Director's Forum: A Blog from USPTO's Leadership
Director's Forum: A Blog from USPTO's Leadership
Wednesday Jun 29, 2016

Teaming Up to Cure Cancer

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

Anyone who has held the hand of a friend or family member suffering through chemotherapy and radiation or comforted a friend or colleague dealing with the loss of a loved one understands the savagery of cancer. With a disease that causes such devastation and loss, we are often left feeling alone and with more questions than answers.

During his final State of the Union, President Obama reminded all of us that we are not alone in this fight against cancer, and that if we work together, answers are within our reach.  With a nearly $1 billion dollar budget and a commitment to success, the President is committed to doubling the rate of progress in cancer research and treatment.

The President’s “Cancer Moonshot” initiative is not an endeavor that one person or one institution can accomplish in isolation. Such a herculean goal requires, as Vice President Biden opined, “… the need for more team science and increased collaboration among the private sector, academia, patient foundations, and the government.”  Working together through public and private partnerships, we can overcome the many barriers that currently impede progress towards treatment and we can identify where resources can be more strategically included to foster and advance solutions.

The USPTO is proud to join this team of allies in the President’s effort to refocus, reinvent, and reprioritize the fight to cure cancer. As “America’s Innovation Agency,” it fits squarely in our mission to contribute to this massive and just cause. And, in collaboration with the Vice President’s office, we are excited to unveil two major projects to support the National Cancer Moonshot. 

To start, we are implementing a free initiative in July called Patents 4 Patients that will “fast-track” reviews of patent applications related to cancer treatment. The goal of this accelerated program is to complete review of applications that are accepted into the program in one year or less after they are received. The sooner we can identify and patent these innovations, the closer we are to a cure.

In addition to this “fast-track” program, we will unveil an Intellectual Property (IP) “Horizon Scanning Tool”. This tool will allow the public and the federal government to analyze and build rich visualizations of intellectual property data, often an early indicator of meaningful R&D. When combined with other economic and funding data (such as Security and Exchange Commission filings, FDA reports and National Science Foundation grants), the Horizon Scanning Tool can illuminate trend lines for new treatments and allow federal funding and policy efforts to be more targeted.

President Kennedy’s revolutionary moonshot challenge to the American people more than 50 years ago was a galvanizing call to collective action to achieve a worthwhile yet potentially unattainable goal in a very short period of time. That historic call to action echoes today.

President Obama recognizes that data and technology innovators can play a role in revolutionizing how medical and research data are shared and used to reach new breakthroughs. Innovations in data and technology can break down silos and bring all the cancer fighters together. Working together and sharing information, we can provide hope to the more than 1.6 million Americans who will be diagnosed with cancer this year.  

It is my desire that we also inspire a new generation of scientists to pursue new discoveries. I am proud of the part the USPTO will play in this most worthwhile effort, and I count as well on your strong support.

With the leadership of President Obama and under the guidance of Vice President Biden, we can make a difference and we can change the future so that upcoming generations do not have to experience the same pain that cancer has caused over the last decades.

For information and updates on how the USPTO is advancing President Obama’s call for a Cancer Moonshot, please visit www.uspto.gov/about-us/national-cancer-moonshot.

 

Friday Jun 24, 2016

Trademarks Moving Forward

Guest blog by Commissioner for Trademarks Mary Boney Denison

Our Trademarks Team is leading efforts to meet the continually changing intellectual property environment – by updating our IT systems, developing educational outreach programs, improving the accuracy and integrity of the trademark register, and ensuring that our trademark fees are fair and that they reflect the full cost of our services and products. It is our ongoing commitment to ensure accountability and to guarantee customer satisfaction.

As part of our multi-year effort to update our IT systems, I am pleased to announce that we have established the Office of the Deputy Commissioner for Trademark Administration to support IT, finance, and strategic planning. Earlier this month, Greg Dodson joined USPTO to fill this role. Greg’s primary responsibilities will be to manage the completion and transformation of the next generation of Trademark electronic systems, lead the financial management of the Trademark Organization, and guide the strategic vision of the Trademark Organization. A retired Air Force Colonel, Greg is a strong strategic thinker and an experienced senior leader who has led thousands in the U.S. and abroad throughout his career. His most recent position was a Senior Analyst and A2AD Subject Matter Expert in General Dynamics’ War Gaming Division. Greg has a Bachelor of Science degree in Management Information Systems from Florida State University, a Master of Science in National Resource Strategy from the National Defense University, and a Masters of Education in International Relations from Northwestern Oklahoma State University.

The Deputy Commissioner for Trademark Administration will be supported by two newly created senior level positions: the Information Technology Administrator and the Information Technology Legal Administrator. Information Technology Administrator Glen Brown is our subject matter expert for the continued development of Trademark IT systems, and Information Technology Legal Administrator Tanya Amos will serve as our subject matter expert for the interactions of Trademark applicants and their attorneys regarding Trademark IT systems.

Additionally, Trademarks is actively engaged in developing educational outreach programs that will offer the best possible intellectual property (IP) guidance and training to all. One of the ways in which we are educating the public is through a series of videos from our Trademark Information Network (TMIN). There are numerous videos covering an array of subject matters. One of our most popular videos, “Basic Facts About Trademarks: What Every Small Business Should Know Now, Not Later,” has now surpassed 500,000 views. It is quite apparent that the public sees value in these learning materials. We will continue to provide this service and look forward to expanding upon it in the future. We know that trademark litigation has the potential to harm small businesses, and we are committed to providing our stakeholders with resources to promote understanding of trademark basics, enforcement measures, and available tools for protecting and enforcing trademark rights.

