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

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.

Thursday Jun 12, 2014

USPTO to Launch a Glossary Pilot Program that Will Support a Better Patent System

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

When President Obama last year announced a handful of executive actions to build a better patent system, one of those actions focused on improving clarity in patent claims. The president recognized that patents with clearly defined boundaries help others avoid costly and needless litigation down the road. I’m excited to share with you some details on our Glossary Pilot Program. I hope many will take advantage of this opportunity to work with the office and assess the impact of glossaries on patent clarity.

First, the basics. On March 27, we published a Federal Register Notice announcing the Glossary Pilot Program. It started on June 2, 2014, and will run for six months or until 200 petitions are granted. The pilot program is designed to be flexible and accommodating to all application drafting styles, with a goal of determining if including a glossary aids in patent prosecution, and results in greater claim clarity.

To participate in the pilot program, a patent applicant must include a glossary in a designated portion of the patent disclosure that provides clear definitions for some terms used in the claims. The glossary should assist a reader in understanding the invention disclosed. Our team examining the use of glossaries found that some applicants already use them in patent applications. Therefore, the pilot program was created to promote the use of glossaries in software related technology applications to evaluate the impact definitions in the glossary section have on enhancing patent quality and improving the clarity of patent claims.

After a review of internal and external stakeholder input, the glossary pilot was designed to be flexible with regards to the types of definitions provided, so that we can see what applicants submit, and evaluate the different styles of glossaries submitted for the pilot program.

So who needs to pay attention to this? Clearly for patent applicants, owners, and practitioners, the submission of a glossary may help to provide clarity as to the claimed invention, improve prosecution, and provide a clearer issued patent. For inventors, having a better idea of what is already patented will help them to innovate, and for users of technology, clearer patents can help avoid needless litigation. Finally, for our patent examiners, providing definitions of key terminology should assist them in the examination process.

I’m looking forward to your participation in this pilot program to help evaluate the impact that a glossary has on the overall quality of patents.

Wednesday Jun 11, 2014

More Details on Trademark Fee Reductions

Guest blog by Commissioner for Trademarks Deborah Cohn

Recently, Deputy Director Lee blogged about the status of the USPTO’s operating reserves. I want to tell you more about our proposal to reduce total trademark fee collections. The reduction is possible due to efficiencies that have allowed the office to create an operating reserve. The proposed reduction maintains a reserve sufficient to manage operations and address long term investments.

The notice of proposed rulemaking was published in the Federal Register last month and the deadline for public comment is June 23. The proposal would reduce many trademark application filing fees and renewal fees by 15 to 25 percent depending on how the application is filed. We’re especially pleased to be able to offer even lower fees for filing electronically, and accepting email communications from the USPTO, options that have proven to be popular with the majority of trademark filers.

The USPTO proposes to reduce the fee for an application filed using the regular TEAS application form by $50 to $275 per class if the applicant authorizes email communication and agrees to file all responses and other documents electronically during the prosecution of the application. This option will be known as a TEAS Reduced Fee (“TEAS RF”) application. The USPTO also proposes to reduce by $50 the fee for a TEAS Plus application to $225 per class and reduce by $100 the fee for a TEAS renewal of a registration to $300 per class.

The proposed fee reductions will reduce processing costs and promote efficiency for the USPTO and our customers. The proposal will also further a USPTO strategic objective to increase the end-to-end electronic processing of trademark applications by offering additional electronic application processing options and promoting online filing, electronic file management, and workflow.

The proposed reductions were included in the USPTO’s FY 2015 budget request. Fee reductions will be implemented in accordance with the America Invents Act (AIA) following public notice, comment, and rulemaking procedures. Our plan is to have the reduced fees become effective beginning in January 2015.

We look forward to working with our customers to offer lower cost options for filing and maintaining trademark registrations. Again, written comments must be received by June 23 to ensure consideration.

Monday Jun 09, 2014

An Update on Sustainable Funding for the USPTO

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

I’d like to take some time today to follow up a recent guest blog about our FY 2015 budget by our Chief Financial Officer, Tony Scardino. That blog gave an overview of what the USPTO anticipates collecting in fees in FY 2015, what we plan to spend, our staffing levels, and what we intend to accomplish. It also provided a link to the full congressional budget submission

While this budget document provides great information, at 197 pages it can, admittedly, be a somewhat intimidating read. With that in mind, there is one set of numbers in particular that I think are worth noting and taking some time to discuss in the context of our new fee setting authority granted under the Leahy-Smith America Invents Act (AIA).

