Director's Forum: A Blog from USPTO's Leadership
Director's Forum: A Blog from USPTO's Leadership
Tuesday May 10, 2016

Patent Quality Community Symposium Gathers Public Feedback on USPTO Programs

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

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

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

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

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

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

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

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

Monday May 09, 2016

Further Insight Provided on PTAB Amendment Motions with New Study

Guest Blog by Acting Chief Administrative Patent Judge Nathan Kelley

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

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

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

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

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

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

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

Thursday May 05, 2016

Update to Examiner Guidance on Patent Subject Matter Eligibility

Guest blog by Deputy Commissioner for Patent Examination Policy Robert Bahr

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

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

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

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

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

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

USPTO Celebrates World IP Day and Digital Creativity

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

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

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

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

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

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

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

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

Tuesday Apr 26, 2016

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

Guest Blog by Chief Administrative Trademark Judge Gerard F. Rogers

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

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

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

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

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

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

Thursday Apr 07, 2016

USPTO Launches Two New Online Fee Payment Tools

Guest Blog by Chief Financial Officer Tony Scardino

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

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

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

Here are some additional changes to be aware of:

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

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

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

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

Thursday Mar 31, 2016

PTAB Issues Final Rules for Improved Proceedings

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

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

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

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

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

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

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

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

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

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

 

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

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

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

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

Wednesday Mar 30, 2016

Improvements in Measuring Patent Quality Metrics

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

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

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

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

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

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

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

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

Monday Mar 21, 2016

From NASA to South by Southwest

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

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

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

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

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

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

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

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

Friday Mar 11, 2016

USPTO’s National Summer Teacher Institute – Bringing Innovation to the Classroom

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

Teachers across the country have until April 18 to apply for the U.S. Patent and Trademark Office’s (USPTO) 3rd annual National Summer Teacher Institute—an exceptional opportunity  for teachers to garner additional skills in innovation, “making,” and intellectual property, to incorporate into their classrooms.

The institute will be offered in collaboration with Michigan State University (MSU) in East Lansing from July 17-22, 2016. Fifty elementary, middle school, and high school science, technology, engineering, or mathematics (STEM) teachers will be selected to participate, and they will explore experiential training tools, practices, and project-based learning models to help foster skills and motivation for innovation.

Speakers and hands-on workshop instructors will include experts from the USPTO, faculty from MSU, noted scientists and engineers from the Science of Innovation curriculum, and representatives from other federal government agencies and non-profit organizations.

Invention projects provide a practical experience for participants to understand concepts of intellectual property in the context of STEM. Teachers will have access to maker spaces on the campus of MSU during the institute and are encouraged to take ideas and lessons learned back to their own classrooms. The program is designed to help teachers enhance student learning and outcomes, while meeting the rigors of common core and next generation science and engineering standards.

Steve Bennett,  an 8th grade engineering and technology teacher at a middle school outside of Houston, participated in the teacher institute in 2014 and served as a teacher ambassador in 2015. Bennett stated the teacher institute was the best summer experience he has had as an educator. He learned about the patent process, how to teach his students about it, and activities to use in the classroom such as making a microscope from a simple laser pointer.  Along with the tools and techniques to inspire intellectual property and innovation in his curriculum, Bennett said it’s the connections he made at the institute that help continue to drive him professionally. He’s met more than 60 teachers across the country who he continues to collaborate with and share ideas with. He now works with other schools and universities to promote STEM teaching programs, activities, and events. “The teacher institute opened up a whole new world for me,” he said. “The USPTO’s program can be used for any subject, and I recommend it for any teacher.”

Requirements for the USPTO’s National Summer Teacher Institute include three years of teaching experience and a commitment and willingness to take what they learn back to classrooms to help inspire a new generation of innovators. Teachers are chosen from across the country, and will have travel and lodging expenses covered if they live more than 50 miles from the venue.

Monday Feb 29, 2016

USPTO Maintains Productivity Despite Inclement Weather

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

The big East Coast snowstorm last month demonstrated the continuing effectiveness of the USPTO’s telework program, as more than 9,600 of our approximately 12,000 USPTO employees were able to telework despite the aftermath of the blizzard, allowing the agency to maintain high levels of production and efficiency.

