Notices of possible system outages
We Want to Hear from You on Copyright Policies in the Digital Economy
Guest blog by Chief Policy Officer and Director for International Affairs Shira Perlmutter
The Department of Commerce’s Internet Policy Task Force (IPTF) last week issued a green paper on copyright, and I’d like to take a moment to highlight the paper’s core content and goals. The paper, titled Copyright Policy, Creativity, and Innovation in the Digital Economy (Green Paper), represents the most thorough and comprehensive analysis of digital copyright policy issued by any administration since 1995. Along with the National Telecommunications and Information Administration (NTIA), the USPTO played a key role in its production, from gathering public comments starting in 2010 through the paper’s drafting and release.
The Green Paper calls for new public input on critical policy issues that are central to our nation’s economic growth, cultural development and job creation. It is intended to serve as a reference for stakeholders, a blueprint for further action, and a contribution to global copyright debates. As promised in the paper, we will soon be reaching out to the public for views on a variety of topics. Please stay tuned for announcements about how to share your thoughts, insights, and recommendations.
In recent years, the debates over copyright have become increasingly contentious. Too often copyright and technology policies are seen as pitted against each other, as if a meaningful copyright system is antithetical to the innovative power of the Internet, or an open Internet will result in the end of copyright. We do not believe such a dichotomy is necessary or appropriate. The goals espoused in the paper— ensuring a meaningful and effective copyright system that continues to provide the necessary incentives for creative expression, preserving the technological innovation and free flow of information made possible by the Internet, and delivering creative content in the broadest possible fashion to consumers—are ones that we think can, and must, be accomplished in tandem.
By intention, the Green Paper does not set out substantive policy recommendations, except where the administration is already on record with a stated position. Rather, it seeks to provide a thorough and objective review of the lay of the land—describing changes that have already occurred, identifying areas where more work should be done, and setting out paths to move that work forward. The paper expresses support for efforts underway to address some of the open issues in other forums—notably Congressional attention to music licensing, the Copyright Office’s work on orphan works and mass digitization, and the Intellectual Property Enforcement Coordinator’s facilitation of cooperative efforts by stakeholders to curb online enforcement.
We appreciate the encouraging words we’ve heard from many stakeholders on all sides. In the coming weeks, we will begin to move forward on the specific items outlined in the paper for IPTF action:
- Establishing a multistakeholder dialogue on improving the operation of the notice and takedown system for removing infringing content from the Internet under the Digital Millennium Copyright Act (DMCA).
- Soliciting public comment and convening roundtables on:
- The legal framework for the creation of remixes—user-generated content that uses portions of copyrighted works in creative ways.
- The relevance and scope of the first sale doctrine in the digital age.
- The appropriate calibration of statutory damages in the context of (1) individual file sharers and (2) secondary liability for large-scale infringement.
- Whether and how the government can facilitate the further development of a robust online licensing environment, including access to comprehensive public and private databases of rights information.
We hope that the full range of stakeholders continue to engage energetically and productively. To develop the best possible copyright policy for the Internet, we need to hear from all affected interests, including those who create works, those who distribute them, and those who enjoy them.
An Update on Our Dallas, Denver, and Silicon Valley Offices
Blog by Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea
Last year we began providing a series of blog updates on the progress of our satellite offices, in August, September, and December. This tradition continued with an update on our Elijah J. McCoy Satellite Office in Detroit, which just celebrated its first year of operation last week.
Today I want to update you on the progress of our satellite offices in Dallas, Denver, and Silicon Valley, locations we identified in July 2012 as part of an America Invents Act (AIA) mandate. Given current budget constraints under sequestration, our efforts to move into permanent spaces for those three locations will be delayed, but continuing to operate from the temporary spaces and striving to grow our presence in the satellite office locations remains a top agency priority.
All three locations currently have temporary offices staffed by Patent Trial and Appeal Board judges, who are helping reduce the board’s inventory of appeal cases and AIA trials, which in turn helps drive down cost-prohibitive court appearances and resolves disputes earlier and more efficiently.