In the “Sustainable Funding” section of the budget, you’ll find charts showing our patents and trademarks “operating reserve balance” (shown on pages 15 and 17, respectively). These operating reserves are a critical part of our sustainable funding model and an important component of our first fee setting in March 2013. The reserves are intended to allow the USPTO to avoid the operational starts and stops associated with the funding uncertainties faced by a fee-funded agency, as well as plan for long-term financial stability. A great example of the importance of these reserves came at the beginning of this fiscal year, when the Congress was not able to reach a budget agreement and a lapse in appropriations resulted in a 16-day shutdown of most of the federal government. Thanks to our operating reserves, the USPTO was able to stay open and continue examining patent and trademark applications during this time.

Our target has been to build an operating reserve of a minimum of three months for our patent operations and a four- to six-month reserve for our trademark operations. We’ve already reached this level in our Trademark business line, and that now has us in a position to be able to propose reducing certain trademark fees in FY 2015. 

As you’ll see on page 15, we’re projecting that our patent reserve balance will increase fairly steadily from the end of FY 2013 through FY 2019—eventually growing to $1.9 billion. While this future growth is based on a number of assumptions that could—and likely will—change, we have greater certainty about the reserve levels over the next year and a half. Based on the latest information available, we expect to be approaching a three month patent reserve balance amount by the end of the current fiscal year and will likely exceed it by the end of FY 2015.

A fair question to ask at this point—especially for those who recall the plans laid out in our 2013 fee-setting to grow the operating reserve to target levels by 2018—might be “Why is the reserve growing so quickly?” The faster than expected growth is due to several factors, including adjustments to many of the assumptions that drive our projections. For example, the economic environment and application filing growth, fee payment behavior after the fee schedule and first inventor to file implementation in March 2013, and patent production estimates have all been modified based on the information that is now available to us.

We recognize the significance of the change in our estimates and are paying close attention to the factors contributing to these changes as we gather more data to fine-tune our projections. Rest assured that the USPTO is aware of the issue and we have not forgotten the commitments we made to our stakeholders when we set our fees last year. We will soon be starting our biennial fee review, proceeding in the same transparent manner that we did in the first round of AIA fee-setting. We’ll be assessing our operating environment (e.g., economy, court decisions, and fee-paying behaviors), operating costs, our fee projections, target operating reserve level, and strategic priorities (including those in the USPTO 2014-2018 Strategic Plan) and agency needs. We will be working with our stakeholder community to gather their input.

We recognize the responsibility entrusted to us under the AIA, and we are hard at work to be good stewards of the agency, its resources, and your trust.

Friday Jun 06, 2014

IT Modernization at the USPTO Drives Productivity and Creates New Jobs

Guest blog by Chief Information Officer John Owens

Information Technology (IT) is fueling our work in an era of escalating demand for patents and trademarks, and to face this challenge, our team is continuously looking for ways to operate more nimbly and deliver services rapidly. This year, we have been working to modernize the systems that support patent and trademark examination and fee processing by using “agile” development. Many successful technology companies use agile, an IT development method which emphasizes user involvement and ongoing feedback. (Read more about USPTO’s initial rollout of agile into its processes.) By working to provide our examiners with enhanced examination tools, we are striving to improve the way that examiners work.

One new system, Patents End to End (PE2E), is already in beta use by some examiners and is targeted for a wide introduction to the examiner corps late this year. PE2E creates a more streamlined way for examiners to process patent applications, enhancing the way they view documents, search, take notes, and complete tasks. Another landmark project is Trademarks Next Generation, a faster, more feature-rich Trademarks system for both examiners and the public to use.

Systems such as PE2E and Trademarks Next Generation follow industry best practices, which include:

  • Build shared IT services and tools to support global customers and maximize cost effectiveness.
  • Use web-based systems with open technology standards that scale. 
  • Write code once and deploy everywhere for more stable, portable, and cost effective tools.
  • Provide easily searchable IP information by converting all information into searchable technology formats.

As one employee said, the new tools are designed “by examiners for examiners.” We are designing and testing our systems incrementally, and gathering input throughout the process; and this iterative development and constant interaction ensures that the end product has the necessary features. In addition, our expert team in the User Experience Division is ensuring that our products are always created for optimal engagement and efficiency, in order to deliver value to the public. Finally, cloud and open source technology will be used extensively so that we can concentrate on what we can’t buy – a Patent and Trademark examination system.