While the federal government in the Washington, D.C. area was officially shut down, 77 percent of the total USPTO workforce was teleworking at peak times of the day. Not every USPTO employee has a telework agreement. Among those who do, nearly 93 percent of all employees were working at peak times.  In terms of productivity, our Trademark examining attorneys performed more than 90 percent of the work they did on recent comparable days without closures or storms. Patent examiners accomplished an average of 84 percent of the work they did on recent comparable days. Patent Trial and Appeal Board staff continued to respond to customer enquiries, judges conducted hearings remotely, and over 20 America Invents Act decisions were entered. 

The USPTO has been leveraging telework for many years; since 1997 in fact, when the Trademark Work at Home program started. In those days, telework in most federal government agencies was still considered to be the “shiny new penny” and federal agencies were just starting to get on board the telework train. In addition to our headquarters in Alexandria, Virginia, the USPTO’s regional offices across the country also effectively use telework when needed to serve inventors and entrepreneurs in their regions.

Prior to this year, February 2010 saw the last severe blizzard-like weather in the Washington metropolitan area. When the 2010 “Snowmageddon” storm hit, the USPTO was prepared: Trademarks was able to maintain fully 86 percent of normal workday production, and, agency-wide, more than 3,000 USPTO employees logged on to the PTO Virtual Private Network (VPN). The 2010 blizzard also helped the 2010 Telework Enhancement Act gain traction, especially in the Washington metropolitan area.

Although Punxsutawney Phil predicts an early spring, the Farmer’s Almanac indicates more inclement weather before winter’s official end. Whatever the case may be, at the USPTO it is business as usual.

Friday Feb 26, 2016

USPTO Submits its Fiscal Year 2017 Congressional Budget Justification

Guest Blog by Chief Financial Officer Tony Scardino

Each year, the USPTO submits a budget justification to Congress in order to obtain authority to spend the patent and trademark fees we collect. I’m pleased to announce that the USPTO has published its fiscal year (FY) 2017 Congressional Budget Justification.

The FY 2017 Congressional Budget Justification, which covers the period from October 1, 2016 through September 30, 2017, provides detailed information on how the USPTO plans to spend fees in the upcoming fiscal year. The FY 2017 budget documents our plans to enhance patent quality and continue reducing patent application pendency and backlog in order to help bring innovations to the marketplace and create jobs for the American people. It also enables us to continue maintaining our high levels of trademark quality and pendency despite increasing numbers of application filings; modernizing our information technology (IT); carrying out the provisions of the America Invents Act (AIA); and providing domestic and global intellectual property leadership.

In FY 2017, the USPTO expects to collect—and has requested an appropriation of—$3.3 billion in fee revenue, which is derived primarily from patent and trademark fee collections. This is approximately $49 million more than our FY 2016 appropriation.

Our estimated fee collections have been modified from the projections included in the FY 2016 President’s Budget to reflect new assumptions about the growth rate in patent application filings—based on our latest assumptions about demand for our services—and to incorporate proposed fee adjustments that were presented to the USPTO’s Public Advisory Committees (PACs) in early FY 2016. Both PACs have held public hearings on the agency’s proposals. We are currently awaiting and analyzing the findings and recommendations reported from our PACs. Once our analyses are completed, we will update our fee collection estimates in the notices of proposed rulemaking that will be published in the coming months.

The USPTO FY 2017 budget tells the story of a dynamic organization that is continually adapting to the ever-changing environment in which we operate. The agency maintains operating reserves to help us effectively manage through these changes. Even as fee collections vary from year to year, the operating reserves allow us to continue to make critical, multi-year investments to improve the USPTO and its operations. In FY 2015, the USPTO established minimum operating reserve levels for FY 2016 and FY 2017—$300 million for the patent operating reserve and $55 million for the trademark operating reserve—to help us mitigate known financial risks. Our goal is to continue to grow these reserves to their optimal levels of three months for patents and four months for trademarks within the five year term reported in the budget.

Throughout FY 2015, patent application filings and fee collections were trending at less than planned levels. We recognized that planned spending in FY 2016 and FY 2017 no longer aligned to our projected resources, and the agency conducted a comprehensive financial planning and resource management review. Based on this review, the USPTO’s FY 2017 budget prioritizes the agency’s spending across multiple years and reduces our budgetary requirements—i.e., what we plan to spend in FY 2016 and FY 2017—from the levels we identified at this time last year.

The budget places high priority on financing fixed operating costs (e.g., paying for on-board staff, production and operating requirements) and carrying forward with targeted investments and improvements. We also recognize that it is prudent to extend some of our information technology (IT) investments over a longer period of time in order to continue the effective implementation of critical systems that are essential to accomplishing our strategic goals.

