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PTAB’S Quick-Fixes for AIA Rules Are to Be Implemented Immediately
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee
In recent appearances before the Technology Policy Institute and the IPO Education Foundation’s PTO Day, I highlighted the popularity (at least based upon number of filings) of our Patent Trial and Appeal Board (PTAB) America Invents Act (AIA) trials over the last three years. I also promised a series of rulemakings later this year so we could seek public input on how we could make these proceedings even better. We are well along in the process of issuing our first set of rules and I want to give you a hint now of what is to come.
The USPTO issued rules and guidance for the new AIA proceedings in 2012. Despite best efforts, we never envisioned that our rules or guidance would be perfect at the outset, but instead anticipated making refinements along the way. In June 2014 we asked for your input on how these proceedings were working. I am pleased to tell you about the feedback we collected and how that feedback is shaping the direction of our AIA trials going forward.
In response to our request for input, we received 37 written comments. Members of the Board have carefully reviewed your thoughtful comments about ways that we can improve the AIA proceedings. To implement some of the changes spurred by your input we have devised a three-part roll-out plan.
This spring we plan to issue a first rule package containing what we call "quick fixes"—changes of simple scope that will immediately improve the trial proceedings. Later this summer, we will issue a second proposed-rule package containing more involved changes to our Patent Trial and Appeal Board Trial Rules that govern the conduct of the AIA trial proceedings. We also plan to modify our Trial Practice Guide that provides guidance to the public concerning various aspects of PTAB practices in AIA trial proceedings. The Trial Practice Guide advises the public on the general framework of the rules, including the structure and times for taking action in AIA trial proceedings. These modifications will clarify our trial operations and by implementing the roll-out in stages, we aim to bring improvements to our proceedings as quickly as possible.
As to our first “quick fix” rule package, I wish to highlight some of the improvements you can expect to see. Many of you advised us that fifteen pages for a motion to amend that includes a claim listing is not sufficient to explain adequately why the amended claims are patentable. Similarly, others noted that fifteen pages for a petitioner’s reply brief is not a commensurate number of pages to respond to a patent owner’s response. We have heard you, and we agree. One of our quick-fix changes will nearly double the number of pages for a motion to amend, granting up to twenty-five pages for the motion along with the addition of a claims appendix (with a commensurate amount of additional pages for the opposition and reply briefing). Another change will nearly double the number of pages for a petitioner’s reply brief, granting up to twenty-five pages. Notably, even before these two changes appear in the first rule package, judges will begin implementing them through scheduling orders effective immediately.
As to our second rule package of more involved changes, we are considering proposing a number of other revisions to rules including: further modifications to the motion to amend process; adjustments to the evidence that can be provided in the patent owner preliminary response; and clarification of the claim construction standard as applied to expired patents in AIA proceedings. We also are considering several other changes, including adjustments to the scope of additional discovery, how to handle multiple proceedings before the Office involving the same patent, use of live testimony at oral hearings, and whether the parties should be required to make a certification with their filings similar to a Rule 11 certification in district court litigation.
Additionally, regarding motions to amend, we are contemplating proposed changes to emphasize that a motion for a substitutionary amendment will always be allowed to come before the Board for consideration (i.e., be “entered”), and for the amendment to result in the issuance (“patenting”) of amended claims, a patent owner will not be required to make a prior art representation as to the patentability of the narrowed amended claims beyond the art of record before the Office. Of course, the duty of candor and good faith requires the patent owner to make of record any additional prior art material to patentability known by the patent owner. These contemplated changes would be intended to more noticeably limit the burden on the patent owner, even though the patent owner is the party moving for the change in the patent.
As with the revisions we are making via the first rule package, the changes being considered in our second rule package are the direct results of your feedback. And because we plan to issue the changes in the second rule package in the form of a proposed rule, you will have an additional opportunity to give your feedback before we finalize them.
As to our Trial Practice Guide, we are contemplating proposing even more updates and refinements. Although we are not prepared to change the scheduling order to specify that live testimony will automatically be allowed at a hearing, we will address the subject of live testimony to bring greater clarity to its usage. Specifically, because there has not yet been a current practice of denying motions for live testimony and we do not want to diminish the possibility of live testimony, we plan to emphasize the availability of live testimony upon the grant of any such motion for live testimony, except where not suitable.
Further, we understand that the existence of ample discovery to establish the real-party-in-interest (RPI) of the petitioner has been a concern. And we want to be sure that the availability of appropriate RPI evidence does not pose a problem for patent owners. While the Board increasingly has been granting motions for such discovery, we plan to update the Trial Practice Guide to emphasize the importance of RPI discovery as to determinations of standing and as to possible later estoppel consequences.
Lastly, to the extent that there has been concern that the judges participating in a decision to institute a trial may not be completely objective in the trial phase, we are considering developing a single-judge pilot program for institution. Under this pilot, a single judge would make the decision on whether to institute a trial. Two new judges would be added to the panel only when and if a trial is instituted. In the interest of efficiency, the first judge would remain on the panel; but in the interest of having “fresh eyes,” the two additional judges would not have participated in the matter prior to institution. After running this pilot for a select number of cases, we would study the results to determine the approach to follow in the future.
