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

Wednesday Dec 30, 2015

Power and Systems Update

Guest blog by Deputy Director Russell Slifer

I wanted to take this opportunity to thank all of our stakeholders and employees for their patience and support as we worked to repair USPTO operations to full functionality. I also want to extend our sincere appreciation to the hundreds of employees, contractors, and service providers who have been working around the clock, through the holidays, to restore operation of thousands of servers, network switches, firewalls, databases, and their connections.

The USPTO contracts, through service providers, for clean uninterrupted power from state of the art, redundant, uninterrupted power supplies for our data systems. On December 22, both of these power supplies were damaged, resulting in a complete power outage to our data systems. Analysis of the damage over the last week confirms our earlier assessments and eliminates any concerns of foul play. We will take this opportunity to work with our service providers to ensure that lessons are learned and improvements are made.

We regret that any interruption occurred, and we strive to provide service equal to the best in government and industry. The USPTO continues to invest in improving our IT systems and many of these improvements allowed the agency to bounce back more quickly. I am proud to say that the USPTO teams returned operation to many systems as early as the next day, successfully restored data from our backup systems, and made all the necessary hardware repairs to return to nearly 100 percent operations by December 28th. Thanks to the tireless dedication of so many people, the USPTO is again operating on an uninterrupted power supply.

Tuesday Dec 15, 2015

USPTO Releases its FY 2015 Performance and Accountability Report (PAR)

Guest Blog by Tony Scardino, Chief Financial Officer

I’m pleased to announce that the USPTO has published its Performance and Accountability Report (PAR) for fiscal year (FY) 2015.  The PAR serves as the USPTO’s annual report, similar to what private sector companies prepare for their shareholders.  Each year the USPTO publishes this report to update the public on our performance and financial health.

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

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

On the issue of financial performance, FY 2015 marks the 23nd consecutive year that the USPTO’s financial statements have received an unmodified audit opinion.  Our clean audit opinion gives the public independent assurance that the information presented in the agency’s financial statements is fairly presented and follows generally accepted accounting principles.  In addition, the auditors reported no material weaknesses in the USPTO’s internal controls, and no instances of non-compliance with laws and regulations affecting the financial statements.

While the PAR is a record of our achievements, it is also an honest discussion of the challenges we face as an agency moving forward in FY 2016.  Among our numerous challenges and opportunities, we will continue efforts in:  managing the transition to a steady-state operation as the patent business comes closer to achieving its pendency and inventory targets; establishing an Office of the Deputy Commissioner to ensure that the growing Trademark organization has the resources and knowledge it needs to continue to modernize; attaining and maintaining full sustainable funding in an era of increased budgetary pressures; and providing IT support for a nationwide workforce with a “24/7/365” operational capability.

The PAR is a faithful snapshot of the USPTO’s FY 2015 performance.  I hope you find value in this document, and that it allows you to glean greater insights into the agency’s activities and achievements.

Tuesday Dec 08, 2015

A Historic Moment for the USPTO and Innovators Everywhere

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

It’s been a momentous time for the U.S. Patent and Trademark Office in recent weeks, as we officially opened our West Coast Regional Office in Silicon Valley on October 15 and our Texas Regional Office in Dallas on Nov 9.  And today we are announcing the hire of the first Director of our Texas Regional Office, stellar engineer and intellectual property attorney Hope Shimabuku. Her hire comes at a time of historic achievement, as we have completed the establishment of four USPTO regional offices, a commitment dating to September 16, 2011, when President Obama signed the America Invents Act into law. The regional offices embody the Administration’s commitment to promoting innovation and entrepreneurship across the United States. Of course, we at the USPTO know our work has only just begun. We can now, more than ever, engage directly and meaningfully with our nation’s inventors, entrepreneurs, IP practitioners, academics, and policymakers. And we plan to take full advantage of that opportunity.

Hope is a critical player in that mission. She brings to the Texas Regional Office nearly two decades of professional experience, with the added bonus of being a native Texan. Most recently, Hope was part of the Office of General Counsel at Xerox Corporation serving as Vice-President and Corporate Counsel responsible for all intellectual property matters for Xerox Business Services, LLC. She also worked for Blackberry, advising on U.S. and Chinese standards setting, cybersecurity, technology transfer, and IP laws and legislation. She was also an engineer for Procter & Gamble and Dell Computer Corporation, and holds a B.S. in Mechanical Engineering from the University of Texas at Austin and a cum laude J.D. from the Southern Methodist University Dedman School of Law.

As a veteran of the innovation ecosystem in Texas, she is well aware of the dynamic variety of economic giants as well as up-and-comers across the broader region, in industries ranging from semiconductors to bioengineering. She knows the emerging economic opportunities in that region, and is committed to advancing the mission of the USPTO as America’s Innovation Agency by assisting entrepreneurs to unleash game-changing innovations while creating high-paying jobs and fueling economic growth.

