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

Friday Jan 25, 2013

Trademark Dashboard For Quarter 1 Is Ready

Guest blog by Commissioner for Trademarks Deborah Cohn

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

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

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

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

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

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

Tuesday Jan 22, 2013

Using a Data-Driven Approach for Quality Improvements

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

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

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

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

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

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

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

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

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

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

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

Tuesday Jan 15, 2013

Interviews and Patent Quality

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

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

Until now.

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

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

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

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

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

Friday Jan 04, 2013

Big Improvements to Our Online TMEP

Guest blog by Commissioner for Trademarks Deborah Cohn

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

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

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

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

Thursday Dec 20, 2012

Congress Acts on AIA Corrections Bill

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

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

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

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

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

Tuesday Dec 18, 2012

Progress Continues at our Four Satellite Offices

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

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

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

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

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

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

Monday Dec 17, 2012

A Status Update on Use of Third Party Prior Art Submissions and Post-Grant Reviews

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

Today marks three months since some of the key new mechanisms of the AIA went into effect.   A good opportunity to report on the uptake for two sections -- submissions to the PTAB, and third party prior art submissions. Given the critical mandate of the AIA to empower our stakeholder community to play an active role in assisting the USPTO in its ongoing commitment to patent quality, initial usage of the applicable new provisions is worth reporting, to say the least.

To put the lead first, we’re encouraged by the third party submissions and PTAB filings we’re seeing under the new rules, to date.

We’ve received 88 PTAB submissions, 73 for inter partes reviews and 15 for covered business method reviews. We’re on our way for meeting our FY 13 expectations, and our PTAB Chief Judge James Smith puts it well when he says “momentum is building.”

We’ve received 270 prior-art submissions from third parties, also in line with expectations. The leading art group receiving submissions? TC 3700, which includes many software-related inventions such as those found in electronic gaming devices and medical equipment. And when looking at the spread of submissions as a whole, it’s important to note that there are not a lot of classifications untouched. With many technologies being represented, as opposed to just one or two, we’re seeing that the AIA is indeed supporting the patent system broadly.

So what do we learn from these numbers? First, they demonstrate that the public finds valuable the new ways to interact with the USPTO. Second, they will contribute quickly to improved patent quality. With the PTAB proceedings, we will see valid patents upheld while addressing those that may require correction. With prior art submissions, examiners will be able to consider public submissions and ensure high quality work during the review process.

We’ll continue to monitor PTAB and prior-art submissions. The numbers suggest we’ve got some great new tools at our collective disposal.

Thursday Dec 13, 2012

USPTO Named One of Federal Government’s Best Places to Work

Guest blog by Chief Administrative Officer Frederick Steckler

Today our agency had the great honor to be named one of the U.S. Federal Government’s Best Places to Work today by the non-profit Partnership for Public Service (PPS), which ranked the USPTO # 5 out of 292 federal agency subcomponents based on a survey of more than 700,000 civil servants conducted earlier this year by the Office of Personnel Management (OPM). The USPTO has climbed the rankings in recent years, from 105th in 2009, to 56th in 2010, to 19th in 2011—a remarkable achievement that speaks volumes about the dedication to excellence of every employee in our agency.

One large component of this success is our hugely successful telework program, which PPS recognized earlier this year with a nomination for its annual Samuel J. Heyman Service to America (Sammies) awards. This improved flexibility in work location for more than 64 percent of our workforce has reduced examiner turnover to historically low levels, increased examiner productivity, and saved the agency millions each year in overhead costs. Building collaborative team-based approaches to projects and increasing technical and leadership training opportunities have also paid huge dividends in improving the morale and effectiveness of our highly talented and creative employees. And of course thanks to the Leahy-Smith America Invents Act signed into law last year, the agency has been able to accelerate our hiring of patent examiners from just over 6,000 five years ago to nearly 8,000 patent examiners today. At the same time, our backlog of unexamined patent applications has dropped from 760,000 at the start of 2009 to 605,000 today—despite an increase in patent applications during that same period.

