--This transcript has been edited to correct obvious typographical errors. Some answers have been expanded for clarity. Expanded text appears in brackets. --
SPEAKER_Todd Dickinson: Welcome to our first on-line conversation with the Commissioner of Patents and Trademarks. I'm really looking forward to this. Please send your questions on in and I'll do my best to answer them.
dar: Do examiners receive any continuing legal training after the initial months in the patent academy?
SPEAKER_Todd Dickinson: Thanks for being our first question. Yes, examiners have continuing patent office training after the initial months. We have in-house legal courses, we have an extensive mentoring program, we have law school tuition reimbursement and after hours technical training.
s williams: Intellectual property rights need better protection from foreign abuse. What measures do you plan to take for that purpose?
SPEAKER_Todd Dickinson: We are currently involved in negotiations for a patent law treaty and trademark law treaty. We are also actively involved in TRIPS enforcement and training activities. We are also working with the Department of Justice and Customs Service for enhanced enforcement activities.
ChrisSidoti: Commissioner Dickinson...hello and congratulations on your appointment. Can you give us any updates on the implementation of TLT and any new issues that have arisen, such as submission of actual color drawings?
SPEAKER_Todd Dickinson: Thanks, Chris. We are on schedule to implement TLT [Trademark Law Treaty] on Oct. 30, 1999 and we will accept color drawings and give the file a filing date, but the applicant will have to give us a black and white drawing before registration.
FileTMApp: Has the Trademark Office published its requirements for receiving electronically filed trademark applications?
SPEAKER_Todd Dickinson: We sure have. They are on our Web site, www.uspto.gov. Go to the Trademarks page and you should find all of the answers.
madison: Does the PTO plan to introduce editable PDFs for their official forms?
SPEAKER_Todd Dickinson: That's a good question. We have PrintEFS that is available for downloading from our Web site that provides help and user-friendly screens for completing bibliographic data for patent applications.
s williams: I don't want to take my share of your time, Commissioner, but what's the status of your confirmation.
SPEAKER_Todd Dickinson: Thanks for asking. My nomination went to the Senate on July 1. We are hoping that the Senate Judiciary committee will take it up shortly after the Congressional summer recess. But we'll see.
dar: I hear the Congress is proposing a reduction of $50 million to the PTO budget? What will this mean to the PTO?
SPEAKER_Todd Dickinson: As you can imagine, this concerns us. Some of the things at risk would be our cycle time/pendency goals, our ability to automate examination processes, and our e-commerce initiatives.
A12343: In view of the significant number of patents that have been found unenforceable by the Federal Circuit due to 112 problems, what steps is the US PTO taking to make the examination process consistent with Federal Circuit opinions?
SPEAKER_Todd Dickinson: While I'm not sure I necessarily agree with your premise, we have, however, promulgated Written Description Guidelines for 112 and have regular training for examiners on CAFC opinions.
batman: What is happening with PTO space and when will we be moving?
SPEAKER_Todd Dickinson: It has been announced by GSA that a lease for our space consolidation project will be awarded to LCOR. They are the developer for the space near Old Town Alexandria, the so called Carlyle Site. There is ongoing litigation which may impact the move date. However, if things proceed on the current path, the move would begin in roughly 2003.
fcox:: Can we hope to see the day when a single patent application can serve worldwide?
SPEAKER_Todd Dickinson: Well, protection for America's inventors beyond our borders is becoming a much more important question; particularly as the global economy increases. One of the ongoing discussion we are having with colleagues in foreign patent offices is how best to achieve this. Currently, there is no consensus, but it is a matter of regular and ongoing discussion.
Scott Sullivan: What is being done to speed up the appeal process? I've had a case on appeal for four years!!!
SPEAKER_Todd Dickinson: Believe me, Scott. I have been there, and it concerns me too. At the BPAI [Board of Patent Appeals and Interferences] we have hired about 16 new judges and we are hiring more, we have implemented appeals conferences to reduce the inflow of cases and will double the number of decisions issued by judges over two years ago.
alex: could you comment on the standard applied to provisional patent application in contrast to regular patent application? How specific and extensive the provisional one has to be?
