Remarks by Deputy Director Peter at the Boston Bar Association 2018 IP Year in Review

Remarks delivered at the Boston Bar Association 2018 IP Year in Review

Deputy Director of the U.S. Patent and Trademark Office Laura Peter

January 24, 2019

Boston, Massachusetts

As delivered

Good afternoon everyone, and thank you for that generous introduction. I am so happy to be able to be with all of you today, even if it is virtually. The theme of this conference is a year in review.

So let me start by saying wow!—what an exciting year it has been at the U.S. Patent and Trademark Office (USPTO)! Last February, Andrei Iancu was named the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. And, just a few short months ago, I was honored to be appointed Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO.

In June, we issued patent 10 million, signed by President Trump at the White House—of note, this was only the second signing of a patent by a president since John Quincy Adams in 1829. The last presidential patent signing was by Gerald Ford to celebrate the nation’s bicentennial in 1976. The issuance of patent 10 million represents a truly important milestone, not only in our nation’s history, but also in the context of human achievement.

In celebration of patent 10 million, Secretary of Commerce Wilbur Ross remarked, “Innovation has been the lifeblood of this country since its founding. Our patent system’s importance to the daily lives of every American has never been greater.”

Inventors and entrepreneurs are at the heart of our economy and our national development, and we at the USPTO are driven by this truth each and every day. During the last year, we worked hard to fulfill our constitutional mandate “to promote the progress of science and useful arts.”

Our mission this year has been focused on making patents and trademarks more predictable, more reliable, higher quality, and overall able to better withstand challenges down the line.

To that end, we have recently made a number of changes with respect to the guidance on the application of Section 101—the patent subject matter eligibility standard—and post-grant proceedings before the Patent Trial and Appeal Board. I will be discussing both in more detail here today.

We have also been working to ensure that our more than 9,000 patent and trademark examiners have the very best tools possible to perform a thorough search and examination. On the Trademark side, the number of trademark registration applications continues to rise; they have increased eight percent in fiscal year 2018. That increase is on top of the unprecedented 12 percent growth rate in fiscal year 2017.

Despite the massive growth, Trademarks has met all of its pendency and quality goals for more than a decade straight. We are very proud of that. Even so, this has been a strain on our personnel and resources.

So, we are currently hiring more trademark examining attorneys and will be integrating them into our operations and agency culture. We are also working on implementing mandatory electronic filing for all trademark applications.

The Trademark Trial and Appeal Board successfully initiated mandatory electronic filing almost two years ago. Although 99.9 percent of initial trademark filings are electronic, only 88 percent of applications remain electronic through the entire life of prosecution. In order to save time and money, and reduce scanning errors, our goal is to make the process fully electronic, end-to-end.

Another proposed rule in the works will require all foreign domiciled trademark applicants and registrants to be represented by a U.S.-licensed attorney in order to file trademark documents with the USPTO. This rule would help us effectively enforce compliance with statutory and regulatory requirements for all applicants, and would aid our efforts to improve the accuracy of the U.S. Trademark Register.

One of our main priorities on both the Patents and Trademarks sides has been, and continues to be, to change the dialogue surrounding intellectual property: to remind ourselves of our deep-rooted appreciation, and celebrate our triumphs. We must focus on the brilliance of our inventors, the excitement of innovation, and the amazing benefits all of us gain from these advancements. Indeed, the innovation that occurs around the nation, and specifically in this local community, is inspiring.

 As an example, let us talk about Massachusetts Institute of Technology (MIT) undergraduate students Jonathan Albert and Barrett Comiskey, and Professor Joseph Jacobson.

One day Jacobson wondered, “How could we create electronic books where you could walk around with basically a Library of Congress in a single device?” To help him develop the technology for this new groundbreaking type of book, he recruited math major Comiskey and mechanical engineering student Albert to his MIT Media Lab. Little did they know that their invention of electronic ink would revolutionize the way we read.

After years of research and much trial and error, around 3 a.m. on January 23, 1997—epiphany!

