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

Thursday May 02, 2013

USPTO’s Global Intellectual Property Academy Continues to Advance IP Awareness and Respect At Home and Abroad

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

The USPTO’s Office of Policy and External Affairs (OPEA), through its Global Intellectual Property Academy (”Academy”), is pleased to produce some key metrics from the first and second quarters of FY 2013 that quantify the advancement of its mission to promote awareness of and respect for the intellectual property rights of American businesses. During these past two quarters, the Academy expanded its educational, technical assistance, and capacity-building on IP issues to audiences both in the U.S. and abroad. Academy programs were offered to patent, trademark and copyright officials in the U.S. and abroad, including judges and IP enforcement officials, to further understanding and respect for intellectual property rights.

The Academy conducted 15 programs during the first two quarters for U.S. small and medium-sized enterprises. For example, it participated in the USPTO’s Trademark Expo, which highlights the important role trademarks play in commerce and society. The Academy also organized seminars on a variety of topics, including “What Every Small Business Must Know about Intellectual Property,” and the problems of counterfeiting and piracy.

During the first two quarters, the Academy also conducted 44 training programs for 1,937 foreign officials. One particularly important program brought approximately 300 judges here from around the world to discuss IP awareness and enforcement in a historic conference of the International Association of Judges. The Academy focused on such topics as the use of specialized courts and addressing IP infringements in the digital environment.

For more information on our activities across the first two quarters of fiscal year 2013, I invite you to see all of our performance metrics, which are available on our Policy and External Affairs dashboard.

Thursday Apr 18, 2013

Introducing Our Latest Performance Dashboard

Guest blog by Chief Administrative Trademark Judge Gerard Rogers

The USPTO has added more color to its Data Visualization Center with the addition of the Trademark Trial and Appeal Board (TTAB) Dashboard. In the spirit of open government, the TTAB dashboard is yet another way we are embracing transparency, by offering the public and TTAB users a new perspective on our operations. This inaugural TTAB dashboard provides critical information necessary for a true understanding of the various matters pending before the board, while assisting the public in assessing our performance.

The dashboard provides easy access to a variety of measures. Those include the average pendency of contested motions; the average pendency of appeal and trial cases being decided on the merits; and additional data that tracks new filings and inventory. We will update the data every quarter and provide comparisons with prior quarters. Pendency, filing, and inventory trends should be readily apparent. 

The graphics and data are presented in three main sections. First, there are key pendency measures, information on new filings with the board, and pending inventory. Second, there is information about the docket of ex parte appeals, which is the source of approximately three quarters of the final decisions on the merits issued each year by the board. Third, there is information on oppositions and cancellations, the Board’s trial cases, including the contested motions that often arise in these cases.

Users can identify trends by looking at quarterly changes in pending matters maturing to become ready for decision, files waiting in inventory, and the age of proceedings. Other helpful statistics include the number and age of contested motions becoming ready for decision during a quarter, as well as those that are in inventory at the end of each quarter. Of particular note is the breakdown, by age, of various types of motions, including motions to compel, dismiss, or seek summary judgment.

While our current pendency and inventory of both contested motions and final decisions are slightly higher than we’d like them to be, we are instituting new initiatives to improve our performance. We anticipate improvement in the near future as our newly hired judges and interlocutory attorneys continue to become acclimated to their new roles. We believe the new TTAB dashboard will prove to be a valuable resource, and we welcome any feedback on how we can make this tool even more useful. Please email any comments to our dedicated mailbox, TTABdashboard@uspto.gov. We look forward to keeping up efforts to provide additional data and maintain transparency into the future.

Wednesday Apr 03, 2013

Empowering Current and Future IP Attorneys

Guest blog by Deputy General Counsel for Enrollment and Discipline Will Covey

For many patent attorneys and agents, the Office of Enrollment and Discipline (OED) is a name only seen when registering to practice or being investigated in a disciplinary matter. During the last year, however, OED has become more engaged with both current and future IP legal practitioners in an effort to educate inquiring minds about patent and trademark procedures while creating open lines of communication with attorneys and agents currently practicing before the USPTO.

