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

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.

Tuesday Sep 18, 2012

China’s SAIC Minister Zhou Visits USPTO

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

On Sept 10, 2012 the USPTO was privileged to host Minister Zhou Bohua and his senior delegation from the State Administration for Industry and Commerce of China (SAIC) of the People’s Republic of China. Minister Zhou, visited us for about four hours, as part of a stopover en route to a meeting in Brazil. This was likely the first time that a Minister from SAIC has visited USPTO.  
SAIC remains one of China’s largest ministries, with 364,199 civil servants (according to their 2011 annual report). SAIC houses the CTMO, or Chinese Trademark Office, the Trademark Review and Appeals Board (TRAB), as well as other IP-related agencies. It implements and enforces laws regarding company and enterprise names and business licenses, trade secret, consumer protection, market regulation, and antitrust law. Unlike agencies such as China’s State Intellectual Property Office (SIPO) which has offices in provinces and major cities, SAIC has offices in local governments that reach down to Chinese municipal, county and even sub-county/township level. It is China’s largest IP-related agency in terms of overall employees and penetration into localities.

In the past several years USPTO has worked on several areas of common concern with SAIC, including: training of examiners and translation of our Trademark Manual of Examining Procedure (TMEP) into Chinese; training on three dimensional and sound trademarks; exchanging information on protection of geographical indications; discussion of measures to deal with abusive trademark registrations; discussions on trademark dilution and well-known marks; training in on-line counterfeiting and IP infringement; and encouraging SAIC to develop an on-line trademark database including an English language search interface. Many of these developments took place in the context of the memorandum of understanding (MOU) we signed with SAIC in 2008, and with the assistance of our IP Attaches. Minister Zhou observed that many of these exchanges have helped in not only promoting better understanding of our IP systems, but also in assisting market reforms in China and providing more global opportunities for new businesses.

Minister Zhou toured USPTO headquarters, met on a government to government basis with USPTO and colleagues from Office of the United States Trade Representative (USTR), United States Department of Justice (USDOJ) and Federal Trade Commission (FTC), and later met with representatives from organizations such as the U.S. Chamber, International Trademark Association (INTA), American Intellectual Property Law Association (AIPLA), Licensing Executives Society (LES) and the US-China Business Council. He was extremely candid and helpful in responding in a constructive and informed manner to all the questions we raised, including several pages of questions from industry.

Group shot from SAIC-USPTO meeting

We learned of several important new developments and areas of concern. One key area is improvements in trademark pendency. Although SAIC has succeeded over the past three years in eliminating the huge backlog at the CTMO and TRAB, the rapid escalation in trademark filings may present real challenges in continuing to maintain past improvements. The current goal of the CTMO is “the year you apply for a trademark, is the year you will be granted one.”

Minister Zhou hoped that the revisions to the trademark law, which are now pending at the State Council Legislative Affairs Office (SCLAO) will help in sustaining quality and growth. He noted in particular that the revisions will help with appropriate use and prosecution of trademarks, and he hopes that passage by the NPC may occur as early as next year. He also expected that there would be greater deterrence from the administrative trademark system with higher fines available under the revised law. He also separately noted that new guidelines on referrals of administrative trademark cases to criminal prosecution are being prepared jointly with other IPR and law enforcement agencies. This “referral rate” is often used to measure the deterrence of the administrative system and has traditionally been quite low. Last year the rate of referral from administrative enforcement to criminal prosecution was only 0.61%.

