Director's Forum: A Blog from USPTO's Leadership
USPTO and the Obama Administration Taking Action to Improve Incentives for Future Innovation via High Tech Patents
Blog by Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea
This month, President Obama offered a series of sweeping actions that, alongside Congressional steps, will immediately improve the environment for future innovation. These bold initiatives are designed to reduce abusive patent litigation tactics and to ensure the highest-quality patents in our system. The United States Patent and Trademark Office (USPTO) team is working hard, in consultation with stakeholders and the American public, to make this vision a reality.
The President set the stage for this new initiative February 14th when he said “our efforts at patent reform [via the Leahy-Smith America Invents Act] only went about halfway to where we need to go, and what we need to do is to pull together additional stakeholders and see if we can build some additional consensus on smarter patent laws.” On June 4th, the President announced five executive actions, four of which are specifically tasked to the USPTO. I’d like to take a moment to outline how the USPTO plans to begin implementing those actions.
The President’s first executive action instructed the USPTO to begin a rulemaking process to require patent applicants and owners to regularly update patent ownership information. The lack of availability of this information and the problems faced by innovators were highlighted in a study by the Council of Economic Advisers and the National Economic Council that was released with the President’s announcement. This study, entitled “Patent Assertion and U.S. Innovation,” documents the rise of litigation by so-called “patent assertion entities,” or PAEs (also described in the study as “patent trolls”). According to the study, a major challenge for companies and individuals targeted by PAEs is the difficulty in identifying the patent owner because PAEs often mask their identity by creating numerous shell entities. Better information on ownership will increase transparency, reduce abusive litigation, and enable more efficient licensing of patented technology. The rulemaking process will seek public comments on USPTO’s specific proposal on how to collect this new information and will also take into account stakeholder feedback received during earlier stages of consideration of this issue.
Turning to the second executive action announced in the President’s initiative, the USPTO will bolster training for patent examiners to improve their examination of functional claims and will also develop additional strategies to improve claim clarity. This action will build on our recent efforts to improve training programs for examiners to ensure the highest quality patent examination. Our next steps will be informed by the valuable stakeholder input received from the launch of our Software Partnership earlier this year, received both in public written comments and at two February engagement sessions in Silicon Valley and New York City.
The third executive action of the President’s initiative is focused on empowering citizens using patented technologies in consumer products. As the study “Patent Assertion and U.S. Innovation” documents, PAEs are no longer solely targeting large companies holding vast patent portfolios. Small businesses and enterprising individuals have also been on the receiving end of intimidating letters accusing them of patent infringement and threatening litigation. That is why we will create a valuable online portal that will provide answers to key questions and additional information resources for those individuals. The USPTO has long viewed public education as a core function of the agency; educational materials paired with ready access to public data on particular patents will create a powerful resource to support both users and developers of technology.
That leads me to our fourth executive action—expanding dedicated stakeholder outreach and bringing together the best of academic and government study of these issues. We will continue to actively support White House outreach efforts and help to initiate events across the country to help build a consensus on the next steps that policymakers should be taking in updating our policies and laws. We’re also excited to expand our Thomas Alva Edison Visiting Scholars program. Growing this initiative—which brings leaders in academia to the USPTO to develop empirical data and analysis on which to base agency efforts to promote innovation—will play an important role in helping policymakers, including the USPTO, Congress, and the federal courts.
In addition to our executive actions, the President’s initiative outlined a number of steps that Congress can take to reduce abusive PAE litigation while promoting a robust intellectual property system that drives innovation. We worked closely with bipartisan Congressional leaders during the development and passage of the Leahy-Smith America Invents Act (AIA), and we look forward to continue working with Congress to achieve the President’s goals.
The U.S. patent system “has spurred progress that has driven economic growth and transformed the way we live, work, communicate, and stay healthy,” National Economic Council Director Gene Sperling wrote in a White House blog June 4th. Our patent system is “enshrined in our Constitution…to encourage innovation and invention.” This Administration has done much to improve our patent system for the betterment of our economy and our society, including through the USPTO’s implementation of AIA. With your help we can—and we will—do more.
Strengthening Our Engagement with China
Blog by Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea
As part of our ongoing engagement with China, the USPTO recently hosted two Chinese delegations and two U.S. delegations. The first delegation included nearly two dozen Chinese IP officials participating in a two-day meeting April 16-17. This meeting of the Intellectual Property Rights (IPR) Working Group was held under the auspices of the Joint Commission on Commerce and Trade (JCCT), the principal vehicle for the United States and China to discuss trade-related IP issues.