As part of our focus on future practitioners, we recently had the pleasure of welcoming to our headquarters more than 55 law students and faculty participating in our innovative Law School Clinic Certification Pilot Program. The visitors heard presentations from a wide range of USPTO personnel, including Acting Director Teresa Stanek Rea, Commissioner for Trademarks Debbie Cohn, attorneys from the Office of the Solicitor, administrative trademark judges from the Trademark Trial and Appeal Board (TTAB), Deputy Chief Administrative Patent Judge James T. Moore from the Patent Trial and Appeal Board (PTAB), personnel from the Office of Patent Legal Administration (OPLA), attorneys from the OED, and human resources specialists.

The day-long program included an opportunity for participants to observe arguments by counsel in a TTAB opposition proceeding, questioning by the panel of judges, and a post-hearing discussion on effective presentation of arguments. In addition, program participants were able to engage with each other and USPTO personnel in various roundtable discussions.

The USPTO has designed this growing program to introduce future practitioners to the agency. It affords them the opportunity to gain experience by practicing in patent and/or trademark matters before the USPTO, under the guidance of a Law School Faculty Clinic supervisor. Specifically, students counsel clients, prepare applications, and respond to office actions on a pro bono basis. Under OED’s leadership, the program has grown tremendously: from six schools in 2008 to 28 schools today. About 880 law students have participated in the program to date. You can learn more about the program and the latest news about it on our website.

Our focus on current practitioners includes our recently published new ethics rules, known as the USPTO Rules of Professional Conduct. Designed to make life easier for the more than 41,000 practitioners who interact with our agency, they are based upon the American Bar Association’s Model Rules of Professional Conduct. The ethics rules are the first major update since 1985 and reflect the rules in place in 49 states and the District of Columbia. We spent a great deal of time reaching out to stakeholders in the IP community to balance the need of applicants as well as practitioners. Additionally, I am proud to say that the latest rulemaking eliminated the annual practitioner maintenance fee.

Our team of attorneys and staff has also been busy keeping up with the changes in patent law. Specifically, the registration exam for patent attorneys and agents has been updated four times in the past two years to reflect Supreme Court decisions, other relevant case law, and the Leahy-Smith America Invents Act (AIA). The latest update was released yesterday (April 2, 2013). It includes the final provisions of the AIA, such as First Inventor to File, which took effect on March 16, 2013.

Our entire OED team is committed to ensuring that current and future practitioners are equipped with tools essential to keeping America’s innovation engine running.

Wednesday Mar 20, 2013

Examiner Training Continues on First Inventor to File

Blog by Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea

The much anticipated First-Inventor-to-File (FITF) provision of the Leahy-Smith America Invents Act (AIA) became effective March 16, 2013. The new system improves the transparency and fairness of our patent system. By harmonizing our filing system with the rest of the world’s industrial leaders, innovators competing in the global economy can more easily acquire venture capital, begin constructing their inventions, and seek out new markets at home and abroad.

The USPTO has already begun conducting examiner training on the FITF provision for our examining corps of more than 8,500 employees. The FITF training addresses critical changes to 35 U.S.C. §102 that redefine both prior art and the effective filing date afforded applications. 

The training entails a three-part approach, recognizing applications to be examined under the AIA FITF law will gradually rise to the top of their dockets. For most examiners, this will not occur until this summer.

The first phase runs through April 4, 2013, and offers a three-part overview: 

  1. An introductory video that familiarizes the examiners with the AIA FITF statute and highlights some of the major changes;
  2. A live, lecture-style training session that delves deeper into rejections under 35 USC §§102 (a) (1) and (a)(2) and the exceptions to these rejections under 35 USC §§102(b)(1)(A-B) and (b)(2)(A-C), showcasing practical examples of each; and
  3. A follow-up video that re-emphasizes the statutory framework and provides additional practical examples of the provisions discussed in the live training.