To meet our aggressive IT goals this year, we plan to continue to hire the most qualified technical staff. Attracting the right talent is critical to our mission, and so far in fiscal year 2014, we’ve already hired more than 60 new staff members. We are hosting an IT Veteran Hiring Fair on our Alexandria, Virginia campus June 13th and 14th and encourage veterans with top IT skills to join the USPTO, recently voted the #1 Best Places to Work in the Federal Government®. The registration deadline is June 10, so sign up quickly. I look forward to sharing more updates with you in the future as we continue to use the latest technology to support innovation.

Tuesday May 27, 2014

National Day of Civic Hacking 2014

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

The second annual National Day of Civic Hacking will take place on May 31 - June 1, 2014, in communities around the world. This event brings together technologists, social activists, entrepreneurs and others to grow communities of innovation across the nation. As an agency that helps nurture and protect innovation, we are pleased to be joining this effort for the second year in a row.

Last year, the USPTO challenged civic hackers to use the trademark dataset and other open data sources to develop applications that identified federally registered trademarks that comprise an entity’s portfolio or brand, or are used on specific products, in designated industries, or in geographical areas. Citizens answered the challenge by developing innovative applications that searched for trademarks by dominant color, "translated" words based on their relationship to concepts in the trademark data, and a trademark classifier that used machine-learning to extract key concepts and statistically important phrases.

The USPTO currently makes patent and trademark public data available in bulk form, which can be used to load into databases or other analytical tools for research and analysis and provides an application programming interface (API) for the Trademark Official Gazette. We are working to provide more APIs in the near future to enable better access to data at the USPTO.

This year, we are challenging National Day of Civic Hacking participants to use the patent and trademark datasets and other open data sources to develop innovative applications that can be used on mobile devices including smartphones and tablets. Based on feedback from our recent Crowdsourcing Prior Art roundtable, one potential area of interest is an application that would allow citizens to subscribe to alerts when applications are published that meet user specified criteria such as inventor, assignee, classification information, and/or keywords in the claims. It would be wonderful to have an application developed to achieve this.

I urge all those looking for a unique way to volunteer in your community through technology to consider participating in the National Day of Civic Hacking. You can learn more at hackforchange.org or read our specific patent challenge or trademark challenge.

Tuesday May 13, 2014

We Are Traveling Around the Country to Hear from You on Digital Copyright Issues

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

In our Green Paper on Copyright Policy, Creativity, and Innovation in the Digital Economy, the Department of Commerce’s Internet Policy Task Force promised to reach out to the public for input on a number of critical digital copyright issues. In the next few months, the USPTO, along with the National Telecommunications and Information Administration (NTIA), in coordination with the U.S. Copyright Office, will seek that input during four public roundtables in cities around the country. We are hosting events in Nashville, TN on May 21st, Cambridge, MA on June 25th, Los Angeles, CA on July 29th, and Berkeley, CA, on July 30th. Be sure to stop by if you happen to be in or near any of these cities! We will be webcasting the roundtables, so don’t worry if you cannot make it in person.

The digital copyright policy issues identified in the Green Paper are central to our nation’s economic growth, cultural development, and job creation—and these roundtables are part of efforts to address those issues. We previously held a full day conference on all of these issues in December at the USPTO, and our roundtables will now take the conversation forward on the following issues:

o The legal framework for the creation of remixes.

o The relevance and scope of the first sale doctrine in the digital age.

o The appropriate calibration of statutory damages in the context of (1) individual file sharers and (2) secondary liability for large-scale infringement.

Find more information on the roundtable topics and future agendas online. Please RSVP to participate in a roundtable near you.

Our goal is to have an interactive discussion of the issues to ensure a complete record upon which the task force can make recommendations. These roundtables will help us engage with a full range of voices across the country so that we can develop the best possible approaches. I look forward to hearing your voice among them.

Friday May 02, 2014

Progress Continues with Our Patent Trial and Appeal Board

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

Transparency and public involvement in building an even better patent system are hallmarks of this administration and pervade all aspects of the USPTO. A current example of that is the ambitious outreach the Patent Trial and Appeal Board, or PTAB, is conducting with the public. The Board is in the middle of a series of eight roundtables to engage the public about our AIA trial proceedings, our continued hiring of new judges, and our redesigned PTAB web pages, which contain decisions, operating procedures, and interesting statistics to date. Several hundred engaged individuals have already attended our first few roundtables over the last two weeks, and we look forward to seeing more of you at our remaining roundtables in Dallas and Denver.  If you can’t make any of the remaining roundtables in person, our May 8 event in Denver will also be webcast.