Moreover, Trademarks is continually taking strides to improve the accuracy and integrity of the trademark register. In 2012, the USPTO instituted a pilot program which required additional specimens or other proof of use in connection with 500 randomly selected Section 8 or 71 Affidavits of Continued Use. At the conclusion of the pilot, the USPTO determined that in more than half of the trademark registrations selected, the owner was unable to verify the actual use of the mark for the goods/services queried. This was in spite of the owner having previously sworn to such ongoing use as part of a Section 8 or 71 affidavit filed to maintain the registration. We issued a report on the results and held a roundtable to discuss the results and next steps. The results of the pilot are available on the Trademarks Recent Postings page on the USPTO website. The consensus among roundtable participants was that the results of the pilot program indicated a need for some action to improve the accuracy and integrity of the register.

We at the USPTO agree with this conclusion and are now working to make the random audits permanent and to increase the solemnity of the declaration for Sec. 8 affidavits. A Notice of Proposed Rulemaking (NPRM) to make our random audits program permanent published June 22 in the Federal Register. Increasing the solemnity of the declaration does not require a rule change, but, later this summer, we plan to post the new language on Ideascale, an interactive online program that allows you to provide suggestions and comments. Additionally, we are considering proposing one or more new or revised procedures to cancel registrations for marks that are either no longer in use or have never been used. On April 28, the Trademark Public Advisory Committee convened an executive session to discuss the possibility of a new expungement procedure as well as several streamlined TTAB cancellation procedures. Preliminary meetings have since begun with various stakeholder groups and will continue over the next month to discuss our ideas and obtain feedback to aid us in fully developing the concepts.

Finally, last month, Trademarks published an NPRM to modify some of our fees. The purpose of this fee proposal is to further USPTO strategic objectives by: (1) better aligning fees with the full cost of products and services; (2) protecting the integrity of the register by incentivizing more timely filing or examination of applications and other filings, and more efficient resolution of appeals and trials; and (3) promoting the efficiency of the process, in large part through lower-cost electronic filing options.

We hope to implement these fee changes in January 2017. Some key proposals are:
• Increase the fee for the paper filed application for registration by $225 to $600 per class.
• Increase fees for all other paper filings by $100 per class.
• Increase the fee for a regular TEAS application for registration by $75 to $400 per class.
• Increase the fee for failing to meet TEAS Plus or TEAS RF requirements from $50 to $125 per class.
• Increase fees for filing an affidavit of use under section 8 and 71 by $50 for filing electronically or $150 for filing on paper.
• Increase the fee for filing an ex parte appeal from $100 to $200.
• Increase the fees for filing oppositions and cancellations from $300 to $400.

By modifying these fees, we hope to discourage paper filings and responses (which cost the office more to process), further incentivize electronic filing and communication, and promote fairness so that the cost of paper processing is not being subsidized by electronic filers. Comments on the fee proposals are due by July 11, 2016. Please let us know what you think.

The Trademarks Team remains committed to increasing the efficiency of its processes and procedures. We are excited about moving forward, as we enhance our customers’ experience of doing business with the USPTO.


Wednesday May 18, 2016

Topics Announced for Case Studies Pilot

Guest blog by Deputy Commissioner for Patent Quality Valencia Martin Wallace

In December 2015, the USPTO published a Federal Register Notice inviting the public to submit patent-quality related topics to be the subjects of case studies in our new Topic Submission for Case Studies Pilot. You enthusiastically responded to our invitation for suggested topics, and I’m pleased to announce that six main topics have been selected.

This pilot is one of several programs that is part of our Enhanced Patent Quality Initiative (EPQI). We defined a USPTO case study as an in-depth examination of applications with respect to a single issue to provide a better understanding of the quality of our work products. Specifically, we use case studies to assist us in formulating best practices to enhance patent quality by improving our patent work products and examination processes, and to identify areas where further examiner training may be needed. Read more in my last guest blog post.

By the time the comment period closed in February 2016, we had received more than 135 qualified case study submissions from 110 requestors, which included intellectual property (IP) organizations, law firms, companies, and individuals.  All the submissions are viewable on our webpage.  

In view of the overwhelming response, we devised a process to systematically identify the most popular topics to be addressed. To begin, we assessed whether the topic was appropriate or capable of being timely assessed via a case study.  After identifying the topics deemed appropriate for study under this pilot, and to avoid duplicating our efforts, we next determined whether other programs or mechanisms within the USPTO were more appropriate for addressing the issue. 

For example, the suggested topic of evaluating the consistency of the application of lack of unity practice in 35 U.S.C. §371 applications is currently being investigated by our Office of International Patent Cooperation, and the submissions requesting review on the frequency and effects of claim interpretation are being evaluated as part of another EPQI program, the Clarity of the Record Pilot. These and other submissions have been forwarded to the appropriate offices for further evaluation.

Finally, we grouped the remaining submissions by subject matter and the following six topics have been selected for the pilot:

1) Evaluation of the deviation of 35 U.S.C. §101 rejections from official guidance, correctness of rejections and completeness of the analysis. This study will evaluate whether examiners are properly making subject matter eligibility rejections under 35 U.S.C. §101 and clearly communicating their reasoning. 

2) Review of consistency of the application of 35 U.S.C. §101 across art units/technology centers. This study will take a look at applications with related technologies located in different art units or technology centers and determine whether similar claims are being treated dissimilarly under 35 U.S.C. §101. 

3) The practice of compact prosecution when 35 U.S.C. §101 rejections are made.  This study will determine whether all appropriate rejections are being made in a first Office action when a subject matter eligibility issue is also identified. 

4) Correctness and clarity of motivation statements in 35 U.S.C. §103 rejections. This study will evaluate whether reasons for combining references set forth in rejections under 35 U.S.C. §103 are being set forth clearly and with correct motivation to combine statements. 

5) Enforcement of 35 U.S.C. §112(a) written description in continuing applications. This study will evaluate claims in continuing applications to determine if they contain subject matter unsupported by an original parent application and whether examiners are appropriately enforcing the requirements of 35 U.S.C. §112(a) written description. 

6) Consistent treatment of claims after the May 2014 35 U.S.C. §112(f) training. This study will determine whether claims invoking 35 U.S.C. §112(f) are being properly interpreted and treated. 

