Director's Forum: A Blog from USPTO's Leadership
Director's Forum: A Blog from USPTO's Leadership
Monday Sep 26, 2016

Commemorating Five Years of the America Invents Act

Guest Blog by Dana Robert Colarulli, Director of the Office of Governmental Affairs

We’ve come a long way in five years. The Leahy-Smith America Invents Act (AIA), signed in 2011 by President Obama, modernized the U.S. patent system and, as a result, helped strengthen America’s competitiveness in the global economy. Together with our stakeholders, the USPTO sought to implement the act consistent with the intent of Congress to increase certainty in our nation’s intellectual property (IP) landscape and enable the brightest ideas and most ambitious endeavors in the world to come to light.

I was there in 2011 and the years leading up to the President signing the AIA and have watched the agency embrace and implement the numerous provisions in the act. On Wednesday, September 21, members of Congress and key congressional staff, USPTO leadership, and stakeholders from industry and the inventor community came together again to commemorate the 5th anniversary of the AIA on Capitol Hill.

The event featured remarks from USPTO’s Director Lee, Representative Lamar Smith and Senator Patrick Leahy on the history of the AIA, the need for change, and the AIA’s impact on the IP system – even as we continue to evaluate these sweeping changes and look for ways to further improve our system. A panel discussion at the event focused on the impact the act has had on businesses and inventors of all sizes and what may be next in the way of improvements to the patent system.

The AIA implemented a number of significant changes to update and improve the U.S. patent system. Upon signing the bill in 2011, the President described what the bill hoped to accomplish this way:

“It’s a bill that will put a dent in the huge stack of patent applications waiting for review. It will help startups and small business owners turn their ideas into products three times faster than they can today. And it will improve patent quality and help give entrepreneurs the protection and the confidence they need to attract investment, to grow their businesses, and to hire more workers.”

The USPTO has delivered on that promise by reducing the patent application backlog by nearly 30 percent from its high in early 2009, speeding up examination including introducing a fast track option with discounts for small entities, and leveraging the increased financial stability and fee setting authority provided by the act to reinvest user fees into increasing quality under Director Lee’s Enhanced Patent Quality Initiative.

And just this week, the USPTO and the Economics & Statistics Administration at the Department of Commerce released an updated report on the impact of IP on the U.S. economy, reiterating in quantifiable terms the importance of a well-functioning IP system.

The increased attention and focus on our IP system in recent years is critical, and our job to look for ways to further improve did not end with the AIA. Again, the President stated in 2011:

“And we have always succeeded because we have been the most dynamic, innovative economy in the world. That has to be encouraged. That has to be continued.”

Inventors and innovators in the U.S. and around the world deserve a system that evolves and improves right along with the pace of technology – an important reminder as we celebrate the 5th anniversary of the AIA.

Learn more about the impact AIA has had over the last five years in:

Tuesday Sep 20, 2016

Transparency in Patent Examination Prosecution: Master Review Form

Guest blog by Deputy Commissioner for Patent Quality Valencia Martin Wallace

One important component of the USPTO’s commitment to achieve greater accuracy, clarity, and consistency in examination and prosecution is the Clarity and Correctness Data Capture (CCDC) program. As part of our Enhanced Patent Quality Initiative, the goal of the CCDC is an improved data capture system to enable all reviewers of finished work products to consistently document and access quality review data in one place.  By entering the results of these reviews into a single database, the USPTO will ultimately capture three to five times more data as a single data set than we have previously captured. With this larger data set, we will be able to identify trends at a more granular level, and in doing so, we will be poised to provide training and other educational opportunities to examiners, in order to achieve greater transparency in examination and prosecution. We are also updating our quality metrics in view of this new data, which will be the subject of a future blog post.

As part of this effort, the USPTO is standardizing reviews of finished work products through the use of a single review form, called the “Master Review Form” (MRF). Reviewers in the Office of Patent Quality Assurance (OPQA) and supervisors in our technology centers are already using this form. The MRF places a much greater emphasis on assessing the clarity of an examiner’s reasoning in a rejection compared to past review forms, while maintaining our historic focus on addressing the correctness of an examiner’s action. In addition, the MRF provides reviewers with a greater ability to flag instances of high quality or best practices during their reviews to allow the USPTO to acknowledge these high-performing examiners as well as to provide a set of readily identifiable examples of high quality work that can be used for training purposes. Further, the Master Review Form is a “smart”, software-based form, so reviewers see only those sections of the form that are pertinent to the review that they are doing, which allows reviewers to be more efficient when recording the results of their reviews.