In closing, we appreciate your input on our AIA trial proceedings thus far. Our intention is to continue this iterative approach of seeking your input after this round of changes has been in effect for some time. We are committed to fulfilling our Congressional mandate to provide a quick, inexpensive alternative to district court litigation and improve patent quality and to ensuring that the AIA trials are as effective and fair as possible. And we can do so only by regularly monitoring and correcting our course as usage of our AIA trials evolves in time.
Posted at 10:18AM Mar 27, 2015 in ip |
USPTO Satellite Offices Bring Resources to Innovators
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee
Three years ago, we started expanding USPTO operations across the country to Dallas, Denver, Detroit, and Silicon Valley, bringing resources to the doorsteps of innovators. These satellite offices support our core mission of fostering American innovation and competitiveness by offering services to entrepreneurs, inventors, and small businesses, while effectively engaging communities and local industries.
Our satellite offices allow the USPTO to recruit a diverse range of talented technical experts and build the workforce necessary to reduce the current patent backlog, ensure pending applications are examined in a timely manner, and speed up the overall examination process. These operational improvements in turn allow businesses to move their groundbreaking innovations to market faster, provide incentive for investment in new technologies, and directly contribute to the creation of new jobs that grow and sustain our economy.
Since my last blog update regarding our satellite offices, there have been significant developments. I am excited to welcome Dr. Christal Sheppard to our USPTO team as the new regional director for the Elijah J. McCoy satellite office in Detroit. Christal previously served as chief counsel on patents and trademarks for the House Judiciary Committee, and since leaving Capitol Hill, she has been an assistant professor at the University of Nebraska College of Law and a member of the USPTO Patent Public Advisory Committee. She will use her expertise to build on the partnerships the office has already established with stakeholders, the local community, and organizations in the Detroit area.
Our Rocky Mountain Regional Office in Denver continues to reach out to independent inventors, entrepreneurs, and small businesses with events like its Saturday Seminar series that provide valuable information on intellectual property protection and the process for obtaining patents and registering trademarks.
Denver Regional Office Director Russ Slifer says, “The reception and excitement for the USPTO in Colorado has greatly exceeded my expectations. The Rocky Mountain region has a strong innovation community including universities, small and large businesses, and independent inventors. We are passionate about building collaborative relationships to provide the education and resources needed to help the innovators in the region continue to be competitive.”
Our West Coast Regional Office in Silicon Valley is engaging the community and providing services to one of the most active patent filing communities in the world. After holding our first Cybersecurity Partnership Meeting last fall in Silicon Valley, we continue to gather stakeholders’ thoughts, ideas, and insights in the cybersecurity field as well as other industry sectors across the region. We are extremely pleased that the San Jose City Council unanimously approved our final schedule and lease terms and that construction of the West Coast Regional Office is underway.
Silicon Valley Regional Office Director John Cabeca says, "There continues to be an outpouring of support across the innovation ecosystem for the USPTO to establish a permanent west coast office in the Silicon Valley and we are eager to see our permanent facility open in San Jose City Hall. The community is very engaged and I look forward to working with stakeholders, at all levels, to bring educational programs tailored to the specific needs of the region."
For the regional director of our Texas Regional Office, we recently posted and closed a job announcement, and I look forward to updating you once a candidate has been selected. As part of our targeted outreach campaign to the unique entrepreneurial community in Texas, we are reaching out to small businesses and startups across the state. This month, I shared some our 21st century initiatives at the annual SXSW Festival in Austin, where Commerce Secretary Penny Pritzker and I spoke about how the government is adapting to the rate and pace of technology–and fueling innovation–by retooling our patent system. I look forward to opening the permanent space for our offices in Dallas in the Terminal Annex Federal Building later this year after renovations and infrastructure updates are completed.
To date, we have hired more than 300 employees at our satellite offices, and we will continue to hire patent examiners and administrative patent judges for them. Open positions will be posted on http://www.usajobs.gov/, keyword: USPTO.
I strongly believe in the strategic importance of our satellite offices serving their regional innovation and intellectual property communities. Working with local communities, our offices put tools into the hands of individuals who need assistance at every step of the business lifecycle. I am proud of the progress we have made over the last three years, and can’t wait to open our permanent spaces in Dallas and Silicon Valley as we continue our efforts to serve entrepreneurs from coast to coast.
Posted at 12:12PM Mar 18, 2015 in USPTO |
USPTO Submits Fiscal Year 2016 Congressional Budget Justification
Guest Blog by Chief Financial Officer Tony Scardino
Each year, the USPTO submits a budget justification to Congress in order to access the resources we need to operate. I’m pleased to announce that the USPTO has published its fiscal year (FY) 2016 Congressional Budget Justification.
The FY 2016 Congressional Budget Justification provides detailed information on how the USPTO plans to spend its funds in the upcoming fiscal year. Our fiscal year 2016 budget documents our requirements to enhance quality and aggressively continue reducing patent application pendency and backlog. This helps bring innovations to the marketplace and create jobs for the American people. It also enables us to continue maintaining trademark application pendency; carrying out the provisions of the America Invents Act; providing domestic and global intellectual property leadership; and modernizing our information technology (IT).
In FY 2016, the USPTO expects to collect—and has requested an appropriation of—$3.2 billion in fee revenue, which is derived primarily from patent and trademark fee collections. This is approximately $250 million below our FY 2015 appropriation, but approximately $65 million above what we currently anticipate collecting in FY 2015.