The spending and revenue adjustments included in the FY 2017 budget allow the USPTO to continue to make responsible investments in the agency’s mission while maintaining our minimum operating reserve levels, and demonstrate the USPTO’s commitment to sound business and financial practices. Looking to the future, we will continue to assess the proper balance between pursuing strategic improvements and mitigating financial risks to the agency’s mission.

Friday Feb 05, 2016

Submit Topic Ideas for New Quality Case Studies Pilot Program

Guest blog by Deputy Commissioner for Patent Quality Valencia Martin Wallace

The USPTO is dedicated to providing the best work products and services at every stage of the patent process. Over the past year, we have worked diligently on the evolving programs of our Enhanced Patent Quality Initiative (EPQI) that we developed in response to our stakeholder’s feedback.  In December, we initiated a new program, the Topic Submission for Case Studies Pilot Program and through it we invite our stakeholders to submit patent quality-related topics that you believe should be the subject of a USPTO case study by Friday, February 12, 2016.

The USPTO anticipates these case studies will help us better understand the quality of our work products and, where appropriate, take action to remediate quality issues. We expect these case studies to assist us in formulating best practices to enhance patent quality by improving our patent work products and examination processes, as well as recognizing areas where further examiner training may be needed.

Case study topic submissions should (1) set forth a patent quality-related issue; (2) propose how the USPTO should study the issue; and (3) discuss how such study could lead to improvement in the quality of patents issued by the USPTO.  Topic submissions should not focus on particular applications, examiners, art units, or other purely managerial concerns.

For more guidance on types of topics to submit and the form in which topics may be submitted, visit Topic Submission for Case Studies Pilot Program on our website. Submissions for the program should be emailed to TopicSubmissionForCaseStudies@USPTO.gov.  All qualifying submissions will be posted publically on our website.

Enhancing patent quality is central to fulfilling the mission of the USPTO (Read more in Director Lee’s blog update from November 2015) and we value your participation in this new pilot program. It is of upmost importance to us to involve you in our quality improvement processes, and also maintain transparency in our quality efforts.

Thursday Jan 14, 2016

Leadership in All USPTO Regional Offices

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

After much excitement in the last few months of 2015 with the opening of our final two regional offices—the West Coast Regional Office in Silicon Valley in October and our Texas Regional Office in Dallas in November—I’m happy to announce that Molly Kocialski will be the Director of the Rocky Mountain Regional United States Patent and Trademark Office in Denver, Colorado. With Molly’s addition, all four of our regional offices now have directors, making us well-positioned to fully advance the mission of the USPTO as America’s Innovation Agency.

As the new director, Molly will spearhead the Rocky Mountain Regional Office’s efforts to bring the USPTO’s resources directly to the local innovation community, helping to fuel economic growth and innovation in the region, as well as oversee the local team of patent examiners and PTAB judges.   Molly is an established IP leader in the Rocky Mountain region, having served as the Chair of the Intellectual Property Section of the Colorado Bar Association and currently on the Colorado Bar Association’s Board of Governors. Moreover, Molly brings to bear more than 20 years of experience in intellectual property. Most recently, she was the Senior Patent Counsel for Oracle America, Inc. in Denver, responsible for managing an active patent prosecution docket and all of the post-grant PTAB proceedings and patent investigations for Oracle and its subsidiaries. Prior to Oracle, she worked at Qwest Corporation and was in private practice both in New York and in Colorado focusing on intellectual property litigation for multiple high-tech companies while maintaining an active prosecution docket.  Her extensive experience and familiarity with the region’s unique ecosystem of industries and stakeholders will be an asset to the USPTO. 

Molly joins a group of exceptional office directors already in place, including Hope Shimabuku, Director of our Texas Regional Office in Dallas, whom I recently swore in on January 3, Christal Sheppard, Director of the Elijah J. McCoy Midwest Regional Office in Detroit, and John Cabeca, Director of the West Coast Regional Office in Silicon Valley.

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 into law. These offices serve their region’s innovation and intellectual property communities and put tools into the hands of individuals who need assistance at every step of the business lifecycle. I am proud of the historic progress we have made over the last four years in establishing and growing these offices, and as we continue to bring resources to the doorsteps of innovators and serve entrepreneurs from coast to coast.

All of our offices will continue to hire talented and dedicated professionals to join their teams. For more information about openings, go to www.usajobs.gov, keyword: USPTO.