When Hope comes on board in January, she will actively engage with innovation communities in many states across the broader region, promoting USPTO services and initiatives that match the exact needs of those audiences. She will educate but she will also listen, the USPTO’s model of 21st Century governance. And she’ll supervise a stellar team of hard-working employees. The Texas Regional Office already boasts many Patent Trial and Appeal Board judges, with the first patent examiner class onboarding January 11, 2016. Once fully staffed, the Texas Regional Office will have more than 100 examiners, judges, and outreach and administrative staff.

The West Coast Regional Office, when fully staffed, will have approximately 125 employees, comprised of 80 patent examiners, over 25 Patent Trial and Appeal Board Judges, and outreach and administrative staff.  The office has already been active in outreach efforts with organizations across Silicon Valley, the state of California, as well as across the other states in its region.

Despite having only been officially open in our permanent location for a month, the West Coast Regional Office has already provided assistance to over 100 walk-in visitors, trained new patent examiners, provided tours for local elected officials, and hosted patent and trademark learning events. U.S. Secretary of Commerce Penny Pritzker recently visited the office and spent time meeting with employees, and the office also hosted dignitaries in a World Intellectual Property Organization (WIPO) roundtable. Prior to the official opening of the permanent space, the office was already hard at work engaging with startups and incubators, providing technology focused and industry specific workshops and presentations specific to Silicon Valley and the region. 

The Rocky Mountain Regional Office in Denver has also been busy, most recently hosting a Patent Quality roundtable on October 21, in conjunction with the IP Committee of the Colorado Chapter of the Association for Corporate Counsel (ACC) and the IP Section of the Colorado Bar Association. Members of the bar, local patent community and public-at-large are invited to come together with USPTO officials and share ideas, experiences and insights on patent quality. The Rocky Mountain, Midwest, and West Coast regional offices are now staffed with outreach officers who are dedicated to building relationships with innovators and partners in their regions.

The Elijah J. McCoy Midwest Regional Office in Detroit, staffed with 154 employees, continues to hold frequent events and actively engage with the innovation community. In 2015, since Director Christal Sheppard came on board, the office has engaged with over 10,000 stakeholders and held over 120 outreach events for audiences of senior citizen entrepreneurs to K-12 future innovators and everyone in between. The office’s Saturday seminars, free and open to the public, are a very popular event. One important focus of the Midwest Regional Office has been on K-12 STEM (science, technology, engineering, and mathematics) outreach. The office is working with local school districts and after-school programs to encourage innovation with K-12 education, particularly focusing on children and teens that, currently and historically, are underrepresented in STEM and the innovation economy. Since 2012, the office has reached over 700 K-12 students in underserved communities.

In each of the offices, we continue to look for talented and dedicated employees to join our team.  If you are interested in working for the USPTO in one of these regional offices, please refer to www.usajobs.gov for openings.

We are very excited about the important role the USPTO regional offices will play in supporting the overall mission of the Agency including ensuring easier access by innovators and entrepreneurs to resources and intellectual property protections they need to compete in today’s global economy. Look for me to provide a new update on regional office activities in the spring, as the USPTO embarks on our next phase of community engagement with four permanent regional offices up and running.

Friday Nov 06, 2015

Enhanced Patent Quality Initiative: Moving Forward

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

Patent quality is central to fulfilling a core mission of the USPTO, which as stated in the Constitution, is to “promote the Progress of Science and useful Arts.” It is critically important that the USPTO issue patents that are both correct and clear. Historically, our primary focus has been on correctness, but the evolving patent landscape has challenged us to increase our focus on clarity.

Patents of the highest quality can help to stimulate and promote efficient licensing, research and development, and future innovation without resorting to needless high-cost court proceedings. Through correctness and clarity, such patents better enable potential users of patented technologies to make informed decisions on how to avoid infringement, whether to seek a license, and/or when to settle or litigate a patent dispute. Patent owners also benefit from having clear notice on the boundaries of their patent rights. After successfully reducing the backlog of unexamined patent applications, our agency is redoubling its focus on quality. 

We asked for your help on how we can best improve quality—and you responded. Since announcing the Enhanced Patent Quality Initiative earlier this year, we received over 1,200 comments and extensive feedback during our first-ever Patent Quality Summit and roadshows, as well as invaluable direct feedback from our examining corps. This feedback has been tremendously helpful in shaping the direction of our efforts. And with this background, I’m pleased to highlight some of our initial programs under the Enhanced Patent Quality Initiative. 

First, we are preparing to launch a Clarity of the Record Pilot, under which examiners will include as part of the prosecution record important claim constructions and more detailed reasons for the allowance and rejection of claims. Based on the information we learn from this pilot, we plan to develop best examiner and applicant practices for enhancing the clarity of the record.

We also will be launching a new wave of Clarity of the Record Training in the coming months emphasizing the benefits and importance of making the record clear and how to achieve greater clarity. Recently, we provided examiners with training on functional claiming and putting statements in the record when the examiner invokes 35 U.S.C. 112(f), which interprets claims under the broadest reasonable interpretation standard and secures a complete and enabled disclosure for a claimed invention. Training for the upcoming year includes an assessment of a fully described invention under 35 U.S.C. 112(a) and best practices for explaining indefiniteness rejections under 35 U.S.C. 112(b).

