal Board (PTAB) judges. Under the direction of interim Regional Director Robin Evans, the Denver office has been working with important industries in the region such as clean tech and biotech and organizations such as the Denver Mini-Maker Fair, Rocky Mountain IP Institute, and SXSW V2V. On April 2, the Metro Denver Economic Development Corporation awarded its Metropolitan Cooperation Award to individuals whose collective work resulted in the selection of Denver as a USPTO office location, and Deputy Director Russell Slifer and Senator Bennett accepted the award, demonstrating the office’s strong connection with the community.
The Rocky Mountain office also helped spearhead the recent expansion of the USPTO’s Patent Pro Bono program to Colorado, in conjunction with the Colorado Bar Association Intellectual Property Section and the Mi Casa Resource Center. The Colorado Pro Bono Patent Initiative, or the ProBoPat program, seeks to connect low income Colorado inventors with Colorado patent professionals for patent preparation and prosecution legal services on a pro bono or significantly reduced-fee basis.
In April, I had the chance to visit the Elijah J. McCoy Regional Office in Detroit, Michigan, our first regional office. We are operating with ten PTAB judges and more than 120 patent examiners. I enjoyed speaking to entrepreneurs and startups throughout my trip, including at the Detroit Techweek LAUNCH competition and entrepreneurship summit. Christal Sheppard, the Regional Director of the Detroit office, joined me for a roundtable on patent innovation with Senator Gary Peters, Congressman John Conyers, and Congresswoman Debbie Dingell, where we discussed intellectual property issues impacting the region and how we can work together to promote economic growth. The Detroit office continues to actively engage with the innovation community, as well as hold Saturday seminars, which are free events open to the public.
I look forward to updating you again in a few months about more exciting developments with our regional offices, including the grand openings of our permanent offices in Dallas and Silicon Valley. USPTO regional offices help protect American innovation and competitiveness, and we are dedicated to providing services to entrepreneurs, inventors, and small businesses, while actively engaging communities and local industries.
Posted at 01:56PM Jun 30, 2015 in ip |
IP Attaché Program Outreach in San Diego and Los Angeles
Guest blog by Chief Policy Officer and Director for International Affairs Shira Perlmutter
USPTO IP attachés provide valuable assistance to U.S. stakeholders doing business overseas by advising them on intellectual property matters including protection, enforcement, use and licensing. Last month, the IP Attaché Program conducted a set of outreach meetings in San Diego and Los Angeles. In these meetings, the USPTO engaged in an interactive dialogue with a wide variety of stakeholders, explaining how the IP Attaché Program works, and identifying more ways for IP attachés to address stakeholders’ needs.
The IP Attaché Program is overseen by USPTO’s Office of Policy and International Affairs (OPIA). The attachés are intellectual property experts who serve as diplomats in our embassies and consulates overseas to advocate U.S. positions on intellectual property matters for the benefit of U.S. stakeholders. The program currently has 11 attachés based in Rio de Janeiro, Moscow, New Delhi, Beijing, Guangzhou, Shanghai, Bangkok, Mexico City, Kuwait City, and Geneva, and they work closely with teams of specialized patent, trademark, copyright, and enforcement attorneys in OPIA. In August, we will be posting our first attaché in Brussels, who will be working with the European Commission and EU Member states.
Participants in the May meetings included senior representatives of industry associations, legal associations, law schools, IP practitioners, and U.S. companies. IP attachés based in Brazil, Russia, India, China, Mexico and Kuwait, as well as Dom Keating, the IP Attaché Program Director, addressed questions on topics including counterfeiting, piracy, and patent, trademark and copyright protection overseas. The IP attachés also spoke in sessions of the International Trademark Association (INTA) Annual Meeting.
If you would like the assistance of an IP attaché, you can contact him or her directly using the contact information listed on the IP Attaché pages of the USPTO website. We look forward to holding additional IP Attaché Program public outreach meetings in the future.
Posted at 10:27AM Jun 26, 2015 in International Affairs |
Farewell from USPTO’s Commissioner for Patents
Guest blog by Commissioner for Patents Peggy Focarino
As many of you know, I will be retiring from the USPTO at the end of the month after 38 years of service. I started my career here as a patent examiner in 1977, a few months after I graduated from college. At that time my goal was to become a Primary Examiner - I never dreamed I would rise through the ranks and have the opportunity to serve as Commissioner for Patents. I’m so honored to have had this job, and I feel privileged to have worked here at the USPTO over the years with so many talented colleagues.