Comiskey recalled, “We took a microcapsule, put it on a slide in between two pieces of copper, put it under a microscope, and for the first time, we’re able to see a particle moving back and forth.” The two-pigment electronic ink invention consists of millions of tiny microcapsules, each about the diameter of a human hair. Electronic ink, explained Comiskey, is like “salt and pepper inside a microcapsule,” which can be separated by applying an electric field.

Inventors Barrett, Comiskey, and Jacobson have been awarded over 100 patents related to this invention. To commercialize their invention, in 1997 Jacobson, Albert, and Comiskey created the E-Ink Corporation.

In 2004, the first commercial e-reader using their patented electronic ink was introduced by Sony. Amazon and Barnes & Noble followed soon thereafter. Taiwanese business partner Prime View acquired E-Ink Corporation in 2009 for $450 million. The American dream!

In 2016, Albert, Comiskey, and Jacobson were inducted into the National Inventors Hall of Fame for this amazing advancement in technology. Looking back on their accomplishment, Comiskey said, “What makes me most proud…is the fact that we did something that they told us couldn’t be done.”

This story is but one example of why a robust intellectual property system is so important. Without a reliable, predictable patent system, inventors are less likely to persevere to find the best solution, investors may not risk the capital required to bring these inventions to market, and society may be deprived of important life-altering inventions. We need to continue to stimulate and incentivize innovation.

To increase the predictability and reliability of patent rights, as I mentioned earlier, the USPTO worked this year on clarifying patent subject matter eligibility under section 101—of course within our statutory authority, Supreme Court precedent, and the letter of the law.

Although the statutory language of Section 101 has remained substantially unchanged for centuries, recent judicial decisions have introduced a degree of uncertainty in the law. Some have argued that the courts have blurred the lines between the patentability statutes.

Obviousness and indefiniteness logic may be creeping into the subject matter eligibility determination. This has led to confusion and uncertainty for applicants, attorneys, and our examiners who struggle with these issues every single day.

As many of you know, we have provided numerous guidance memos over the last year. For example: guidance on the “conventionality” analysis in the second step of the Mayo/Alice framework, on “method of treatment” claims, and just a few weeks ago, on January 7, a revised framework for the 101 subject matter eligibility analysis at the USPTO.

As the 2019 revised Subject Matter Eligibility guidance was just published earlier this month, let me discuss this a bit more. Under the first step of the guidance, examiners will look to see if the claimed invention falls within the four statutory categories: process, machine, manufacture, or composition of matter. This is not new; we always do this.

If the invention does fall in one of these categories, examiners will determine if the claims recite subject matter within one of the judicial exceptions: natural phenomenon, laws of nature, or abstract ideas.

After detailed studies of all relevant cases, and based on our extensive experience, the USPTO has categorized “abstract ideas” into one of the following three categories:

1. Mathematical concepts: these include mathematical relationships, formulas, and calculations.
2. Certain methods of organizing human interactions, such as fundamental economic practices; commercial and legal interactions; managing relationships or interactions between people; and advertising, marketing, and sales activities.
3. Mental processes: these are concepts performed in the human mind, such as forming an observation, evaluation, judgment, or opinion.

If the claims at issue do not recite subject matter falling into one of these judicial exception categories, then the 101 analysis is essentially concluded, and the claim is deemed patent eligible.

However, if the claims do recite subject matter in one of the excluded categories, the Supreme Court precedent requires more analysis. Specifically, the Court instructed us that in such cases we need to decide whether the claims are “directed to” the excluded categories. To that end, examiners will assess whether the claims are directed to mere principles (or “basic tools”), on one hand, or practical applications of such principles, on the other. If a practical application is recited, the claim passes the 101 test and the eligibility analysis is concluded.

We believe these two clarifications will help drive more predictability back into the analysis while remaining true to the case law that gave rise to these judicial exceptions in the first place.