SPEAKER_Todd Dickinson: Provisional applications are not examined; they are principally used to preserve a filing date as a priority document in the U.S. The law requires, however, that they be complete enough to meet the requirements under Section 112, First Paragraph. If you have questions, you may want to consult a patent attorney or agent.
georgegottlieb: Question: The "doing business" PO rejection seems to be gone forever -- could you post about a half dozen recent patents that convey this new approach, but would probably have been rejected in the past ?
SPEAKER_Todd Dickinson: It would probably be inappropriate to respond directly since all patents are presumed, by law, to be valid. Training examples are available on our Web site in the Patents Area. [at http://www.uspto.gov/web/offices/pac/compexam/comguide.htm]
stevett: How long on average does it take for a patent to be rejected or accepted, if the application is a fairly simple invention?
SPEAKER_Todd Dickinson: We are currently averaging 8 months to first office action for simple mechanical inventions. We are working daily to try to shorten this time.
Furgang: Can you tell us why the TTAB takes well over a year to make decisions on the most basic motions and then gives the parties an extremely short window in which to act on the decision and when, if at all, this circumstance will be cured.
SPEAKER_Todd Dickinson: Like the BPAI, the TTAB [Trademark Trial and Appeal Board] faces some big challenges. We are authorizing additional judges and working with Chief Judge Sams to issue more opinions quicker. We are also hiring more interlocutory attorneys to handle motions. We can do better, however.
Paul H McDowall: Please comment on the desirability of U.S. adopting the Madrid Protocol and/or statutory database protection in the U.S. Thank you!
SPEAKER_Todd Dickinson: Regarding Madrid Protocol, the PTO would very much like to have the US join the Treaty. The hold up is over the European Union voting rights. Once they decide, we can move forward. On database protection, the Administration has testified generally in favor of both the Bliley and Coble bills. However, we have significant issues with both and will watch what happens in Congress.
Ray Wood: Please comment on electronic filing of patent applications.
SPEAKER_Todd Dickinson: This has been one of the long-time goals of the PTO. Currently, you CAN file Trademark applications electronically, and about 15% are filed that way. We will soon begin a pilot program for electronic filing of patent applications, where the technology issues are significantly greater. Compatibility with customers is also an issue. We are testing a lot of these tools as we speak. We really want to get this done, however.
Daniel M Rosenblum: Congratulations on your nomination. Kudos, and Good Luck. Please send a copy of your reply to this question, in particular if after 1: 00 pm est, to the CELNET 2000 WORLDWIDE address listed in the MILLENNIUM FEVER trademark application dated March 23rd 1999...Please comment on the following two subjects. 1) With the passing of the Honorable (and estimable) Giles Rich in the Court of Customs and Appeals, there is a significant absence there found. What qualities in a lawyer or Judge would you
SPEAKER_Todd Dickinson: Thanks, Daniel. Part of your question got cut off, but Judge Rich leaves enormous shoes to fill. He was one of the giants in IP in this century. I would hope that someone who would be appointed would bring a similar background in intellectual property and personal qualities that Judge Rich possessed.
Pat Admin: What is the expected future of 18 month publication in the U.S.?
SPEAKER_Todd Dickinson: As you may know, a bill is pending in Congress right now, which would deal with this issue. If it passes, we will go to 18-month publication within 6 months after passage. There is an exception for those who do not wish to foreign-file their application.
moon: While the PTO database has a great deal of useful information, it would be helpful if at least two other features were possible: access to the assignment database and the ability to order files for review from the File Information Unit. Is it likely these features will be added in the near future?
SPEAKER_Todd Dickinson: These are great suggestions. Actually, they are currently under review. We are always eager to add additional access to our information. For example, later this summer we will pilot Internet access to check the location and status of your pending application. This will be called PAIR - Patent Application Information Retrieval system.
really pd: How many examiners will PTO hire this year?
SPEAKER_Todd Dickinson: As you may know, we have had an aggressive hiring program the last 2 years. Last year we hired 728 new examiners, and this year, close to 800. We also anticipate hiring 700 more each of the next two years, basically doubling our examiner population.
409TM: Are you getting the administration support to provide you with the resources that you need to make the changes you feel are necessary at the PTO and do you feel that you are being disadvantaged with respect to changes you would like to make because we now have a lame-duck President?
SPEAKER_Todd Dickinson: We get strong support within the administration for almost all of our issues. The Clinton-Gore administration, I think, really understands the importance of intellectual property. Honestly, we really haven't seen much impact at all as the administration approaches the next election. This may be because we have traditionally enjoyed bipartisan support for our issues.