At these roundtables, we’re particularly focused on receiving feedback on our new trial proceedings created by the Leahy-Smith America Invents Act of 2011. The statute set the framework for these trial proceedings, and the agency promulgated rules and issued guidance thereafter. In promulgating those rules and guidance, the agency worked carefully and diligently, issuing final rules and guidance in a mere one year after the AIA became law. Those rules and guidance were implemented after the USPTO visited 18 cities to solicit input from our stakeholders, just as we are doing now. Also, when we issued the AIA final rules, we committed to re-visiting the rules and guidance after both the Board and the public operated under them for some period. 

The time to revisit the rules is upon us. PTAB began conducting inter partes review and covered business method review proceedings nearly 18 months ago. During this time, the Board has received more than 1,200 petitions, issued more than 500 decisions on whether to institute a trial, and released more than 40 final written decisions following a trial. For such a short period of time, that is a lot of hands-on experience, and the Board has gained a fair amount of wisdom about these processes as a result. But we know that participants in these new AIA proceedings, as well as seasoned observers of our patent system, have also been focused on these new trials and have their own wisdom to share. Through these roundtables, we are hearing from interested parties their thoughts on what we can do to make trial proceedings even more effective going forward by adjusting the rules and guidance where necessary.

Each roundtable is staffed by at least five administrative patent judges per city (APJs). The roundtables begin with an overview of trial statistics and lessons learned followed by a mock conference call centered on motions for discovery and amendments. The overview provides a framework for the trials, while the mock conference call showcases successful techniques for winning a motion as well as missteps to avoid. The roundtables end with a panel discussion featuring APJs and local practitioners with experience and knowledge about the AIA trials. The purpose of the panel discussion is to break down the trial process and identify strengths and places for improvement. Nothing about the AIA trials is carved in stone, so the opportunity is upon us to work together to hone the AIA trials system into a true alternative to district court litigation for challenging patent validity. 

Apart from the roundtables, I’m pleased to note that PTAB continues to have great success in hiring talented new judges with strong and relevant technical and legal backgrounds. We are moving fast toward our goal of adding 60 new judges for a grand total of 200 by June 1st. New judges are joining not only at the Alexandria headquarters but also at all of the satellite office locations, namely Detroit, Denver, Dallas, and Silicon Valley. As the first director of our Silicon Valley office, I was honored to work beside the stellar judges that had already joined PTAB in service to the innovation community. If you think you have what it takes to make an excellent PTAB judge, we encourage you to apply. To learn more please visit www.usajobs.gov.

Speaking of the web, PTAB has overhauled its pages on our website, making it easier to locate information about AIA trials, ex parte appeals, statistics, operating procedures, and rulings. Additionally, PTAB is posting timely articles, such as tips for filing a preliminary patent owner statement in an AIA trial and testimonials about life as a PTAB judge. 

This is an exciting time for PTAB, and for this agency. We’d love to see you at one of our remaining PTAB roundtables. But, even if you’re unable to attend one, I encourage you to join the Denver roundtable via webcast and share your thoughts on our progress. Together we can make the PTAB proceedings even more effective for you.

Thursday May 01, 2014

Trademark Performance Update

Guest blog by Commissioner for Trademarks Deborah Cohn

The results for the second quarter of fiscal year 2014 demonstrate continued high performance by our Trademark team in meeting our strategic performance goal targets. I invite you to take a look at our updated performance, filing, and registration data that are now available on the Trademark dashboard.

The office has made great progress towards setting and achieving high quality standards. Quality results are evidence that the specialized training, online tools, and enhanced communication efforts we’re using are proving effective. The results for our newest quality standard for assessing efforts that go beyond procedural and statutory correctness continue to exceed our expectations. They demonstrate ‘exceptional’ results preparing a first action.

First action pendency—the time from filing to the initial examination—has been consistently maintained within the target range to issue a first action between 2.5 and 3.5 months from filing. Pendency to registration continues to remain at historically low levels. Disposal pendency—the time from when an application is filed until a trademark is registered or abandoned or a notice of allowance is issued for applications that are not in use—averaged 10.2 months, under the 12-month target. These results are due in part to the progress made from greater acceptance of electronic filing and in particular use of TEAS Plus applications which now make up 40 percent of new filings and more than 36 percent of new classes. Electronic filing and communications promotes more efficient and cost effective processing now comprises 80 percent of all applications processed to disposal.