Last week, OPM released the results of the 2012 Federal Employee Viewpoint Survey (EVS). The USPTO had a 76 percent participation rate, and its scores had increased across all of the categories measured by the survey—including areas like Effective Leadership and Strategic Management—with the agency ranked in or near the top 10 percent in each category. This, too, is a tribute to the tireless dedication of our employees and agency leaders. Agency leadership is currently examining each of the categories in greater depth so we can improve or sustain those things that we are doing well and fix any problems that may have been identified in the survey responses. The business units will be preparing an overview of the results in their individual areas to share with employees.

If you conduct business with the USPTO and have the opportunity to interact with agency staff, you should know how truly fortunate we all are to have some of the most knowledgeable and hard-working employees anywhere in the federal government or the private sector. I join with Director Kappos in being very proud of the great work our managers, examiners, and other professionals have done these past few years, during a period of historic change for our nation’s intellectual property laws and our agency itself. As Director Kappos has said many times over the past few years, the three words you won’t hear around the USPTO is, “Business as usual.” The results of the EVS and PPS rankings prove that beyond any shadow of a doubt.

Thursday Dec 06, 2012

Proposed Legislation Aims to Boost Patents for Humanity Program

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

As many of you know, the USPTO’s Patents for Humanity program—to incentivize the use of patented technologies that help alleviate poverty and suffering—has created quite a buzz. Since launching last February, we've generated interest from almost every imaginable patent sector, including the biotech, food, energy, and information technology industries, as well as universities, humanitarian nonprofits like the Gates Foundation and Doctors Without Borders, and also the media. Now we can add Congress to that list.

New legislation announced this week would build upon the prize competition by making the business incentives for using patented technology a reality. On Tuesday, Senate Judiciary Committee Chairman Patrick Leahy of Vermont, along with Judiciary Committee Member Senator Christopher Coons of Delaware, introduced S. 3652, legislation that aims to bolster the USPTO’s Patents for Humanity initiative by making acceleration certificates awarded through the program transferable to third parties. If the bill is enacted, recipients of a Patents for Humanity award could sell their certificate on the open market, turning their good deeds into operating capital. At a time when our nation's small businesses identify access to capital as a top concern, this additional source of revenue can simultaneously strengthen our economy and improve lives around the globe.

Patents for Humanity is the USPTO's awards competition, recognizing those who apply patented technology to solving global challenges in health and standards of living. In the first six months of the program, we received 81 applications on technologies such as vaccines and medicines, diagnostic tests, nutrient supplements, improved crops, irrigation techniques, water sterilization, sanitation systems, patient care tracking, off-grid power generation, and mobile banking. Applicants range from garage inventors to multinational corporations, all focused on alleviating humanitarian suffering through groundbreaking new technology. Now in the selection phase, we expect to make awards to extraordinary applicants early next year.

On behalf of the USPTO, I would like to thank Chairman Leahy and Senator Coons for their ongoing support of our nation's intellectual property system and its potential to contribute to the greater good, all while supporting 40 million American jobs and $5 trillion of GDP. We look forward to working with Congress to strengthen the Patents for Humanity program.

Monday Dec 03, 2012

USPTO Releases its FY 2012 Performance and Accountability Report (PAR)

Guest Blog by Tony Scardino, Chief Financial Officer

The USPTO has published its Performance and Accountability Report (PAR) for fiscal year (FY) 2012. Think of the PAR as our annual report, similar to what private sector companies prepare for their shareholders. Each year, the USPTO publishes this report to inform the public on the agency’s performance and financial health. Here at the USPTO, we take pride in producing a PAR that meets the highest standards of quality and accountability.

Our PAR charts our progress toward meeting three goals in our 2010-2015 USPTO Strategic Plan: optimizing patent quality and timeliness; optimizing trademark quality and timeliness; and providing domestic and global leadership to improve intellectual property policy, protection, and enforcement worldwide. These goals govern the quality and quantity of our service to intellectual property stakeholders. I’m proud to say that the USPTO met all 11 of its strategic goal performance targets in FY 2012. 