The JCCT U.S. delegation is led by two U.S. Cabinet-level officials—the Commerce Secretary and the United States Trade Representative (USTR)—who meet once a year either in China or the U.S. The JCCT IPR Working Group is one of many interagency working groups within the JCCT, led at the under secretary level by the USPTO and the USTR. The USPTO hosted the first JCCT IPR Working Group meeting nearly 10 years ago, and we were pleased to host our Chinese colleagues once again, as well as members of the U.S. interagency delegation.
The IPR Working Group meeting covered patent, trademark, copyright, and trade secret issues that are at the forefront of the U.S./China relationship. In addition, I met individually with Chinese Minister-Counselor for Commercial Affairs Zhang Shaogang, and the Chinese IP attaché in Washington, Chen Fuli. We discussed ongoing and future cooperative efforts, as well as some difficulties that many pharmaceutical and biotech companies are facing at the Chinese patent office.
On April 19, we hosted a delegation of Chinese officials involved in amending China’s copyright law. The seven-member delegation was led by Director General Wang Ziqiang of China’s National Copyright Administration, and included other officials from his office and senior representatives from the National People’s Congress, the State Council Legislative Affairs Office, and the Chinese Embassy.
Copyright and enforcement experts from the USPTO, the U.S. Copyright Office, and the U.S. Department of Justice participated in the all-day meeting, during which I delivered opening remarks. The session allowed U.S. officials to learn more about the latest draft of China’s copyright law amendments now pending at the State Council Legislative Affairs Office, and at the same time permitted the Chinese delegation to become better acquainted with U.S. law and practice.
China intends to amend all of its IP laws in the next few years, and we expect to have periodic technical discussions and expert exchanges with our counterpart agencies during this process. China’s legislature is now reviewing draft revisions to China’s trademark law. We expect that the draft copyright law amendments will be taken up within the next year or two by China’s legislature, and revisions to China’s patent law will likely follow soon after.
We also heard the news that the former minister in charge of China’s National Copyright Administration, Liu Binjie, is now with China’s National People’s Congress where he will continue to be engaged on legislative reform. We welcome continued cooperation with him.
Our engagement with China is indeed broader than a few visits to Washington, D.C. Most recently, I met with the American Chambers of Commerce for China and Shanghai and the U.S. Chamber of Commerce to discuss USPTO’s activities in China and their concerns. In addition, I look forward to meeting with the head of China’s State Intellectual Property Office, Commissioner Tian Lipu, at a meeting of the five largest patent offices in the world (the “IP5”) in Silicon Valley this week. There we will discuss a range of issues of concern to our offices and stakeholders.
During the past year, we established a dedicated China team at the USPTO, led by our former IP attaché in Beijing, Mark Cohen. The team is staffed by nearly 20 people in both China and the United States. Our IPR attaché program has been expanded to the U.S. embassy in Beijing and to consulates in the cities of Shanghai and Guangzhou. During the summer, we will be sending Joel Blank to serve as our next IP attaché in Beijing, and Timothy Browning to serve in Guangzhou. They will join Dr. Jared Ragland, our current IP attaché in Shanghai.
The USPTO has a stellar team of IP experts, and we do our job best when we work closely with U.S. stakeholders on issues of common concern. Keep us posted on what challenges you are facing in China and globally in protecting your IP.
Advancing the Role of Trademarks
Guest blog by Commissioner for Trademarks Deborah S. Cohn
For the last two years the USPTO’s Trademarks team has actively engaged the private sector in developing pro bono and educational outreach programs. The primary goal of these programs is to offer the best possible intellectual property (IP) guidance and training to all of our stakeholders. These efforts follow the USPTO publication in April 2011 of a congressionally-mandated report outlining the extent to which trademark litigation harms small businesses. That report outlined steps the USPTO could take to better educate the public and stakeholders with resources enabling small businesses to further their understanding of trademark basics, enforcement measures, and available tools for protecting and enforcing trademark rights.
We have contacted bar associations in all fifty states to encourage the development of pro bono programs. The USPTO also launched a new trademark educational outreach program geared to general audiences that normally would not have easy access to such information, including non-trademark attorneys, the small business community, the entrepreneurial community, and students. In addition to these trademark-specific programs, the USPTO also conducts other programs designed to educate the public more broadly about intellectual property rights.