A computer-based version of the live training is also being prepared as an online reference for examiners.

The second training phase consists of “just in time” or one-on-one training with an AIA FITF subject matter expert. It is intended to assist examiners in applying the provisions to particular applications in need of immediate examination, such as prioritized applications. This phase will run prior to the commencement of the third phase of training, a comprehensive course in July.  Because applications filed on or after March 16, 2013, will take some time before being ready for examination, it is not expected that many employees will require this intermediate training.

The third and final phase in July 2013 will provide all examiners with an in-depth understanding of the FITF provisions, including how they impact prosecution. It will consist of small workshops geared toward greater interaction between examiners and FITF subject matter experts, providing examiners the opportunity to have specific questions answered.

All of the examiner training material on the FITF provisions of the AIA will be made available to the public on our AIA microsite.

Friday Mar 01, 2013

A New Chapter for Protection of Industrial Design for the United States

Blog by Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea

President Obama’s signature on the Patent Law Treaties Implementation Act of 2012 marked the culmination of a long effort to empower American industrial designers to protect their innovative designs in many of the world’s most active markets. Under this new law, applicants can file a single international design application to acquire global protection. The law serves as the implementing legislation for both the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (“the Hague Agreement”) and the Patent Law Treaty. Its passage late last year paved the way for the U.S. to become a party to the Hague Agreement within the next year.

The Hague Agreement in basic terms is an international registration system allowing industrial design owners to apply for protection in a number of states and/or intergovernmental organizations (such as the European Union) using a single international design application. American industrial design creators—who currently prepare and file separate applications for each jurisdiction—will now be able to file a single, English-language application with the World Intellectual Property Organization (WIPO) directly, or indirectly through the USPTO.

Why is this so important for American businesses? In short, it saves money. This new process will also protect small and medium sized businesses that lack a global footprint by enabling them to easily and swiftly acquire design protection in multiple markets.

U.S. membership represents the culmination of about two decades of hard work and dedication by many still at the USPTO, many who have since left, and by a variety of stakeholders in the design community. Of great importance to the design community now is that U.S. membership and participation in the Hague Agreement will serve as a catalyst for membership by other countries—large and small alike—that are actively considering membership, further fostering the protection of innovation in industrial design in a significant way.

U.S. membership is particularly timely because the importance of industrial design in a complex world is continually increasing. Whether in mobile technologies, in manufacturing, or in household appliances, design features increasingly bridge the gap between complex computer operations and a user-friendly interface. Industrial design makes products intuitive, aesthetically appealing, and comfortable to handle.

The USPTO applauds the many individuals whose hard work culminated in President Obama’s signature to the legislation implementing U.S. participation in the Hague Agreement. We are proud to be at the forefront of this next step in improved access to cost-efficient protection for America’s industrial designers, large and small.

Tuesday Feb 12, 2013

Wanted: Your Ideas and Feedback About "RCEs"

Blog by Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea

During the last few years the USPTO has developed and implemented many significant changes to enhance the quality and efficiency of the examination process. We understand that resolving issues as early as possible during prosecution benefits applicants and the public. At the same time, we recognize that many inventions presented to the office are becoming increasingly complex, and may require more prosecution steps to complete a thorough and robust examination. Filing a Request for Continued Examination (RCE) is one of several tools available for stakeholders to resolve issues.

The USPTO currently has a backlog of applications awaiting examination after an RCE has been filed, and we’re actively pursuing efforts to address this backlog. But as we’re doing that, we’re also testing initiatives that may reduce the number of RCEs that need to be filed. For example, the office has initiated two pilots—the After Final Consideration Pilot (AFCP) and the Quick Path IDS (QPIDS) pilot—designed to obviate the need to file some RCEs. The AFCP provides a limited amount of time for an examiner to give more consideration to submissions made under 37 CFR 1.116. The QPIDS pilot is intended to reduce pendency and applicant costs when an information disclosure statement (IDS) is filed after payment of the issue fee. To date about 600 RCEs have been avoided due to the QPIDS pilot. Both pilots are currently set to end on March 23, 2013.
 