Second, we are Transforming Our Review Data Capture Process to ensure that reviews of an examiner’s work product by someone in the USPTO will follow the same process and access the same facets of examination. Historically, we have had many different types of quality reviews including supervisory patent examiner reviews of junior examiners and quality assurance team reviews of randomly selected examiner work product. Sometimes the factors reviewed by each differed, and the degree to which the review results were recorded. With only a portion of these review results recorded and different criteria captured in those recordings, the data gathered was not as complete, useful, or voluminous as it could have been. As a result, the USPTO has been able to identify statistically significant trends only on a corps-wide basis, but not at the technology center, art unit, or examiner levels. We are working to unify the review process for all reviewers and systematically record the same review results through an online form, called the “master review form,” which we intend to share with the public. 

What are the implications of this new process and new form? This new process will give us the ability to collect and analyze a much greater volume of data from reviews that we were already doing, but that were not previously captured in a centralized, unified way. As we roll out this new review process the amount of data we collect will significantly increase anywhere from three to five times. This will allow us to use big data analytic techniques to identify more detailed trends across the agency based upon statistically significant data including at the technology center, art unit, and even examiner levels. Also, this new process will give us better insight into not just whether the law was applied correctly, but whether the reasons for an examiner’s actions were spelled out in the record clearly and whether there is an omission of a certain type of rejection. For example, for an obvious rejection we are considering not only whether a proper obvious rejection was made, but whether the elements identified in the prior art were mapped onto the claims, whether there are statements in the record explaining the rejection, and whether those statements are clear.

The end results will be the (1) ability to provide more targeted and relevant training to our examiners with much greater precision, (2) increased consistency in work product across the entire examination corps, and (3) greater transparency in how the USPTO evaluates examiners’ work product. You can read more about these and our many other initiatives, such as our Automated Pre-examination Search pilot and Post Grant Outcomes, which incorporates insight from our Patent Trial and Appeal Board and other proceedings back into the examination process on our new Enhanced Patent Quality Initiative page on our website.

Finally, let me close by emphasizing that our Enhanced Patent Quality Initiative is not a “one-and-done” effort. Coming from the private sector, I know that any company that produces a truly top quality product has focused on quality for years, if not decades. The USPTO is committed to no less. The programs presented here are just a start. My goal in establishing a brand new department within the USPTO was to focus exclusively on patent quality and the newly created executive level position of Deputy Commissioner for Patent Quality will ensure enhanced quality now, and into the future. With your input we intend to identify additional ways we can enhance patent quality as defined by our patent quality pillars of excellence in work products, excellence in measuring patent quality, and excellence in customer service.

To that end, we will continue our stakeholder outreach and feedback collection efforts in various ways, such as our monthly Patent Quality Chat webinars. The next Patent Quality Chat webinar on November 10 will focus on the programs presented in this blog and our other quality initiatives. I encourage you to join in regularly to our Patent Quality Chats and visit the Enhanced Patent Quality Initiative page on our website for more information.  The website provides recordings of previous Quality Chats as well as upcoming topics for discussion. We are eager to hear from you about our Enhanced Patent Quality Initiative, so please continue to provide your feedback to WorldClassPatentQuality@uspto.gov.  Thank you for collaborating with us on this exciting and important initiative!

Friday Oct 02, 2015

Icons for Intellectual Property Concepts Unveiled

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

With startup activity in the United States surging and small inventors changing the global economic landscape, entrepreneurial spirit is thriving. Each day, more people are entering a sometimes unfamiliar world of intellectual property (IP). The USPTO is committed to explaining that world, and ensuring that current and future inventors, innovators, entrepreneurs, and business owners understand IP concepts. One way we are doing this is by creating a universal language to help describe these concepts via graphic design. By putting a visual mark on common intellectual property notions, we hope to help spread awareness about IP while engaging with the public.

Drafting icons

Enter the USPTO Iconathon, a workshop to create a set of icons that universally represent intellectual property. Partnering with the Noun Project, we called on students, civic activists, artists, and intellectual property enthusiasts to collaborate, brainstorm, and sketch designs. The result: 19 new icons that are now in the public domain, ready for use around the world.

To make the language universal, it was critical to include members of the public, not typically working in the intellectual property field, to create and select icons that would resonate with all stakeholders, including international audiences.

Sitting at round tables with sketchbooks and pencils, participants tackled concepts including infringement, invention, pro se, patent pending, STEM, trademark, and counterfeit. The workshop was an opportunity for us to consider each concept and discuss how to capture it as an image that would appeal to various audiences. This type of interaction is at the root of building a culture of open government and greater understanding of government actions.

At the conclusion of the workshop, all the sketches were displayed for workshop participants and intellectual property experts to review. After all the votes were in, the group discussed the strengths and weaknesses of each of the sketches.
Thank you to all the participants who joined us in Alexandria, Virginia on August 28. Your collective talent and experience yielded high-quality, well designed icons.

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