The USPTO FY 2016 budget tells the story of a dynamic organization that is continually adapting to the ever-changing environment in which we operate. Our FY 2015 and 2016 estimated fee collections have been modified from the projections included in the FY 2015 President’s Budget. Notably, projected patent fee collections for FY 2015 and the out years have been lowered to reflect new assumptions about the growth rate in patent application filings—due to factors such as the global economy and international filings, recent judicial rulings, and internal process changes—producing a $1.2 billion reduction in estimated patent fee collections over the six-year period from 2014-2019.
At the same time, however, our budgetary requirements—what we plan to spend—for both this year and next have increased from what we had outlined at this time last year. Investments in IT were elevated in FY 2015 and beyond in order to support critical agency priorities and in response to stakeholder feedback, with a net increase in spending of $500 million over the same six-year period. In FY 2016, the USPTO will fund these requirements using a combination of our 2016 appropriation along with $267 million from our operating reserves and $28 million in other income.
The spending and revenue adjustments included in the FY 2016 budget have resulted in a $1.7 billion cumulative reduction in the patent operating reserve over the next six years compared to what we projected in our FY 2015 budget. These changes demonstrate the important role the operating reserve plays in supporting the agency’s progress. Even as fee collections vary from year to year, the operating reserve allows us to continue to make critical, multi-year investments to improve the USPTO and its operations.
Looking to the future, we will continue to closely monitor fee collections and assess the ideal size of the operating reserve. The USPTO leadership team is aware of the potential risk associated with maintaining a patent operating reserve that is below our optimal target of three months and a trademark operating reserve that is below the optimal target of four to six months of budgetary resources. We are prepared to enact risk mitigation measures if they are needed at some point in the future. Our decision to move forward with smart, scalable growth reinforces the USPTO’s commitment to sound business and financial practices.
Additional details on our plans and estimates can be found in the pages of our FY 2016 Congressional Budget Justification. I hope you find value in this document, and that it allows you to glean greater insights into the USPTO’s activities and achievements.
Posted at 09:24AM Feb 13, 2015 in ip |
USPTO Trade Secret Symposium
Guest blog by Chief Policy Officer and Director for International Affairs Shira Perlmutter
On January 8, 2015, the USPTO held a trade secret symposium at USPTO headquarters in Alexandria, Virginia. The public event featured experts from academia, law, private industry, and the government discussing the importance of trade secrets to innovators.
The protection of U.S. trade secrets from misappropriation is a top priority for the administration and the USPTO, as trade secret theft threatens American businesses and the U.S. economy. Trade secrets are also important internationally since U.S. innovators need to be positioned to succeed when they operate in a global marketplace in which all IP rights are secure. When someone steals a trade secret, it undermines a company’s ability to compete in the global marketplace and can pose a threat to businesses, workers, and the U.S. economy.
In her opening remarks at the trade secret symposium, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee noted this was a first of its kind event at the USPTO, and its importance toward helping entrepreneurs and businesses start, grow and innovate. I was pleased with the variety of panels at the symposium, which discussed: the economics of trade secret theft, the changing ways innovators are looking to IP laws to protect their assets, the relationship between patents and trade secrets, litigation of trade secret misappropriation, and international trade secret protection. Panelists included representatives from the World Intellectual Property Organization, the London School of Economics, Intel Corporation, Proctor & Gamble, law firms, Congressional offices, and more. View the full agenda and panelists.
The symposium sparked meaningful dialogue on such topics as whether a shift has occurred toward greater reliance on trade secrets, issues inherent to trade secret litigation, legislative initiatives, and the challenges of global enforcement. Going forward, the USPTO will continue to lead substantive discussions of the policies involved in trade secret protection both domestically and internationally. We look forward to continuing the conversation. Learn more about the USPTO Symposium on Trade Secret Protection.
Posted at 01:46PM Feb 09, 2015 in International Affairs |
USPTO Launches Enhanced Patent Quality Initiative
Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee
As improving patent quality lies at the core of the U.S. Patent and Trademark Office’s mission, I’m pleased to announce the launch of a comprehensive new program, our Enhanced Patent Quality Initiative. You can read about it in more detail in the Federal Register and on our website, but let me highlight a few key details for you now.
As you may know, we’ve already been hard at work at the USPTO on numerous initiatives focused on improving patent quality. We’ve offered robust technical and legal training for patent examiners while rolling out new programs such as the Glossary Pilot, Quick Path IDS Program, First Action Interview Pilot, and After Final Consideration Pilot. We’ve worked to improve operational capabilities and information technology tools while expanding international work sharing efforts.
Our Enhanced Patent Quality Initiative allows us to further improve patent quality through direct and ongoing engagement. What do I mean by engagement? I mean robust discussions with the broader public, from a longtime patent owner to a Main Street retailer who has only recently begun to focus on these issues; from patent prosecutors to patent litigators and from patent applicants to patent licensees. We’re also having productive conversations within the agency—from examiners and IT staff to policy experts. By engaging all of these stakeholders, we are working to ensure the USPTO issues the best quality patents possible.
If you want to be a part of that process, we’d love to have you at our first-ever Quality Summit, an intense, two-day deep dive into patent quality that will include discussions among USPTO leadership, experts from the agency, industry and academia, and you. The Summit will be on March 25th and 26th at USPTO headquarters in Alexandria, Virginia. We’ll be looking at possible new initiatives the USPTO could undertake, all of which fall under our three identified Enhanced Patent Quality pillars: (1) excellence in our work products; (2) excellence in measuring patent quality; and (3) excellence in our customer service.