To further assist and help shape future RCE backlog reduction efforts, we want to learn more about the root causes for RCE filings and related pressure points experienced by our stakeholder community. In close collaboration with our Patent Public Advisory Committee (PPAC), we recently initiated an RCE Outreach program which seeks to gather input from stakeholders about RCEs. The purpose of this effort is not to eliminate RCE practice or in any way disadvantage it, but rather enable applicants to use RCE practice when needed and avoid it when equal or better options may be available. The RCE Outreach program Web page has a wealth of data about RCE filing and prosecution behaviors, an online collaboration tool for submitting comments, and a series of questions about RCE practice. I invite you to become part of the conversation and future solutions. The RCE Outreach initiative will also feature a series of roundtables and smaller focus sessions in Silicon Valley, Dallas, New York, Chicago, and at USPTO headquarters in Alexandria, Va. As they become available, the details on how to participate will be listed on our RCE Outreach Web page.

Friday Feb 08, 2013

The USPTO Thomas Alva Edison Visiting Scholars Program Celebrates its First Year

Blog by Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea

I’m happy to report that the first year of our Thomas Alva Edison Visiting Scholars Program has been a great success. The program brings leaders in academia to the USPTO to pursue research projects, drawing on our extensive resources and specialized expertise, with the aim of furthering their intellectual pursuits as well as contributing to the USPTO mission. Since its debut on January 18, 2012, we’ve had the privilege of working closely with three distinguished academics, and the benefit of obtaining their input on a number of issues of key importance to USPTO functions.

Our first Edison Scholar was Professor Jay Thomas of the Georgetown University law faculty. While at the USPTO, Thomas studied and made proposals for new administrative practices that would modernize and improve the patent disclosure system. He also reviewed existing quantitative indicators of agency performance and patent quality, identifying potential points of improvement. Finally, Thomas has been developing new ways for the USPTO to make it easier for applicants to comply with disclosure duties, attempting to minimize concerns regarding inequitable conduct while increasing the quality of information provided to the agency.

Professor Peter Menell of Berkeley’s Boalt School of Law joined the USPTO as an Edison Scholar in June 2012. Menell identified best practices for improving patent claim clarity, which will facilitate patent prosecution, improve overall patent quality, provide better public notification of the scope of a protected invention, and reduce litigation disputes over claim construction. He has also worked on IT tools that can potentially help create an unambiguous prosecution history and searchable database of claim "topography." In addition, Menell lent his expertise to discussions of patentable subject matter as it relates to computer software, contributed to developing a mechanism to enable district judges to easily determine the status of reexamination proceedings, and provided input to a policy paper on digital copyright issues.

Our third Edison Scholar, Professor Jay P. Kesan of the University of Illinois, focused primarily on research related to international patent harmonization. Specifically, Kesan studied how the grace period available under 35 USC § 102 relates to the disclosure of useful information, and the pace and impact of cumulative innovation. Kesan also contributed empirical research related to patent law changes, as well as issues related to innovation, technology transfer, and the IP transactional environment. An additional focus of Kesan’s work was investigating how to develop a standardized set of metrics associated with patent office quality, and identifying circumstances in which such a set of metrics may improve prospects for international work-sharing.

The Edison Scholars devote six months or more to the USPTO on either a full or part-time basis. On behalf of the USPTO, I thank our three inaugural scholars for their outstanding contributions over the last year.

Thursday Jan 31, 2013

New Digital Copyright Principles Just Published

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos

As many readers know, I've served on the World Economic Forum's Global Agenda Council on IP for the past few years. This group of IP experts from across the globe promotes understanding of the role IP rights play in driving economic development, creating jobs and opportunity, raising living standards, and empowering underserved communities in both emerging and industrialized regions.

The council has been working recently on issues around copyright in the digital age. As part of this effort, the council just published a set of Digital Copyright Principles for policy makers to consider as they strive to adapt the traditional balances in the copyright system in a changing world. The council also identified a set of overarching trends driving these changes.