PTO Man: I would like to apply for a patent, but don't know where or how to start. Who can I contact at the PTO? (I am an independent inventor).
SPEAKER_Todd Dickinson: Great question! Start with the PTO Web site -- there is a lot of great information there. Within 2 weeks, a separate independent inventor Web site will be available. [You can also visit one of our Patent and Trademark Depository Libraries. The library list can be found on our Web site, www.uspto.gov, under the "Libraries-PTDLs" button on the first page. You can call 1-800-PTO-9199 for general information about patents.] You may also want to contact a local patent attorney or agent, or independent inventor organization in your area. Check the yellow pages or call Don Kelly at (703) 306-5568. Don's our Administrator for Independent Inventor Programs.
SPEAKER_Todd Dickinson: Since we were down for a little bit, we will keep going for another 15 minutes, if that's okay.
really pd: Do you expect substantive harmonization to be part of the next round of GATT TRIPS discussions?
SPEAKER_Todd Dickinson: We will be pursuing negotiations of multi-lateral issues at the WIPO at a substantive PLT (Patent Law Treaty) meeting following the PLT Diplomatic Conference next year. GATT TRIPs is a much more difficult issue which is currently being discussed within the Administration. At the moment, the PTO is concerned that this is not the forum for these negotiations.
kfredric: When will e-mail access be set up for communication to the patent examiners?
SPEAKER_Todd Dickinson: It is currently available. The only caveat is that you need to give us permission to exchange case specific information. If it requires a signature, however, that still needs to be done on paper. That will hopefully change when we implement our Electronic Workplace initiative.
Lynn J Alstadt: Two years ago the Office proposed to require applicant's for the Patent Bar Exam to take a course in claim drafting and Patent Office Practice before sitting for the exam. Is the Office still considering that proposal?
SPEAKER_Todd Dickinson: Thanks, Lynn. This was part of a big package of proposed changes in the Patent Bar Rules. The level of support varied widely, so they were not implemented. We are still looking at ways to improve, however, my first priority is getting the exam graded and the results out as quickly as possibly. The last exam results were out within 6 weeks, a very significant improvement of which we are very proud.
sglm: Does the PTO have any plans to make patents available in .pdf format on the web?
SPEAKER_Todd Dickinson: The patent images are currently available [one page at a time] in a TIFF format, which mirrors our internal databases.
Peter: As a non-patent lawyer I am amazed at the e-commerce business model patents being issued. They seem incredibly obvious to me. It seems to me that just adding the Internet to a known business practice is not inventive. What am I missing?
SPEAKER_Todd Dickinson: One thing I would suggest you really focus on is the actual claim language. Very often people only look at the broad concept. However, the claims actually define the invention and they are often much narrower than the headlines would suggest. If you have prior art, however, which was not considered, we have procedures, like reexamination, which would allow us to review new information.
tcast: Is there a specific time on Tue when we can count on the database update to be complete?
SPEAKER_Todd Dickinson: The Patents are put on the PTO's internal database sometime early Tuesday morning. I am not sure of the specific time, but they are normally available at the start of the business day no later than 6:30 a.m. [The patents are put on the PTO's Web image server later Tuesday morning. The patent full-text Web database update, which provides the connection (links) to the Web image database, is normally completed during Tuesday afternoon. There is no specific time that we can give you for completion of the update.]
Tamara: Can you tell me how to check the registered owner of a patent or trademark?
SPEAKER_Todd Dickinson: [Patent and trademark ownership information is available in our Patent Assignment Search Room and Trademark Assignment Search Room in Arlington, VA. Also, Patent and Trademark Depository Libraries have assignment information on CD-ROM. The PTDL list can be found on www.uspto.gov. If you prefer, you may call 1-800-PTO-9199 for more information.] The Office of Public Records maintains our Assignment database. [They can provide an "Abstract of Title", which shows the chronology of recorded documents that affect the ownership of a patent or trademark. The fee is $25.00 per document, but does not include copies of the assignment deeds.]
csmith: Do you really think PTO will move to the Carlyle site?
SPEAKER_Todd Dickinson: At this time, everything looks to be on schedule. There is ongoing litigation, however, which may impact the timing.