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

Friday Feb 08, 2013

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

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

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

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

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

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

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

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