The Digital Copyright Principles seek to promote a balanced view of public benefits and private rights, with copyright as a means to achieve important societal ends. By focusing on what we ultimately want copyright to accomplish, the principles seek to emphasize the common ground between different groups, with the aim of moving forward a principle-based discussion.

I invite readers to review the Digital Copyright Principles and discuss with your colleagues. Together we can build a system that realizes the full potential of the digital age.

Wednesday Jan 30, 2013

Working Together on Chinese Trademark Issues

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos

Many IP issues in China receive high-profile attention in the media. However, quiet efforts by both countries’ leaders to develop and promote a long-range shared vision do not as a rule make the news. A good example is USPTO’s work with the Chinese Trademark Office (CTMO) and the Trademark Review and Adjudication Board (TRAB), a model of successful, sustained technical cooperation. The USPTO has worked closely and intensively for several years with these offices, exchanging best practices and candidly discussing challenges. This engagement, in turn, has led to several positive developments.

For example, USPTO collaborated with and supported CTMO’s effort to increase transparency through projects such as creating an online English-language trademark registration to assist companies conducting preliminary searches, as well as publishing for an English-speaking audience its research reports on the protection of foreign well-known marks. Thanks to these two efforts, U.S. companies can now conduct easy, no-cost preliminary trademark searches in English, and they can gain a better understanding of the way China protects well-known marks.

USPTO has also exchanged best practices with CTMO and TRAB examiners in substantive areas of examination, such as sound and single color mark examination, by both providing training and Chinese translations of sections of the USPTO Trademark Manual of Examination Procedure for reference by CTMO examiners. USPTO, CTMO, and TRAB have held exchanges on trademark administration and IT issues over the years, and during that time the CTMO has drastically reduced its pendency.

Another notable area of cooperation has been on the topic of bad faith filings, also referred to as “trademark squatting”the practice of a party intentionally filing for another party’s trademark. In 2010, the USPTO joined together with the Japan Patent Office (JPO), The Office of Harmonization for the Internal Market (the European Union’s Trademark Office), and the CTMO to launch a series of technical seminars in Beijing on that issue, intended to identify useful features of national trademark systems that can be implemented as best practices in other countries.

Following the collaborative seminars, we were pleased to see that China’s Supreme People’s Court newspaper recently highlighted the results of its study on bad faith filing issued in December by the Beijing Number 1 Intermediate People’s Court. The study counseled courts to deter squatting activities when they interpret and apply the law, as well as to admit evidence with the goal of prohibiting this activity. In conjunction with this report, the court issued judgments in six cases against trademark squatters, sending a message about the importance of honest trading.

We have also followed the issue of bad faith filing as China’s legislative branch tackles the problem. On December 31st, China’s National People’s Congress published a draft of China’s proposed new trademark law for review and comment. One of China’s goals in revising its trademark law is to address the issue of bad faith trademark filing. We will continue to work together with China on this issue.

The Chinese have a saying that the longest journey begins with the first step. We believe the steps the U.S. and China have taken together have improved the IP system for all.

Friday Jan 25, 2013

Trademark Dashboard For Quarter 1 Is Ready

Guest blog by Commissioner for Trademarks Deborah Cohn

It’s time again to share with you our Trademarks performance metrics for the last quarter, and I hope you’re as pleased as we are with the results. I should note that in response to your requests, we’ve added a new measure to the report. The application filing basis – use in commerce, intention to use, or based upon a foreign application or registration – will be reported as a percentage of new application filings. 

We’re proud to report continued high performance in our Trademark business unit. Trademark application filings continue to increase, following the record set last fiscal year when more new applications were filed than any other year.

Our record performance is the result of a number of factors including greater use of the systems, tools, and resources necessary to manage new application filings electronically and by our dedicated and qualified employees who do their best to manage them well. The Trademarks performance dashboard has been updated to showcase our record of performance results. I invite you to take a look at how the Trademarks team is working to serve you and look forward to your feedback. 