Tuesday Jan 05, 2016

Five Largest Trademark Offices Hold Annual Meeting at the USPTO

Guest Blog by Commissioner for Trademarks Mary Boney Denison

The USPTO is dedicated to working closely and regularly with its trademark office counterparts worldwide to cooperate on processes and exchange best practices. With that in mind, we hosted the 2015 TM5 Annual Meeting at USPTO headquarters December 1-2. The TM5 comprises the five largest trademark offices in the world: the USPTO, the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the European Union’s Office for Harmonization in the Internal Market (OHIM), and the Trademark Office of the State Administration for Industry and Commerce of the People’s Republic of China (SAIC). The annual meeting saw progress on a number of cooperative projects, including a vote to expand invitations to other countries to participate in the USPTO-led ID List Project, (which I’ll tell you more about below).

The TM5 is an outgrowth of the Trademark Trilateral, a cooperative framework established by JPO, OHIM, and the USPTO in 2001. That framework was expanded to include KIPO and SAIC in 2011 and 2012, respectively, and the group became known as TM5. The TM5 framework allows the partner offices to exchange information on trademark-related matters and to undertake cooperative activities aimed at harmonizing or improving their respective trademark protection systems and procedures. The 2015 TM5 Annual Meeting also included sessions with users, designed to obtain feedback on the existing efforts and to generate ideas and discussion about future work.

The work of the TM5 is structured through cooperative projects designed to improve users’ interactions with national trademark offices and the World Intellectual Property Organization (WIPO). These projects include, among others, minimizing bad faith filings, TMview, common status descriptions and ID List, and comparison of examination results and Madrid Protocol procedure.

Minimizing Bad Faith Filings

The TM5 partners continue to make efforts to minimize the incidence of bad faith trademark filings around the world by exchanging best practices in order to provide more transparent information to users. To that end, the TM5 published a report summarizing the partners offices’ best practices. The TM5 agreed at the 2015 Annual Meeting to continue to hold seminars with users and other national trademark offices to generate recommended solutions to this global problem. The next seminar for the TM5 partners to engage with users will be held in Tokyo, on March 1, 2016.

TMview

In order to make it easier for trademark applicants to access trademark information and to conduct global trademark clearance searches, the TM5 partners provide their trademark data to OHIM, the designated project leader for “User Friendly Access to Trademark Information.” The project, also known as “TMview,” allows users to conduct a single search of multiple databases, including data from OHIM, WIPO, and 43 trademark offices (which includes the USPTO, JPO, and KIPO). The TM5 partners expect that the trademark data from SAIC will be added to the system in 2016. TMview also provides a link to access the trademark prosecution history and all associated documents of an application file, if that information is provided by the national office.

Common Status Descriptors and ID List

To help make the search results of TMview or TM5 partner offices more understandable for users, the TM5 partners are developing and implementing “common status descriptors,” or uniform terms and icons that multiple national offices can use to signify the particular status of trademark registrations and applications. The USPTO is the designated lead for this project.

To improve global filing, the USPTO also leads a project to develop a harmonized global “pick list” of preapproved and pre-classified identifications (IDs) of goods or services and their translations, called the “TM5 ID List.” All of the TM5 partners participate in this project, as well as the national trademark offices of Canada, the Philippines, Singapore, Mexico, the Russian Federation, Colombia, and Chile. The ID List is now available online and is fully searchable. By including entries from this list in trademark applications filed in any of the participating countries, trademark applicants may avoid a refusal on the ground that the identification is indefinite or otherwise unacceptable. One significant development at this year’s TM5 Annual Meeting was a decision by the partners to expand the project to additional countries so that the TM5 ID List can be a truly global tool for use in offices around the world.

Comparison of Examination Results and Madrid Protocol Procedure

The TM5 partners are now comparing examination results for applications filed before each of the partners’ offices to see where practices might diverge or converge, in order to gain a better understanding of the partners’ practices and policies. The applications currently being reviewed were filed in all of the partner offices using the Madrid Protocol. Such analysis could provide helpful information to users, as well as to the partner offices regarding the ability to register applied-for marks.

Additionally, JPO leads a project to standardize information provided by the TM5 partner offices regarding practice and procedure related to designations under the Madrid System. This project will make it easier for global users to understand how to navigate prosecution in the various TM5 partner offices when filing via the Madrid Protocol.

A full list of the topics discussed at the TM5 Annual Meeting, as well as more information about TM5 in general, may be found on the TM5 website. SAIC will act as Secretariat in 2016 and will host the TM5 meetings, including the TM5 Annual Meeting, in China.

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