We look forward to sharing more details and updates on the selected studies as we move forward with our data gathering and analysis process. Currently, we project the timing of the studies to be varied, but we expect to publish the results of the first study this summer, and to complete the remaining studies early next year. As each study is concluded, we will post the study’s results on the Topic Submission for Case Studies Pilot webpage. Thank you again for all your great ideas for topics, as your feedback helps us continue to work to enhance patent quality and improve our processes.

Tuesday May 17, 2016

USPTO Regional Offices Forge Ahead in 2016

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

USPTO regional offices support our core mission of fostering American innovation and competitiveness by offering services to entrepreneurs, inventors, and small businesses, while effectively engaging communities and local industries. All four of our regional offices now have directors, making us well-positioned to fully advance this mission. The establishment of four USPTO regional offices fulfills a commitment dating to September 16, 2011, when President Obama signed the Leahy-Smith America Invents Act (AIA) into law. All the regional offices have been busy these last few months, including holding events for World IP Day and enabling local innovators to participate virtually in the Patent Quality Community Symposium.

Since its grand opening on November 9, 2015, the Texas Regional Office in Dallas welcomed its first class of patent examiners in January, and they are expected to complete their initial training and move into their offices by the end of April. The office also welcomed five new Patent Trial and Appeal Board (PTAB) judges in the first quarter of 2016, thereby reaching a total of 17 PTAB judges. The Texas Regional office has already held a number of outreach events in 2016, including three seminars on patents, trademarks and petitions, and a Congressional App Challenge celebration for students and their families who participated in the competition from Congresswomen Eddie Bernice Johnson’s district.

The West Coast Regional Office in Silicon Valley continues to engage in conversations about policy decisions that affect innovation. It’s hard to believe the Silicon Valley office officially opened only six months ago, on October 15, 2015. It has already celebrated the graduation of its first training academy of examiners and welcomed its second academy in February.

The office is serving the regional entrepreneurial community with events such as “Speed Dating for Startups,” co-sponsored by Santa Clara University, where over 150 entrepreneurs, small business owners, and students learned about incorporating IP into their business strategies. Several top USPTO officials also participated in an “Inventor and Entrepreneur Forum” at the University of California, Irvine Applied Innovation Lab, which had 700 attendees in person and online. The office also recently welcomed Secretary of Commerce Penny Pritzker, who discussed the importance of open data to innovation in an entrepreneurs’ showcase, and Deputy Secretary Bruce Andrews who met with the newest class of examiners and the newest PTAB judge.

The Rocky Mountain Regional Office, which will celebrate its second anniversary in June, has experienced a number of firsts since our last update. The office hosted its first Trademark Trial and Appeal Board (TTAB) argument, with participants in Denver appearing before the TTAB via the USPTO’s telecommunications system, and will also be holding its first AIA trial proceeding in the month of April. The office is now fully staffed with PTAB judges and examiners, with the addition of two new PTAB judges, and a third class of patent examiners that graduated recently.

Under the leadership of Regional Director Molly Kocialski, education efforts and partnerships in the Rocky Mountain region have expanded significantly, with outreach visits and events across Colorado, Utah, Nebraska, South Dakota, Wyoming and Montana. These include conferences, listening tours, participation in startup weeks in the region, STEM engagement, presentations, office hours, and meetings with members of the public and partners across the region. Additionally, we were very excited to release a new USPTO inventor trading card featuring Rocky Mountain inventor and noted autism advocate Dr. Temple Grandin.

The Elijah J. McCoy Midwest Regional Office in Detroit has continued to host PTAB hearings, including their first live Inter Partes Review trial in January, and recently welcomed a new Administrative Patent Judge, bringing the total to 11 PTAB judges. The office has been active in the community as well, recently hosting the first Patent Drafting Competition in conjunction with University of Detroit Mercy. Law schools from around the Midwest region sent teams to Detroit to present in front of a panel of judges including patent examiners, PTAB judges and IP practitioners, with Indiana University Maurer School of Law winning the competition.

In March, Commissioner for Trademarks Mary Boney Denison joined Midwest Regional Director Dr. Christal Sheppard at the IP Spring Seminar in East Lansing, Michigan, coordinated by the Michigan State Bar IP Section, and also spoke to 60 local entrepreneurs at a Trademark Lunch and Learn at TechTown Detroit. In a continuous effort to attract a talented workforce, the Midwest Regional Office will be hiring a new class of patent examiners soon and has been on the recruiting trail with stops at several local university career fairs and informational sessions.

The USPTO regional offices play an important role in supporting the overall mission of our agency, including ensuring easier access by innovators and entrepreneurs to resources and intellectual property protections they need to compete in today’s global economy. To find out more about events in any of our regional offices, visit the events page of the USPTO website, and for employment opportunities, visit USAjobs.gov for openings. I will continue to keep you informed about new updates on our regional offices throughout the year on this blog.

 

Friday May 13, 2016

Protecting U.S. Trade Secrets

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

Innovators of all types, from independent inventors to large corporations, rely on trade secrets to safeguard their creativity, gain competitive advantage, and further their business goals. Congressional passage of the Defend Trade Secrets Act, and the signing of the bill by the President this week, strengthens U.S. trade secret protection for U.S. companies and innovators, allowing trade secret owners to now have the same access to federal courts long enjoyed by the holders of other types of IP.

Read more in my opinion editorial, “Protecting America’s Secret Sauce: The Defend Trade Secrets Act Signed Into Law,” in The Huffington Post.

Thursday May 12, 2016

Patent Trial and Appeal Board Leadership and Accomplishments

Guest blog by Russ Slifer, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO

Last week was Public Service Recognition Week, a time for Americans everywhere to reflect on the value of public service and the exceptional, often unheralded work government employees do for their fellow citizens. At the USPTO, we are blessed with many such employees whose hard work is making a positive difference for innovators, entrepreneurs, and our nation’s economy—which relies more than ever on the power of intellectual property. Recognizing the service of such employees is something we should do not just once a year, but all year round.