Our three quality indicators, which set high standards for examination quality, show mixed results in the first quarter. Results for first and final action compliance are slightly less than target, demonstrating the challenge in maintaining consistently high standards. Our newest indicator, ‘exceptional office action’ continues to exceed expectations for evaluating the ‘excellence’ of the examiner’s writing, evidence, and search strategy in preparing the office action. Quality results are reinforced by constant feedback, specialized training, and online tools and manuals to ensure the quality of the trademark register.

Every month over the last quarter, first action pendency stayed in the target range of 2.5 to 3.5 months from filing to issue a first action. Pendency to registration continues to remain at historically low levels. Disposal pendency – the time from when an application is filed until a trademark is registered or abandoned – has been under 12 months for the past three years – another record. This is due in part to the progress made from the use of TEAS Plus applications and greater acceptance of electronic filing, which now comprises more than 75 percent of all applications processed to disposal.

We welcome any feedback you have on how we can improve this dashboard. Simply email a comment to our dedicated mailbox. We look forward to hearing from you.

Tuesday Jan 22, 2013

Using a Data-Driven Approach for Quality Improvements

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos

I write frequently about patent quality. Quality increases certainty and strengthens the whole innovation ecosystem. Improving patent quality was a key element in building bipartisan support for the America Invents Act, which we are diligently implementing. Our patents team at USPTO met both quality and production targets last year, and today, I’d like to showcase their efforts in seeking continuous improvement in the quality and efficiency of patent examination.

The USPTO is a data-rich agency. The patents team monitors over 90 measures for Quality Index Reporting (QIR). The QIR data helps us spot trends, understand unique technological challenges that impact quality and/or efficiency, and provide management information that can be used to identify areas for improvement. The QIR data allows us to do some remarkable work in improving quality. This past year alone, front line managers used them to give specific training to examiners in restriction practice, art specific training, and compact prosecution to name just a few.

Based on stakeholder feedback, the management team focused on three technology centers in our Patents organization, and I would like to share the approach they took, the results they have achieved, and the course they continue to follow. The specific groups we focused on were the pharmaceutical composition area of TC 1600, the business methods area of TC 3600, and the medical device areas of TC 3700.

In TC 1600, deeper dives into the data revealed instances of significant variance between examiners in allowance rates. The Technology Center initiated open discussions between examiners and supervisors to identify root causes for this variance. Through these discussions, opportunities for improvement surfaced including more concentrated efforts to identify allowable subject matter and negotiate allowances, and more consistent treatment of secondary considerations of obviousness. An action plan was developed, including an external outreach component utilizing the Biotechnology Customer Partnership (BCP), an awareness campaign, and both individual and group training sessions. It is important to note that no particular allowance rate was prescribed in any way, and managers clarified that the purpose of the training was to help facilitate the allowance of allowable subject matter, as well as the clear rejection of claims and subject matter that is not allowable.

In the business methods area of TC 3600, a concern was expressed that examination practices were not consistent with the principles of compact prosecution, citing instances of multiple non-final rejections, reopening of prosecution after final rejections, and more reversals at the Patent Trial and Appeal Board (PTAB) compared to other art areas. Concerns were also expressed that examiners were unduly strict in allowing claims in this area. After a careful look at the data, we discovered these concerns were not well founded.

In particular, data for fiscal year (FY) 2012 show that only 2.4 percent of the total actions in the business methods area were second or subsequent non-final actions. The data also show that only 2.2 percent of final rejections made in FY12 in this area were reopened, compared to 2.8 percent across the entire patent corps. As far as the performance at the PTAB, the business methods area had an affirmed and affirmed-in-part rate of 70 percent compared to a corps average rate of 64 percent.

So the data showed that compliant prosecutions as well as affirmance rates at the PTAB are actually above corps averages, suggesting that those applications with allowable subject matter are being allowed. And those that should be rejected are being rejected. This indeed provided an opportunity for the applicable stakeholders to improve their understanding of the facts, and perhaps reconsider their own activities.