Most importantly, the groupings and clear instructions to examiners will help ensure the patentability rejections stay in their proper lane. Claims that are not novel or are obvious should be rejected under 102 or 103. Claims that are indefinite or not adequately described and enabled should be rejected under 112.

In sum, our new guidance is meant to simplify the 101 analysis by synthesizing controlling case law, and providing greater clarity of the basis of a rejection for the majority of cases that come before us. Since the day the 2019 revised guidance issued, we have been diligently training the examination corps.

For the public, the new guidance and related materials have been posted on our website. Also, and we recently conducted a chat session on this topic, the recording of which will be available online. We additionally, have a free 3-hour virtual training session scheduled for February 26 for external stakeholders, which is based on the recent examiner training.

As we begin to use this new guidance in examination, we are looking for your feedback as well. I encourage you to provide your comments on the new guidance by the March 8 deadline.

As I noted earlier, we have also made changes to post-grant proceedings over the last year. Our goal is to ensure that all post-grant proceedings at the USPTO are balanced and meet the Congressional intent of the America Invents Act (AIA), passed in 2011.

Once a patent issues, it is important for everyone—the patent owner, competitors, industry, and the public at large—to be able to reasonably rely on the patent grant. To that end, we have recently initiated a number of changes at the PTAB. For example, we updated the Trial Practice Guide in August. We published two new Standard Operating Procedures for PTAB in September. And in October, we published both a final rule on the claim construction standard, and a proposal for an updated claim amendment procedure in AIA trials.

More specifically, since November 13, all petitions that have been filed before the PTAB will be interpreted under the Phillips claim construction standard, rather than the broadest reasonable interpretation standard (BRI).

This means that the same standard will now be applied in AIA Trials before PTAB, as is applied in civil actions in district courts and in proceedings at the International Trade Commission (ITC). For the sake of predictability and reliability, the boundaries of a patent should not depend on which forum happens to analyze it. Having the same claim construction standard will improve efficiencies for everyone involved.

Additionally, we created a Precedential Opinion Panel (POP), which governs precedential and informative decisions of the Board. This panel will be used, among other things, to provide consistency on issues of exceptional importance to the agency. And finally, the new claim amendment proposal is designed to ensure that post-grant proceedings are not all-or-nothing.

It is not in the interest of the patent system as a whole to invalidate a patent entirely if it actually describes patentable subject matter and can articulate appropriately scoped claims. Therefore, the amendment process should allow the patent owner a meaningful opportunity to amend the claims.

The public comment period for this proposal ended in December, and we are now actively reviewing the comments received from 49 diverse stakeholders, and considering next steps.

Our goal is to take a holistic approach to fully implement the intent of the AIA, which, I believe, was for AIA trials to be a true alternative to district court litigation—not a way to take sequential bites of the apple, eating away at the core of patent validity.

As I mentioned, over the last year, we have also paid special attention to improving the tools available to patent examiners to do their jobs. As you are no doubt aware, finding the most relevant prior art during the examination process has become an increasingly difficult task.

Over the past couple of decades, there has been both a publication and an accessibility explosion. This means that the amount of published literature has increased exponentially, and continues to do so.

Yet, for any one patent application, there is still only one examiner with a limited amount of time to examine that application and all related art. Parties in litigation or other disputes, however, can more easily devote almost unlimited time and resources to find the most relevant prior art.

As a result, a gap can develop between the prior art identified during patent examination, and the prior art an opponent may find during a patent dispute many years later. In an effort to increase the reliability of the patent grant, we at the agency have been diligently working to narrow this gap, drawing on both our internal and external resources.

To this end, we have established a task force at the USPTO for identifying and creating artificial intelligence (AI) tools. We hope that AI tools will help search the ever-increasing mountain of information and expedite finding the most relevant prior art, which is increasingly becoming the proverbial needle in a haystack.