The PAR also 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 2012 marks the 20th consecutive year that the USPTO’s financial statements have received an unqualified 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.

The PAR is a record of our achievements, but it is also an honest discussion of the challenges we face as an agency moving forward in FY 2013. We will be proceeding with our fee setting efforts, implementing new training requirements in our patent examining corps, and encountering other challenges as we continue implementing the America Invents Act.

We hope you find value in the PAR as a faithful snapshot of our FY 2012 performance, and gain greater insight into our activities and accomplishments.

Thursday Nov 01, 2012

A Day Like Any Other...

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

“It is probably safe to say this week did not turn out like anyone had originally planned.” I first used those words in this blog more than two-and-a-half years ago when the “Snowmageddon” snowstorm crippled the Washington, D.C. area. And like February 2010, this week’s “Frankenstorm” of Hurricane Sandy brought much of the East Coast to a standstill.

Despite the emergency circumstances and federal government closures, the USPTO and its employees shifted gears and performed admirably, demonstrating our leadership in telework for government agencies. During a natural disaster that closes our offices, USPTO employees must first care for their homes and families. And yet once everything was in order this week, they still showed an extraordinary ability to carry on business as usual in the face of extreme challenges.

Despite the emergency government shut down on Monday and Tuesday, our patents and trademarks teams nonetheless averaged more than 70% productivity. A remarkable achievement, considering many of our examiners couldn’t participate because of widespread power outages. Our Trademark Assistance Center—the call center for trademark owners and attorneys to contact with general questions about the trademark process—was fully operational during the Hurricane Sandy closure, with 100% participation from the work-at-home employees.

This level of performance does not come easily and it does not come overnight. Under the guidance of our telework coordinator Danette Campbell, we created and implemented the systems and processes necessary for a premier telework program. Events like this week’s hurricane remind us how far we’ve come in service to the public and to our employees. And I thank our employees for the tremendous job they’ve done to make our telework program world class.

All of us at the USPTO are thinking of our families, friends, colleagues, and fellow Americans who are suffering hardships because of this natural disaster. We wish them comfort, safety, and a return to “normal” as soon as possible.

Thursday Oct 18, 2012

USPTO Harmonizes Professional Conduct Rules

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

Today I’d like to take up a topic that affects many of us, and one that is getting significant focus these days at the USPTO—our professional conduct rules. We are proposing to modernize our Code of Professional Responsibility for attorneys and agents. Admittedly, this move is overdue. The last substantial update was based on the ABA Model Code of Professional Responsibility. Since that time, decades ago, almost the entire country has moved to update their local bar rules to conform to the newer ABA Model Rules of Professional Conduct.

In keeping with the mandates of the Leahy Smith America Invents Act of 2011, USPTO recognizes the concurrent need to follow nationally applicable standards of ethical and professional conduct. Additionally, our current proposal eliminates the annual practitioner maintenance fee.

Under our proposal, most ABA Model Rules provisions have been adopted wholesale or with minor revisions. By updating, streamlining, and conforming USPTO rules, the proposal harmonizes most practitioners’ professional responsibility obligations by aligning them with state bar requirements.

As an important consequence of adopting rules consistent with practitioners’ state bars, the USPTO will provide practitioners with uniform ethical obligations when practicing before the Office. Practitioners would no longer have to go back and forth between the old Model Code and the new Model Rules. Practitioners would also have the benefits of comments, annotations, case law and other resources to guide compliance. Moreover, the proposed rules, like the existing rules, largely serve to codify obligations that already apply to the practice of law under professional and fiduciary duties owed to clients.
A comparison chart of the ABA Model Rules of Professional Conduct and the proposed USPTO Rules of Professional Conduct, along with information regarding future outreach, is located on the USPTO website.

We are eager to know what you think of the proposal. There is a 60-day comment period which closes on December 17, 2012. Comments should be sent by email to: And while they won’t be entered into that record, you are also welcome to leave comments here on the blog.