These judges have been at work in the Denver Federal Center in Lakewood since January, the Santa Fe Federal Building in Dallas since March, and the Menlo Park Science Center in Silicon Valley since April. We will continue to monitor our fee collections and hire more judges for the satellite offices whenever resources are available.
In addition to the work of our judges, Silicon Valley Office Director Michelle Lee continues to actively engage with the public and our stakeholders across the West, just as our Detroit office has done so effectively in the Midwest with independent inventor conferences and partnerships with local inventor associations. The Silicon Valley Office’s activities will continue to include:
• Participating in our newly formed Software Partnership, which collected comments in February that will contribute to our advancement of President Obama’s White House initiative to curtail abusive patent litigation;
• Hosting local training programs on AIA topics such as the new first-inventor-to-file rules and PTAB proceedings;
• Planning additional STEM workshops to train K-12 teachers in the local school districts on innovation, entrepreneurship, and intellectual property; and
• Building relationships with local innovators, officials, industries, intellectual property bar associations, incubators, venture capitalists, and universities.
Permanent locations for the satellite offices have been identified at the Terminal Annex Federal Building in Dallas and the Byron G. Rogers Federal Office Building in Denver, public facilities already operated by the General Services Administration (GSA). No similar space was available in the delineated area for Silicon Valley. Our relocation to permanent office spaces in Dallas and Denver has been delayed, and the GSA, which owns and operates public facilities, has suspended its solicitation process for permanent space in Silicon Valley. We will continue monitoring our fee collections to determine when we can move forward on permanent office spaces in these locations.
In the face of current budget constraints, we remain committed to serving the public with permanent locations in all four continental U.S. time zones, ensuring that the full promise of the AIA is realized. Expanding the level of public access to the USPTO, its resources, and processes remains one of my top priorities, and I look forward to keeping you updated on our progress in the months ahead.
Happy Anniversary, Detroit
Blog by Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea
The USPTO will reach a milestone anniversary tomorrow. July 13 marks one full year of operation of the Elijah J. McCoy Satellite Office in Detroit. As the agency’s very first satellite office, it represents a historic achievement for the USPTO. And just as we had planned, our Detroit team—which was led through the first year by Regional Manager Robin Evans—is meeting and exceeding the needs of the agency and the innovative community in and around Detroit.
The Detroit satellite office has expanded our capacity and productivity, despite tough budgetary constraints. And through increased outreach efforts with entrepreneurs and innovators throughout the Midwest, we’re creating a stronger and more efficient patent system locally—one that’s attuned to the needs of the area’s unique ecosystem of creativity and enterprise.
The Detroit office has helped us pursue our goal of cutting into the backlog of unexamined patent applications. We were able to tap into local talent to hire 78 new patent examiners. With the help of these examiners, USPTO decreased the backlog of unexamined patent applications this past year, even though the number of filings continued to increase. Since opening, the Detroit office has already issued several thousand first office actions.
The Detroit office also has expanded the Patent Trial and Appeal Board through the hiring of 10 new judges from the region, with plans to add more. This increase in staff will help the agency reduce its inventory of appeal cases and AIA trials, which in turn will help drive down cost-prohibitive court appearances and resolve disputes earlier and more efficiently. It also allows practitioners to more readily access and navigate the patent appeals process.
The presence of the office in this important American hub of innovation and growth has increased our agency’s ability to support innovators, and provides the Midwest intellectual property community direct and central access to resources that enable inventors to better understand, obtain, maintain, and commercialize their IP rights.
The office offers workshops and seminars that provide local businesses and inventors with tools to develop, license, and distribute technologies and services. We’ve participated in 30 different outreach events in the area and have held several “Saturday Seminars” for local inventors and entrepreneurs to visit the office and learn more about patents and trademarks. In the coming year, we hope to see even more inventors and stakeholders come through our doors.