One such tool we are developing is a new cognitive assistant, currently called “U” or “Unity.” The Unity tool leverages AI and machine learning in a way that would augment our existing next-generation patent tools. Patent examiners will be able to easily conduct a “federated search” across patents; publications, non-patent literature and images, and a “pre-search report” will be generated for the examiner using AI and machine learning-based algorithms.

We’re also exploring semi-automated tools for search query expansion, which are trained to mine technology-specific synonyms with the help of crowdsourcing or, as we call it, “examiner-sourcing.” This new capability holds the potential to promote consistency in searching.

To help ensure the most efficient use of artificial intelligence, we are also soliciting input from external experts across the industry. In a recent Request for Information, we asked four basic questions: How can we effectively and consistently search further? How can we segment information more effectively? How can the USPTO patent search retrieve the most relevant results, not just more results from a broader corpus? And how can we review the search results more quickly?

The response period recently ended and we received over 60 responses from industry leaders in the AI field from a range of companies, including leading companies and small businesses. We are currently reviewing the comments and believe the diverse information collected will help us to revolutionize the prior art search paradigm.

We are also collaborating with foreign patent offices in ongoing initiatives such as the Expanded Collaborative Search Pilot (CSP) and Global Dossier. Under the CSP program, by combining the search results of examiners at the USPTO, with those from the Japan Patent Office and/or the Korean Intellectual Property Office, examiners will have the best prior art in front of them before issuing their first office action.

Additionally, the USPTO’s Global Dossier, created in collaboration with the IP5 offices, provides free access to view an entire patent family in one location, including prosecution histories from foreign counterparts in real-time, and is the only location to find English computer-automated translations of Chinese, Japanese, and Korean office actions.

Global Dossier enables our examiners, and the public, to have streamlined access to work done in foreign offices in real time, so they can more easily find relevant references and prior art earlier in the prosecution. We at the USPTO are constantly striving to improve the search and examination of our applications in order to provide a solid, reliable patent grant.

In accordance with our renewed focus on the importance of innovation, we also recently revamped the USPTO homepage. Each month, a new feature story highlights an entrepreneur, an inventor, or a journey of innovation.

This month, for example, we feature two outstanding women inventors, Dr. Irina Buhimschi and Dr. Cherry Murray, who have made significant advances in the fields of medicine and nanotechnology.

I want to leave you with a final story of an inspiring local inventor who is literally saving lives around the world.

Dr. Donna Brezinski is a neonatologist at Boston Children’s Hospital and lecturer at Harvard Medical School. Years ago, while working at a small community hospital outside Boston, Dr. Brezinski was treating twin babies for severe jaundice. Both infants required phototherapy treatment, but the hospital only had one state-of-the-art device, and one older, less-effective device.

Upon attempting to order a new phototherapy device, she was shocked at the cost—almost $4000. This is when Dr. Brezinski realized that although severe jaundice is virtually 100 percent curable, over 100,000 newborns die from this condition every year. In developing countries, and even in the more rural areas of the U.S., the access to reliable electricity prevents this simple phototherapy treatment.

So, Dr. Brezinski sat down at her kitchen table with a sewing machine and began to develop what is now called the Bili-Hut device. It is a reflective bassinet or tent with blue LED lights that surround the baby to provide life-saving phototherapy treatment.

The Bili-Hut costs only about $250 to make, is lightweight and easily transportable, and runs on a standard 12-volt car battery for up to a month. Dr. Brezinski founded Boston-based Little Sparrows Technologies in 2013 to provide Bili-Hut devices worldwide.

They have already been used to save the lives of newborn babies in Haiti, India, and Burundi. Little Sparrows Technologies has been the recipient of numerous grants and awards, including being a 2018 USPTO Patents for Humanity winner.

As we look back over the last year in intellectual property, let us celebrate the inventors and entrepreneurs, like Jonathan Albert, Barrett Comiskey, Joseph Jacobson, Dr. Buhimschi, Dr. Murray, and Dr. Brezinski. For they are the real heroes of our society.

Thank you again for the opportunity to be with you today. I welcome any questions you may have.