You’ll find our agenda for the Quality Summit in our Federal Register notice. But even if you can’t attend our Quality Summit in person, you can participate via webinar and the Summit will be recorded for later viewing. Also, the Federal Register notice lets you know how you can directly provide us your written comments, including reaction to the overall effort, thoughts on the initiatives under discussion at the Quality Summit, and any other suggestions for agency initiatives or undertakings. The formal comment period will remain open until May 6, but please understand that this in an ongoing dialogue. There will be many more opportunities for us to hear from you.
One person at the USPTO who will be particularly eager to read your comments and hear your thoughts at our Quality Summit is Valencia Martin-Wallace, the USPTO’s first Deputy Commissioner for Patent Quality. This newly created leadership position ensures a dedicated focus on the agency’s patent quality efforts. Deputy Commissioner Martin-Wallace brings a wealth of experience to this position. She’s worked at the USPTO for twenty-two years, serving as an examiner, Technical Center Director, and Assistant Deputy Commissioner for Patent Operations.
Our Enhanced Patent Quality Initiative is ambitious. But it is essential as the USPTO continues to support ambitious innovations and economic growth. We look forward to further engagement with the public and our employees as we continue to build a world-class patent quality system together.
User Feedback Plays Key Role in New USPTO Website
Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee
I’m excited to let you know about our newly redesigned website that improves the experience of doing business with the USPTO, and is a key part of our rollout of next generation technologies. Chief Information Officer John Owens and his team of IT specialists are dedicated to modernizing the USPTO’s IT infrastructure in 2015 and beyond.
This redesign is the first phase of upgrading users’ USPTO online experience that focuses on updating the (1) navigation to allow users to access needed information more easily and quickly and (2) to make the presentation of information on our web pages clearer and more streamlined. Following the completion of the first phase, the USPTO team is now working on ways to improve our “transactional sites,” which are the online tools and systems where users transact business with the USPTO such as filing for trademark registrations or paying the fees for patents that we look forward to sharing with you soon.
The official launch date for the website is February 5, 2015, when you will see the results of our phase one redesign. When users visit www.uspto.gov they will be taken directly to the redesigned site and if you haven’t already visited the site, I encourage you to take a tour of the beta.
In developing the new site, we met with hundreds of users—both frequent users and new visitors to the site—to learn what information they look for, study and how they attempt to find it. We also conducted an in-depth analysis of the site’s navigation including extensive user experience testing of the new design and wide-ranging best practices comparisons. The new navigation makes it easier to access information about our services and learn how to accomplish tasks. It’s also friendlier for those of you using mobile devices. I invite you to watch a one-minute video that highlights some of the site’s new features.
Thousands of USPTO web pages were redesigned and there are many ways we can continue to make the site better, but we can’t do that without your help. When we launched the beta in December, we asked users to take a look at the new site, and more than 15,000 people have so far. We also set up an Ideascale site, a place where you can submit your thoughts and comments about the beta, and vote up or down, or comment on ideas submitted by others. We received some great input and we’re looking forward to continued interaction with you on additional ways to fine tune the new site. We’ll continue to provide improvements even after it becomes the official agency site.
We value your feedback, whether it is about our new website or any of our other initiatives. With your input, we can work together to better meet your needs.
IT Innovation at USPTO in 2015
Guest blog by Chief Information Officer John Owens
The start of a new year is a perfect time to reflect on our current successes, and challenge ourselves to continually improve our information technology (IT) systems. As the Chief Information Officer, I am focused on driving innovation at the USPTO while protecting our nation’s cutting edge ideas.
The Office of the Chief Information Officer (OCIO) works hard every day to make sure both our existing systems and our new “next generation” systems enable examiners to accomplish their important work. We are building excellent tools for the public while we drive to fine-tune our own processes for greater efficiency. Supported by more robust, updated IT systems and tools, USPTO examiners will be able to leverage these tools, and new data, to issue the best quality patents. When we improve systems and services for our examiners, the public benefits as well.
Some of our goals for 2015 include:
• Drive service innovation – improve desktop services and support, and provide additional self-help capabilities to customers;
• Strengthen the organization – Improve collaboration, drive up satisfaction, and deliver impactful training;
• Continually improve processes – drive efficiency in the organization and eliminate single points of failure;
• Deliver next generation platforms – deliver totally new patent and trademark examination systems
We will accomplish these goals by developing innovation from within our organization, learning from the private sector, using open source data, engaging with our customers, and hiring outstanding staff.
Developing the innovation within
The key to unlocking innovation lies in our most important asset, our people. I look for the innovators within our ranks, the doers and smart risk-takers whose determination, energy, and grit drive the organization forward. These people soak up change, are nimble with new technology and ideas, and love learning, especially if it helps them do their jobs better. As one of my employees said to me, “Part of my job satisfaction here is based on what I am learning.” People like this are everywhere in our agency. All we need to do is give them the tools to innovate.
DevOps: learning from the private sector
Within our office, we have eagerly embraced a new technology movement called “DevOps,” which has taken hold in the private sector at such companies as Nordstrom, Disney, Etsy, Netflix and others. This software development method emphasizes collaboration and enhances efficiency, and when teams use key DevOps principles, they can release new software much faster and with higher quality. Given the ambitious projects ahead, learning from DevOps will help our performance now and in years to come. We held a successful and sold out DevOps in Government event January 14th at the USPTO in Alexandria, Va. with the team from Etsy, and we plan to engage with the private sector on additional events in the future.