I want to single out several individuals whose leadership has been truly exceptional and merits the thanks of our agency. For the past 10 months, Nate Kelley served as acting Chief Judge of the Patent Trial and Appeal Board at a critical time in the Board’s history. Just three and a half years after its creation under the America Invents Act, (AIA) the Board needed a skilled leader to navigate management challenges and ensure execution of important post-grant proceedings. Nate was a wonderful leader of the Board during this time and I am excited that he will return to his previous position as Deputy General Counsel for IP Law and Solicitor. The USPTO and the American people are lucky to have such a skilled jurist serving to improve our intellectual property system.

Under Nate’s leadership, the Board reduced ex parte appeals by 18%, implemented a change to AIA trial practice under which patent owners can now submit new testimonial evidence, and significantly increased the rate at which precedential opinions are issued while meeting all AIA statutory deadlines.

Nate’s accomplishments would not have been possible without a strong team at the Board and at the Solicitor’s Office. A critical member of this team was Tom Krause, who as acting Solicitor played a leading role in developing the USPTO’s position in over five Supreme Court cases. One of his most significant accomplishments was spearheading the team in the Shammas case, in which the appellate court agreed with the USPTO’s position that plaintiffs are responsible for the USPTO’s expenses, including USPTO attorney time.

Thanks to the great work of both Nate and Tom, newly selected Chief Judge David Ruschke will be taking over the helm of a Patent Trial and Appeal Board that is stronger than ever, and will now have an outstanding, permanent Deputy Chief Judge in Scott Boalick—a vice chief who has been acting deputy for some time now. Scott’s dedication to the Board will be a huge asset to Chief Judge Ruschke and the Board as they continue their vital mission of effectively and efficiently resolving patent validity disputes while providing timely, low-cost alternatives to district court litigation.

Please join me in congratulating Nate Kelley, Tom Krause, and Scott Boalick on a job well done, and in welcoming the new Chief Judge of the Patent Trial and Appeal Board, David Ruschke, to the “Innovation Agency.”

Tuesday May 10, 2016

Patent Quality Community Symposium Gathers Public Feedback on USPTO Programs

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

The USPTO held an all-day Patent Quality Community Symposium on April 27, 2016, bringing together a broad range of stakeholders—patent prosecutors, litigators, inventors, academics, and patent examiners—for a public discussion about patent quality. More than 2,200 individuals attended at the peak, including in-person at USPTO headquarters in Alexandria, Virginia, at our Regional Offices (in Detroit, Denver, Dallas, and San Jose), and online.

Since we kicked off our efforts at last year’s Patent Quality Summit, we have focused on developing programs designed to enhance quality through identifying best practices and leveraging the latest in technological advances and international collaborations. 

I opened the day with a summary of our major efforts.  Following me were presentations featuring highlights of our accomplishments so far, including:

  • The launch of our Clarity of the Record Pilot Program, which uses a group of approximately 175 volunteer examiners to explore best practices for enhancing the clarity of specific parts of the prosecution record;
  • The extensive legal training we’re providing to examiners (most recently on section 112(a) and on section 101 “abstract idea” analysis); and
  • How we’re leveraging international collaborations to get the best prior art—including harder-to-find foreign language prior art—in front of examiners early in prosecution.

Deputy Director Russell Slifer outlined our recent advances in using “big data”—mining large collections of data—to identify trends and patterns and improve patent quality.  This will help us to improve consistency and identify areas for targeted training, as well as better measure the impact of training and increase the transparency of our operations.

The symposium also included two interactive segments. The first was a workshop on our Master Review Form (MRF), one of our newest efforts to improve the measurement and reporting of patent quality, announced in the Federal Register on March 26. The MRF provides a standardized way to review USPTO work products, such as office actions, which places greater emphasis on assessing the clarity of an examiner’s reasoning while maintaining focus on the correctness of that action. Read more about the Master Review Form. We continue to welcome your input as we work towards our first revision of the Form—the comment period for the Federal Register Notice closes May 24, 2016. The second interactive portion was a panel of experienced patent practitioners who discussed the role that both attorneys and applicants play in patent quality.

Thank you all for your participation in the Patent Quality Community Symposium, and for your continued collaboration on our Enhanced Patent Quality Initiative.  If you missed this event, I encourage you to watch any portion of the recording that interests you, view our slide show presentation on the Patent Quality Community Symposium page, or read more about each of our programs on the USPTO website.

Monday May 09, 2016

Further Insight Provided on PTAB Amendment Motions with New Study

Guest Blog by Acting Chief Administrative Patent Judge Nathan Kelley

Regular readers of our blog know of the USPTO’s commitment to seek feedback on how we can improve our programs, procedures, and services to best serve American innovators. We value and rely on your input to help us do our job at the USPTO, and we are always open to ideas for improvement within our statutory mandate.

One topic that comes up frequently, especially recently, is our Patent Trial and Appeal Board (PTAB) trials, particularly regarding motions to amend claims. We’ve heard concerns that, while the America Invents Act (AIA) gives patent owners the right to file a motion to amend its claims during a trial, few such motions have been granted as compared to the number of total petitions filed. Given the degree of public interest on this topic, and to provide greater transparency into our practices, we wanted to aid the ongoing dialogue by providing current aggregated data on PTAB amendment motions.

Here are some highlights from our study (based on data current through April 30, 2016):

  • In the 1539 trials that have gone to completion or settled (where joined or consolidated trials were counted as a single trial), motions to amend were sought in 192. (34 more motions to amend are pending in currently open cases.)
  • Of those 192, not all ultimately required the PTAB to pass on the merits of the motion. This is because, often, motions to amend are filed as “contingent” motions—if the PTAB upholds the patentability of the original claims, such motions never get decided. Several other cases settle before motions to amend are decided. Additionally, some motions to “amend” only request the cancellation of claims, and those are routinely granted.