As I prepare to leave the office, I’ve had some time to reflect on my career here – where I’ve spent nearly two thirds of my life – and to think about my colleagues and the values they represent.
It’s been an honor and pleasure to work with such a wonderfully diverse group of people. That diversity is part of our strength, and it is so gratifying to have watched it grow to a level I could never have imagined back in 1977. We have accomplished so much over the years by working together – and I believe the agency has never been stronger.
I’m grateful to Under Secretary Michelle Lee for the confidence she has placed in me and her collaborative leadership style in continuing to move the agency forward. I know the USPTO will continue to achieve great things under her inspired leadership.
I’m confident that with the addition of Deputy Under Secretary Russ Slifer to the team, the agency is poised to continue on a path of excellence in the quality of the products and services we provide.
I want to personally thank all the members of my staff for their dedication and support over the last several years. I could not have survived without them!
And finally, I want to wish everyone at the USPTO the best of success as you continue your vital work for the agency – and our great country.
Addressing IP Rights Issues in China
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee
It was clear during my recent trip to Beijing, China, that the timing for the visit could not have been better. China is at a crossroads in its economic evolution, and as such governmental officials are considering changes to every aspect of intellectual property law. After a series of high-level meetings, what was clear to both me and my China team—led by Senior Counsel Mark Cohen—was an increased recognition in China of the value of IP to the nation’s economic ambitions. It is through a mutual respect for the importance of IP rights and protections that U.S. companies will be able to fully and successfully compete in the Chinese market.
From May 25th to the 27th, I met with senior leaders across China’s IP landscape, starting with Vice Premier Wang Yang. The Vice Premier stated quite clearly that China aspires to be an innovation-based economy. China is no longer content with manufacturing goods invented by others, he and other leaders said, as the country aims to move up the economic value chain and compete in the global marketplace of inventors. As such, we were told that China recognizes that improving IP rights and enforcement is not just in the interest of the U.S., it is also in the interest of China. We heard this not just from the Vice Premier but in meetings with China’s State Intellectual Property Office (SIPO), the Ministry of Commerce (MofCOM), the State Administration for Industry and Commerce (SAIC), the National People’s Congress (NPC), and the Supreme People’s Court (SPC).
Much progress needs to be made in China in all forms of IP law, from patents and trademarks, to copyrights and trade secrets. I made clear in my meetings that we seek to work with China to develop a market-oriented, business-driven innovation environment that allows businesses the freedom to license and contract as conditions warrant. Those businesses need to be free from governmental interference in an environment comprising transparency and rule of law. Already assisting U.S. businesses in China are three USPTO IP attachés, including Beijing-based Joel Blank, who was part of my delegation.
We discussed with our counterparts China’s new IP specialized courts, offering input on how to ensure this reform guarantees justice for IP owners. We pushed for reforms to ensure effective protection and enforcement of trade secrets that would include revisions to its criminal law. We emphasized the need for increased protection for copyright and trademark owners while recognizing the importance of reforms already enacted, offering feedback on further reform efforts being discussed in China on those issues. And we did so, in each case, by emphasizing how these changes would be mutually beneficial for both countries.
I also had the unique opportunity to meet with U.S. industry representatives while in Beijing. It’s invaluable to hear about the IP challenges and issues faced by those “on the ground,” and to discuss the ways in which the U.S. government can help them.
This visit built on a successful trip by Deputy Director Russell Slifer to the IP5 Heads meeting in Suzhou, China, a week earlier. Along with signing a Memoranda of Cooperation with the Korean IP Office and the Japanese Patent Office, Deputy Director Slifer met with SIPO Commissioner Shen Changyu. Deputy Director Slifer and I had just hosted Commissioner Shen at the USPTO in April, and I had a productive meeting with him on this recent trip.
During that meeting, I signed a Memorandum of Understanding with Commissioner Shen that commits the USPTO and SIPO to a general framework of bilateral cooperation. We both committed to educational programs on how best to protect patents in each country’s legal system, and could organize activities related to USPTO programs such as the Patent Prosecution Highway and the Global Dossier initiative. SIPO and the USPTO process more patent applications than any of the other IP offices in the world, and I am encouraged by the furthering of our agencies’ collaboration.
As evidence of this collaboration, SIPO also participated in a cause close to my heart. On May 25, I gave a speech at Columbia University's East Asia Center in Beijing to an audience of 60 people, mostly women between the ages of 25 and 40, on the importance of women in STEM (science, technology, engineering, and mathematics) fields. A representative from SIPO echoed my remarks, and emphasized the link between a strong STEM education system and an innovative society.
