Remarks by Deputy Director Russell Slifer at the Advanced Patent Law Institute

USPTO Deputy Director Russell Slifer

November 5, 2015, 12:05 p.m.

Advanced Patent Law Institute, Austin, TX

Remarks as Prepared for Delivery

Thank you, Rob. It’s a pleasure to be here, and to have this opportunity to speak to the Institute again. I’m also pleased to see that one of my predecessors as Deputy Director of the Patent and Trademark Office, Terry Rea, will be speaking here tomorrow, as well as our Acting Deputy Chief Judge of the Patent Trial and Appeal Board, Scott Boalick. As their presentations and others at the Institute will attest, the IP landscape in this country, and the patent landscape in particular, have changed dramatically since many of us began our careers.

When I graduated from law school—and probably some of you as well—the Federal Circuit was still relatively new, and patent law was the domain of a handful of specialists. Patent issues were discussed only in specialist trade journals and certainly not in the mainstream press. Presidents didn’t talk about patents in their State of the Union addresses, and the Supreme Court rarely chose to hear patent cases. But times have changed, and that change has been driven in part by changes in innovation.

Most of us are familiar with the critical role patents have played in American history, from their key role in the growth of transportation industries—trains, planes, and automobiles—to innovations in communications, from the telegraph to the telephone to the Internet. Abraham Lincoln—the only president to ever own a patent—once said that our patent system added “the fuel of interest to the fire of genius.” And those of us who have worked for high-tech companies and innovators can attest to the timeless truth of Lincoln’s words.

In recent years we have seen the drive for economic growth spur the pursuit of patents, and both the pursuit and protection of those patents has turned a once quiet corner of the law into a busy and sometimes noisy place. The Supreme Court now regularly hears patent cases, and big, general practice law firms vie to build their patent prosecution and patent litigation practices. And in 2011 we had the most sweeping overhaul of our IP system in over 50 years with the America Invents Act—co-authored by Texas Congressman Lamar Smith and passed with overwhelmingly bi-partisan support. I’ll say that again: overwhelmingly bi-partisan support. When was the last time you heard those words together?

And now, of course, we at the USPTO are working with members of Congress on both sides of the aisle as we weigh further changes to U.S. patent law. So there’s never a dull moment in patent law these days, and that’s a good thing. No matter what perspectives we bring to the table, I think we all welcome an increased awareness of the importance of intellectual property, and of its critical role in fostering American innovation, competitiveness, and economic growth.

On the subject of the America Invents Act, one key action the USPTO has taken as a result of that historic law is opening a total of four regional offices highly innovative regions across the country. The first of those offices opened in Detroit, in July 2012, and the second in Denver last June. It was the opportunity to lead the Rocky Mountain Regional Office in Denver that induced me to leave my position as Chief Patent Counsel for Micron Technology, in Boise. As a long-time user of our patent system, the opportunity to help establish a lasting USPTO presence in a part of the country near and dear to my heart was too good to pass up. A few weeks ago we opened our third office in the Silicon Valley—specifically, San Jose—and Director Lee and I will have the honor of being present for the opening of our new Texas Regional Office next week, in the Terminal Annex Federal Building in downtown Dallas, along the southern edge of Dealey Plaza.

As the name implies, this office, like the other three, will be truly regional in scope. It will not only benefit innovators and entrepreneurs in the Metroplex, but provide everyone in Texas and across this broader region improved access to our nation’s IP system. If you live here in Austin, for example, you won’t have to fly to Washington, D.C. to do business with our agency when you can do it much less expensively in Dallas, whether: meeting with patent examiners (in person or via a secure video link) to discuss applications, or attending hearings of the Patent Trial and Appeal Board. And the office will provide additional benefits to the kinds of clients you represent, including the opportunity to provide technical training on the latest technology to our examiners, or engage in a variety of education and outreach programs that will be hosted at the office, and in the surrounding areas. And perhaps most importantly, our presence in Dallas will make it easier for our agency to engage more directly with those of you who live and work here or elsewhere in the region.

One of the areas in which this engagement will be especially helpful is our ongoing commitment to improving patent quality. The USPTO’s ability to promptly issue patents with precise and clear language is critically important to all of us at the agency. We recognize and appreciate the fact that the public needs to know the scope of the rights a patent provides so they can make informed decisions. High-quality patents provide unambiguous notice of those rights through clear claim boundaries, clear specifications, and clear prosecution histories. Patents that don’t have this level of clarity, on the other hand, tend to enable questionable business models, as well as abusive patent litigation practices and demand-letter threats. Which is why the USPTO has made clear that enhancing patent quality is a top priority. Last fall, we established within our Patents organization an Office of Patent Quality, focused solely on enhancing the excellence of our: patent work products, customer service, and quality metrics. We also created a new Deputy Commissioner of Patent Quality position to lead that Office.