This leaves 118 motions to amend (out of the 192) that a PTAB panel has had a chance to review. Of these, the PTAB granted or granted-in-part 6.  Of those denied, including the denial portion of those granted-in-part,  22 were denied solely on procedural grounds (only one of which was that the patent owner failed to state that the substitute claims were patentable over the prior art “in general”), and 94 were denied after identifying specific grounds of patentability that the proposed amended claims did not satisfy. To use conventional prosecution as a comparison, this latter category is like an examiner rejecting an amended claim because it is anticipated, obvious, not described, etc. But unlike in the examination context, the PTAB proceedings must be completed within a year, and there is no time for the back-and-forth between the applicant and the USPTO that happens during prosecution. Instead, the PTAB acts as the final arbiter of these newly proposed claims based solely on the briefing presented to it by the parties—if the PTAB grants such a motion, the new claims will issue (and be enforceable against the public) without any examination to ensure compliance with the statutory requirements for patentability. A disappointed patent owner who believes the PTAB erred in refusing to allow a claim amendment can, of course, seek review from the Federal Circuit.

Finally, although we sometimes hear that motions to amend are no longer being filed because parties think they’re futile, we are currently on track to have about 50 motions filed this year, which is consistent with the level they were filed in 2013 and 2015.

I encourage you to read the Motion to Amend Study for yourself, and continue to engage with us on this topic and any others of interest to you.

Thursday May 05, 2016

Update to Examiner Guidance on Patent Subject Matter Eligibility

Guest blog by Deputy Commissioner for Patent Examination Policy Robert Bahr

The USPTO is committed to providing the most current and robust training for our patent examiners, and we have just released our next iteration of examiner guidance on patent subject matter eligibility, as described in our Federal Register notice.

In our July 2015 Federal Register notice, the USPTO issued an update to the patent subject matter eligibility guidance to assist examiners in evaluating claims under 35 U.S.C. § 101, in view of the U.S. Supreme Court’s decisions in Alice Corp., Myriad, and Mayo. Using the comments we received from the public along with feedback from the patent examining corps and other stakeholders, we prepared this latest examiner guidance, which includes a new set of life science examples, a memorandum to the patent examining corps with instructions on formulating subject matter eligibility rejections and responding to applicant’s replies, an index of eligibility examples, and an appendix of subject matter eligibility court decisions. We encourage members of the public to submit comments on issues related to subject matter eligibility. All related documents can be viewed on the Subject Matter Eligibility page of the USPTO website.

Our newest examiner guidance includes new life science examples, which use hypothetical fact scenarios to illustrate exemplary analyses for subject matter eligibility in view of the Supreme Court decisions in Alice Corp., Mayo, and Myriad. The examples are designed to show various ways that patent claims can be drafted for eligibility, and thus assist patent applicants and patent examiners in resolving subject matter eligibility issues in the life science areas. Further, the examples cover certain technologies specifically requested by our stakeholders, including vaccines and diagnostics.

The examiner memorandum included in our new guidance seeks to improve the quality and consistency of subject matter eligibility determinations and rejections (when appropriate) by explaining that a reasoned rationale must be provided in the Office action, and provides guidance on how to effectively communicate that rationale to the applicant. The memorandum also reinforces that examiners must carefully consider all of an applicant’s arguments and evidence rebutting the subject matter eligibility rejection, and either withdraw the rejection when the response is persuasive, or provide a rebuttal when the rejection is maintained. The guidance in the memorandum and subsequent training should lead to greater consistency throughout the patent examining corps in evaluating whether the claimed subject matter is eligible for patenting, more thorough office actions that will assist applicants in determining how to respond to subject matter eligibility rejections, and greater assurance that applicant responses are thoughtfully considered by the examiner in determining whether to maintain a subject matter eligibility rejection.

We will be providing comprehensive training on this new guidance in interactive workshops where examiners will receive hands on experience evaluating eligibility and have the opportunity to facilitate discussions with subject matter experts. The life science training will follow the same format as the abstract idea workshops given this past year, using worksheets to analyze the eligibility of claims from select life science examples. In the memorandum training, examiners will evaluate a hypothetical subject matter eligibility rejection and hypothetical applicant remarks to the rejection, allowing them to clarify the grounds of rejection, while considering all of the applicant’s remarks and each of the amendments in determining whether to maintain the rejection. This training directly addresses the public feedback we received about the adequacy and consistency of subject matter eligibility rejections across technology centers. All training materials will be available to the public on the Subject Matter Eligibility page of the USPTO website when training is conducted.

Providing more specific guidance and training on subject matter eligibility to our examiners supports the USPTO’s dedication to issuing patents of the highest clarity and quality possible. We appreciate our stakeholders’ comments and find them to be an invaluable resource in further developing guidance in this evolving area of the law. We welcome and will consider all viewpoints as we continue to refine our examination procedures for claims for subject matter eligibility. Comments will be accepted on an ongoing basis and can be sent via email to 2014_interim_guidance@uspto.gov.

USPTO Celebrates World IP Day and Digital Creativity

Guest blog by Russ Slifer, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO

Last week, the USPTO celebrated World IP Day in the Washington, D.C. region, across the country, and abroad. World IP Day was established in 1999 by the World Intellectual Property Organization (WIPO) to celebrate the important role of intellectual property (IP) and the contributions made by creators and innovators around the globe. We had a lot of fun with this year’s theme, “Digital Creativity: Culture Reimagined.” We chose to highlight the importance of the video gaming industry, its exponential growth, and impact on our daily lives.

On April 26, the USPTO hosted the “Legend of World IP Day,” in Alexandria, Va., an event focused on the history of IP and creativity in the video game industry. Video game curator and patent holder Chris Melissinos discussed how video games have rapidly evolved, been commercialized, and have become ingrained in our culture during his keynote remarks. Watch the recorded livestream of the event, and watch our USPTO video which goes behind the scenes on IP and the history of the video games. 