Embracing open source and open data
The OCIO new user experience division recently debuted a working version of the USPTO design pattern library on Github. Founded by a creator of the Linux operating system, GitHub is a popular tech industry portal for publishing and sharing open source code projects. Several government agencies use GitHub to engage developers and the public to use open source and open data, and these efforts are one of the focal areas for our Chief Technology Officer David Chiles. This library allows any USPTO project team to use the same design principles and patterns when designing applications. Through GitHub, the USPTO can share its user experience designs and principles with other federal agencies, and through such sharing, future library updates could come from sources outside of the USPTO.
Engaging with customers
We meet continually with internal and external customers, and know that honest conversation improves how we serve one another. Our next generation products and services are co-designed with our customers, with a goal of developing tools for a global, mobile user base. An important part of this modernization process is “agile” development, an IT development method which emphasizes user involvement and ongoing feedback. I wrote about it in a blog last June. As a result of using agile methods and engaging with customers, we are creating products that reflect users’ primary needs.
To innovate this year, we need top notch staff to join us to build next generation examination systems for the USPTO. To reach our ambitious hiring goal of bringing in nearly 200 new employees, we are talking to candidates nationwide. So, whether you live in Detroit, Silicon Valley, or here in the Washington, D.C. area, you can contribute to powerful IT work. View our open opportunities on USAJobs. It’s a great opportunity to help build civic systems that matter, last, and will drive the nation’s economic prosperity. We also will invest heavily in staff training this year to keep up with the pace of technological change. To meet the velocity of customer demands on IT, our workforce must have the very latest skills for 21st century innovation and superior performance.
I look forward to sharing more updates with you in the future as we continue to use the latest technology to support the USPTO and the public.
Posted at 11:21AM Jan 22, 2015 in USPTO |
IP Stakeholders Discuss Harmonization of Substantive Patent Law at USPTO Roundtable
Guest blog by Chief Policy Officer and Director for International Affairs Shira Perlmutter
On Wednesday, November 19, 2014, the USPTO hosted a roundtable on International Harmonization of Substantive Patent Law at our headquarters in Alexandria, Virginia. Roundtables like this one are essential tools for the USPTO to hear and understand stakeholder views on key intellectual property topics and their effects on various stakeholder and public policy interests, and we were glad to have a broad representation of stakeholders join us for the event.
In her opening remarks, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee said that although the USPTO and offices around the world have in recent years invested significantly in work sharing, the lack of harmonized laws related to key examination issues remains a barrier to more efficient and effective reuse of work. These key issues include the definition and scope of prior art, the grace period, as well as issues related to conditions for patentability, including novelty and obviousness.
Following Deputy Under Secretary Lee’s remarks, Commissioner for Patents Peggy Focarino introduced patent experts from the USPTO, the Japan Patent Office, the European Patent Office, and the U.K. Intellectual Property Office, who presented reports on the results of recent surveys on specific harmonization issues, including the grace period.
The roundtable discussion that followed was moderated by Robert Armitage, former General Counsel for Eli Lilly and Company, and featured panelists representing a broad spectrum of U.S. stakeholder interests, including: Q. Todd Dickinson, former USPTO Director; Herb Wamsley, Executive Director, Intellectual Property Owners Association of America; Hans Sauer, Associate General Counsel, Biotechnology Industry Organization; and James Love, Director, Knowledge Ecology International.
The panelists gave their views on the importance of harmonization and its impacts on stakeholders and the public, and indicated a willingness to be flexible in achieving workable compromise solutions. We will use this input and the position of flexibility as we work with partner offices to determine an appropriate course to decrease work sharing barriers.
Throughout the next year, the USPTO Office of Policy and International Affairs will work closely with our international counterparts in Group B+, our group in the World Intellectual Property Organization (WIPO), to establish a clear path forward in patent law harmonization. Read Deputy Director Lee’s remarks to the heads of Group B+ offices at WIPO, September 23, 2014 in Geneva, Switzerland.
Learn more about the Roundtable on International Harmonization of Substantive Patent Law or watch the webcast.[Read More]
Posted at 02:22PM Dec 18, 2014 in International Affairs |
Guidance on Subject Matter Eligibility Issued
Guest blog by USPTO Commissioner for Patents Peggy Focarino
Following the valuable feedback that we received from the public through written comments and multiple public meetings over the last several months, we are issuing new examination guidance on subject matter eligibility under § 101 in view of the U.S. Supreme Court’s recent decisions in Alice Corp., Myriad, and Mayo. You can find the guidance in a Federal Register notice officially published on December 16, 2014, entitled “2014 Interim Guidance on Patent Subject Matter Eligibility.” Claim examples have been developed to illustrate the analysis set forth in the guidance. A set of examples relating to nature-based products are posted on the USPTO website and a set of examples relating to abstract ideas will be released shortly. This guidance is the latest – but not necessarily the last – iteration of our ongoing implementation of these Supreme Court decisions.
