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

Monday Dec 15, 2014

Guidance on Subject Matter Eligibility Issued

Guest blog by USPTO Commissioner for Patents Peggy Focarino

Following the valuable feedback that we received from the public through written comments and multiple public meetings over the last several months, we are issuing new examination guidance on subject matter eligibility under § 101 in view of the U.S. Supreme Court’s recent decisions in Alice Corp., Myriad, and Mayo. You can find the guidance in a Federal Register notice officially published on December 16, 2014, entitled “2014 Interim Guidance on Patent Subject Matter Eligibility.” Claim examples have been developed to illustrate the analysis set forth in the guidance. A set of examples relating to nature-based products are posted on the USPTO website and a set of examples relating to abstract ideas will be released shortly. This guidance is the latest but not necessarily the last iteration of our ongoing implementation of these Supreme Court decisions.

I want to address two aspects about the 2014 Interim Eligibility Guidance in particular. First, the guidance explains the USPTO's interpretation of subject matter eligibility requirements in view of the Alice Corp., Myriad, and Mayo Supreme Court decisions and  sets forth an integrated approach for patent examiners in making determinations regarding subject matter eligibility. This guidance incorporates principles emphasized in Alice Corp. and provides more details than our initial examination instructions issued immediately after the Alice Corp. decision. 

Second, the guidance reflects a significant change from the examination guidance previously issued in response to Myriad and Mayo. The changes were triggered by the feedback we solicited and received from the public, as well as refinements necessitated by the Alice Corp. decision.

More specifically, you may recall that earlier this year we released preliminary examination guidance on evaluating eligibility of claims reciting laws of nature, natural phenomena, and natural products in the wake of Myriad and Mayo. Following that release, the Supreme Court issued the Alice Corp. decision and as per usual, we issued preliminary instructions on eligibility determinations of claims directed to abstract ideas. We sought public feedback on both sets of guidance, through written comments as well as a number of public events. We were pleased to receive numerous comments on both sets of guidance from a diverse group of stakeholders, including legal organizations, industry organizations, law firms, corporate entities, universities, and individuals. We carefully considered input from the public and our own patent examiners in addressing possible revisions both to our guidance stemming from Myriad and Mayo as well as Alice Corp. That led us to make changes to our analysis of subject matter eligibility under § 101, now set forth in the 2014 Interim Eligibility Guidance. We crafted this guidance to be a more straightforward eligibility analysis, one that promotes examination efficiency and consistency while conforming with the principles in the Supreme Court decisions.

We will continue to solicit stakeholder feedback as we further refine our examination guidance. The Federal Register notice outlining our new guidance announces a 90-day written comment period, and we encourage the public to submit comments. In addition, we plan to host a public outreach forum on the 2014 Interim Eligibility Guidance in mid-January, where you will have the opportunity to provide input in person or via the web. Stay tuned for more details, which will be posted on our website.

Through regular public engagement in this process, we welcome and will consider all viewpoints as we continue to refine our examination procedures for claims for subject matter eligibility.

Friday Dec 12, 2014

USPTO Releases its FY 2014 Performance and Accountability Report (PAR)

Guest Blog by Tony Scardino, Chief Financial Officer

I’m pleased to announce the USPTO has published its Performance and Accountability Report (PAR) for fiscal year (FY) 2014. The PAR serves as the USPTO’s annual report, similar to what private sector companies prepare for their shareholders. Each year the USPTO publishes this report to update the public on our performance and financial health.

Our PAR charts the agency’s progress toward meeting goals outlined in our new 2014-2018 USPTO Strategic Plan: optimizing patent quality and timeliness; optimizing trademark quality and timeliness; and providing domestic and global leadership to improve intellectual property policy, protection, and enforcement worldwide. These goals govern the quality and quantity of our service to intellectual property owners and USPTO stakeholders. In addition, the PAR provides information on the USPTO’s progress toward a broader management goal: achieving organizational excellence.

Here at the USPTO, we take pride in producing a PAR that meets the highest standards of quality and accountability. The PAR contains a wealth of data and historical information of interest to our stakeholders, including data on patent and trademark examining activities, application filings, and agency staffing levels. This information is conveniently presented in the Workload Tables section at the end of the PAR.