I spoke on Capitol Hill on April 26 at the World IP day event, “Digital Creativity: Culture Reimagined,” where I discussed the importance of digital creativity, the USPTO’s progress on copyright treaties, and the importance of ensuring that our copyright system and laws keep up with the digital age. Read my remarks.

The White House also recognized World IP Day, with President Obama issuing a commemoration of World IP Day, stating: “Whether through the music or movies that inspire us, the literature that moves us, or the technologies we rely on each day, ingenuity and innovation serve as the foundations upon which we will continue to grow our economies and bridge our cultural identities.” The President even tweeted his favorite movie, song, and invention. Others posted their list of favorite American innovations and creative works using the hashtag #AmericaCreates.

Our USPTO regional offices held events to celebrate World IP day across the country. On April 20, the Midwest Regional Office held a World IP day event in Detroit recognizing local students for their innovations and contributions to their community. The West Coast Regional Office in Silicon Valley held several World IP events, including a gathering of the Bay area intellectual property community on April 21, featuring the Honorable Sam Liccardo, mayor of San Jose. The Rocky Mountain Regional Office held “The Evolution of Cultural Expression through Digital Creativity” on April 25, focusing on Native American culture, as well as a Lunch and Learn with startups and entrepreneurs on April 26. And on April 27, the Texas Regional Office hosted a World IP Day exposition in Dallas, where business, legal, academic, and federal experts provided attendees tips on protecting their IP, developing technologies, and building their businesses. See our Facebook photo album of World IP day highlights.

Finally, USPTO IP Attachés participated in World IP Day events around the world with U.S. Embassies, consulates, and the American Chamber of Commerce, including roundtable discussions in China and Thailand, events in Mexico and Qatar, a film screening and discussion in Singapore, and cyber working group meetings in the Ukraine.

The USPTO is focused on safeguarding the rights of creators of all types and supporting an ecosystem where innovation can flourish. We are honored – not only on World IP Day, but every day – to do our part to support creators, innovators and entrepreneurs as they define their ideas in the form of patents, trademarks, and copyrights.

Tuesday Apr 26, 2016

TTAB Gathers Feedback on Docketing System and Announces Updates to Filing System

Guest Blog by Chief Administrative Trademark Judge Gerard F. Rogers

In early March 2016, the Trademark Trial and Appeal Board (TTAB) held a Users’ Forum in Alexandria, Va., which focused on the format and functionality of the TTAB’s publicly-accessible electronic case file and docket system, TTABVUE. The forum resulted in valuable public comments and suggestions which TTAB will use to continue improving its docketing system for ex parte appeals and inter partes trial matters. In addition, in 2015, the TTAB held a Users’ Forum on ESTTA, the electronic filing system used for TTAB cases, and is pleased to announce updates to the system.

The Users’ Forum this past March was held for the purpose of gaining public input on the “look and feel” of the TTABVUE system. Ninety individuals participated in the forum, either in person or via webinar. Representatives from such professional associations as the American Bar Association Intellectual Property Law Section, the American Intellectual Property Law Association, the International Trademark Association, and the Intellectual Property Owners Association, joined in the interactive discussion, along with numerous practitioners from around the country. Discussions during the forum focused on enhancing search capabilities, naming of documents to be filed, creating a display of deadlines established in each matter, and enabling bulk downloads of docketed documents.

As the sole public-facing interface for viewing filings made in TTAB cases, the look and feel of TTABVUE is important for users. We plan to use feedback from the forum to enhance TTABVUE’s format and usability in the near term, and also to support the future implementation of the USPTO’s end-to-end electronic processing of trademark matters, known as Trademarks Next Generation (TMNG), which will significantly increase the overall functionality and flexibility of the USPTO’s systems.

Last year, the TTAB also held a Users’ Forum for ESTTA, the electronic filing system used for TTAB cases. In response to public comments during that forum, the TTAB is pleased to announce an upgrade to ESTTA, which went into effect on April 23, 2016, and includes the following new features:

• Increased number of grounds listed on the ESTTA filing forms for Notices of Opposition and Petitions for Cancellation;
• An option to view an attachment once it has been uploaded and before it has been submitted through ESTTA;
• Additional tips regarding attachment size and format, as well as a pre-filing checklist, on the “Attachment screen” in ESTTA;
• A modified general filing form for inter partes matters to be used for motions not listed among the selections available;
• Automatic transmission of an ESTTA receipt, not only to the filer, but also to all parties whose email addresses are of record in the proceeding;
• A “Save” feature to allow users to circulate a form for review and editing before submission through ESTTA; and,
• The required declaration is now part of the ESTTA form for filing a motion to amend a registration.

The TTAB remains committed to increasing the efficiency of its processes and procedures. We are grateful to the public for the valuable insights and helpful suggestions you have provided on both TTABVUE and ESTTA, and will continue to focus on improving the format and functionality of TTABVUE for the benefit of users. Visit the TTAB page of the USPTO website to learn more about our latest updates.

Thursday Apr 07, 2016

USPTO Launches Two New Online Fee Payment Tools

Guest Blog by Chief Financial Officer Tony Scardino

For several years, the USPTO has been making significant progress in modernizing its information technology (IT) infrastructure and tools for both employees and the public. Our financial tools are no exception, and I’m excited to announce that on April 9, the USPTO is launching two new online fee payment tools to the public:  Financial Manager and the Patent Maintenance Fees Storefront. Watch the short video overviews of Financial Manager and the Patent Maintenance Fees Storefront.