The Detroit office has offered us opportunities to foster new partnerships with organizations such as the Henry Ford Museum and the Auto Harvest Foundation to host IP awareness and education events. The office also partners with regional inventor associations to highlight and build a consortium of key tools and resources that empower businesses of all sizes to grow and protect their products and services in a global economy.
One year ago, an esteemed group of Michigan’s leaders joined us to officially open this office, including Detroit Mayor Dave Bing, U.S. Senators Carl Levin and Debbie Stabenow, U.S. Representatives John Dingell, John Conyers, Jr., and Gary Peters, and former U.S. Representative Hansen Clarke. We have been proud to work alongside these leaders, as well as many local businesses and entrepreneurs, all of whom are committed to rev up the engines of the area’s innovation economy and ensure Detroit remains open for business. And now, one year later, there’s still reason to celebrate. We look forward to continuing our efforts to help American entrepreneurs and businesses.
If you have a success story you’d like to share about our Detroit office, I hope you’ll consider posting it in our comments section.
Announcing the Global Patent Search Network - Chinese Patent Documentation
Blog by Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea
In an effort to expand our coverage of worldwide patent collections, I am pleased to announce the launch of the USPTO’s Global Patent Search Network. With this new search network, we hope to make patent research easier and more comprehensive by providing streamlined search capability to multiple international patent collections.
As a result of cooperative effort with the State Intellectual Property Office (SIPO) of the People’s Republic of China, Chinese patent documentation is now available for search and retrieval in the inaugural release of this search network. Accessible from the USPTO website, the data available includes both full text Chinese patents and English machine translations enabling users to search Chinese patent documents in the English or Chinese language. Users can search documents including published applications, granted patents and utility models from 2008 to 2011 in this collection, which will periodically be updated with more current data.
This new search tool delivers to the public, as well as our patent examiners, an additional source of foreign patent collections. Furthermore, the immediate availability of English machine translations will effectively address the language barrier and allow for quick analysis of the relevancy of the prior art while reducing the need for costly human translations. Machine translation technology can sometimes generate awkward wording, but it provides an excellent way to determine the gist of the information in a foreign patent. As this is the initial launch of the search network, we value any suggestions you may have to help us identify future enhancements to the tool. Please send your ideas to GPSN@uspto.gov.
We believe that the introduction of the Global Patent Search Network and the future inclusion of additional foreign patent collections will be a valuable tool for improving search quality and comprehensiveness in today’s global IP market.
Additionally, in support of the federal government’s responsibility to achieve cost, agility, and innovation benefits of cloud computing, the Global Patent Search Network is the first patent-related initiative to use cloud technology. Our cloud computing solution will provide public value by increasing our operational efficiency and allow us to respond faster to the needs of the public and our examiners.
I invite you to begin searching our Chinese patent collection as we continue working to expand our set of foreign patent collections via this new Global Patent Search Network.
USPTO Implementation of the 2013 Joint Strategic Plan for Intellectual Property Enforcement
Today heralds the official release of the Obama Administration’s 2013 Joint Strategic Plan for Intellectual Property Enforcement. Since the inaugural release of the strategy in 2010, the Administration has made significant accomplishments in the area of intellectual property enforcement. This includes legislation that updates and strengthens laws and stepped up enforcement against those infringers who threaten the vitality of the U.S. economy and the health and safety of the American people.
As part of the strategic plan, the U.S. Patent and Trademark Office is seeking feedback on private sector efforts to reduce online infringement through the development and implementation of cooperative, voluntary initiatives. Today a request for public comments was published in the Federal Register seeking input from all interested parties on the processes, data metrics, and methodologies that could be used to assess the effectiveness of cooperative agreements and other voluntary initiatives to reduce infringement.
This year’s strategic plan sets out the Administration’s overall vision for intellectual property enforcement for the next three years and serves as a roadmap for agency-specific activities necessary to achieve that vision. The USPTO plays a key role in the effort by promoting effective IP protection for U.S. innovators and entrepreneurs worldwide, securing stronger IP provisions in free trade and other international agreements, fostering respect for IP, and encouraging the development of strong IP enforcement regimes by U.S. trading partners.