We are continuing to assess the Master Review Form to ensure it strikes the right balance between the level of detail captured by the form and the time it takes to fill out the form. To this end, we have conducted surveys and focus sessions with OPQA reviewers as well as supervisors in the technology centers. These surveys and focus sessions have identified changes to questions as well as a need for better guidance on how to fill out the form. We also published a Federal Register Notice in March 2016 seeking comments on the MRF. We received 32 comments expressing a general desire for more detail in the MRF’s sections to evaluate causal effects, especially the search section, as well as identifying a need for a guidance document for the public. Based on all of this feedback, we created a new version of the Master Review Form, which OPQA and the technology centers are currently using, and updated guidance for this new version. 

Further, we are testing the MRF by using it when conducting case studies as part of the Topic Submission for Case Studies program. Historically, OPQA was able to conduct a very limited number of case studies every year due to resource constraints because each case study typically required a large number of extensive reviews. The Topic Submission for Case Studies program has allowed us to test the extent to which we can use data from the Master Review Form in place of such extensive reviews. 

Even though we only began using the Master Review Form in OPQA in November 2015, we have completed over 11,000 reviews so far this fiscal year and expect to complete at least another 1,000 reviews by the end of the year. In contrast, OPQA completed 7,900 reviews in fiscal year 2015.  Next fiscal year, OPQA expects to complete over 18,500 reviews. As the MRF’s database continues to grow over the coming years with hundreds of thousands of reviews covering a large range of issues, the USPTO will have an even richer data set to use when identifying quality trends, answering questions we would otherwise have had to answer through a case study, and providing more precise quality metrics. This will have an impact for years to come.

Friday Sep 16, 2016

Five Years of Patent Pro Bono Success

Guest blog by Will Covey, Deputy General Counsel and John Kirkpatrick, Patent Pro Bono Coordinator

Five years ago, President Obama signed the America Invents Act (AIA) into law, bringing sweeping changes to the U.S. patent system.  In addition to those major changes, other aspects of the AIA focused on leveling the playing field for inventors and entrepreneurs.  Today, we want to talk about one of those aspects, Section 32.

Section 32 provides that the U.S. Patent and Trademark Office (USPTO) “work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.”  In doing so, Congress acknowledged “the importance of individuals and small businesses to the patent system and our national culture of innovation.”

The ink had barely dried on the President’s signature when the pilot Patent Pro Bono Program officially launched in Minnesota, as a collaboration between the USPTO and LegalCORPS, a nonprofit legal resource center based in Minneapolis.  By late summer 2013, the first patents had begun issuing from the program, and multiple other programs were being established throughout the country.  Further direction from the President’s Executive Action dated February 20, 2014, prompted the USPTO to appoint a full-time Pro Bono Coordinator and designate additional resources to establish programs across the country.  Today, there are 20 programs that provide coverage for the entire United States, with many patents already issued and new applicants being accepted every day.

In every patent, there’s a story. Take for example Travis Kelly, from Backus, Minnesota.

Travis invented a simple but effective device to take the guesswork out of home door installations.  He couldn’t afford to hire an attorney and had filed a provisional patent application on his own.  After finding out about the pro bono program, he applied and received legal representation from volunteer attorney Kate DeVries Smith.  His patent issued in 2014.  Today, Travis and his wife Jennifer run a small business, JenTra Tools.  They’re selling thousands of units per year, and providing jobs and generating revenue in their community.

Then there is Deborah Campbell, from Grand Junction, Colorado, who after years of designing and prototyping, developed a manual sushi-making machine that can churn out rolls in just two minutes.  She received pro bono assistance from the law firm of Merchant and Gould through Mi Casa Women’s Business Center in Denver.  Having just received her patent this past May, Deborah plans to go into production and sell the device.

Glenn Vogel, a custom metal worker and father of three from Evergreen, Colorado, also received assistance through Mi Casa.  In 2015, thanks to volunteer attorney Aaron Kraft, he patented a customizable wine storage rack and saw his revenue increase by 20 percent.

The Patent Pro Bono Program offers patent legal professionals a way to give back to their communities in a structured and proven system.  The program also helps establish lasting relationships between inventors and attorneys and agents that can prove valuable for both in the future.