Wednesday Oct 17, 2012

Another Banner Year for Trademarks

Guest blog by USPTO Commissioner for Trademarks Deborah Cohn

We’ve sorted through the facts and figures and at the end of our fiscal year September 30, we’re proud to report continued outstanding performance in our Trademarks business unit. In FY 2012, more new trademark applications were filed than any other year and the number of trademarks in continuous use exceeded 1.8 million registered marks. Total new classes surpassed 415,000—an increase of 4.1% over the previous fiscal year and more than 13,600 higher than the record level last set in 2008.

All the while, and for the sixth year in a row, quality and pendency results have met and exceeded targets. The Trademarks performance dashboard has been updated to showcase our record 2012 performance results, and I invite you to take a look at how the Trademarks team is working to serve you.

Our three quality indicators are better than their respective targets, which set high standards for examination quality. Our newest indicator, ‘exceptional office action’ continues to exceed expectations for evaluating the ‘excellence’ of the examiner’s writing, evidence, and search strategy in preparing the office action. Quality results are reinforced by constant feedback, specialized training, and online tools and manuals to ensure the quality of the trademark register.

First action pendency has stayed in the target range to issue a first action between 2.5 and 3.5 months from filing, every month. Pendency to registration continues to remain at historically low levels. Disposal pendency—the time from when an application is filed until a trademark is registered or abandoned—has been under 12 months for the past three years. Another record. This is due in part to the progress made from greater acceptance of electronic filing and use of TEAS Plus applications. This promotes more efficient electronic processing, which now comprises more than 77 percent of all applications processed to disposal.

As I’ve noted in the past and it bears repeating, our record performance is the result of a number of factors including greater use of the systems, tools, and resources necessary to manage new application filings electronically and by having dedicated and qualified people to manage them well. 

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

Wednesday Oct 03, 2012

Claim Your Exemption!

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

The World Intellectual Property Organization hosts its Fiftieth Series of Meetings of the Assemblies of the Member States this week. Being with the delegation representing the U.S. in Geneva, I’m reminded of a very important service the USPTO provides to help U.S. patent applicants comply with European Patent Office (EPO) rules if you’re also filing an application there after first filing it with the USPTO. It’s a service that saves you time and money with your European application, but this beneficial service could be in jeopardy if U.S. applicants don’t make use of it.

As you may know, Rule 141 of the European Patent Convention requires applicants to file a copy of the search results from a previous patent application to which the European patent application claims priority. This applies to all European patent applications filed on or after January 1, 2011. Because of an arrangement worked out between the USPTO and the EPO, U.S. applicants are currently exempt from a requirement to personally transmit search results for a U.S. priority application to the EPO. At no charge to you, the USPTO will electronically deliver these search results from U.S. priority applications to the EPO.

The hitch, however, is that maintenance of this exemption is dependent upon delivery of search results by the USPTO to the EPO as soon as they become available, including search results from unpublished U.S. applications. Since the USPTO is prohibited from providing information about an unpublished U.S. application to a third party without the applicant’s consent, timely delivery of pre-publication search results to the EPO requires applicants to provide the USPTO with the proper consent to release that search result information.

This is key, because failure to deliver the search results in a timely fashion could result in the EPO rescinding the exemption, and that would then require all U.S. applicants to provide the search result information to the EPO at their own time and expense. The bottom line is that if you’re filing in both offices, your participation is critical and unquestionably is to your benefit.

So what do you need to do? If you’re one of the aforementioned applicants, file a Certification and Authorization Form PTO/SB/69 in each U.S. nonprovisional application to which priority is intended to be claimed in a subsequent European patent application. (It can even be done electronically through EFS-Web.) This provides the USPTO with the necessary applicant consent to deliver to the EPO the search results from an unpublished U.S. application. File it in the U.S. application prior to filing the European application in order for search results to be delivered to the EPO without delay should they become available prior to publication of the U.S. application.