Since the 2010 Joint Strategic Plan, the USPTO has promoted stronger and more effective intellectual property protection domestically and around the world. Our achievements include technical assistance to the United States Trade Representative (USTR) during negotiations and implementation phases of the Intellectual Property Rights provisions contained in several free trade agreements, and launch of a website for federal, state and local prosecutors to request copies of trademark registration certificates to use in litigation. We’ve published several studies related to IP and enforcement, such as Intellectual Property and the U.S. Economy, Specialized Intellectual Property Courts, and Counterfeit Hard Goods and the Public’s Health and Safety.
Additionally, through the USPTO’s IPR Attaché Program, our IP attachés actively work to improve the protection and enforcement of U.S. intellectual property rights overseas. Through our Global Intellectual Property Academy (GIPA), the USPTO offers capacity-building programs in the United States and around the world on intellectual property protection, enforcement, and capitalization.
Building upon these accomplishments, the USPTO is committed to improving the effectiveness of our personnel stationed abroad and we are examining the feasibility of placing attachés in other key countries. We also continue to support U.S. small and medium-size enterprises in foreign markets through expanded outreach efforts, and we encourage voluntary initiatives to reduce online intellectual property infringement and illegal internet pharmacies.
The USPTO is pleased to participate in implementing action items listed in the 2013 Joint Strategic Plan and advancing policy initiatives necessary to strengthen IP enforcement.
USPTO and the Obama Administration Taking Action to Improve Incentives for Future Innovation via High Tech Patents
This month, President Obama offered a series of sweeping actions that, alongside Congressional steps, will immediately improve the environment for future innovation. These bold initiatives are designed to reduce abusive patent litigation tactics and to ensure the highest-quality patents in our system. The United States Patent and Trademark Office (USPTO) team is working hard, in consultation with stakeholders and the American public, to make this vision a reality.
The President set the stage for this new initiative February 14th when he said “our efforts at patent reform [via the Leahy-Smith America Invents Act] only went about halfway to where we need to go, and what we need to do is to pull together additional stakeholders and see if we can build some additional consensus on smarter patent laws.” On June 4th, the President announced five executive actions, four of which are specifically tasked to the USPTO. I’d like to take a moment to outline how the USPTO plans to begin implementing those actions.
The President’s first executive action instructed the USPTO to begin a rulemaking process to require patent applicants and owners to regularly update patent ownership information. The lack of availability of this information and the problems faced by innovators were highlighted in a study by the Council of Economic Advisers and the National Economic Council that was released with the President’s announcement. This study, entitled “Patent Assertion and U.S. Innovation,” documents the rise of litigation by so-called “patent assertion entities,” or PAEs (also described in the study as “patent trolls”). According to the study, a major challenge for companies and individuals targeted by PAEs is the difficulty in identifying the patent owner because PAEs often mask their identity by creating numerous shell entities. Better information on ownership will increase transparency, reduce abusive litigation, and enable more efficient licensing of patented technology. The rulemaking process will seek public comments on USPTO’s specific proposal on how to collect this new information and will also take into account stakeholder feedback received during earlier stages of consideration of this issue.
Turning to the second executive action announced in the President’s initiative, the USPTO will bolster training for patent examiners to improve their examination of functional claims and will also develop additional strategies to improve claim clarity. This action will build on our recent efforts to improve training programs for examiners to ensure the highest quality patent examination. Our next steps will be informed by the valuable stakeholder input received from the launch of our Software Partnership earlier this year, received both in public written comments and at two February engagement sessions in Silicon Valley and New York City.