I want to address two aspects about the 2014 Interim Eligibility Guidance in particular. First, the guidance explains the USPTO's interpretation of subject matter eligibility requirements in view of the Alice Corp., Myriad, and Mayo Supreme Court decisions and sets forth an integrated approach for patent examiners in making determinations regarding subject matter eligibility. This guidance incorporates principles emphasized in Alice Corp. and provides more details than our initial examination instructions issued immediately after the Alice Corp. decision.
Second, the guidance reflects a significant change from the examination guidance previously issued in response to Myriad and Mayo. The changes were triggered by the feedback we solicited and received from the public, as well as refinements necessitated by the Alice Corp. decision.
More specifically, you may recall that earlier this year we released preliminary examination guidance on evaluating eligibility of claims reciting laws of nature, natural phenomena, and natural products in the wake of Myriad and Mayo. Following that release, the Supreme Court issued the Alice Corp. decision and as per usual, we issued preliminary instructions on eligibility determinations of claims directed to abstract ideas. We sought public feedback on both sets of guidance, through written comments as well as a number of public events. We were pleased to receive numerous comments on both sets of guidance from a diverse group of stakeholders, including legal organizations, industry organizations, law firms, corporate entities, universities, and individuals. We carefully considered input from the public and our own patent examiners in addressing possible revisions both to our guidance stemming from Myriad and Mayo as well as Alice Corp. That led us to make changes to our analysis of subject matter eligibility under § 101, now set forth in the 2014 Interim Eligibility Guidance. We crafted this guidance to be a more straightforward eligibility analysis, one that promotes examination efficiency and consistency while conforming with the principles in the Supreme Court decisions.
We will continue to solicit stakeholder feedback as we further refine our examination guidance. The Federal Register notice outlining our new guidance announces a 90-day written comment period, and we encourage the public to submit comments. In addition, we plan to host a public outreach forum on the 2014 Interim Eligibility Guidance in mid-January, where you will have the opportunity to provide input in person or via the web. Stay tuned for more details, which will be posted on our website.
Through regular public engagement in this process, we welcome and will consider all viewpoints as we continue to refine our examination procedures for claims for subject matter eligibility.
Posted at 12:10PM Dec 15, 2014 in USPTO |
USPTO Releases its FY 2014 Performance and Accountability Report (PAR)
Guest Blog by Tony Scardino, Chief Financial Officer
I’m pleased to announce the USPTO has published its Performance and Accountability Report (PAR) for fiscal year (FY) 2014. 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 new 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 owners and USPTO stakeholders. In addition, the PAR provides information on the USPTO’s progress toward a broader management goal: achieving organizational excellence.
Here at the USPTO, we take pride in producing a PAR that meets the highest standards of 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 2014 marks the 22nd consecutive year that the USPTO’s financial statements 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 2015. Among our challenges and opportunities, we will be managing the transition to an inventory maintenance patent processing operation as we come closer to our pendency and inventory targets in the future; promoting trademark application processing efficiency with fee reductions; securing sustainable funding in an era of increased budgetary pressures; and providing information technology (IT) support for a nationwide workforce with a “24/7/365” operational capability.
The PAR is a faithful snapshot of the USPTO’s FY 2014 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.
Posted at 01:50PM Dec 12, 2014 in USPTO |
Update on USPTO Satellite Offices
Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee
In an era where our stakeholders’ businesses are rapidly evolving and the intellectual property (IP) landscape is constantly adapting to new and emergent technologies, it’s important to ensure the USPTO can engage effectively with communities, industries, and innovators. That’s why we’ve expanded our footprint across the country, offering services at the doorsteps of entrepreneurs, and addressing challenges particular industries are facing. Our satellite offices play a crucial role in these efforts, assisting inventors, entrepreneurs, and small businesses in their respective regions, while supporting our core mission of fostering American innovation and competitiveness.
We are moving forward in standing up these regional hubs for innovation and look forward to opening our Texas Regional Office in fall 2015, which will be located in the Terminal Annex Federal Building in downtown Dallas. We recently posted a job announcement for a Regional Director, responsible for general oversight of the office as the most senior ranking official representing the USPTO. We’re looking for the best and brightest candidates to assist businesses throughout the state with the challenges of navigating an IP system, and work with Texas’s burgeoning technology sectors such as the clean tech, semiconductor, and biosciences industries. The application deadline for the Regional Director position is January 10, 2015, and we anticipate appointing the Regional Director prior to the office’s opening in the fall.
On June 30, 2014, we held a memorable opening ceremony for the Rocky Mountain Regional Office located in the Byron G. Rogers Federal Building in Denver, Colorado, attended by a number of government officials and regional stakeholders. The Denver office serves as a one-stop shop for the Rocky Mountain region’s entrepreneurs to get cutting-edge ideas to the marketplace faster, grow their businesses, and enable them to create new, high-skilled jobs. Under the leadership of Regional Director Russ Slifer, the Denver office has already welcomed its third class of patent examiners, putting it well on the path to hire a full staff of 100 by summer 2015. Additional outreach activities have included press interviews, an AIA First-Inventor-to-File Roadshow stop, and a patent examiner hiring event.
Excitement is building as the West Coast Regional Office, operating out of Menlo Park, California since 2012, remains on track to open in spring 2015 in its permanent location in San Jose City Hall. The office continues to expand through training programs, workshops, and partnerships with local innovators, while Regional Director John Cabeca has been reaching out to stakeholders in the unique innovation ecosystems of California, Washington, and Oregon. The office is actively engaging with the entrepreneurial community while tailoring programs and events to the region’s unique industries, such as the USPTO’s first Cybersecurity Industry Partnership meeting on November 14, 2014.