These new tools incorporate feedback from customers that we received through outreach efforts, including interviews, surveys, and user design sessions. The result for users is increased efficiency, better information, and a workflow that is better streamlined to integrate with users’ business processes. Here are some of the tools’ new features:

  • For the first time, customers will have streamlined uspto.gov accounts. To access Financial Manager, customers will easily create their own uspto.gov account. Then once signed in to their account, customers will also have access to advanced features in the Patent Maintenance Fees Storefront, like bulk file payments and a virtual shopping cart.
  • In Financial Manager, customers will be able to store and manage their payment methods online; assign secure user permissions, allowing others to access and help manage payment methods; receive administrative email notifications; and create transaction reports, including monthly deposit account statements. Each individual in an organization will need their own uspto.gov account to access or help manage a stored payment method. 
  • In the Patent Maintenance Fees Storefront, customers will be able to retrieve patent maintenance fee information (including payment window dates for up to 10 patents at once); upload bulk files to pay any number of patent maintenance fees at once; check out more quickly using their stored payment methods; add fees to an online “shopping cart” and save them for payment later that day; receive an itemized receipt for each payment; and download a statement for each patent.
  • In the months ahead, we’ll be expanding the stored payment methods feature to pay for other patent, trademark, and USPTO service fees.

Here are some additional changes to be aware of:

  • These new tools will replace the current Office of Finance Online Shopping Page and Financial Profile. Once the new tools go live, the old web pages will no longer be available.
  • Similarly, anyone attempting to pay a patent maintenance fee online will need to use the new Patent Maintenance Fees Storefront.
  • Deposit accounts are “going green.” Deposit account holders will now manage all deposit account activities online using the new Financial Manager. Monthly statements are also going paperless. Deposit account holders will be able to access their statements online at any time in Financial Manager, and the USPTO will no longer be mailing paper statements. 
  • Finally, for deposit account holders with multiple users in their organization, each user must create their own uspto.gov account in order to be able to access the deposit account.

We will be working with our current customers to ensure a smooth transition to these new tools. This includes implementing a temporary transition period to allow customers to adjust to the new way of managing financial transactions and paying fees at the USPTO.

Customers currently using a deposit account or EFT to pay fees at the USPTO will still be able to do so by entering their current deposit account or EFT credentials (i.e. deposit account access code or EFT profile name and password) immediately after the release of Financial Manager. After the temporary transition period, customers will need to store and manage deposit accounts and/or EFTs in Financial Manager, and only users who have been granted “Fee Payer” permissions for the payment method will be able to use them for payment. The transition timeline will be posted on the Financial Manager page of the USPTO website when Financial Manager goes live. In the meantime, customers can refer to the Fee Payment Transition Resources section of the USPTO website to find additional information on the payment method migration.

We are very excited about bringing these new financial and fee payment tools to the public, and we’re confident that they will enhance our customers’ experience of doing business with the USPTO. If you have additional questions, please visit the FAQ page for Financial Manager, or the FAQ page for the Patent Maintenance Fees Storefront. You can also email us at fpng@uspto.gov. We rely on customer feedback to drive our plans for future improvements.

Thursday Mar 31, 2016

PTAB Issues Final Rules for Improved Proceedings

Guest blog by Russ Slifer, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office (USPTO)

After extensive public outreach, the USPTO has issued new final rules to make targeted modifications for trial practice before the Patent Trial and Appeal Board (PTAB), proactively addressing concerns of its users and improving proceedings (as further detailed in our Federal Register Notice.)

These amendments to the rules were proposed to the public in August 2015 to elicit additional stakeholder input and are a commitment to continue to keep the Leahy-Smith America Invents Act of 2011 trial process as efficient and fair as possible for both the petitioner and patent owner.

Since the inception of the PTAB, we have received over 4,600 petitions – three times the amount we expected. Despite this number, we still have not yet missed a single statutory deadline. Even with the surge of filings, the time to claim construction in the PTAB occurs within 180 days as opposed to the average of one year in Federal District Courts and PTAB proceedings can cost less than half than that of District Courts. Even with the speed and cost savings, PTAB decisions have enjoyed a high rate of affirmance in the Federal Circuit Court of Appeals.

As hard as we worked on our initial roll-out of these proceedings, we never assumed that our rules would be perfect at the outset. We anticipated having to revisit some of the guidelines and making refinements along the way.

One of the first actions Director Lee undertook was to kick off a series of listening tours on the PTAB, which started after the proceedings had been running for approximately two years.  The goal was to check-in with stakeholders and communities and get feedback.  Judges from the PTAB visited eight cities around the country to meet directly with practitioners.

A year later, the USPTO announced a series of “quick fixes” that the PTAB was able to make immediately in response to what we learned.  These were simple, but important changes, such as allowing a claims appendix to be filed with a motion to amend and expansion of page limits for certain filings.

Several months after that, we released proposals for more substantive changes via a notice of proposed rulemaking and sought further public input.

Now, we are publishing the culmination of that stakeholder input in the form of new final rules.  Specifically, the new rules will:

  • Allow patent owners to include, with their opposition to a petition to institute a proceeding, any relevant testimonial evidence, addressing concerns that patent owners are disadvantaged by previous rules that limited the evidence that could be presented with their preliminary response to the petition;
  • Add a Rule 11-type certification for papers filed in a proceeding;
  • Clarify that the PTAB will use the claim construction standard used by district courts for patents that will expire during a proceeding and therefore, cannot be amended, while confirming the use of broadest reasonable interpretation (BRI) for all other patents; and
  • Replace the current page limit with a word count limit for major briefings.

 

The USPTO also will amend its Office Patent Trial Practice Guide to reflect these rule changes and developments in practice concerning how the USPTO handles motions to amend, additional discovery, real party-in-interest and privy issues, and confidential information.

Additionally, after receiving negative responses from a Federal Register request for comments on a proposed pilot program pertaining to the institution of post grant administrative trials by a single judge, we have decided not to go forward with the pilot program at this time.

I believe the process we followed here is an excellent example of how we are never satisfied with the status quo, how we are always looking for ways to improve, and how we listen carefully to our stakeholders for input.

We will continue to refine the rules governing AIA trials going forward to ensure fairness and efficiency while meeting all congressional mandates.