To further advance our efforts toward continuous improvement, and to ensure both consistency and correctness at the individual case level, we held “town hall” meetings with applicable examination staff and management, pinpointing where we could benefit from additional training. Roundtable discussions and a business method partnership meeting enabled us to obtain input from external stakeholders. All this is continuing to help TC 3600 ensure correct examination decisions across the board.

Finally, the third area, medical devices, made a targeted outreach effort; first to stakeholders at an April 2011 conference at Stanford University, followed by initiation of a medical device partnership designed to open lines of communication and improve stakeholder responsiveness. Initial results from our actions are encouraging and the team looks forward to identifying new areas for improvement. 

Across these three TCs, a key component in our action plan was the proactive and judicious use of USPTO data, coupled with participation by internal and external stakeholders. Mutual understanding of the challenges faced by the innovation community, and those faced by the patent examination corps, will make the system more robust to handle sector-specific technological challenges in a way that improves stewardship of the IP system as a whole.

Tuesday Jan 15, 2013

Interviews and Patent Quality

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos

We talk a lot and do a lot at USPTO about patent quality. We also talk a lot and do a lot about interview practice. And we have always assumed a relationship—well-documented interviews lead to high quality patents by enhancing understanding and issue-resolution for both applicants and examiners. But we have never actually looked at the data to test this assumption.

Until now.

We recently ran the data to understand whether there is a correlation between interviews held in patent applications and patent quality. We analyzed data on patent quality in applications where interviews were held as well as where interviews were not held (data from over 22,000 applications from the past five years was reviewed).

The findings, which are statistically significant, show that interviews conducted prior to final disposition (allowance or final rejection) of the application increase the probability that the subsequent action will be in full compliance with all applicable quality standards. The data shows that interviews help decrease both improper allowances and improper rejections by approximately 40 percent compared to applications without interviews prior to the final disposition.

The correlation is not surprising, but its degree certainly is impressive. A 40 percent improvement is almost always worth investing in. And while other factors may contribute to the correlation, it is substantial in any event.

Improving patent quality was also one of the stated goals of the Leahy-Smith America Invents Act patent reform legislation signed into law by President Obama in 2011. As the USPTO continues to implement that landmark legislation, we can now add interview practice to the list of actions that verifiably and measurably, improve quality, while saving time and money, and reducing misunderstandings and rework.

Applicants and examiners—please reach out and suggest an interview whenever it makes sense. For quality's sake.

Friday Jan 04, 2013

Big Improvements to Our Online TMEP

Guest blog by Commissioner for Trademarks Deborah Cohn

We recently introduced a new, more user-friendly interface for the Trademark Manual of Examining Procedure (TMEP). If you haven’t had the opportunity to use it yet, I’m confident you’ll be pleased with it. The TMEP provides trademark applicants (and their attorneys and representatives) and our trademark examining attorneys with a reference on the practices and procedures for prosecution of applications to register marks with the USPTO.

The new interface offers users a more sophisticated and efficient method of getting needed information quickly. Searching is simplified so it is more similar to searching the Internet. When a search is executed, users receive weighted results which can give added focus. The display can also be modified to suit user needs. Browsing the TMEP is simpler, with a table of contents that can be hidden. In this way, the user can maximize the screen space available to display the content. Another recent, behind-the-scenes enhancement simplifies and shortens the process to publish the TMEP, allowing us to serve you better with more frequent updates.

The first publication using the new system took place on October 31, when we published the October 2012 update of the TMEP. With that update, we now identify the TMEP by the month and year in which it is issued (i.e., October 2012). This is a change from prior versions, which were identified using edition and revision numbers. At a roundtable I attended in Detroit in mid-November, practitioners told me they were very pleased with the new interface. One reported that it was the best IT improvement we have made to date.

We hope you’ll feel the same and we look forward to hearing your feedback on the new interface and TMEP update. Send your thoughts about the new TMEP to us by email at tmtmep@uspto.gov.