For several years, the USPTO has partnered with law schools across the country in an effort to provide pro bono services to trademark and patent applicants through student clinic programs under the supervision of licensed attorneys. In 2012, we dramatically increased the number of participating schools and therefore our reach into the community with these programs. We recently had the pleasure of welcoming to our headquarters more than 55 law students and faculty participating in our innovative Law School Clinic Certification Pilot Program. Visitors heard presentations from a wide range of USPTO personnel, including Acting Director Teresa Stanek Rea, attorneys from the Office of the Solicitor, and administrative trademark judges from the Trademark Trial and Appeal Board (TTAB).
The USPTO has also hosted a Trademark Expo for a number of years. These well-attended events combined seminars and exhibits to engage the public on trademarks and their importance. We have also published a significantly improved Basic Facts Booklet and produced a series of educational videos, all of which are easily accessible at www.uspto.gov.
We remain committed to advancing the registration of trademarks and understanding their role. As always, we welcome your feedback and suggestions on how we can improve our trademark educational outreach efforts. Simply email a comment to our dedicated mailbox, TMFeedback@uspto.gov. We look forward to hearing from you.
Hack for Change
Blog by Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea
Government has vast amounts of information that can be used to improve our lives, and the Obama Administration has challenged federal agencies to make this data easily accessible to and usable by the public. Agencies across the government are using the National Day of Civic Hacking on June 1 and 2, to address that challenge.
Its name may trigger negative connotations, but civic hacking is a positive form of citizen engagement and volunteerism that uses technology to tackle social challenges. Civic hackers are community members—engineers, software developers, designers, entrepreneurs, activists, and concerned citizens—who collaborate with others, including government, to invent ways to improve quality of life in their communities.
The USPTO is using the government-wide focus on civic hacking as a great opportunity to crowdsource innovative ideas from our extensive trademark data. A trademark is a brand name, slogan, or logo that sellers use to identify and distinguish their products and services. Consumers rely on trademarks to distinguish among competing sellers and ensure the purchase of a quality product. Individuals and companies register their trademarks with the USPTO to enhance intellectual property protection for their brands.
The USPTO currently provides high-quality databases and tools for searching for information about pending and registered marks. However, these resources are used mostly by the trademark community and the USPTO for issues related to the federal trademark registration process.
In February, the USPTO released a comprehensive dataset of information on registered U.S. trademarks in the hope of spurring a flood of new inquiries into such areas as marketing, advertising, brand use, innovation, and new product and service introduction.1 We challenge National Day of Civic Hacking participants to use the trademark dataset and other open data sources to develop a tool that identifies federally registered trademarks that comprise an entity’s portfolio or brand, or are used on specific products, in designated industries, or in geographical areas. Such a solution could provide useful information on how entities develop and employ their brands; whether entities expand into new products, sectors, or regions; and the potential value of trademark portfolios to these entities. The solution may also yield industry-specific information that could inform consumer decisions and aid startups and other firms seeking to develop new product lines.
I urge all those looking for a unique way to volunteer in your community through technology to consider participating in the National Day of Civic Hacking. You can learn more at hackforchange.org.
1For a thorough description of these data, see Graham, S., Hancock, G., Marco, A., & Myers, A., “The USPTO Trademark Case Files Dataset: Descriptions, Lessons, and Insights,” SSRN working paper (2013) (“Case Files”).
Global Classification and the USPTO
A new chapter has opened in global classification of patent documents. A collaborative internationally compatible classification system—Cooperative Patent Classification (CPC)—has now been established between the United States Patent Office (USPTO) and the European Patent Office (EPO) for cataloging technical and patent documents used in the patent-granting process. Planned phase out of the current United States Patent Classification (USPC) system is scheduled for January 2015. During this transition, the Office will begin classifying in CPC while continuing to classify and route applications using the USPC system.
Placing a classification symbol on an application means an examiner has determined the proper technical field to place the invention. As the Office progresses through its two-year transitional period to full implementation of CPC, examiners will receive extensive training enabling them to effectively search in CPC and place CPC symbols on published patent applications and granted patents.