Engagement with SIPO—and Chinese policymakers more broadly—will continue later this year with the next meeting of the U.S.-China Joint Commission on Trade and Commerce that I co-chair with Deputy U.S. Trade Representative Robert Holleyman. This trip helped lay the groundwork for that very important bilateral trade dialogue, in which IP is a top priority. We’re moving forward on plans for that meeting with a commitment to continue to encourage China’s evolution to an innovative economy that increasingly respects and promotes IP rights.
Reduced Trademark Filing and Renewal Fees
Guest Blog by Mary Boney Denison, Commissioner for Trademarks
The USPTO is dedicated to serving the public in the most efficient and cost-effective manner possible. In January 2015 we implemented reduced trademark application and renewal fees. Lower fees lessen the burden for entrepreneurs and small businesses to obtain the crucial trademark protection they need to grow their businesses, while increased electronic processing enhances the USPTO’s efficiency of examination.
An important part of the USPTO’s mission is to optimize trademark quality and timeliness. Our Trademark Electronic Application System (TEAS) allows easy electronic filing by applicants. Since January 17, a new reduced trademark application filing fee option, TEAS Reduced Fee (TEAS RF), has been available to the public. This new filing option promotes electronic communication and application processing while giving applicants more flexibility in identifying their goods and services. With the TEAS RF option, applicants pay a reduced fee if they agree to two-way electronic communication throughout the process. This option has proven to be popular with the majority of trademark filers. In addition to introducing TEAS RF, we’ve also reduced the TEAS Plus initial application fee and reduced the fee to renew a trademark registration electronically. Visit the Trademarks page of the USPTO website for specific information on the reduced fees.
Prior to January 17, the electronic trademark application options consisted of a TEAS “regular” application and a lower-cost TEAS Plus application with stricter filing requirements, introduced to encourage end-to-end electronic processing of applications. While these options did increase the number of applicants submitting initial applications electronically, approximately 20 percent of applicants were still filing subsequent documents on paper. We conducted outreach to determine what specifically discouraged filers from filing electronically. I personally called many of the firms which did not, or rarely file completely electronically in order to get an idea of what we could do to encourage end-to-end electronic filing. The feedback we received led us to add the TEAS RF option and reduce the TEAS Plus fee and trademark registration fee.
Since introducing the reduced fees in January, TEAS “regular” applications have dropped while TEAS RF filings have increased. The increase in online filing is beneficial to the USPTO’s workflow processes, data collection, and file management, while supporting our objective of end-to-end electronic processing of applications. We will continue to engage with the public to identify ways to streamline our processes, lessen the financial burden on applicants, and efficiently process trademark applications.
Posted at 11:20AM May 29, 2015 in ip |
USPTO Assistance for Independent Inventors and Small Businesses
Helping small businesses and independent inventors with limited resources is an important goal of the USPTO, and supports the Obama administration’s commitment to leveling the playing field for all American workers and businesses. Despite comprising only 1 percent of all businesses, entrepreneurs and small business owners have generated more than 65 percent of new jobs over the last two decades and start-ups in high-tech hubs account for more than 40 percent of new jobs each year (Small Business Administration, May 2014). The USPTO has several free or reduced fee programs to assist independent inventors and small businesses in securing patent protection for their inventions: the Patent Pro Bono Program, Pro Se Assistance Program, and Certified Law School Clinic Program.
First, through the Patent Pro Bono Program, the USPTO partners with non-profit organizations and law schools to establish regional programs throughout the country. By working with their regional patent pro bono program, under-resourced independent inventors and small businesses may secure free legal representation to help them file and prosecute patent applications. Each regional program has certain requirements that independent inventors and small businesses must meet. In general, an independent inventor or small business need only show income in a certain range, some knowledge about the patent system, and possession of an invention and not just an idea.
After ascertaining that the eligibility criteria are met, the regional pro bono program matches independent inventors and small businesses with volunteer patent attorneys to provide them assistance. To date, patent pro bono programs are available in 49 states with nationwide coverage coming this year. Visit the Patent Pro Bono Program on our website to learn more, or to volunteer to help an under-resourced independent inventor or small business.
Second, the USPTO recognizes that many independent inventors and small businesses file patent applications without the assistance of a registered patent attorney or agent—also known as "pro se" filing. The USPTO has tools to assist pro se filers with this process, as well as a dedicated team available to answer filing questions. To learn more, visit the Pro Se Assistance Program page of our website.