China has also become a member of the “TM 5” in Trademarks, much as it has been a member in patents, and Minister Zhou indicated an interest in participating in an ID List Project of the TM 5, which could help in insuring harmonization of sub-classifications of goods and services.
Trade secret matters have been a hot topic of discussion between the U.S. and China, with several high profile cases that have brought considerable media attention. Our focus with Minister Zhou was on two key areas of his responsibility: administrative enforcement of trade secrets and revisions to the rather old law governing trade secrets, the Anti Unfair Competition Law (AUCL) (1993). Minister Zhou was candid in acknowledging that theft of trade secrets affects Chinese and foreign companies alike and due to restrictions on evidence gathering and other compulsory measures by administrative agencies, SAIC’s administrative enforcement cases to date have been relatively modest matters brought mostly against small companies or individuals. Under current Chinese law, he believed that the courts and police are better equipped to handle complex trade secret theft cases.
SAIC has been discussing means to improve the Anti Unfair Competition Law with the SCLAO. On our suggestion, Minister Zhou said he would look into recommending that the AUCL be amended to clarify that preliminary injunctions, evidence and asset preservation measures would be available in the new law, as they are already provided for in the trademark, copyright and patent laws. Minister Zhou quickly recognized that immediate provisional relief is critical in trade secret matters in order to prevent further loss to rights holders. He also welcomed further exchanges on trade secret matters, which we plan to follow-up on.

SAIC also discussed the fifth draft of its guidelines on handling of IPR in antitrust matters. We urged that these guidelines will be available for public comment. On the substance, Minister Zhou did state that SAIC did not view intellectual property and antitrust law as contradictory concepts; both laws have a goal of promoting market efficiency and innovation. Minister Zhou advised that SAIC would only investigate licensing transactions that hurt competition, and that his agency has not yet had one case in this area since the law’s passage (2008), although it had prosecuted 16 antimonopoly enforcement cases. Minister Zhou welcomed the USPTO’s participation in this area, and noted that he was working closely with our colleagues from USDOJ and FTC on the IPR guidelines. 
Industry also raised a question concerning SAIC’s role in enforcing trademark rights when the local trademark owner asserts the rights against a foreign trademark owner who has commissioned the manufacture of products in China, as was the case in the recent Proview/iPad dispute. Minister Zhou said the iPad issue was raised by many local AIC’s after the initial trial court decision in Shenzhen that was adverse to Apple. His Ministry’s position was not to take any administrative enforcement action until a final decision from the Guangdong High Court on appeal. One of the key reasons for this was that any action could adversely affect Apple and the iPad trademark at a time when matters had not been settled.

The volume and variety of work handled by SAIC is indeed staggering, and Americans have important interests in these developments. SAIC has been the largest trademark office in the world for the last 10 years based on their data of trademark applications. We were told that there are 206,000 registered American-owned trademarks in China, and 120,000 new foreign trademarks are filed each year in China. With approximately 1,500,000 trademark applications expected this year, and with 68,836 reported administrative trademark enforcement actions last year, engagement on trademark office related matters has been especially important for Americans. Of particular note, there were 17,022 administrative trademark enforcement actions taken by SAIC on behalf of foreigners in 2011, which was nearly 14 times the number of all foreign-related civil litigation involving all types of IP rights that were disposed of by the China courts in 2011 (1,321).

We highly valued this exchange with Minister Zhou and his delegation, and we hope we can have more exchanges with SAIC in the future. 

(This blog was jointly written by Director Kappos and Mark Cohen, Senior Advisor to Director Kappos on China matters.)

PTAB Submissions Have Commenced

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

I thought I'd write to observe the occasion of the first submissions to our new Patent Trial and Appeal Board (PTAB) through their new IT system called Patent Review Processing System (PRPS).

We've had a team of PTAB judges and IT folks working together for several months to prepare IT systems and associated processes so that, from the start, the big new post-grant processes (post-grant opposition, inter partes review, covered business method review) could be submitted and managed electronically using a modern workflow system—PRPS.

The start date for these new submissions was this last Sunday, September 16. In view of the weekend timing—commencement of the new procedures at midnight Saturday/Sunday morning—it would have been business-like for the team to declare that the brand new IT systems would be brought online Monday morning at start of normal business. Anyone wanting to make a submission between midnight Saturday/Sunday and Monday business could do it using the old mail submission approach. But of their own accord the team chose the harder, best way. As you may have learned in Chief Judge James Smith’s guest blog a few days ago, they declared they would bring PRPS up at midnight in the middle of a nice early fall weekend, and accept whatever requests might come in via our spiffy new software from the beginning.