With over 8 million U.S. patent documents already containing CPC symbols, patent applicants and owners may be wondering what immediate impact CPC will have on patent searches and classification. It will mean a more comprehensive search of prior art. Existing search tools have been modified to provide all users the ability to search documents classified in CPC, USPC, and International Patent Classification (IPC) systems. These tools are available on the USPTO’s classification website. Once fully implemented, our examiners will classify and search exclusively in CPC.
Transitioning to CPC is a gradual process. All parties working with CPC should be patient with the process and proactive in learning how to use the new classification scheme and tools.
CPC is the future of classification for the USPTO and the EPO. Together, we are engaging other IP offices to expand the usage of CPC and explore future enhancements to the CPC system. By joining together and sharing resources with the EPO, CPC will provide far-reaching benefits to our employees, stakeholders, and the international patent classification community.
More information about CPC is available on the jointly maintained CPC website at cpcinfo.org where training materials and information about our transition are routinely updated. The USPTO welcomes your thoughts throughout this transition. Please send any questions or comments to the CPC mailbox at CPC@uspto.gov.
USPTO’s Global Intellectual Property Academy Continues to Advance IP Awareness and Respect At Home and Abroad
Guest blog by Chief Policy Officer and Director for International Affairs Shira Perlmutter
The USPTO’s Office of Policy and External Affairs (OPEA), through its Global Intellectual Property Academy (”Academy”), is pleased to produce some key metrics from the first and second quarters of FY 2013 that quantify the advancement of its mission to promote awareness of and respect for the intellectual property rights of American businesses. During these past two quarters, the Academy expanded its educational, technical assistance, and capacity-building on IP issues to audiences both in the U.S. and abroad. Academy programs were offered to patent, trademark and copyright officials in the U.S. and abroad, including judges and IP enforcement officials, to further understanding and respect for intellectual property rights.
The Academy conducted 15 programs during the first two quarters for U.S. small and medium-sized enterprises. For example, it participated in the USPTO’s Trademark Expo, which highlights the important role trademarks play in commerce and society. The Academy also organized seminars on a variety of topics, including “What Every Small Business Must Know about Intellectual Property,” and the problems of counterfeiting and piracy.
During the first two quarters, the Academy also conducted 44 training programs for 1,937 foreign officials. One particularly important program brought approximately 300 judges here from around the world to discuss IP awareness and enforcement in a historic conference of the International Association of Judges. The Academy focused on such topics as the use of specialized courts and addressing IP infringements in the digital environment.
For more information on our activities across the first two quarters of fiscal year 2013, I invite you to see all of our performance metrics, which are available on our Policy and External Affairs dashboard.
Introducing Our Latest Performance Dashboard
Guest blog by Chief Administrative Trademark Judge Gerard Rogers
The USPTO has added more color to its Data Visualization Center with the addition of the Trademark Trial and Appeal Board (TTAB) Dashboard. In the spirit of open government, the TTAB dashboard is yet another way we are embracing transparency, by offering the public and TTAB users a new perspective on our operations. This inaugural TTAB dashboard provides critical information necessary for a true understanding of the various matters pending before the board, while assisting the public in assessing our performance.
The dashboard provides easy access to a variety of measures. Those include the average pendency of contested motions; the average pendency of appeal and trial cases being decided on the merits; and additional data that tracks new filings and inventory. We will update the data every quarter and provide comparisons with prior quarters. Pendency, filing, and inventory trends should be readily apparent.
The graphics and data are presented in three main sections. First, there are key pendency measures, information on new filings with the board, and pending inventory. Second, there is information about the docket of ex parte appeals, which is the source of approximately three quarters of the final decisions on the merits issued each year by the board. Third, there is information on oppositions and cancellations, the Board’s trial cases, including the contested motions that often arise in these cases.
Users can identify trends by looking at quarterly changes in pending matters maturing to become ready for decision, files waiting in inventory, and the age of proceedings. Other helpful statistics include the number and age of contested motions becoming ready for decision during a quarter, as well as those that are in inventory at the end of each quarter. Of particular note is the breakdown, by age, of various types of motions, including motions to compel, dismiss, or seek summary judgment.
While our current pendency and inventory of both contested motions and final decisions are slightly higher than we’d like them to be, we are instituting new initiatives to improve our performance. We anticipate improvement in the near future as our newly hired judges and interlocutory attorneys continue to become acclimated to their new roles. We believe the new TTAB dashboard will prove to be a valuable resource, and we welcome any feedback on how we can make this tool even more useful. Please email any comments to our dedicated mailbox, TTABdashboard@uspto.gov. We look forward to keeping up efforts to provide additional data and maintain transparency into the future.