The third executive action of the President’s initiative is focused on empowering citizens using patented technologies in consumer products. As the study “Patent Assertion and U.S. Innovation” documents, PAEs are no longer solely targeting large companies holding vast patent portfolios. Small businesses and enterprising individuals have also been on the receiving end of intimidating letters accusing them of patent infringement and threatening litigation. That is why we will create a valuable online portal that will provide answers to key questions and additional information resources for those individuals. The USPTO has long viewed public education as a core function of the agency; educational materials paired with ready access to public data on particular patents will create a powerful resource to support both users and developers of technology.
That leads me to our fourth executive action—expanding dedicated stakeholder outreach and bringing together the best of academic and government study of these issues. We will continue to actively support White House outreach efforts and help to initiate events across the country to help build a consensus on the next steps that policymakers should be taking in updating our policies and laws. We’re also excited to expand our Thomas Alva Edison Visiting Scholars program. Growing this initiative—which brings leaders in academia to the USPTO to develop empirical data and analysis on which to base agency efforts to promote innovation—will play an important role in helping policymakers, including the USPTO, Congress, and the federal courts.
In addition to our executive actions, the President’s initiative outlined a number of steps that Congress can take to reduce abusive PAE litigation while promoting a robust intellectual property system that drives innovation. We worked closely with bipartisan Congressional leaders during the development and passage of the Leahy-Smith America Invents Act (AIA), and we look forward to continue working with Congress to achieve the President’s goals.
The U.S. patent system “has spurred progress that has driven economic growth and transformed the way we live, work, communicate, and stay healthy,” National Economic Council Director Gene Sperling wrote in a White House blog June 4th. Our patent system is “enshrined in our Constitution…to encourage innovation and invention.” This Administration has done much to improve our patent system for the betterment of our economy and our society, including through the USPTO’s implementation of AIA. With your help we can—and we will—do more.
Posted at 10:27AM Jun 17, 2013 in patents |
Strengthening Our Engagement with China
As part of our ongoing engagement with China, the USPTO recently hosted two Chinese delegations and two U.S. delegations. The first delegation included nearly two dozen Chinese IP officials participating in a two-day meeting April 16-17. This meeting of the Intellectual Property Rights (IPR) Working Group was held under the auspices of the Joint Commission on Commerce and Trade (JCCT), the principal vehicle for the United States and China to discuss trade-related IP issues.
The JCCT U.S. delegation is led by two U.S. Cabinet-level officials—the Commerce Secretary and the United States Trade Representative (USTR)—who meet once a year either in China or the U.S. The JCCT IPR Working Group is one of many interagency working groups within the JCCT, led at the under secretary level by the USPTO and the USTR. The USPTO hosted the first JCCT IPR Working Group meeting nearly 10 years ago, and we were pleased to host our Chinese colleagues once again, as well as members of the U.S. interagency delegation.
The IPR Working Group meeting covered patent, trademark, copyright, and trade secret issues that are at the forefront of the U.S./China relationship. In addition, I met individually with Chinese Minister-Counselor for Commercial Affairs Zhang Shaogang, and the Chinese IP attaché in Washington, Chen Fuli. We discussed ongoing and future cooperative efforts, as well as some difficulties that many pharmaceutical and biotech companies are facing at the Chinese patent office.
On April 19, we hosted a delegation of Chinese officials involved in amending China’s copyright law. The seven-member delegation was led by Director General Wang Ziqiang of China’s National Copyright Administration, and included other officials from his office and senior representatives from the National People’s Congress, the State Council Legislative Affairs Office, and the Chinese Embassy.
Copyright and enforcement experts from the USPTO, the U.S. Copyright Office, and the U.S. Department of Justice participated in the all-day meeting, during which I delivered opening remarks. The session allowed U.S. officials to learn more about the latest draft of China’s copyright law amendments now pending at the State Council Legislative Affairs Office, and at the same time permitted the Chinese delegation to become better acquainted with U.S. law and practice.
China intends to amend all of its IP laws in the next few years, and we expect to have periodic technical discussions and expert exchanges with our counterpart agencies during this process. China’s legislature is now reviewing draft revisions to China’s trademark law. We expect that the draft copyright law amendments will be taken up within the next year or two by China’s legislature, and revisions to China’s patent law will likely follow soon after.