Wednesday Mar 30, 2016

Improvements in Measuring Patent Quality Metrics

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

Through the Enhanced Patent Quality Initiative (EPQI) which we announced in February 2015, the USPTO has committed itself to patent quality improvements, in order to issue patents of the highest quality and clarity. I highlighted some of the progress we’ve already made in my blog this past November. I want to update you on our newest efforts to improve the measurement and reporting of patent quality metrics, as well as provide new information on our upcoming Patent Community Symposium, which is an opportunity for us to gather additional public feedback.

I’m pleased to announce that the USPTO has just published a notice in the Federal Register outlining its new process to capture and measure data about patent quality, and we are eager for your input. In fiscal year 2016, we are terminating the use of the Composite Quality Score that we used to report quality during fiscal years 2011-2015. Through the EPQI, we received feedback that this composite, which includes several factors such as measures of the quality of examiners’ final work product, measures of prosecution transactional indicators, and internal and external survey results, did not adequately reflect quality. In response, we are disbanding our use of a single quality composite score.  In its place, we propose a new way to measure quality, and we seek your input to our proposed approach.

Under our proposed approach, the USPTO is standardizing reviews of finished work products, such as USPTO office actions, through the use of a single review form, called the “Master Review Form.” This review form is to be used by all USPTO reviewers when assessing finished work products, including reviewers in the Office of Patent Quality Assurance and supervisors in our Technology Centers. 

Compared to past review forms used by the USPTO, the Master Review Form places a much greater emphasis on assessing the clarity of an examiner’s reasoning, while maintaining focus on addressing the correctness of an examiner’s action. In addition, the results of all of these reviews will be electronically entered into a single database, thereby capturing three to five times more data than was previously captured. With this larger data set, we will be able to identify trends at an art unit or even at an individual examiner level.  In doing so, we will be poised to provide resources and targeted training when needed to achieve greater accuracy, consistency, and efficiency, as well as increased transparency internally and externally of the standards for review.

Through the Quality Metric Federal Register Notice, we are seeking feedback on the contents of the Master Review Form, including whether we are collecting the right information about quality and what correctness and clarity aspects of the Master Review Form should be integrated into our quality metrics.  We will use this input to finalize the form that will be deployed throughout the USPTO in fiscal year 2017.

I am also pleased to share that the USPTO is hosting a Patent Community Symposium on Wednesday, April 27, 2016, to update the public on various efforts that the USPTO is undertaking to enhance patent quality. In particular, the agency is pursuing eleven programs to improve clarity of the prosecution record, enhance examiner training, improve applicant-examiner interactions, and as explained earlier, re-define ways to capture and measure data about quality. The symposium will feature lectures on these topics, an interactive workshop demonstration on how the Master Review Form will be applied, and a panel discussion with experienced patent practitioners about ways applicants can contribute to our efforts.

I encourage you to share your feedback with us on our Quality Metric Federal Register Notice by May 24, 2016 and attend our Patent Community Symposium in April. How the USPTO measures patent quality is an important piece of the Enhanced Patent Quality Initiative, and my team and I are excited to work together with all of you to improve the quality of the patents issued by the USPTO.

Monday Mar 21, 2016

From NASA to South by Southwest

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

Last week, I traveled to Texas to promote the USPTO’s resources for innovators, entrepreneurs, and creators, visiting the University of Houston, NASA Johnson Space Center, and South by Southwest® (SXSW) Interactive Festival. See photos from my visit to Texas. Inventors, innovators, and entrepreneurs form the backbone of our nation’s economy, and now more than ever, intellectual property (IP) plays a leading role in the continued success of America’s startup companies.

On Friday March 11, I delivered a fireside chat at the University of Houston before an audience of Houston-area university tech transfer officials, IP practitioners, and other representatives from the local innovation community. I then headed to NASA’s Johnson Space Center, where I discussed tech transfer and saw patented space technologies first-hand. I visited Mission Control and the robotics and virtual reality labs for a demonstration of the Robonaut 2 (R2) humanoid robot, which contains NASA patented technologies with transfer potential across multiple industries -- including logistics and distribution, medical and industrial robotics, as well as hazardous, toxic, or remote environments. I also had the chance to meet women leaders from across NASA

I was thrilled to be back at South by Southwest® Interactive on March 12, a year after being sworn in on stage. I led a featured session entitled, “New Face, New Pace: Innovation Beyond 2016,” where I spoke with an impressive group of CEOs on how IP has helped grow their businesses and some of the many resources the USPTO offers in support of innovators and entrepreneurs. Read my remarks and learn more about the panel.

While in Austin, I also discussed the importance of copyright in encouraging creative expression by incentivizing people to produce and share the works that contribute to America’s leading role as a cultural and economic powerhouse. I met with startups and community leaders and shared how the USPTO can help startups fit IP into their business strategy.

I was not the only representative of the USPTO at SXSW. Director of the Texas Regional Office, Hope Shimabuku, visited the Texas State University Innovation Lab, previewing game-changing technology created by student inventors, and also served as a panelist at the University of Texas at Austin session on “Move Your IP: Concept to Commercialization.” USPTO colleagues from the Office of Education and Outreach also participated in SXSW.edu Playground, where they shared learning modules with teachers to incorporate IP into their classrooms, including an exercise where expired patents were used as inspiration for new inventions. Finally, the USPTO Office of Innovation and Development provided information on USPTO resources for under resourced innovators such as the Patent Pro Bono program and discounted fees for micro entities to the many innovators and entrepreneurs at SXSW.

In short, the USPTO shared with the SXSW community the wide range of resources for entrepreneurs and startups, from tools to help them navigate the international IP landscape, to specialized events at our regional offices.

At SXSW, President Obama spoke about the critical need to develop the tech skills of our workforce for country’s economic future. At the USPTO, we support this mission, and believe that by providing more paths for all Americans to pursue technology and innovation, and by providing resources for startups and entrepreneurs, our nation will become even more competitive in the years ahead.

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