Posted at 10:41AM Apr 18, 2013 in trademarks |
Empowering Current and Future IP Attorneys
Guest blog by Deputy General Counsel for Enrollment and Discipline Will Covey
For many patent attorneys and agents, the Office of Enrollment and Discipline (OED) is a name only seen when registering to practice or being investigated in a disciplinary matter. During the last year, however, OED has become more engaged with both current and future IP legal practitioners in an effort to educate inquiring minds about patent and trademark procedures while creating open lines of communication with attorneys and agents currently practicing before the USPTO.
As part of our focus on future practitioners, we recently had the pleasure of welcoming to our headquarters more than 55 law students and faculty participating in our innovative Law School Clinic Certification Pilot Program. The visitors heard presentations from a wide range of USPTO personnel, including Acting Director Teresa Stanek Rea, Commissioner for Trademarks Debbie Cohn, attorneys from the Office of the Solicitor, administrative trademark judges from the Trademark Trial and Appeal Board (TTAB), Deputy Chief Administrative Patent Judge James T. Moore from the Patent Trial and Appeal Board (PTAB), personnel from the Office of Patent Legal Administration (OPLA), attorneys from the OED, and human resources specialists.
The day-long program included an opportunity for participants to observe arguments by counsel in a TTAB opposition proceeding, questioning by the panel of judges, and a post-hearing discussion on effective presentation of arguments. In addition, program participants were able to engage with each other and USPTO personnel in various roundtable discussions.
The USPTO has designed this growing program to introduce future practitioners to the agency. It affords them the opportunity to gain experience by practicing in patent and/or trademark matters before the USPTO, under the guidance of a Law School Faculty Clinic supervisor. Specifically, students counsel clients, prepare applications, and respond to office actions on a pro bono basis. Under OED’s leadership, the program has grown tremendously: from six schools in 2008 to 28 schools today. About 880 law students have participated in the program to date. You can learn more about the program and the latest news about it on our website.
Our focus on current practitioners includes our recently published new ethics rules, known as the USPTO Rules of Professional Conduct. Designed to make life easier for the more than 41,000 practitioners who interact with our agency, they are based upon the American Bar Association’s Model Rules of Professional Conduct. The ethics rules are the first major update since 1985 and reflect the rules in place in 49 states and the District of Columbia. We spent a great deal of time reaching out to stakeholders in the IP community to balance the need of applicants as well as practitioners. Additionally, I am proud to say that the latest rulemaking eliminated the annual practitioner maintenance fee.
Our team of attorneys and staff has also been busy keeping up with the changes in patent law. Specifically, the registration exam for patent attorneys and agents has been updated four times in the past two years to reflect Supreme Court decisions, other relevant case law, and the Leahy-Smith America Invents Act (AIA). The latest update was released yesterday (April 2, 2013). It includes the final provisions of the AIA, such as First Inventor to File, which took effect on March 16, 2013.
Our entire OED team is committed to ensuring that current and future practitioners are equipped with tools essential to keeping America’s innovation engine running.
Examiner Training Continues on First Inventor to File
Blog by Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea
The much anticipated First-Inventor-to-File (FITF) provision of the Leahy-Smith America Invents Act (AIA) became effective March 16, 2013. The new system improves the transparency and fairness of our patent system. By harmonizing our filing system with the rest of the world’s industrial leaders, innovators competing in the global economy can more easily acquire venture capital, begin constructing their inventions, and seek out new markets at home and abroad.
The USPTO has already begun conducting examiner training on the FITF provision for our examining corps of more than 8,500 employees. The FITF training addresses critical changes to 35 U.S.C. §102 that redefine both prior art and the effective filing date afforded applications.
The training entails a three-part approach, recognizing applications to be examined under the AIA FITF law will gradually rise to the top of their dockets. For most examiners, this will not occur until this summer.
The first phase runs through April 4, 2013, and offers a three-part overview:
An introductory video that familiarizes the examiners with the AIA FITF statute and highlights some of the major changes;
A live, lecture-style training session that delves deeper into rejections under 35 USC §§102 (a) (1) and (a)(2) and the exceptions to these rejections under 35 USC §§102(b)(1)(A-B) and (b)(2)(A-C), showcasing practical examples of each; and
A follow-up video that re-emphasizes the statutory framework and provides additional practical examples of the provisions discussed in the live training.