But it’s not just inventors, attorneys, and agents who benefit.  When inventors enlist the help of attorneys or agents, their applications tend to be more complete and meet statutory requirements, thereby enhancing patent quality.

As we celebrate the fifth anniversary of the AIA, we’d like to acknowledge the numerous individuals who have worked behind the scenes to make this program an overwhelming success.  For many of them, from partners in the first firms to sign on, to the USPTO employees who traveled the country promoting the program, this was a unique opportunity to make a difference in the lives of independent inventors.  In just five years, the Patent Pro Bono Program has launched dreams.  In the next five, it will only continue to help turn new dreams into reality.

Monday Aug 29, 2016

Importing Prior Art Automatically to Streamline Patent Examination Process

Guest blog by Mark Powell, Deputy Commissioner for International Patent Cooperation

As part of our continuing efforts to improve patent examination quality and efficiency, the USPTO will host a roundtable on September 28, 2016 to discuss new ways to more efficiently identify prior art for patent applications. The USPTO plans to leverage electronic resources (e.g., Global Dossier and USPTO internal databases) to automatically import relevant information (e.g., prior art and search reports) into pending U.S. applications from sources such as domestic parent and counterpart foreign applications. This will streamline the patent examination process for both examiners and applicants, as outlined in our Federal Register Notice.

An automated solution to deliver relevant information to the U.S. application file will enhance the examiner’s ability to identify the most relevant prior art as early as possible and likely increase efficiency of prosecution procedures. Of course, it will be critical to ensure our examiners are provided with the most relevant information without being overburdened with immaterial and marginally relevant information. The goal is to create a searchable application file that is built from applicant submissions, the examiner’s own search results, and information retrieved automatically.

This new system will more efficiently identify prior art in applications and streamline the process for both examiners and applicants. We are planning extensive stakeholder outreach to better understand the needs of applicants, such as how such a system should be controlled and what information should be documented relative to the imported information. (e.g., date, source, examiner consideration, etc.) We hope to hear from you on this initiative and look forward to receiving your input at our upcoming roundtable on September 28, 2016.

Monday Aug 22, 2016

USPTO Launches Cancer Moonshot Challenge

Guest Blog by Chief of Staff of the USPTO Vikrum Aiyer and Senior Advisor Thomas A. Beach

The USPTO is playing an important role in the National Cancer Moonshot, a Presidential initiative we blogged about earlier this summer, to speed up cancer advances, make more therapies available to more patients, and improve the ability to prevent cancer and detect it at an early stage. Today, we are launching the USPTO Cancer Moonshot Challenge to enlist the public’s help to leverage our intellectual property data, often an early indicator of meaningful research and development (R&D), and combine it with other economic and funding data (ie. SEC U.S. Securities and Exchange Commission filings, Food and Drug Administration reporting, National Science Foundation grants vs. philanthropic investments, venture capital funding, etc.). This comes on the heels of our Patents 4 Patients program, which was launched in July and aims to cut in half the time it takes to review patent applications in cancer therapy.

The USPTO Cancer Moonshot Challenge will conclude on September 12 and winners will be announced on September 26. Learn more about the prizes.

Participants will have the opportunity to leverage USPTO Cancer Moonshot patent data to reveal new insights into investments around cancer therapy research and treatments. Some questions to address include: What are the peaks and valleys in the landscape of cancer treatment technologies? What new insights can be revealed by correlating R&D spending/funding to breakthrough technologies? What would trace studies of commercially successful treatments from patent to product tell us? With the data sets released through the USPTO Developer Hub, users will be able to use analytic tools, processes and complimentary data sets to build rich visualizations of intellectual property data, which will help illuminate trend lines for new treatments. During the three week challenge the USPTO will hold a USPTO Cancer Moonshot Workshop to assist participants on Thursday August 25.

After the challenge has concluded, the USPTO, in tandem with other Moonshot Task Force partners, will look at further ways to use the findings. By bringing together cancer experts, policymakers, and data scientists, we can explore and identify how intellectual property data can be better leveraged and combined with other data sets to support cancer research and the development of new commercialized therapies. This will empower the federal government—as well as the medical, research, and data communities—to make more precise funding and policy decisions based on the commercialization lifecycle of the most promising treatments, and maximize U.S. competitiveness in cancer investments.