On the issue of financial performance, FY 2014 marks the 22nd consecutive year that the USPTO’s financial statements received an unmodified audit opinion. Our clean audit opinion gives the public independent assurance that the information presented in the agency’s financial statements is fairly presented and follows generally accepted accounting principles. In addition, the auditors reported no material weaknesses in the USPTO’s internal controls, and no instances of non-compliance with laws and regulations affecting the financial statements.

While the PAR is a record of our achievements, it is also an honest discussion of the challenges we face as an agency moving forward in FY 2015. Among our challenges and opportunities, we will be managing the transition to an inventory maintenance patent processing operation as we come closer to our pendency and inventory targets in the future; promoting trademark application processing efficiency with fee reductions; securing sustainable funding in an era of increased budgetary pressures; and providing information technology (IT) support for a nationwide workforce with a “24/7/365” operational capability.

The PAR is a faithful snapshot of the USPTO’s FY 2014 performance. I hope you find value in this document, and that it allows you to glean greater insights into the agency’s activities and achievements.

Thursday Dec 04, 2014

Update on USPTO Satellite Offices

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

In an era where our stakeholders’ businesses are rapidly evolving and the intellectual property (IP) landscape is constantly adapting to new and emergent technologies, it’s important to ensure the USPTO can engage effectively with communities, industries, and innovators. That’s why we’ve expanded our footprint across the country, offering services at the doorsteps of entrepreneurs, and addressing challenges particular industries are facing. Our satellite offices play a crucial role in these efforts, assisting inventors, entrepreneurs, and small businesses in their respective regions, while supporting our core mission of fostering American innovation and competitiveness.

We are moving forward in standing up these regional hubs for innovation and look forward to opening our Texas Regional Office in fall 2015, which will be located in the Terminal Annex Federal Building in downtown Dallas. We recently posted a job announcement for a Regional Director, responsible for general oversight of the office as the most senior ranking official representing the USPTO. We’re looking for the best and brightest candidates to assist businesses throughout the state with the challenges of navigating an IP system, and work with Texas’s burgeoning technology sectors such as the clean tech, semiconductor, and biosciences industries. The application deadline for the Regional Director position is January 10, 2015, and we anticipate appointing the Regional Director prior to the office’s opening in the fall.

On June 30, 2014, we held a memorable opening ceremony for the Rocky Mountain Regional Office located in the Byron G. Rogers Federal Building in Denver, Colorado, attended by a number of government officials and regional stakeholders. The Denver office serves as a one-stop shop for the Rocky Mountain region’s entrepreneurs to get cutting-edge ideas to the marketplace faster, grow their businesses, and enable them to create new, high-skilled jobs. Under the leadership of Regional Director Russ Slifer, the Denver office has already welcomed its third class of patent examiners, putting it well on the path to hire a full staff of 100 by summer 2015. Additional outreach activities have included press interviews, an AIA First-Inventor-to-File Roadshow stop, and a patent examiner hiring event.

Excitement is building as the West Coast Regional Office, operating out of Menlo Park, California since 2012, remains on track to open in spring 2015 in its permanent location in San Jose City Hall. The office continues to expand through training programs, workshops, and partnerships with local innovators, while Regional Director John Cabeca has been reaching out to stakeholders in the unique innovation ecosystems of California, Washington, and Oregon. The office is actively engaging with the entrepreneurial community while tailoring programs and events to the region’s unique industries, such as the USPTO’s first Cybersecurity Industry Partnership meeting on November 14, 2014.

Meanwhile, the Elijah J. McCoy satellite office in Detroit, which opened in one of our nation’s historic innovation hubs in July 2012 as our first satellite office, is thriving. On November 18, the State Bar of Michigan’s Intellectual Property Law Association and Pro Bono Initiative kicked off the Michigan Patent Pro Bono Program, a critical milestone in the expansion of the USPTO Pro Bono Program. Saturday Seminar sessions provide training to independent inventors and small businesses on the importance of IP protection, and the Patent Trial and Appeal Board (PTAB) is making headway reducing the inventory of trial and appeal cases in a new space that includes a hearing room.  Also, the PTAB twice visited Detroit this year to host educational forums about the AIA trials. We anticipate announcing the name of our new Regional Director of the Detroit office in the coming weeks.