A computer-based version of the live training is also being prepared as an online reference for examiners.
The second training phase consists of “just in time” or one-on-one training with an AIA FITF subject matter expert. It is intended to assist examiners in applying the provisions to particular applications in need of immediate examination, such as prioritized applications. This phase will run prior to the commencement of the third phase of training, a comprehensive course in July. Because applications filed on or after March 16, 2013, will take some time before being ready for examination, it is not expected that many employees will require this intermediate training.
The third and final phase in July 2013 will provide all examiners with an in-depth understanding of the FITF provisions, including how they impact prosecution. It will consist of small workshops geared toward greater interaction between examiners and FITF subject matter experts, providing examiners the opportunity to have specific questions answered.
All of the examiner training material on the FITF provisions of the AIA will be made available to the public on our AIA microsite.
A New Chapter for Protection of Industrial Design for the United States
President Obama’s signature on the Patent Law Treaties Implementation Act of 2012 marked the culmination of a long effort to empower American industrial designers to protect their innovative designs in many of the world’s most active markets. Under this new law, applicants can file a single international design application to acquire global protection. The law serves as the implementing legislation for both the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“the Hague Agreement”) and the Patent Law Treaty. Its passage late last year paved the way for the U.S. to become a party to the Hague Agreement within the next year.
The Hague Agreement in basic terms is an international registration system allowing industrial design owners to apply for protection in a number of states and/or intergovernmental organizations (such as the European Union) using a single international design application. American industrial design creators—who currently prepare and file separate applications for each jurisdiction—will now be able to file a single, English-language application with the World Intellectual Property Organization (WIPO) directly, or indirectly through the USPTO.
Why is this so important for American businesses? In short, it saves money. This new process will also protect small and medium sized businesses that lack a global footprint by enabling them to easily and swiftly acquire design protection in multiple markets.
U.S. membership represents the culmination of about two decades of hard work and dedication by many still at the USPTO, many who have since left, and by a variety of stakeholders in the design community. Of great importance to the design community now is that U.S. membership and participation in the Hague Agreement will serve as a catalyst for membership by other countries—large and small alike—that are actively considering membership, further fostering the protection of innovation in industrial design in a significant way.
U.S. membership is particularly timely because the importance of industrial design in a complex world is continually increasing. Whether in mobile technologies, in manufacturing, or in household appliances, design features increasingly bridge the gap between complex computer operations and a user-friendly interface. Industrial design makes products intuitive, aesthetically appealing, and comfortable to handle.
The USPTO applauds the many individuals whose hard work culminated in President Obama’s signature to the legislation implementing U.S. participation in the Hague Agreement. We are proud to be at the forefront of this next step in improved access to cost-efficient protection for America’s industrial designers, large and small.
Wanted: Your Ideas and Feedback About "RCEs"
During the last few years the USPTO has developed and implemented many significant changes to enhance the quality and efficiency of the examination process. We understand that resolving issues as early as possible during prosecution benefits applicants and the public. At the same time, we recognize that many inventions presented to the office are becoming increasingly complex, and may require more prosecution steps to complete a thorough and robust examination. Filing a Request for Continued Examination (RCE) is one of several tools available for stakeholders to resolve issues.
The USPTO currently has a backlog of applications awaiting examination after an RCE has been filed, and we’re actively pursuing efforts to address this backlog. But as we’re doing that, we’re also testing initiatives that may reduce the number of RCEs that need to be filed. For example, the office has initiated two pilots—the After Final Consideration Pilot (AFCP) and the Quick Path IDS (QPIDS) pilot—designed to obviate the need to file some RCEs. The AFCP provides a limited amount of time for an examiner to give more consideration to submissions made under 37 CFR 1.116. The QPIDS pilot is intended to reduce pendency and applicant costs when an information disclosure statement (IDS) is filed after payment of the issue fee. To date about 600 RCEs have been avoided due to the QPIDS pilot. Both pilots are currently set to end on March 23, 2013.