We recognize that by enlisting the public’s assistance through our USPTO Cancer Moonshot Challenge, we can identify new and creative ways to fight cancer and work towards breakthroughs in treatment.  And by harnessing the power of patent data, and accelerating the process for protecting the intellectual property undergirding cancer immunotherapy breakthroughs, the USPTO is standing up and doing its part to help bring potentially life-saving treatments to patients, faster. Are you up to the challenge?

Monday Jul 25, 2016

Keeping International Competition Front of Mind

Guest blog by Chief Communications Officer Patrick Ross

Empowering bold entrepreneurship by inventors and businesses drives the U.S. economy in a global marketplace. We at the U.S. Patent and Trademark Office know that entrepreneurs today must keep the challenge of global competition front of mind. That’s why we provide an array of tools and resources designed to assist innovators in ensuring their intellectual property rights are respected across the globe. Check out our International IP Toolkit to learn more about our Global Dossier program, our Global Intellectual Property Academy, and so much more.

As part of her leadership on behalf of the Obama Administration on intellectual property issues, USPTO Director Michelle K. Lee recently met in Japan with the leaders of the largest patent offices in the world – the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIPO)—at an annual meeting known as IP5. You can learn more about the USPTO’s focus on furthering international IP cooperation in Director Lee’s editorial for IAM.

Likewise, Commissioner for Trademarks Mary Boney Denison recently sat down in China with the Trademarks leaders of those same offices—at the annual TM5 meeting—to focus on increased harmonization efforts on that critical element of any company’s IP portfolio. I invite you to read Commissioner Denison’s editorial, “A Smoother Road Thanks to TM5 Harmonisation Efforts,” published by Managing IP.

Friday Jul 15, 2016

Intellectual Property and the Challenge of 3D Printing

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

3D printing—also known as stereolithography or additive manufacturing—is a printing technology that uses computer-controlled lasers to build three-dimensional structures from liquid polymers and other materials. Once the domain of fantasy, 3D printing was brought to life in the 1980s, most notably by National Inventors Hall of Fame inventor Chuck Hull, and since then has grown to be a truly paradigm-shifting technology, with uses in a wide variety of industries, from bioengineered cardiac tissue to pollution mitigation devices to custom-manufactured machine tools.

 But as with many new technologies, 3D printing raises complex issues—including in the realm of intellectual property rights such as patents, designs, trademarks, and copyrights. On June 28, the U.S. Patent and Trademark Office (USPTO) hosted a conference at its headquarters in Alexandria, Virginia, to address the legal issues and policy challenges faced by the owners of intellectual property by the expanding 3D printing industry.

The USPTO is well aware of the growth of the 3D printing industry: in 2015, there were 23 times more patent applications filed for 3D printing technologies than in 2010. Similar growth was seen on the trademarks side, with filings having grown by more than 300 percent over the same period. And since the beginning of 2016 alone, there have been 425 new trademark applications filed for 3D printing-related goods and services.

At the all-day gathering, the 400-plus attendees heard from keynote speakers—including USPTO Deputy Director Russ Slifer, and author and attorney John Hornick—on the basic concepts of 3D printing and the legal challenges it presents. They then had the opportunity to hear from (and pose questions to) four panels of authorities who focused on the issues raised by 3D printing in the areas of innovation, industrial design, trademark law, and copyright. Participants discussed how the explosion of 3D printing technologies may eventually place intellectual property rights at a greater risk of infringement from a widening base of infringers. Improvements in additive manufacturing technologies suggest that, in the not-too-distant future, copies of protected products may be easier than ever for anyone to make.

The best way to respond to rapid technological change is to collaborate—not just with colleagues, but with those working across disciplines. That was exactly the case for the attendees at the USPTO’s conference, who represented law firms, small businesses, patent examiners, and representatives of other federal government agencies. The event was also streamed live to attendees at its four regional offices. It was a gathering designed to encourage collaborative thought and action.

Tuesday Jul 12, 2016

New Post-Prosecution Pilot Under Way

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

I am pleased to announce the launch of the Post-Prosecution Pilot (P3), which was developed as part of the USPTO’s commitment to collaborating with our stakeholders and providing new programs to assist applicants and practitioners during the application process. It is our job to ensure that patent quality and our larger patent system keep up with the rapid pace of American innovation. The P3 program, which is part of the Enhanced Patent Quality Initiative, provides applicants with the opportunity to make an oral presentation to a panel of examiners after a final rejection has been issued at the close of prosecution but before the filing of a notice of appeal to discuss a proposed amendment. It is our goal to illuminate the next available steps and offer an after final option that is more useful to you.