In September, we submitted to Congress our report on satellite offices highlighting our significant outreach activities that have touched major stakeholders and have actively raised awareness of IP in all the satellite locations. Finally, we are currently accepting applications until December 29, 2014 for administrative patent judges in Alexandria, Dallas, Denver, and Silicon Valley, and Detroit.

USPTO satellite offices are critical to accomplishing our goal to support technological innovation and creativity, and I’d like to recognize the support of regional stakeholders, local and federal government officials, and the hard-working USPTO personnel in each location. The upcoming year promises to be an exciting one for our satellite offices as we’ll be cutting the ribbon on the permanent space for our final two. I will continue to keep you informed about the grand openings and other new developments. We look forward to bringing you even better and more convenient services to your local innovation communities.

Monday Nov 24, 2014

USPTO Establishes Special Examination Unit for Pro Se Applicants

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

The United States Patent and Trademark Office (USPTO) is committed to assisting inventors by offering education and tools to those who file U.S. patent applications without the help of a patent attorney or agent. This is known as pro se filing. Our Office of Innovation Development (OID) has a long history of helping pro se filers and independent inventors understand and navigate the patenting process as well as offering a variety of resources and outreach programs to the public. The agency is now expanding these services by piloting a special unit focused on examining applications filed by pro se applicants. The new Pro Se Pilot Examination Unit is the product of an executive action issued by the White House earlier this year.

The Pro Se Pilot Examination Unit began in October 2014 and will operate for at least one year. Comprised of experienced examiners from all scientific disciplines, these examiners receive training surrounding issues often encountered by pro se applicants, such as how to respond to a Notice of Missing Parts or how to revive an unintentionally abandoned application. In addition, the examiners provide customer support and answer general patent related questions via a toll-free number, email, or a walk-in service. Lastly, they spearhead development of specialized training materials on the intricacies of filing a patent application.

Applications filed by pro se applicants are randomly assigned to the Pro Se Pilot Examination Unit. By comparing data for applications examined by the unit against a control group of pro se applications filed during the same time period, the office can evaluate the effectiveness of the program. Likewise, the office can further improve the training and resources available to not only pro se and independent inventors but also other examiners.

The Pro Se Pilot Examination Unit is one more way the USPTO fulfils its duties to promote the advancement of technology, and to ensure creators benefit from their intellectual property and that society benefits from their inventions as well. Learn more about the Pro Se Assistance Program on our website.

Tuesday Nov 18, 2014

Patent Pro Bono Program Expansion to Benefit Inventors Nationwide

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

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

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

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

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

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

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

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

Thursday Nov 06, 2014

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

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

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

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

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

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

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

Tuesday Oct 28, 2014

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

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

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

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

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

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

Thursday Sep 18, 2014

Roundtables Engage the Public on Digital Copyright Policy

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

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

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

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

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

Tuesday Sep 16, 2014

Expanded 2014 Edison Scholars Program to Focus on Litigation Issues

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

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

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

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

2014 Thomas Alva Edison Visiting Scholars

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

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

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

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

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

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

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

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

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

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

*Research Fellow focusing on abusive patent litigation

Learn more about the Edison Scholars Program.

Monday Sep 15, 2014

USPTO’s Plain Language Toolkit Empowers Public on Patent Litigation

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

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

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

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

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

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

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

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

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

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

Tuesday Aug 05, 2014

The USPTO-MBDA Webinar Series Continues in August

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

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

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

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

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

Monday Aug 04, 2014

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

Guest blog by USPTO Commissioner for Patents Peggy Focarino

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

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

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

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

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

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

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

Monday Jul 14, 2014

Help Improve our AIA Trial Proceedings

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

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

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

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

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

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

Thursday Jul 03, 2014

Continued Progress Toward Implementing Patent Quality Executive Actions

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

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

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

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

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

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

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

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

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

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

Monday Jun 16, 2014

Update on Our Satellite Offices

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

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

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

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

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

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

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

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

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

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

United States Patent and Trademark Office
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