Third, the USPTO has partnered with 45 law schools to offer programs through which law students draft and file either patent applications or trademark applications for clients under the supervision of law school faculty. Since its inception, over 1,850 law students have participated in the program and have filed more than 340 patent applications and more than 1,125 trademark applications for clients. Information about requesting free legal services through a participating law school clinic is available on our website.
Another advantage that the USPTO offers for independent inventors is reduced fees for “micro entities” and “small entities.” If you meet the micro-entity requirements, you are eligible for a 75 percent reduction on most fees, and small entity status offers a 50 percent fee reduction. View the full USPTO fee schedule.
All of these resources and programs will be discussed in more detail during a free webinar on Thursday, May 21, 2015, from 2:00 PM to 5:00 PM ET. USPTO experts will explain these free and reduced fee resources and inform independent inventors and small business about how to secure legal representation to better navigate the patent system. It’s a great chance to learn if any of these programs might help you and hear answers to your questions.
The Patent Pro Bono Program, Pro Se Assistance Program, and Law School Certification Clinic Program, along with our discounted fee programs, serve vital roles in the marketplace of innovation. They ensure all creators benefit from their intellectual property and in turn that society can benefit from their inventions. I hope you will participate in the webinar and take advantage of these programs to protect your inventions.
Posted at 10:02AM May 20, 2015 in patents |
Redesigned and Updated Patents Dashboard
Guest blog by Commissioner for Patents Peggy Focarino
In direct response to feedback we’ve received from the public, we have updated our online Patents Dashboard. The Patents Dashboard is one of several tools the USPTO makes available to the public to track our progress in areas such as pendency, quality and timeliness.
The new dashboard provides information on major metrics with sub-pages organized by topic. A considerable amount of additional data has been added that relates to designs, petitions, after final responses, amendment turnaround, patent term adjustment, and other pendency metrics and filing information. One new feature of the updated dashboard is a “statistic of the quarter.” The statistic we are featuring this quarter shows the impact of recent court decisions by comparing the allowance rate for business methods, biologics and diagnostic methods and the overall allowance rate.
Much of the data, including the statistic of the quarter and petitions and patent term adjustment, is being provided to the public for the first time, and in response to public requests for it. We are releasing the data as part of our continuing efforts to be open and transparent about our operations and to provide useful information to our stakeholders in a timely manner. These updates also directly support our Enhanced Patent Quality Initiative.
We hope our users will find these new dashboard updates useful and informative and we welcome your comments and suggestions about them. Please send comments and suggestions to firstname.lastname@example.org.
Posted at 03:04PM May 19, 2015 in patents |
Attend a Patent Public Advisory Committee Meeting
Input from the public is invaluable to us so we can best serve the needs of our innovation community. To this end, our Patent Public Advisory Committee (PPAC) plays an important role in advising us on public input regarding important USPTO matters. PPAC is a group from a cross-section of our stakeholders who engage with the public to share agency developments, collect feedback, and share it with us. It’s all in an effort to gather input on, and be as transparent as possible about, all our operations. The PPAC holds quarterly meetings, during which the committee receives updates from across the agency and takes deep dives into the operation of different business units on a rotating basis. As a former PPAC member, I can tell you that these meetings are an excellent way to stay up to date on many facets of the agency, and I encourage you to attend our upcoming PPAC meeting tomorrow, May 14, at our headquarters in Alexandria, Virginia, or to watch the livestream. The PPAC was created by statute in the American Inventors Protection Act of 1999 and advises the USPTO on policies, goals, performance, budget, and user fees. The committee also prepares an annual report on these matters, which is published in the Official Gazette. Committee members consist of U.S. citizens chosen to represent the interests of diverse stakeholders, including independent inventors, private practitioners, corporate attorneys, and academics. Appointments to PPAC are made by the U.S. Secretary of Commerce based upon applications submitted by the public, and appointees are special government employees for their tenure. The PPAC is led by a chair and vice chair, and members sit on a variety of subcommittees to focus on different areas of the agency, for instance, on quality, international relations, and the Patent Trial and Appeal Board (PTAB). Subcommittee membership offers exposure into the intricacies of the agency’s operations and helps members foster relationships with USPTO leaders. After tomorrow’s meeting, there will be two more PPAC meetings in 2015 that will take place on August 20 and November 19. Before becoming a USPTO employee, I was fortunate to serve as a PPAC member. I found the experience to be quite rewarding, and the meetings to be very informative about the programs and operations at the USPTO. Some of the topics on the agenda for tomorrow’s meeting include updates on the quality initiative, patent examination policy, next generation systems, legislation, and our international efforts. Additionally, I encourage you to consider serving as a PPAC committee member; we accept applications annually in the fall. Watch for announcements regarding the next open application cycle. Through these experiences, you can make your voice heard, learn more about USPTO programs and operations that affect your business interests and at the same time, help the USPTO.