The current exemption is a huge benefit for all U.S. applicants who subsequently file at the EPO. Find more details and instructions in the July 30, 2012 advisory on the EFS-Web page on our website and in the Federal Register Notice announcing this service.

Monday Sep 24, 2012

PTAB and Patentability Challenges

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

Recently, some commentators have questioned whether the new Patent Trial and Appeal Board can consider patentability challenges brought under 35 U.S.C. § 101 in post-grant review proceedings or covered business method review proceedings. I'd like to address the issue squarely and clearly in this blog, and I apologize in advance that for extreme clarity I am going to use "lawyer-ese" in this blog.
The commentators note that, under the AIA, any ground that could be raised under 35 U.S.C. § 282(b)(2) or (3) can be raised in a post-grant review or (with exceptions not relevant here) in a covered business method review.
Those grounds include:

(2) Invalidity of the patent or any claim in suit on any ground specified in part II as a condition for patentability.

(3) Invalidity of the patent or any claim in suit for failure to comply with—(A) any requirement of section 112, except that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable; or (B) any requirement of section 251.

The commentators note correctly that § 101 is not included in § 282(b)(3). However they also assert that § 101 is not included in § 282(b)(2) even though § 101 is included “in part II” of Title 35. In their view, § 101 is not “specified in part II as a condition for patentability” because the title of § 101 is “Inventions patentable,” unlike §§ 102 and 103, which have titles including the term “Conditions for patentability.”
We disagree. As we described in our final rules implementing post-grant review and covered business method review in the Federal Register, in our view the “grounds available for post-grant review include 35 U.S.C. 101 and 112, with the exception of compliance with the best mode requirement.” 77 Fed. Reg. 48,680, 48,684 (Aug. 14, 2012). This interpretation is consistent with both the relevant case law and the legislative history.
Both the Supreme Court and the Federal Circuit have concluded that § 101 is a condition for patentability. In Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 12 (1966), the Supreme Court stated that the 1952 Patent Act “sets out the conditions of patentability in three sections,” citing 35 U.S.C. §§ 101, 102, and 103. The Supreme Court has also addressed invalidity under § 101 when it was raised as a defense to an infringement claim under § 282. See Mayo Collab. Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1305 (2012).
If that were not clear enough, the Federal Circuit expressly rejected the argument – raised by the dissenting judge in the case – that § 101 is not a “condition for patentability” under § 282, stating that “the defenses provided in the statute, § 282, include not only the conditions of patentability in §§ 102 and 103, but also those in § 101.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1330 n.3 (Fed. Cir. 2012) (internal quotation marks omitted) (citing Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 543 F.3d 657, 661 (Fed. Cir. 2008)).

The Federal Circuit in Dealertrack also made clear that the use of the term “Conditions for patentability” in the titles of §§ 102 and 103, but not § 101, did not change the result, relying on the Supreme Court’s pronouncement in Pennsylvania Department of Corrections v. Yeskey, 524 U.S. 206, 212 (1998) (quoting Trainmen v. Baltimore & Ohio R.R. Co., 331 U.S. 519, 528-529 (1947)), that a statute’s title “is of use only when it sheds light on some ambiguous word or phrase” in the statute and that it “cannot limit the plain meaning of the text.” Id. (quoting Trainmen v. Baltimore & Ohio R.R. Co., 331 U.S. 519, 528-529 (1947)).
The legislative history of the AIA also makes clear that Congress intended the PTAB to consider challenges brought under § 101 in post-grant reviews. For example, a key House Committee Report states that “the post-grant review proceeding permits a challenge on any ground related to invalidity under section 282.” H.R. Rep. No.112-98, at 47 (2011). On the Senate side, Senator Kyl also included “section 101 invention issues” among those “that can be raised in post-grant review.” 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011).
So, the courts and Congress have indicated quite clearly, in our view, that the PTAB should consider patentability challenges brought under § 101 in post-grant and covered business method reviews. Unless the courts or Congress tell us otherwise, we will do so.

United States Patent and Trademark Office
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