Meanwhile, the Elijah J. McCoy satellite office in Detroit, which opened in one of our nation’s historic innovation hubs in July 2012 as our first satellite office, is thriving. On November 18, the State Bar of Michigan’s Intellectual Property Law Association and Pro Bono Initiative kicked off the Michigan Patent Pro Bono Program, a critical milestone in the expansion of the USPTO Pro Bono Program. Saturday Seminar sessions provide training to independent inventors and small businesses on the importance of IP protection, and the Patent Trial and Appeal Board (PTAB) is making headway reducing the inventory of trial and appeal cases in a new space that includes a hearing room. Also, the PTAB twice visited Detroit this year to host educational forums about the AIA trials. We anticipate announcing the name of our new Regional Director of the Detroit office in the coming weeks.
In September, we submitted to Congress our report on satellite offices highlighting our significant outreach activities that have touched major stakeholders and have actively raised awareness of IP in all the satellite locations. Finally, we are currently accepting applications until December 29, 2014 for administrative patent judges in Alexandria, Dallas, Denver, and Silicon Valley, and Detroit.
USPTO satellite offices are critical to accomplishing our goal to support technological innovation and creativity, and I’d like to recognize the support of regional stakeholders, local and federal government officials, and the hard-working USPTO personnel in each location. The upcoming year promises to be an exciting one for our satellite offices as we’ll be cutting the ribbon on the permanent space for our final two. I will continue to keep you informed about the grand openings and other new developments. We look forward to bringing you even better and more convenient services to your local innovation communities.
USPTO Establishes Special Examination Unit for Pro Se Applicants
The United States Patent and Trademark Office (USPTO) is committed to assisting inventors by offering education and tools to those who file U.S. patent applications without the help of a patent attorney or agent. This is known as pro se filing. Our Office of Innovation Development (OID) has a long history of helping pro se filers and independent inventors understand and navigate the patenting process as well as offering a variety of resources and outreach programs to the public. The agency is now expanding these services by piloting a special unit focused on examining applications filed by pro se applicants. The new Pro Se Pilot Examination Unit is the product of an executive action issued by the White House earlier this year.
The Pro Se Pilot Examination Unit began in October 2014 and will operate for at least one year. Comprised of experienced examiners from all scientific disciplines, these examiners receive training surrounding issues often encountered by pro se applicants, such as how to respond to a Notice of Missing Parts or how to revive an unintentionally abandoned application. In addition, the examiners provide customer support and answer general patent related questions via a toll-free number, email, or a walk-in service. Lastly, they spearhead development of specialized training materials on the intricacies of filing a patent application.
Applications filed by pro se applicants are randomly assigned to the Pro Se Pilot Examination Unit. By comparing data for applications examined by the unit against a control group of pro se applications filed during the same time period, the office can evaluate the effectiveness of the program. Likewise, the office can further improve the training and resources available to not only pro se and independent inventors but also other examiners.
The Pro Se Pilot Examination Unit is one more way the USPTO fulfils its duties to promote the advancement of technology, and to ensure creators benefit from their intellectual property and that society benefits from their inventions as well. Learn more about the Pro Se Assistance Program on our website.
Patent Pro Bono Program Expansion to Benefit Inventors Nationwide
Helping small businesses and independent inventors with limited resources is an important goal of the USPTO, and supports the Administration’s commitment to balance the playing field for all entrepreneurs looking to innovate. It also supports the White House executive actions issued to improve the patent system. One of those executive actions aims to expand coverage of the Patent Pro Bono Program to all 50 states, and I am pleased to announce that we are making great strides towards bringing pro bono assistance to inventors across the country.
Because patents fuel our economy and stimulate job creation, the USPTO wants to make sure the patent system is accessible to all. With this in mind, the USPTO works with intellectual property law associations and local bar associations across the country to help them establish pro bono inventor assistance programs in their specific regions. The Patent Pro Bono Program provides free legal assistance to under-resourced inventors and small businesses interested in securing patent protection for their inventions. By working closely with these associations, we are spreading the word about the importance of intellectual property and USPTO services, and in turn supporting the innovation economy.
Currently, patent pro bono assistance is available in Alaska, Arizona, California, Colorado, the District of Columbia, Hawaii, Idaho, Louisiana, Maryland, Massachusetts, Minnesota, Montana, Nevada, New York, North Carolina, Ohio, Oregon, South Carolina, Texas, Virginia, and Washington. To establish coverage in the remaining states, the USPTO has formed a Pro Bono Team which is working with non-profit organizations and local bar associations to devise strategies for providing the needed assistance. Please join us in this worthy effort and help support American innovation by contacting the Pro Bono Team at PatentProBono@uspto.gov. The USPTO values assistance from stakeholders and partners in these important efforts, because strengthening our patent system is something we will accomplish together.
Let me tell you a little more about how the Patent Pro Bono Program works. Independent inventors may apply to receive pro bono attorney representation in one of two ways – either through the National Clearinghouse administered by the Federal Circuit Bar Association or by contacting the regional program in their state. Program requirements vary, but generally, they require that: (1) the inventor reside in a participating state; (2) earn less than a gross household income limit; (3) demonstrate minimal knowledge of the patent system; and (4) have an invention to patent (as opposed to a mere idea). If an inventor meets these requirements, and any other ones set by the regional program, then the regional program will attempt to match the inventor with a local volunteer patent attorney to represent the inventor.