Thursday Dec 20, 2012

Congress Acts on AIA Corrections Bill

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

While the 112th Congress will be focusing much of its attention on more prominent issues before it adjourns, a “technical corrections” bill to amend provisions of the Leahy-Smith America Invents Act (AIA) passed the House this past Tuesday and is now being considered by the Senate. Even though the USPTO has not yet completed issuance and implementation of all the various rules mandated by the act, stakeholders and the USPTO have identified corrections, clarifications, and improvements to the law that require congressional action.

The bill, H.R. 6621, makes a number of corrections and improvements to patent law which have been identified as necessary or advisable during the public reviews of proposed rulemaking, as well as discussions and consultations that occurred during the past year. The proposed changes include amendments to specify effective dates where they were omitted; correcting drafting errors and omissions; fixing “dead zones” that inadvertently make it impossible to seek Post Grant Review (PGR) or Inter Partes Review (IPR) during certain time periods; clarifying patent term adjustments prospectively; eliminating unnecessary limits on who may file an international application designating the United States; clarifying patent and trademark fee management issues; and clarifying when a derivation proceeding can be instituted. The bill also includes provisions that better coordinate the terms of Patent Public Advisory Committee (PPAC) and Trademark Public Advisory Committee (TPAC) members—to address issues that have been discussed in those bodies in recent years and highlighted due to the additional responsibilities for PPAC required by the AIA related to Section 10 fee setting authority. Finally, the bill also requires the USPTO to report on the handling of pre-1995, pre-Uruguay Round applications that have now been pending for more than a decade and a half.

This bill does not address one issue related to the estoppel standard for possible federal court litigation following the completion of a post-grant review proceeding. Clarity is needed to ensure that the provision functions as Congress intended and I am hopeful it will be addressed in a future bill in the next Congress.

It is important to move ahead this year with this pending legislation containing helpful amendments that will add certainty to the statute, as implementation of the far reaching changes in the AIA continues.

Tuesday Dec 18, 2012

Progress Continues at our Four Satellite Offices

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos

We’re making steady progress in our efforts to get all of our satellite offices up and running as quickly as possible. We recently announced that our Dallas-Fort Worth regional satellite office will be in the Terminal Annex Federal Building in Dallas. It’s a great location that’s well-suited to serve as a home for our employees, and to support the innovation community in Texas and across the southern U.S. We are already underway identifying leadership who know the unique contours of the business landscape to staff Dallas-Fort Worth, as well as our other new satellite offices.

In Silicon Valley, for example, our new director Michelle Lee is already working as our liaison with West Coast innovators, utilizing her vast experience advising highly innovative companies on legal, technological, and business issues to help ensure the success of this new office. Meanwhile, we’re taking a closer look at the communities within Silicon Valley to identify and secure the best location for a permanent office, and for near term temporary space.

In Denver, the General Services Administration is renovating our future office space. In the meantime, we have found temporary space in Lakewood, Colorado to house our Board judges and senior leadership. When we’ve made personnel choices there I will let you know.

Last but surely not least is our Detroit office, which continues to exceed our expectations. We opened only this past July, but we already have 51 patent examiners and 10 administrative judges on board. This puts us ahead of pace to meet our goal of 100 examiners and 20 judges before the end of our first year of operation. And while most of the focus of our Detroit office has been on patents, our satellite offices also serve the trademark community. In fact, Commissioner of Trademarks Debbie Cohn recently met with stakeholders at our Detroit office for a meet-and-greet prior to a USPTO-INTA Roundtable. She reports there was a great deal of interest in Trademark operations and our public outreach.

Our entire team is committed to ensuring our satellite offices are more than just an extension of the USPTO, but are also a valuable force in the economic and innovative environment in their regions. With a physical presence in every time zone, we are now closer than ever to our stakeholders across the country. This progress report highlights how far we’ve come and how we’re advancing.

United States Patent and Trademark Office
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