Leahy-Smith America Invents Act Implementation


President Barack Obama signs the America Invents Act September 16, 2011, at Thomas Jefferson High School for Science and Technology in Alexandria, VA

MESSAGE FROM JANET GONGOLA, SENIOR ADVISOR: USPTO Timely Releases Two New AIA Reports on Virtual Marking and the Satellite Offices

The USPTO is pleased to announce the release of two reports mandated by Congress under the AIA. Both reports were due in September 2014, and the agency issued each on time.

Satellite Office Report

Today, on its due date of September 30, 2014, the USPTO submitted the Satellite Office Report to Congress. The agency explained the criteria used to select the location of its four satellite offices in Detroit, Denver, Dallas, and the Silicon Valley as well as the process and timing to build out those offices.

The Report also delved into the achievements of the satellite offices, including their impact on the patent application backlog and pendency, examiner recruitment and retention, and stakeholder outreach. The USPTO reported that examiners in the satellite offices are contributing to a reduction of the patent application backlog and pendency equal to the examiners in Alexandria. The Office likewise reported that examiner recruitment and retention in the satellite offices of Detroit and Denver (the locations where permanent offices currently exist) match that for examiners in Alexandria.

Finally, the agency detailed numerous and varied stakeholder outreach events in each geographic location ranging from Saturday Seminars to educate stakeholders about the patent system to meetings with industries to spur innovation and the U.S. economy.

Virtual Marking Report

Two weeks ago, on September 16, 2014, the agency submitted its Virtual Marking Report to Congress. Under the AIA, an article may be marked with the word "patent" or abbreviation "pat." followed by a website address where the article is associated with the relevant protective patents. The Office solicited public input through a Federal Register Notice in preparing this Report and received nine comments in response. The agency drew from these comments in preparing the Report.

The agency first addressed the effectiveness of virtual marking as an alternative to physically marking the article with the patent information, concluding that virtual marking is serving its congressionally-intended purpose of making it easier for manufacturers to mark small-sized articles and keep patent information current on articles without having to re-tool production equipment or create new molds.

The Report next addressed whether virtual marking has limited or improved the public's access to patent information along with possible legal issues that arise from virtual marking. Because there has not been any litigation involving the virtual marking statutory provision yet, the USPTO noted that follow-up may be needed here.

Lastly, the agency considered deficiencies in constructive notice arising from virtual marking as compared with physical marking, not identifying any significant ones, though pointing to aspects to watch going forward.

The Virtual Marking and Satellite Office Reports are available here: http://www.uspto.gov/aia_implementation/aia_studies_reports.jsp.

USPTO to Host America Invents Act First Inventor to File Roadshow in Seven Cities Nationwide

The United States Patent and Trademark Office (USPTO) will host seven roadshows across the country between September 16 and October 9, 2014, to increase understanding of the First Inventor to File (FITF) provisions of the America Invents Act (AIA). The public meetings will serve as an opportunity for USPTO subject matter experts and stakeholders to discuss the FITF provisions and updates since its implementation in March 2013.

The USPTO specifically wants to broaden public knowledge of the FITF provisions and assist understanding of the provision's administrative processes to aid inventors and their representatives in the filing and prosecuting of patent applications under the FITF system. At each roadshow, panelists will discuss FITF statistics to date, the applicability of the FITF provisions on patent applications filed today, the FITF statutory framework and its exceptions, and AIA evidentiary declaration practice useful to invoke these exceptions. The experts will present a variety of sample scenarios to illustrate both the applicability of the FITF provisions as well as tips for prosecuting applications filed under the FITF provisions.

The roadshow series will begin on September 16 and run through October 9, 2014, with stops in Concord, New Hampshire; Madison, Wisconsin; Dallas, Texas; Silicon Valley, California; and Atlanta, Georgia, as well as on USPTO campuses in Alexandria, Virginia, and Denver, Colorado. The roadshows in Alexandria on September 23 and Denver on October 2 will be webcast live through the USPTO website. The roadshow events are free and open to the public. Seating is available on a first-come, first-served basis. For more information, including roadshow logistics, venues, and webcast access information, please refer to the AIA roadshow page.