Trademark application filings continued an upward trend, increasing by more than 4 percent compared to a year ago. New applications are expected to increase by nearly 5 percent this fiscal year to 455,000 classes.

We welcome any feedback you have on how we can improve the information presented through the Trademark Dashboard. Simply email a comment to our dedicated mailbox. We look forward to hearing from you.

Friday Apr 25, 2014

World IP Day

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

Today I had the opportunity to discuss the importance of intellectual property during a World IP Day event at the Benjamin N. Cardozo School of Law. I want to share my remarks with you through this blog:

Thank you, Sean, and good morning, everyone! I’d also like to acknowledge Mindy Bickel, the United States Patent and Trademark Office’s Innovation and Outreach Coordinator for the Greater New York Region. Working through the Department of Commerce’s partnership with Cornell Tech, Mindy helps educate and empower businesses and innovators throughout the region to create jobs and new economic opportunities through intellectual property protection and other government resources.  In effect, Mindy is doing some of the same work that our new satellite offices in Dallas, Denver, Detroit, and Silicon Valley are doing, but unlike them she’s a one-person shop, and she’s doing a great job at it. So thanks, Mindy.

I’d also like to commend the Cardozo School of Law for having one of the finest intellectual property law programs in the nation. This is especially remarkable because the school is still relatively young, having graduated its first class of lawyers in 1979. So kudos to the faculty and staff for your outstanding work, and for helping shape the future of a profession that is very near and dear to my heart. And best wishes to the students, who have exciting and rewarding careers ahead of them.

One of the challenges I’ve come to appreciate in my own career in IP law, and particularly as Deputy Director of the United States Patent and Trademark Office, is how to facilitate a better and broader public understanding of the importance of intellectual property in our daily lives. Let’s face it: As engineers, scientists, academics, and lawyers, we don’t always do a great job helping get the public as excited about intellectual property as we are, or in helping them see the connection between intellectual property, the products they enjoy, and the IP-related jobs created every year in our innovation economy. As recently as 2012, a Commerce Department study found that IP-intensive industries support at least 40 million jobs and contribute more than $5 trillion dollars to, or 34.8 percent of, U.S. gross domestic product (GDP). That’s a huge part of our economy.

As a child of the Silicon Valley, I saw the power of innovation and intellectual property up close and personal. My parents were immigrants, drawn across the Pacific Ocean by the promise of the American Dream. My father was an engineer, and so were all of the dads on the street where I grew up. They worked for tech companies of all sizes, often founded by just one person who grew their businesses through the power of intellectual property. Many of them had the experience of creating an invention, patenting it, and using the protection that patent provided to obtain venture capital funding, hire employees, and begin producing and selling new products and services. Seeing that process as a child made an indelible impression on me, and I never had much doubt about what I wanted to do when I “grew up.” But of course my childhood was shaped by intellectual property in other ways that I didn’t always recognize or appreciate.

Consider the innovative work of Garrett Brown, who last year was inducted into our National Inventors Hall of Fame, a program we conduct in partnership with the non-profit Invent Now, to promote the spirit of innovation and entrepreneurship. How many of you recall the thrilling speeder-bike chase in RETURN OF THE JEDI, when Luke and Leia are zooming through the forest in pursuit of Imperial Stormtroopers, or Sylvester Stallone running up the steps of the Philadelphia Museum of Art in the first ROCKY film? Those iconic moments in movie history and many others like them were filmed by Garrett Brown, using an invention he created called the Steadicam, which is so ubiquitous today we take it for granted.

In the old days, before Steadicam technology, camera operators were limited to using riggings, tracks, and bulky tripods and dollies, with only pans and or sweeping crane shots to give movies a sense of motion. But after Garrett’s pioneering work on stabilizers, moviegoers could—for the first time—be truly immersed in the action on screen. They could feel the thrill of those high-speed chases. It’s hard to imagine now what movies would be like without the Steadicam. How many millions of young imaginations have been captivated and influenced—truly transported somewhere else, in the way that only movies can do—because of Garrett’s innovation, combined with a compelling story, good actors, and an experienced director?