Specifically, the P3 program combines the best features of two of our existing programs, the Pre-Appeal Brief Conference Pilot Program (Pre-Appeal) and the After Final Consideration Pilot Program 2.0 (AFCP 2.0).  Under the Pre-Appeal program, applicants can request a panel of examiners to formally review the legal and factual basis of rejections made in their application before a formal appeal brief is filed.  Additionally, the AFCP 2.0 program further includes an interview with the examiner for instances when applicant’s after final response does not result in an allowance. Now, through the P3 program, an applicant with a utility patent application can submit a proposed after final amendment to be considered by a panel of experienced examiners. Further, the applicant will have the opportunity to make a presentation to the panel, either in-person or via phone, and the panel will provide a brief written summary of the status of the pending claims as well as the reasoning for maintaining any rejection.

 The P3 program runs until January 12, 2017. Under the terms of the program, each technology center will accept a maximum of 200 compliant requests. Thus, the ability to take advantage of the P3 program may end earlier in a given technology center. The P3 web page on the USPTO website includes a tally for each technology center to allow you to see whether a technology center is still accepting applications for the pilot.

Please refer to the Federal Register Notice for more information about the P3 program including its submission requirements. The Federal Register Notice also requests comments and feedback from our stakeholders on ways to improve after final practice to reduce the number of issues and applications appealed to the Patent Trial and Appeal Board and to reduce the number of Requests for Continued Examination. The USPTO plans to evaluate this feedback as well as the results of the P3 program to determine what we can do to improve after final practice.

Simplifying and strengthening the after final landscape 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. I encourage you to share your feedback on the Federal Register Notice via email to afterfinalpractice@uspto.gov or via postal mail addressed to: United States Patent and Trademark Office, Mail Stop Comments – Patents, Office of Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Raul Tamayo. The deadline for public comment is November 14, 2016.

Thank you for your collaboration in this important effort.

Tuesday Jul 05, 2016

PTAB Replaces Patent Review Processing System

Guest Blog by David P. Ruschke, Chief Judge for the Patent Trial and Appeal Board (PTAB)

The USPTO deployed an e-filing system known as the Patent Review Processing System (PRPS) for trials under the America Invents Act (AIA) on September 16, 2012.  Since then, usage of PRPS has exceeded our expectations, and the time has come to transition to a new system to better serve the needs of the public. 

That new system is called Patent Trial and Appeal Board End to End (PTAB E2E).  PTAB E2E uses a web browser (Chrome is the preferred browser) and a step by step filing program to enable petitioners and patent owners to provide metadata and upload pdf documents to the system.  PTAB E2E also provides an interface to the USPTO Next Generation financial system (FPNG) for paying fees.

The target date to deploy PTAB E2E is July 9, 2016. Upon initial deployment, PTAB E2E will be used for Inter Partes Review (IPR), Covered Business Method Review (CBM), and Post Grant Review (PGR). Derivations (DER) will still be processed in PRPS until they are migrated into PTAB E2E later in 2016. During this initial deployment both PRPS and PTAB E2E will be unavailable beginning Saturday, July 9, 2016 at 12:01 AM until 5:00 AM, Monday, July 11, 2016.

The new features of PTAB E2E include:

For all external users, with or without a login email address:
• full text document search
• metadata search
• additional search filters
For external users with a login email address:
• a dashboard that includes the most recent document upload activity and status of filed cases
• an improved docket
• easier navigation of AIA review papers and exhibits
• filter search on the docket

The PTAB E2E system link, a user manual, FAQ, and quick reference guides will be available on July 11, 2016 at http://www.uspto.gov/ptab in the upper right portion of the web page.

In the near future, an Application Programming Interface (API) will make PTAB trial data available for bulk data downloads.

As the system is deployed, we encourage you to provide feedback about the PTAB E2E system by sending your comments to PTABE2EADMIN@uspto.gov

Customer support will be available Monday-Friday from 8:00 AM until 6:00 PM EST at 571-272-7822. Additional transition coverage will be available during the week of July 11th until 12:30 AM EST.

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.”

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