To further assist and help shape future RCE backlog reduction efforts, we want to learn more about the root causes for RCE filings and related pressure points experienced by our stakeholder community. In close collaboration with our Patent Public Advisory Committee (PPAC), we recently initiated an RCE Outreach program which seeks to gather input from stakeholders about RCEs. The purpose of this effort is not to eliminate RCE practice or in any way disadvantage it, but rather enable applicants to use RCE practice when needed and avoid it when equal or better options may be available. The RCE Outreach program Web page has a wealth of data about RCE filing and prosecution behaviors, an online collaboration tool for submitting comments, and a series of questions about RCE practice. I invite you to become part of the conversation and future solutions. The RCE Outreach initiative will also feature a series of roundtables and smaller focus sessions in Silicon Valley, Dallas, New York, Chicago, and at USPTO headquarters in Alexandria, Va. As they become available, the details on how to participate will be listed on our RCE Outreach Web page.
The USPTO Thomas Alva Edison Visiting Scholars Program Celebrates its First Year
I’m happy to report that the first year of our Thomas Alva Edison Visiting Scholars Program has been a great success. The program brings leaders in academia to the USPTO to pursue research projects, drawing on our extensive resources and specialized expertise, with the aim of furthering their intellectual pursuits as well as contributing to the USPTO mission. Since its debut on January 18, 2012, we’ve had the privilege of working closely with three distinguished academics, and the benefit of obtaining their input on a number of issues of key importance to USPTO functions.
Our first Edison Scholar was Professor Jay Thomas of the Georgetown University law faculty. While at the USPTO, Thomas studied and made proposals for new administrative practices that would modernize and improve the patent disclosure system. He also reviewed existing quantitative indicators of agency performance and patent quality, identifying potential points of improvement. Finally, Thomas has been developing new ways for the USPTO to make it easier for applicants to comply with disclosure duties, attempting to minimize concerns regarding inequitable conduct while increasing the quality of information provided to the agency.
Professor Peter Menell of Berkeley’s Boalt School of Law joined the USPTO as an Edison Scholar in June 2012. Menell identified best practices for improving patent claim clarity, which will facilitate patent prosecution, improve overall patent quality, provide better public notification of the scope of a protected invention, and reduce litigation disputes over claim construction. He has also worked on IT tools that can potentially help create an unambiguous prosecution history and searchable database of claim "topography." In addition, Menell lent his expertise to discussions of patentable subject matter as it relates to computer software, contributed to developing a mechanism to enable district judges to easily determine the status of reexamination proceedings, and provided input to a policy paper on digital copyright issues.
Our third Edison Scholar, Professor Jay P. Kesan of the University of Illinois, focused primarily on research related to international patent harmonization. Specifically, Kesan studied how the grace period available under 35 USC § 102 relates to the disclosure of useful information, and the pace and impact of cumulative innovation. Kesan also contributed empirical research related to patent law changes, as well as issues related to innovation, technology transfer, and the IP transactional environment. An additional focus of Kesan’s work was investigating how to develop a standardized set of metrics associated with patent office quality, and identifying circumstances in which such a set of metrics may improve prospects for international work-sharing.
The Edison Scholars devote six months or more to the USPTO on either a full or part-time basis. On behalf of the USPTO, I thank our three inaugural scholars for their outstanding contributions over the last year.
Posted at 10:25AM Feb 08, 2013 in USPTO |
New Digital Copyright Principles Just Published
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos
As many readers know, I've served on the World Economic Forum's Global Agenda Council on IP for the past few years. This group of IP experts from across the globe promotes understanding of the role IP rights play in driving economic development, creating jobs and opportunity, raising living standards, and empowering underserved communities in both emerging and industrialized regions.
The council has been working recently on issues around copyright in the digital age. As part of this effort, the council just published a set of Digital Copyright Principles for policy makers to consider as they strive to adapt the traditional balances in the copyright system in a changing world. The council also identified a set of overarching trends driving these changes.
The Digital Copyright Principles seek to promote a balanced view of public benefits and private rights, with copyright as a means to achieve important societal ends. By focusing on what we ultimately want copyright to accomplish, the principles seek to emphasize the common ground between different groups, with the aim of moving forward a principle-based discussion.
I invite readers to review the Digital Copyright Principles and discuss with your colleagues. Together we can build a system that realizes the full potential of the digital age.