We also heard the news that the former minister in charge of China’s National Copyright Administration, Liu Binjie, is now with China’s National People’s Congress where he will continue to be engaged on legislative reform. We welcome continued cooperation with him.
Our engagement with China is indeed broader than a few visits to Washington, D.C. Most recently, I met with the American Chambers of Commerce for China and Shanghai and the U.S. Chamber of Commerce to discuss USPTO’s activities in China and their concerns. In addition, I look forward to meeting with the head of China’s State Intellectual Property Office, Commissioner Tian Lipu, at a meeting of the five largest patent offices in the world (the “IP5”) in Silicon Valley this week. There we will discuss a range of issues of concern to our offices and stakeholders.
During the past year, we established a dedicated China team at the USPTO, led by our former IP attaché in Beijing, Mark Cohen. The team is staffed by nearly 20 people in both China and the United States. Our IPR attaché program has been expanded to the U.S. embassy in Beijing and to consulates in the cities of Shanghai and Guangzhou. During the summer, we will be sending Joel Blank to serve as our next IP attaché in Beijing, and Timothy Browning to serve in Guangzhou. They will join Dr. Jared Ragland, our current IP attaché in Shanghai.
The USPTO has a stellar team of IP experts, and we do our job best when we work closely with U.S. stakeholders on issues of common concern. Keep us posted on what challenges you are facing in China and globally in protecting your IP.
Posted at 02:42PM Jun 03, 2013 in ip |
Advancing the Role of Trademarks
Guest blog by Commissioner for Trademarks Deborah S. Cohn
For the last two years the USPTO’s Trademarks team has actively engaged the private sector in developing pro bono and educational outreach programs. The primary goal of these programs is to offer the best possible intellectual property (IP) guidance and training to all of our stakeholders. These efforts follow the USPTO publication in April 2011 of a congressionally-mandated report outlining the extent to which trademark litigation harms small businesses. That report outlined steps the USPTO could take to better educate the public and stakeholders with resources enabling small businesses to further their understanding of trademark basics, enforcement measures, and available tools for protecting and enforcing trademark rights.
We have contacted bar associations in all fifty states to encourage the development of pro bono programs. The USPTO also launched a new trademark educational outreach program geared to general audiences that normally would not have easy access to such information, including non-trademark attorneys, the small business community, the entrepreneurial community, and students. In addition to these trademark-specific programs, the USPTO also conducts other programs designed to educate the public more broadly about intellectual property rights.
For several years, the USPTO has partnered with law schools across the country in an effort to provide pro bono services to trademark and patent applicants through student clinic programs under the supervision of licensed attorneys. In 2012, we dramatically increased the number of participating schools and therefore our reach into the community with these programs. 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. Visitors heard presentations from a wide range of USPTO personnel, including Acting Director Teresa Stanek Rea, attorneys from the Office of the Solicitor, and administrative trademark judges from the Trademark Trial and Appeal Board (TTAB).
The USPTO has also hosted a Trademark Expo for a number of years. These well-attended events combined seminars and exhibits to engage the public on trademarks and their importance. We have also published a significantly improved Basic Facts Booklet and produced a series of educational videos, all of which are easily accessible at www.uspto.gov.
We remain committed to advancing the registration of trademarks and understanding their role. As always, we welcome your feedback and suggestions on how we can improve our trademark educational outreach efforts. Simply email a comment to our dedicated mailbox, TMFeedback@uspto.gov. We look forward to hearing from you.
Posted at 11:32AM May 30, 2013 in trademarks |
Hack for Change
Government has vast amounts of information that can be used to improve our lives, and the Obama Administration has challenged federal agencies to make this data easily accessible to and usable by the public. Agencies across the government are using the National Day of Civic Hacking on June 1 and 2, to address that challenge.