I want to acknowledge the success that the Patent Pro Bono Program has had thus far. Minnesota was the first state to setup a Patent Pro Bono Program in 2011, and since then, Minnesota volunteer attorneys have helped 14 Minnesota inventors secure patent protection for their inventions. Additionally, 35 other Minnesota inventors, represented by Minnesota volunteer attorneys, have patent applications pending before the USPTO. These results are testimony to the utility and need for the Patent Pro Bono Program.
I’m excited to announce that on November 18, 2014, the State Bar of Michigan’s Intellectual Property Law Association and Pro Bono Initiative kicked off the Michigan Patent Pro Bono Program at the Elijah J. McCoy USPTO Satellite Office in Detroit. Stay tuned as we expand the Patent Pro Bono Program to more states.
The Patent Pro Bono Program serves a vital role in the marketplace of innovation. Visit our website for more information on how to volunteer to represent an under-resourced inventor.
Patent Examiner Technical Training: Connecting Scientific Experts with Patent Examiners to Strengthen the Patent System
In February of this year, the White House issued three new executive actions aimed, in part, at strengthening the quality and accessibility of our patent system. One of these initiatives focused on the critical need for examiners to stay up-to-date in their technical fields of expertise through more robust technical training to enable them to perform the best examination possible. We address this request from the president via our Patent Examiner Technical Training Program (PETTP).
PETTP allows scientists, engineers, professors, industrial designers, and other technology experts the opportunity to provide technical training directly to patent examiners. Specifically, volunteer guest lecturers share their expertise on technical developments, the state of the art, emerging trends, maturing technologies, and recent innovations. Just this year, more than ninety experts have provided training to examiners on topics ranging from nanotechnology to virtual reality welding to the chemistry of chocolate. We thank those individuals who have already participated in the program and are eager to add new volunteers to our training roster going forward.
PETTP events are hosted throughout the year to meet the scheduling needs of presenting volunteers and our staff. Experts who are willing to give their time and incur any travel expenses can visit the USPTO in Alexandria, one of our satellite offices in Denver and Detroit, or present via Webcast from their own location. In calendar year 2015 our satellite offices in Silicon Valley and Dallas will also be open to host PETTP events. Presentation formats are flexible and generally are up to two hours in length, including a question and answer session.
For the first time this year, we are hosting a Tech Week for our examiners to offer training during a concentrated span of five days. From December 1 to 5, speakers from all technical fields will give lectures to the examiners in all of the USPTO’s Technology Centers. We are especially in need of speakers in the biotech, chemical, communications, design areas, so I invite those of you with expertise in these fields to consider participating.
It’s easy to volunteer for PETTP training—either for Tech Week or any other time of year; simply sign up through an online form or email us at Examiner_Technical_Training@uspto.gov. Together, we are building an even stronger patent system through initiatives like PETTP. Be part of this development by volunteering as a PETTP technical lecturer.
Posted at 10:19AM Nov 06, 2014 in patents |
PTAB Hits the Road Again in November 2014 for Detroit Region Roadshows about the AIA Trials
Stakeholder engagement is a critical mission of the USPTO, and I am excited to share that the Patent Trial and Appeal Board will visit the Great Lakes region to provide more training about the AIA trials. In November, the board will visit Detroit, Cleveland, Pittsburgh, Chicago, Milwaukee, and Minneapolis for afternoon, interactive programs. Earlier this spring, the board engaged with stakeholders in a variety of cities on a listening tour to consider revisions to the AIA trial rules and guidance. In these upcoming sessions, the board is focused on teaching the public how to strengthen their AIA trial filings.
In particular, stakeholders will hear a “State-of-the-Board” address, providing an update on recent developments including the volume of AIA trial filings and administrative patent judge hiring. The board also will host a “PTAB Feud” game show in which members of the public compete to answer questions and learn about the AIA trials. Lastly, the board has developed an AIA trial workshop involving a mock scenario in which a petitioner wishes to assert a challenge against a patent. The audience will break into teams, each facilitated by a judge, to discuss which type of petition to file and what issues might arise from both the petitioner’s and patent owner’s perspectives. Topics of discussion will include bars to filing, real party-in-interest and joinder considerations, and claim construction. The teams likewise will decide whether to institute an AIA trial, and if so, on what grounds and for which claims. In Detroit, the PTAB will host an actual AIA trial hearing in lieu of the workshop.
Besides the roadshows, the PTAB continues to hire more talented IP practitioners as judges. In fiscal year 2014, the board brought on 44 new judges, raising the total to 214. This fiscal year, the board is eager to continue growing, both in the Alexandria headquarters as well as all our satellite office locations. If you enjoy high end legal work involving cutting edge science, then an administrative patent judge position may be just for you.
In sum, I encourage you to take part in one of the Detroit Region Roadshows so that you can become even more versed in the nuances of the AIA trials. To learn more about a judge position, please visit www.usajobs.gov. Our AIA trial proceedings help strengthen our patent system, and we’re thankful for the stellar leadership demonstrated by our administrative patent judges on the PTAB.
Posted at 10:37AM Oct 28, 2014 in patents |