Input from the public is invaluable to us so we can best serve the needs of our innovation community. To this end, our Patent Public Advisory Committee (PPAC) plays an important role in advising us on public input regarding important USPTO matters. PPAC is a group from a cross-section of our stakeholders who engage with the public to share agency developments, collect feedback, and share it with us. It’s all in an effort to gather input on, and be as transparent as possible about, all our operations. The PPAC holds quarterly meetings, during which the committee receives updates from across the agency and takes deep dives into the operation of different business units on a rotating basis. As a former PPAC member, I can tell you that these meetings are an excellent way to stay up to date on many facets of the agency, and I encourage you to attend our upcoming PPAC meeting tomorrow, May 14, at our headquarters in Alexandria, Virginia, or to watch the livestream.
The PPAC was created by statute in the American Inventors Protection Act of 1999 and advises the USPTO on policies, goals, performance, budget, and user fees. The committee also prepares an annual report on these matters, which is published in the Official Gazette. Committee members consist of U.S. citizens chosen to represent the interests of diverse stakeholders, including independent inventors, private practitioners, corporate attorneys, and academics. Appointments to PPAC are made by the U.S. Secretary of Commerce based upon applications submitted by the public, and appointees are special government employees for their tenure. The PPAC is led by a chair and vice chair, and members sit on a variety of subcommittees to focus on different areas of the agency, for instance, on quality, international relations, and the Patent Trial and Appeal Board (PTAB). Subcommittee membership offers exposure into the intricacies of the agency’s operations and helps members foster relationships with USPTO leaders.
After tomorrow’s meeting, there will be two more PPAC meetings in 2015 that will take place on August 20 and November 19.
Before becoming a USPTO employee, I was fortunate to serve as a PPAC member. I found the experience to be quite rewarding, and the meetings to be very informative about the programs and operations at the USPTO. Some of the topics on the agenda for tomorrow’s meeting include updates on the quality initiative, patent examination policy, next generation systems, legislation, and our international efforts.
Additionally, I encourage you to consider serving as a PPAC committee member; we accept applications annually in the fall. Watch for announcements regarding the next open application cycle. Through these experiences, you can make your voice heard, learn more about USPTO programs and operations that affect your business interests and at the same time, help the USPTO.
Posted at 04:45PM May 13, 2015 in ip |
New Tool for Examiners Helps Streamline Examination Process
Guest blog by Chief Information Officer John Owens
The USPTO recently launched a critical new tool for patent examiners, marking the beginning of the retirement of certain legacy IT tools, and furthering our commitment to sharpening operating efficiencies as we modernize IT systems. Newly released to the patent examining corps is Version 2.0 of the Docket and Application Viewer (DAV), a customizable, searchable tool to help examiners manage their work load and prioritize tasks. This tool replaces the Desktop Application Navigator (eDAN) tool they use now.
This new tool, like others to come, will help the agency in the drive to increase patent quality. Once fully deployed, the USPTO’s “Patents End-to-End” (PE2E) system will provide examiners with an improved way of processing patent applications, integrating activities currently managed across separate systems into a central place, and leveraging modern technology. Late in 2016, we expect to launch more releases critical to examiners including Office Action and Search tools. Between now and the end of 2016, there will be incremental software releases for a pilot group of examiners to use.
The DAV was successfully deployed to over 120 servers in 48 hours in late March by the USPTO’s Office of the Chief Information Officer (OCIO) in close collaboration with our Office of Patent Information Management and the Patent Office Professional Association union. Training for this tool began in late March. The DAV tool also reflects our teams’ use of “agile” practices that focus on user involvement and feedback, while “DevOps,” provides a method of emphasizing tight collaboration. In the last few years, we have used agile and user-centered design to enhance how we develop and deliver new software to users.
Getting public input is critical to us. That’s why we host public events with tech experts to spur discussion, generate ideas, and help us operate at maximum efficiency. On June 11-12, 2015, we will host the inaugural DevOps Days DC, an international forum on “DevOps” at the USPTO campus in Alexandria, Virginia. We look forward to providing more updates on the agency’s IT transformation as we rollout more software and systems to strengthen examination processes and support the nation’s innovators.
Posted at 12:28PM May 11, 2015 in ip |