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USPTO-led Executive Actions on High Tech Patent Issues

Executive Actions

On June 4, 2013, President Obama announced five executive actions “to help bring about greater transparency to the patent system and level the playing field for innovators.” Four of these actions were undertaken by the USPTO.  On February 20, 2014, the President announced three new initiatives aimed at encouraging innovation and strengthening the “quality and accessibility of the patent system.”  Below is a summary of the initiatives that the USPTO has implemented to realize the President’s vision.

Executive Action 1: Attributable Patent Ownership (formerly “Real Party in Interest”)

Real Party in InterestThe owners of patents and applications currently are not required to disclose their identities to the public.  Requiring patent owners and applicants to regularly provide the USPTO with information on the attributable owner of patents and applications, however, would result in several benefits such as:

  •  Enhancing competition by providing the public with more complete information about the competitive landscape in which innovators operate;
  • Facilitating more efficient technology transfers by making patent ownership information more readily available;
  • Reducing abusive patent litigation by helping the public better defend itself against abusive assertions;
  • Helping ensure the highest quality patents; and
  • Leveling the playing field for all innovators.

 See White House FACT SHEET (June 4, 2013).

Implementation

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Executive Action 2: Clarity in Patent Claims (formerly “Tightening Functional Claiming”)

Tightening Functional ClaimingPatents with clearly defined boundaries provide adequate notice to help others avoid costly and needless litigation down the road.  Despite improvements to the patent examination process and overall patent quality, stakeholders are concerned about patents with overly broad  claims, especially those that use functional language to describe inventions in high-tech fields.    See White House FACT SHEET (June 4, 2013).

Implementation

The USPTO has taken numerous steps to improve claim clarity and scrutinize functional limitations, including training examiners on handling functional claims, identifying Patent Trial and Appeal Board (PTAB) decisions involving functional limitations, developing a new glossary pilot program, holding a series of stakeholder engagement sessions, and revising the quality review process.

The office has implemented a multi-phased training program for all examiners that focuses on evaluating functional claiming and improving the clarity of the examination record, as shown in the table below. 

  Topic Status
1. 35 USC §112(f): Identifying Limitations that Invoke §112(f) Completed
2. 35 USC §112(f): Making the Record Clear Completed
3. 35 USC §112(f): Broadest Reasonable Interpretation and Definiteness of §112(f) Limitations Completed
4. 35 USC §112(f): Evaluating §112(f) Limitations in Software-Related Claims for Definiteness under 35 USC §112(b) Underway
5. Claim Interpretation: Broadest Reasonable Interpretation (BRI), plain and customary meaning of terms, and treating claim as a whole Summer 2014
6. Claim Interpretation: Examining Functional Claim Language Fall 2014
7. §112(a): Written Description for all technical fields Winter 2014
8. §112(a): Enablement for all technical fields Winter 2014

The office has created a webpage identifying key decisions from the PTAB that involve functional claiming.

The Glossary Pilot Program is designed to enhance claim clarity in the specification of software-related patent applications by encouraging and gauging the use of glossaries by patent applicants.  The pilot began on June 2, 2014 and will run for six months or until the USPTO accepts 200 grantable petitions, whichever occurs first.  

  • Outreach

At several well-attended roundtable events, the office and its stakeholders have come together to share ideas, feedback, experiences, and insights on improving claim clarity, particularly for software-related patents. 

The USPTO held a public forum co-sponsored with American Intellectual Property Law Association to identify best practices for improving the clarity of the examination record. The Office plans to incorporate the feedback received from the AIPLA event into future training modules.

  • Focus Sessions

The USPTO held internal focus sessions with examiners, the Solicitor’s Office, and the PTAB to identify best practices for improving the clarity of the examination record. The office plans to incorporate the feedback received from these focus sessions into future training modules.

  • Internal Quality Review

The office has improved its quality review processes to better measure how examiners are treating functional claims. In particular, the Office of Patent Quality Assurance (OPQA) recently expanded its data collection capabilities to capture data on the incidence of computer-implemented functional claiming in patent applications, documentation by examiners and applicants of claims invoking 35 USC § 112(f), and proper handling of such claims during examination. OPQA likewise implemented a procedure to acknowledge examiners for proper handling of functional claims when noted during the course of work product reviews.

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Executive Action 3: Empowering Downstream Users

Empowering Downstream UsersRecently, unsuspecting retailers, consumers, and small businesses have found themselves increasingly targeted by letters alleging patent infringement and demanding money, even in instances where a small business is using an off-the-shelf product. See White House FACT SHEET (June 4, 2013).

Implementation

To help level the playing field and educate retailers, consumers, and small businesses on their rights, options, and available resources, the USPTO has launched a robust online toolkit of information. This new online portal brings together for the first time in one place a wide-ranging, powerful set of tools and information.

The toolkit provides education and outreach materials covering topics such as:

  • The steps someone can take when they receive a patent infringement letter;
  • Basic information about patents, including explaining what a patent is and how to find a copy of a patent;
  • How to determine who owns a patent;
  • How to find an attorney; and
  • How to determine if anyone else is being sued by the patent owner.