Movies, after all, truly embody the concept of intellectual property in one of its most spectacular, memorable, and collaborative forms. Every person involved in a movie, from writers and producers to the makeup artists and camera operators like Garrett Brown, works hard to bring a work of art to the audience. And like everyone, they deserve to be paid for their work. Intellectual property rights ensure that the fruits of their labors remain valuable and marketable. But those rights aren’t just about fairly compensating creators—patents, trademarks, and copyrights promote innovation and creativity by encouraging others to come up with new ideas and better ways of doing things, as Garrett Brown did. They facilitate the spread of human knowledge and fuel the inspiration for humanity’s accomplishments. They help us tell new stories and find new possibilities.

For hundreds of years, intellectual property has been the driving force of progress in technology, art, and, culture. This is true around the world. It’s part of our shared human experience, no matter where we come from. Which is why the intellectual property offices of the world—including the United States Patent and Trademark Office—work together to ensure that IP rights continue fostering creativity and innovation.
 
We are here today because April 26 is World Intellectual Property Day, a tradition that began in 2000 by proclamation of the member states of the World Intellectual Property Organization. Every year since, WIPO and its member states have celebrated World IP Day with activities, events, and campaigns to increase public understanding of what intellectual property really means, and to demonstrate how the IP system fosters not only music and the arts, but also serves as the incentive for creation of all the products and technological innovations that shape the modern world. April 26 is, as many of you know, the birthday of WIPO itself. Like the Cardozo Law School, it is still a relatively young organization. The Convention Establishing the World Intellectual Property Organization (WIPO) was adopted in 1967 and came into force on April 26, 1970. Thus the selection of this day for World IP Day.

Today, WIPO has 187 member states and administers 26 treaties. The most recent of those treaties was adopted last June in Marrakesh, to facilitate access to published works by visually impaired persons and persons with print disabilities. It’s that kind of work that makes WIPO such an important and valuable organization. In addition to facilitating strong IP rights in multiple jurisdictions, WIPO also provides IP capacity building, training, and technical assistance on IP protection and enforcement. Through the WIPO Academy, the organization has trained thousands of officials dealing with IP worldwide, including officials from IP offices, police, prosecutors, judges, and customs officials. Through the WIPO Arbitration and Mediation Center, WIPO provides alternative dispute resolution services, including domain name dispute resolution. WIPO has committees dedicated to discussing patent, trademark, copyright and traditional knowledge issues. When member states agree that an issue is ripe for an international agreement a diplomatic Conference is convened to adopt a treaty or update a treaty.

In short, WIPO is a force of great good in the world of intellectual property, and while we are here today in honor of World IP Day and movies in particular, we would be remiss not to pay tribute to WIPO itself for the great work it has done, and will continue to do, on behalf of intellectual property worldwide. I want to also congratulate Director General Francis Gurry, who was recently reelected to another six-year term as the head of WIPO. The United States Patent and Trademark Office looks forward to working with Director General Gurry and his team on a number of important matters across the full spectrum of intellectual property.

In the meantime, here at home we must continue to find new and innovative ways to promote the importance of IP to the American public, and especially to our nation’s children. Tapping into the “global passion for movies”—the theme of this year’s World IP Day—is a great start. It’s not only a powerful example of IP, but a tremendously useful means of communication as well. Last year, the USPTO, the National Science Foundation, and NBC Learn, the educational arm of NBC News, launched an 11-part “Science of Innovation” video series to coincide with the 165th birthday of American inventor Thomas Edison.

Narrated by NBC News’ Ann Curry, the series featured innovators from across the country, including scientists and engineers working on projects in industries as diverse as healthcare, energy, transportation, agriculture, and more. “Science of Innovation” looked beyond the popular concept of innovation as the result of a single event or brilliant idea. Instead, it examined the processes and steps that anyone from a garage tinkerer to a federally funded scientist can take to discover new solutions to pressing problems or to add value in new ways to existing products, services, or technologies. Not only was this a clever means of reaching younger audiences, but it was also a great example of federal agencies, industry, and educators working together to demonstrate the connection between IP and the science, technology, engineering and math fields.

Was it as memorable as RETURN OF THE JEDI or ROCKY? Probably not. That’s tough competition! But it was a good use of harnessing our global passion for movies to the advantage of IP and STEM education, and the kind of creative public-private partnership that we should build upon. At the end of the day we all have a role to play in educating the public about the importance of IP, and we can do that best by working together, collaboratively and creatively, with a view toward directing that global passion for movies toward a global passion for IP.

Thank you again for having me here today, and for what you as members of AIPLA, WIPO, and the public at large do to support the cause of intellectual property. I hope you enjoy the rest of the program, and that you get a chance to see a good movie this weekend!