Working Together on Chinese Trademark Issues
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos
Many IP issues in China receive high-profile attention in the media. However, quiet efforts by both countries’ leaders to develop and promote a long-range shared vision do not as a rule make the news. A good example is USPTO’s work with the Chinese Trademark Office (CTMO) and the Trademark Review and Adjudication Board (TRAB), a model of successful, sustained technical cooperation. The USPTO has worked closely and intensively for several years with these offices, exchanging best practices and candidly discussing challenges. This engagement, in turn, has led to several positive developments.
For example, USPTO collaborated with and supported CTMO’s effort to increase transparency through projects such as creating an online English-language trademark registration to assist companies conducting preliminary searches, as well as publishing for an English-speaking audience its research reports on the protection of foreign well-known marks. Thanks to these two efforts, U.S. companies can now conduct easy, no-cost preliminary trademark searches in English, and they can gain a better understanding of the way China protects well-known marks.
USPTO has also exchanged best practices with CTMO and TRAB examiners in substantive areas of examination, such as sound and single color mark examination, by both providing training and Chinese translations of sections of the USPTO Trademark Manual of Examination Procedure for reference by CTMO examiners. USPTO, CTMO, and TRAB have held exchanges on trademark administration and IT issues over the years, and during that time the CTMO has drastically reduced its pendency.
Another notable area of cooperation has been on the topic of bad faith filings, also referred to as “trademark squatting”—the practice of a party intentionally filing for another party’s trademark. In 2010, the USPTO joined together with the Japan Patent Office (JPO), The Office of Harmonization for the Internal Market (the European Union’s Trademark Office), and the CTMO to launch a series of technical seminars in Beijing on that issue, intended to identify useful features of national trademark systems that can be implemented as best practices in other countries.
Following the collaborative seminars, we were pleased to see that China’s Supreme People’s Court newspaper recently highlighted the results of its study on bad faith filing issued in December by the Beijing Number 1 Intermediate People’s Court. The study counseled courts to deter squatting activities when they interpret and apply the law, as well as to admit evidence with the goal of prohibiting this activity. In conjunction with this report, the court issued judgments in six cases against trademark squatters, sending a message about the importance of honest trading.
We have also followed the issue of bad faith filing as China’s legislative branch tackles the problem. On December 31st, China’s National People’s Congress published a draft of China’s proposed new trademark law for review and comment. One of China’s goals in revising its trademark law is to address the issue of bad faith trademark filing. We will continue to work together with China on this issue.
The Chinese have a saying that the longest journey begins with the first step. We believe the steps the U.S. and China have taken together have improved the IP system for all.
Trademark Dashboard For Quarter 1 Is Ready
Guest blog by Commissioner for Trademarks Deborah Cohn
It’s time again to share with you our Trademarks performance metrics for the last quarter, and I hope you’re as pleased as we are with the results. I should note that in response to your requests, we’ve added a new measure to the report. The application filing basis – use in commerce, intention to use, or based upon a foreign application or registration – will be reported as a percentage of new application filings.
We’re proud to report continued high performance in our Trademark business unit. Trademark application filings continue to increase, following the record set last fiscal year when more new applications were filed than any other year.
Our record performance is the result of a number of factors including greater use of the systems, tools, and resources necessary to manage new application filings electronically and by our dedicated and qualified employees who do their best to manage them well. The Trademarks performance dashboard has been updated to showcase our record of performance results. I invite you to take a look at how the Trademarks team is working to serve you and look forward to your feedback.
Our three quality indicators, which set high standards for examination quality, show mixed results in the first quarter. Results for first and final action compliance are slightly less than target, demonstrating the challenge in maintaining consistently high standards. Our newest indicator, ‘exceptional office action’ continues to exceed expectations for evaluating the ‘excellence’ of the examiner’s writing, evidence, and search strategy in preparing the office action. Quality results are reinforced by constant feedback, specialized training, and online tools and manuals to ensure the quality of the trademark register.
Every month over the last quarter, first action pendency stayed in the target range of 2.5 to 3.5 months from filing to issue a first action. Pendency to registration continues to remain at historically low levels. Disposal pendency – the time from when an application is filed until a trademark is registered or abandoned – has been under 12 months for the past three years – another record. This is due in part to the progress made from the use of TEAS Plus applications and greater acceptance of electronic filing, which now comprises more than 75 percent of all applications processed to disposal.
We welcome any feedback you have on how we can improve this dashboard. Simply email a comment to our dedicated mailbox. We look forward to hearing from you.
Posted at 02:41PM Jan 25, 2013 in trademarks |