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Executive Action 4: Expanded Outreach and Focused Study

Expanding Dedicated Outreach and StudyThe USPTO will continue its engagement with stakeholders and build on successful roundtables that the agency hosted on high tech patent issues.  Additionally, the USPTO will expand its existing Thomas Alva Edison Visiting Scholars Program to bring distinguished academic experts to the USPTO to develop and make available to the public more robust data and research on issues bearing on litigation.  See White House FACT SHEET (June 4, 2013).

Implementation

The USPTO has expanded its Thomas Alva Edison Visiting Scholars Program and has now selected three new scholars who will engage in focused study of various aspects of our patent system to provide insights on how to further reduce unnecessary litigation and improve the quality of issued patents.

  • Outreach Meetings

The USPTO has significantly increased its already extensive public outreach efforts to more actively engage key stakeholders in the software community (via multiple public Software Partnership events), trade and bar associations, business and university groups, and advocacy organizations, resulting in a wealth of valuable input on patent clarity, transparency, and software-related patents. 

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Executive Action 5: Crowdsourcing Prior Art

Crowd SourcingExaminers must assess the state-of-the-art in the relevant technology to determine if an invention is novel and non-obvious.  The most relevant information about a particular technology in an application is sometimes difficult for examiners to locate and use.  Because this information often resides with the technical and scientific community, crowdsourcing and third-party submissions are promising ways to uncover hard-to-find prior art.  See White House FACT SHEET (February 20, 2014).

Implementation

To make it easier for the experts to share information with the office, the USPTO is investigating a series of improvements to its processes including refining the third-party submission process and updating examiner guidance on the use of crowd-sourced prior art.

The USPTO is evaluating and is seeking feedback on the third-party submission process to determine how to increase the volume and improve the quality of these submissions.

  • Examiner Guidance on the Use of Crowdsourcing

The USPTO is updating its guidance and training to empower examiners to more effectively use crowdsourcing to locate prior art.

The USPTO hosted a roundtable event to solicit public opinions regarding the use of crowdsourcing and third-party preissuance submissions to identify relevant prior art and enhance the quality of examination as well as the quality of issued patents.

Through an initiative of the Software Partnership, the scientific community has shared search strategies, tools, and best practices with the USPTO to help identify the most relevant prior art. 

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Executive Action 6: More Robust Technical Training and Expertise

Technical TrainingExaminer training must keep pace with advancements in the state of the art.  Accordingly, the Obama Administration has put out a call for volunteers from industry and academia to provide “relevant, technical training and expertise to patent examiners” across all disciplines.  See White House FACT SHEET (February 20, 2014).

Implementation

The USPTO is taking steps to make it easier for experts from industry and academia to provide relevant technical training to examiners by building upon existing programs and making the four regional satellite offices permanent.

The Patent Examiner Technical Training Program (PETTP) [PDF] provides scientists and experts as lecturers to patent examiners in order to update them on technical developments, the state of the art, emerging trends, maturing technologies, and recent innovations in their fields. 

The Site Experience Education (SEE) Program provides patent examiners the opportunity to visit real-world sites, such as universities or companies, to learn about new technology and experience how technologies operate in the field. 

  • Making the Four Regional Office Permanent

The four regional offices in Dallas, Denver, Detroit, and Silicon Valley are/will be permanent locations for USPTO operations, allowing stakeholders to provide training to examiners in-person or virtually from these locations.

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Executive Action 7: Patent Pro Bono and Pro Se Assistance

Pro Bono | Pro SeFinancially under-resourced independent inventors and small businesses often need help with the patent process. To assist these inventors, the Obama Administration has called for an expansion of the pro bono program, which was initiated under the America Invents Act, to cover all 50 states. The Obama Administration also invites members of the patent bar to participate in the program. See White House FACT SHEET (February 20, 2014).

Implementation

The USPTO will provide dedicated educational and practical resources to applicants lacking representation (i.e., pro se applicants) and will continue to work with intellectual property law associations to expand the existing pro bono program to all 50 states.

  • Pre-filing Assistance for Pro Se Applicants

The USPTO will provide more staff dedicated to assist pro se applicants in preparing and filing their patent applications.  This additional support will complement the assistance currently provided by the USPTO’s Office of Innovation Development, which assists independent inventors, small businesses, and university-affiliated inventors by providing tools, links to local assistance, education, a bi-monthly newsletter, and state-specific resources,  as well as by conducting other outreach initiatives. Information for pro se applicants can be found at the Inventors Resources landing page.

  • Pro Se Examination Pilot

The USPTO will pilot establishing a team of patent examiners specifically trained and dedicated to examining pro se filed applications.

The USPTO helped to establish pro bono programs for “financially under-resourced independent inventors and small businesses" in states across the country under the America Invents Act.  The agency will appoint a new, full-time Pro Bono Coordinator to work with the AIA Pro Bono Advisory Council in expanding the existing program to all 50 states.

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Last Modified: 7/16/2014 4:18:11 PM