Thursday Apr 17, 2014

Inspiring the Next Generation of Inventors

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

What do physicist Charles Hull, chemist Richard DiMarchi, and the late silver screen star Hedy Lamarr have in common? For one, they each patented inventions that revolutionized their industries and changed people’s lives. Second, they will be inducted into the National Inventors Hall of Fame (NIHF) on May 21st here at USPTO headquarters. But they also, at some point in their lives, were inspired to pursue new horizons in science.

Hull is considered the father of additive manufacturing, more popularly known as 3D printing. He came up with the idea while developing lamps for ultraviolet-curable resins, and now his technology is being used to create everything from aircraft components to artificial limbs. DiMarchi has improved more than a million lives with his development of the first rDNA-derived peptide approved as medicine; his Humalog® insulin is an indispensable part of the lives of many diabetes sufferers. And Lamarr? The accomplished actress once partnered with composer George Antheil to patent a “secret communication system” that reduced the danger of detection or jamming of radio-controlled torpedoes.

My path to becoming an engineer in the field of artificial intelligence did not involve the performing arts. I am a second-generation American who grew up in Silicon Valley—our nation’s main hub for innovation. My father was an engineer, as were all of the other dads on our street, and I never imagined any other career path. But we need to help encourage our next generation of inventors to pursue all kinds of different fields. That’s why I’m glad the USPTO manages the NIHF program, in partnership with the non-profit Invent Now. The partnership involves inspiring programs for inventive college students and curious grade schoolers, such as Invent Now’s Camp Invention.

At Camp Invention, students get to play inventor for a week at a national summer program focused on creativity, innovation, and real-world problem solving. This week-long summer day camp for 1st through 6th graders includes robust STEM (science, technology, engineering and mathematics) curriculum while also providing insights on the role of patents and trademarks in innovation. Established in 1990, the program is currently held at more than 1,200 sites in 50 states. Students learn through teamwork and subject immersion, while the certified teachers guiding the camps receive materials they can utilize in their regular school curriculum during the normal academic year. Perhaps most importantly, Invent Now puts great focus into finding teachers and schools located in economically disadvantaged communities to host Camp Invention, ensuring that children of all backgrounds can benefit.

But our partnership with Invent Now doesn’t only focus on children and accomplished inventors. We also work with Invent Now on the very popular Collegiate Inventors Competition (CIC), another program in operation since 1990. NIHF inductees and USPTO subject-matter experts serve as judges of individual and team submissions from undergraduate and graduate students across the country. These inventors develop groundbreaking innovations to address vexing problems, and finalists and winners are honored here at the USPTO in a special ceremony. Last year’s entries included a next-generation cancer chemotherapy patch, a mechanical leech for post-surgical treatment of tissue reattachment patients, and an upper-body exoskeleton for physical therapy and occupational lifting. Applications are now being accepted for the 2014 competition.

In short, our partnership with Invent Now supports a path of innovation, from grade school to college to the heights of a professional career. That story will be told soon in our National Inventors Hall of Fame Museum housed at our Alexandria headquarters. We are working with Invent Now to overhaul our existing museum and turn it into a true shrine to innovation and the great patent owners who have been inducted into the NIHF. A portion of that museum will be opened at our May 21st induction ceremony, where 2014 attendees will be able to see their names, innovations, and related patent numbers on permanent display. Visitors will be able to track paths of innovation, following the first childhood spark of an idea to the moment when it changed the world.

When we induct the 2014 NIHF class next month, I’m sure I won’t be alone in wondering how many future inductees will be veterans of Camp Invention or the Collegiate Inventors Competition. It’s really only a matter of time.

Friday Mar 28, 2014

USPTO’s Office of Policy and International Affairs Continues Building Support for U.S. Innovators and Entrepreneurs

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

In the first quarter of fiscal year 2014, the Office of Policy and International Affairs (OPIA) conducted dozens of programs designed to provide intellectual property (IP) capacity-building and technical assistance to domestic and international audiences. These programs to boost IP awareness and understanding are managed through our Global Intellectual Property Academy (GIPA), and tracking them is one of the ways we measure our performance.

In the first quarter of FY14, we conducted three domestic programs that reached 360 participants. A particularly interesting program that I’d like to point out was designed to support veterans who have either started or want to start a business, and it was carried out in cooperation with the Small Business Administration and Syracuse University’s Institute for Veterans and Military Families. This program, the Entrepreneurship Bootcamp for Veterans with Disabilities (EBV), has a curriculum tailored to the unique challenges and opportunities associated with being a veteran business owner. Attorneys from the GIPA also participated in EBV’s third annual National Training and Alumni Conference on October 25-27 in Dallas. The attorneys guided veterans through an interactive exercise that highlighted the role IP plays in building businesses, and provided one-on-one advice throughout the conference.