This decision of course necessitated advance planning and staffing to make a significant version 1 IT deployment over a weekend, going live at midnight. So the team worked through last week, then brought staff into the office Saturday evening to prepare for the big bring-up. Frankly we did not even know if any users were going to spend their Saturday night filing new post-grant challenges. But we were ready.

As of midnight on Sunday September 16, just as the new PTAB went into effect per AIA, the team switched online PRPS for intake of post-grant challenges. It worked, and sure enough, users accessed the system immediately to do business. Within minutes numerous users were working with the new software, and soon our first submissions began coming into the Office. In those first 24 hours, we had five inter partes and five covered business method submissions in the system, and all continues to function well. Not without a few glitches to be sure (there always are some glitches in a new system), but it is functioning well overall.

So there you have it. A new, ambitious IT system up and running and USPTO employees electing to work an entire weekend evening and overnight to ensure maximum uptake for the newly effective provisions of the AIA.

I don't often crow externally about the dedication and professionalism of our folks at the USPTO—mostly I think it is for our users to say if we are doing a good job. But in this case I will declare I am enormously proud that our team has reached higher than anyone asked them to, or even had the right to ask them to. And they have made a big success of a big project in a short period of time.

Thanks team for a job superbly done on the PRPS V1 deployment and bring-up of USPTO's new post-grant IT system!

Friday Sep 14, 2012

Announcing the Patent Trial and Appeal Board (PTAB)

Guest Blog by Chief Judge James D. Smith, Board of Patent Appeals and Interferences

September 16, 2012 marks a momentous occasion for the Board of Patent Appeals and Interferences.  On that day, we become the Patent Trial and Appeal Board (PTAB).  In keeping with that change, the Board will open for business to accept petitions for some of the new America Invents Act (AIA) post grant proceedings using the Patent Review Processing System (PRPS), our new, web-based e-filing tool.  We are extremely excited to take part in this historic transition.

To commemorate the transition to the new Patent Trial and Appeal Board and as a demonstration of our desire to serve, the Board will be staffed during the entire 24-hour period of that first day.  From early Sunday morning at 12:01 a.m., until late Sunday evening at 12:00 p.m., Board personnel will be available to assist the public with filing new cases.  After opening day, Board personnel will be available during normal business hours, 8:30 a.m. to 5:00 p.m.  Questions may be submitted by phoning 571-272-PTAB (7822) or by emailing  Feedback on the PRPS system is also welcome, and we have established a separate email box for receiving such feedback at
As Chief of the Board, I am extremely happy of the many accomplishments made by the Board team toward meeting our AIA responsibilities.  Many team members have worked tirelessly, preparing for the big day – September 16th, 2012.  I would like to thank all those people involved, both internally and externally, for making September 16th a reality.

Wednesday Sep 12, 2012

Progress Report on Satellite Office Openings

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

It has been a few months since we announced we would be opening three new USPTO satellite offices in Dallas-Fort Worth, Denver, and Silicon Valley, so I'd like to share details of the progress we are making in all three communities.

Our satellite office team visited all three cities within weeks of our announcement, scouting potential office space and meeting with local public officials, as well as business and community leaders. We have moved in partnership with the General Services Administration (GSA) to identify locations that will be the most cost-effective, provide the greatest economic impact for the region, and enable us to recruit and retain the best employees.

GSA’s procurement process requires us to initially consider space that already is owned or leased by GSA. We were recently able to find such space in the Central Business District of Denver, in the Byron G. Rogers Building, thus securing that site with record speed.  A GSA renovation of the Denver building will be completed next summer, at which point USPTO will build out the interior office space.