Its name may trigger negative connotations, but civic hacking is a positive form of citizen engagement and volunteerism that uses technology to tackle social challenges. Civic hackers are community members—engineers, software developers, designers, entrepreneurs, activists, and concerned citizens—who collaborate with others, including government, to invent ways to improve quality of life in their communities.
The USPTO is using the government-wide focus on civic hacking as a great opportunity to crowdsource innovative ideas from our extensive trademark data. A trademark is a brand name, slogan, or logo that sellers use to identify and distinguish their products and services. Consumers rely on trademarks to distinguish among competing sellers and ensure the purchase of a quality product. Individuals and companies register their trademarks with the USPTO to enhance intellectual property protection for their brands.
The USPTO currently provides high-quality databases and tools for searching for information about pending and registered marks. However, these resources are used mostly by the trademark community and the USPTO for issues related to the federal trademark registration process.
In February, the USPTO released a comprehensive dataset of information on registered U.S. trademarks in the hope of spurring a flood of new inquiries into such areas as marketing, advertising, brand use, innovation, and new product and service introduction.1 We challenge National Day of Civic Hacking participants to use the trademark dataset and other open data sources to develop a tool that identifies federally registered trademarks that comprise an entity’s portfolio or brand, or are used on specific products, in designated industries, or in geographical areas. Such a solution could provide useful information on how entities develop and employ their brands; whether entities expand into new products, sectors, or regions; and the potential value of trademark portfolios to these entities. The solution may also yield industry-specific information that could inform consumer decisions and aid startups and other firms seeking to develop new product lines.
I urge all those looking for a unique way to volunteer in your community through technology to consider participating in the National Day of Civic Hacking. You can learn more at hackforchange.org.
1For a thorough description of these data, see Graham, S., Hancock, G., Marco, A., & Myers, A., “The USPTO Trademark Case Files Dataset: Descriptions, Lessons, and Insights,” SSRN working paper (2013) (“Case Files”).
Global Classification and the USPTO
A new chapter has opened in global classification of patent documents. A collaborative internationally compatible classification system—Cooperative Patent Classification (CPC)—has now been established between the United States Patent Office (USPTO) and the European Patent Office (EPO) for cataloging technical and patent documents used in the patent-granting process. Planned phase out of the current United States Patent Classification (USPC) system is scheduled for January 2015. During this transition, the Office will begin classifying in CPC while continuing to classify and route applications using the USPC system.
Placing a classification symbol on an application means an examiner has determined the proper technical field to place the invention. As the Office progresses through its two-year transitional period to full implementation of CPC, examiners will receive extensive training enabling them to effectively search in CPC and place CPC symbols on published patent applications and granted patents.
With over 8 million U.S. patent documents already containing CPC symbols, patent applicants and owners may be wondering what immediate impact CPC will have on patent searches and classification. It will mean a more comprehensive search of prior art. Existing search tools have been modified to provide all users the ability to search documents classified in CPC, USPC, and International Patent Classification (IPC) systems. These tools are available on the USPTO’s classification website. Once fully implemented, our examiners will classify and search exclusively in CPC.
Transitioning to CPC is a gradual process. All parties working with CPC should be patient with the process and proactive in learning how to use the new classification scheme and tools.
CPC is the future of classification for the USPTO and the EPO. Together, we are engaging other IP offices to expand the usage of CPC and explore future enhancements to the CPC system. By joining together and sharing resources with the EPO, CPC will provide far-reaching benefits to our employees, stakeholders, and the international patent classification community.
More information about CPC is available on the jointly maintained CPC website at cpcinfo.org where training materials and information about our transition are routinely updated. The USPTO welcomes your thoughts throughout this transition. Please send any questions or comments to the CPC mailbox at CPC@uspto.gov.
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.
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.
Posted at 10:41AM Apr 18, 2013 in trademarks |
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.
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:
An introductory video that familiarizes the examiners with the AIA FITF statute and highlights some of the major changes;
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
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.
A New Chapter for Protection of Industrial Design for the United States
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.