Internationally, we conducted 35 programs in 41 countries that reached 1,211 foreign officials. A good example of our international outreach includes a colloquium on IP rights for approximately 30 judges, prosecutors, and investigators in Morocco. The colloquium was held November 19-22 and covered topics such as the investigation of IP crimes, the importance of cooperation with law enforcement, and adjudication of criminal IP cases.

For more information on our FY 2014 Q1 activities and OPIA’s performance metrics, I invite you to visit our Policy and International Affairs dashboard.

Tuesday Mar 25, 2014

An Update on Our Satellite Offices

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

As we’ve done in the past, I’d like to take a moment to fill you in on the status of our satellite offices in Dallas, Denver, Detroit and Silicon Valley. Having spent the last year leading our team at the Silicon Valley office, keeping on top of all the developments related to our satellite offices is of particular interest to me. 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.

Our Elijah J. McCoy Satellite Office in Detroit, which opened for business in July 2012, is meeting and exceeding the needs of the agency and the local innovation community. With approximately 100 patent examiners and eight administrative patent judges, the Detroit office continues to process patent applications, as well as manage appeal cases and America Invents Act (AIA) trials.

Having an office in Detroit has also enabled us to foster new partnerships with stakeholders, the local community and organizations such as the Henry Ford Museum and the Auto Harvest Foundation. Through these partnerships, Detroit office staff are participating in numerous outreach events, including IP conferences, IP bar association meetings, elementary school science fairs, and an initiative to help the Charles H. Wright Museum of African American History start a program for children to understand the correlation between science, technology, engineering, math, art, and design and the creation and protection of intellectual property. The office has also been holding quarterly “Saturday Seminars” to train independent inventors and small businesses on the importance of IP protection (If you’re in the area, come to our next one on April 12).

In Silicon Valley, we’re moving forward with the city of San Jose to ensure our permanent office has the perfect space to suit our needs and the needs of local stakeholders. When it comes to community engagement, we’ll be doing a lot of what we do in our Detroit office, including local training programs and workshops while building partnerships with local innovators and others in the IP field. We’re aiming to start operations in San Jose City Hall in the spring of 2015. USPTO senior executive John Cabeca, who took over serving as Director of the Silicon Valley Office when I left, has been leading USPTO’s outreach in the region. A 25-year veteran of the agency, he is actively engaged with stakeholders across the Bay Area and doing a superb job.

Meanwhile, this Wednesday we’re hosting a Livestream recruitment event with U.S. Senator Michael Bennet of Colorado as part of our search for top talent to hire for the Denver office. The event will feature a panel of USPTO supervisory and patent examiners who will talk about what their job entails, share their experiences working at the USPTO, and answer live questions. Concurrently, we’re reviewing candidates for the Denver office regional director and plan to make our selection in the coming months. We are also on track to move from the Denver Federal Center to occupy permanent space in the Byron G. Rogers Federal Building this July.

In Dallas, our staff has been operating out of the Santa Fe Federal Building since March 2013. The design-and-build phase of the permanent space in the Terminal Annex Federal Building will start early this spring with a planned occupancy in fall 2015. In the meantime, the USPTO and the Dallas Entrepreneur Center are collaborating on programs and exchanges designed to educate local entrepreneurs on the effectiveness of IP protection, similar to our Detroit “Saturday Seminars.”

For now, the temporary offices in Dallas, Denver, and Silicon Valley are staffed with Patent Trial and Appeal Board judges, whose main job is helping reduce the inventory of trial and appeal cases. We continue to hire judges as qualified candidates become available, and we will recruit patent examiners for each office as their permanent spaces near completion. All vacancy announcements for these offices are posted on usajobs.gov, so if you’re interested—or you know someone who might be—that’s where to look.

These satellite offices are critically important to the regional IP communities, and getting all of them operating at full strength is one of our major priorities as an agency. We are grateful to local government officials and regional stakeholders who have responded so enthusiastically to our satellite offices, and extend kudos to the hard-working USPTO personnel in each location. These offices would not exist without the hard work and support of many people inside and outside of our agency.

This year promises to be an exciting one for our satellite offices, and we will continue to keep you informed about major new developments.

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