In Silicon Valley and Dallas-Fort Worth, we are assessing the usefulness of existing federal space and considering whether to explore pursuing alternative leased space. It must be noted, however, that the timing of the identification of physical office space is in no way an indication of when we might be able to open these offices.  Further, selection of physical space is not the sole metric of progress, but rather one of many steps we are simultaneously advancing.  And in all three cities, we are moving ahead on all fronts.

We have from the time of our July announcement moved simultaneously in all three communities to take a number of steps that are necessary to open each of the offices in a timely fashion.  We are underway in staffing up all of the new offices, working to identify leadership and staff who know the unique contours of the business landscape in each metro area.  In all three communities, we are also reaching out to community stakeholders (business leaders, economic development commissions, and local officials) to help us spread the word about forthcoming Board of Appeals and patent examiner jobs, generating interest and helping to start the process of identifying key bases of skilled workers.  For the Silicon Valley location, we’ve recently run job postings on for administrative law judges and are now actively reviewing the applications received.

As Deputy Undersecretary Terry Rea noted just the other day, our Detroit office is fully operational, with patent applications under review and interviews with applicants being conducted. And the Detroit office is creating good jobs in that community: we anticipate having 100 patent examiners and 20 judges on site there by next summer—and a similar impact should be felt in our three other cities.

All of these steps and progress will lead to the point where regional entrepreneurs in Silicon Valley, Denver, and Dallas-Fort Worth will have greater insight into the patent application process and access to the USPTO facilities. Stay tuned to this blog as we provide more updates on our USPTO satellite offices, and as we continue to engage with our stakeholders around the country.

Friday Aug 31, 2012

Announcing Text2PTO: Online Filing of Your Patent Applications as Text Documents

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

Efficiency drives innovation, and the USPTO is determined to offer innovators the most efficient patent application process in the world. The latest improvement we plan to introduce to the application process will enable our Office to accept patent application submissions in text based format. This is the same format that most applicants currently use to prepare patent applications for filing. We are looking to implement this new service, which we call Text2PTO, with the goal of providing online filers significant benefits over their existing filing experience, while minimizing changes to their existing work practices. We will be working with you in the development process to get it just right.

Text2PTO builds on our existing Electronic Filing System, EFS-Web, improving the ease and functionality of electronic filing. Its benefits to applicants as well as to USPTO are many. It increases the accuracy and integrity of the application file, while eliminating the need for applicants to create three separate PDF documents for abstract, claims, and specification. Applications filed using Text2PTO will be able to use new USPTO analytical reporting tools, permitting some formalities checks as well as access to information related to patent families, continuity, claim dependencies and other application content. The overall process will result in significant efficiency gains throughout the authoring, prosecution and publication process.

How will Text2PTO work? Applicants will write their applications using a word processing tool as they currently do. Then, instead of converting the file to a PDF, they will simply upload the text file to the USPTO. As part of the text submission process, a web based validation tool will be available (but not required) to assist applicants in preparing their documents for submission and identify incorrectly formatted or inappropriately included content such as track changes and document properties information. Formalities checks—such as word counts, application part identification, and searching for legal terms--can be done prior to submission. Warning messages and detailed help will be provided through Text2PTO to assist the online filer in creating a properly formatted document for submission.

Text2PTO will provide applicants the ability to retrieve a copy of the text-based document from the USPTO at any time throughout prosecution, facilitating review and/or amendment. If desired, the Text2PTO amendment validation tool will generate the properly formatted mark-up language based on the types of changes made to the document.

On the USPTO side we anticipate significant cost savings, as we will eliminate the need to scan, OCR, and error-correct incoming patent applications. We will pass these savings on to applicants through filing fee discounts for applications submitted through Text2PTO.

We are seeking stakeholder feedback during the developmental phase of the project. We are holding focus sessions over the next few months to obtain input as we develop specific project requirements. As we develop this new system we will also be looking for volunteers from the stakeholder community to participate in user-center design sessions and the test pilot group.

To get involved, contact our eFiling Modernization Project team at

And as always, comments in response to this blog post are welcome.

United States Patent and Trademark Office
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