In the meantime we’ve had extensive engagement with internal and external groups to help guide the agency in identifying an initial set of initiatives for us to tackle in 2016. They include: a Clarity of the Record Pilot, under which examiners will include as part of the prosecution record, definitions of key terms, important claim constructions, and more detailed reasons for allowance and rejections of claims. We’ll also be conducting a new round of Clarity of the Record Training for our examiners. And we’re transforming our review data capture process to ensure that any review of an examiner’s work product by someone in the USPTO will follow the same process and assess the same facets of examination. The end result of these efforts will be (1) the ability to provide more targeted and relevant training to our examiners with much greater precision, (2) increased consistency in work product across the entire examination corps, and (3) greater transparency in how the USPTO evaluates examiners’ work product, both internally and externally. By taking these steps, we’re ensuring that the USPTO—which we like to call “America’s Innovation Agency”—is positioned for a continuous process of patent quality improvement well into the future.

We’re also working globally on this issue, engaging with other patent offices around the world to develop best practices on enhancing patent quality. For example, we recently started a Collaborative Search Pilot with the Japanese Patent Office and the Korean Intellectual Property Office. It allows examiners in each office to search the claims of corresponding applications and to share the results with us.

We’re also collaborating with IP offices around the world to modernize information technology tools for both examiners and the public. I recently spoke on this subject at an international forum in Shanghai. The changing IP landscape about which I’ve talked so much today is also being shaped by the rising economic strength of some of our key trading partners around the world, particularly China. That’s why it’s important that China and the United States continue to maintain, and strengthen, their IP laws. It’s also essential that the two countries advance work-sharing initiatives—not just to ensure the smooth and efficient operation of their respective IP systems, but to cultivate and commercialize new technologies blooming in the labs of Chinese companies from Shanghai to the Silicon Valley. And just as the latest technological breakthroughs transcend existing industry boundaries, their development and distribution increasingly transcends existing national borders.

So it’s imperative that our patent systems adapt to these changes—while offering filers a clear, consistent, and cost-effective means to obtain reliable patent rights in multiple jurisdictions. Two prime examples of how we can better do that are Cooperative Patent Classification, or CPC, and the Global Dossier—both created by the IP5, which consists of the USPTO and the IP Offices of China, Europe, Japan, and South Korea. The USPTO and the European Patent Office launched the CPC more than two years ago and completed its implementation with our respective examiner corps at the end of last year.   Incorporating the best classification practices from both offices, the CPC enables patent examiners and patent system users throughout the world to conduct more efficient and targeted prior art searches, with more focused results. We’re pleased that China’s IP office, SIPO, recently committed to classifying selected technical fields into the CPC.

Another big win developed by the IP5 is the Global Dossier: a virtual environment in which stakeholders will have secure, one-stop access to, and one-portal management of, a global portfolio of patent applications, while eliminating the need to file duplicate documents in multiple offices. It allows both examiners and the public to have a comprehensive, global view of patent prosecution activities for a related family of patent applications in one location.  IP5 offices are in different stages of making their data available for access by the other offices and in establishing their public interfaces. We are on track to have our online interface available to the public in mid-November, so watch for that. It will include an automatic translation function, which should make it easier to examine prior art. In the meantime, the IP5 offices are exploring further development and enhancement of the Global Dossier.

So what that all means is that the USPTO isn’t just talking about patent quality; we’re taking concrete steps to achieve enhanced patent quality, here at home and with our partners overseas. And as Director Lee and I have said many times, improving patent quality is a continuous process.  We’re working hard to provide the training, tools, processes, resources, and leaders to effect a permanent culture shift at the agency. As we know from our experiences in the corporate world, any company that produces a truly top-quality work product has focused on quality for years, if not decades. And as we move forward with these programs—along with others you’ll hear about in the weeks and months ahead—we’ll be doing it in close collaboration with members of the public and IP community here in the United States. That includes all of you. And that kind of engagement will be easier and more effective than ever before because of our regional offices.

So now that I’ve talked a bit about the changing IP landscape from my vantage point at the USPTO, let me step back and share the perspective I’m bringing to these efforts as a longtime patent attorney. I imagine many of you were trained the same way I was—by very skilled senior attorneys who took me under their wings, so to speak, when I was still a wet-behind-the-ears rookie. I had one attorney who reviewed my drafts with a black pen and a red pen. The black was for drafting style and the red was for errors. I worked hard to eliminate the need for the red pen. I remember one partner at a summer clerkship who just destroyed my draft application because I claimed the mechanical relationship of the invention. He drilled it into me that to be of value to the client we needed to claim the relative relationship in purely functional language. That way, any mechanical means could be used and not limited to the specific embodiments provided by the client. I was also taught that anything on the record was not good; if there were decent allowable claims on a first action, take them to avoid contaminating the claims during prosecution. In essence, young attorneys like me learned how to avoid creating a paper trail during the prosecution that could later cause us harm. In turn, we went on and trained another generation of lawyers to do the same thing.   I know that’s how I trained many attorneys, and there have been a lot more attorneys and agents registered since then; we have more than 54,000 today, in fact. That’s about the population of Pflugerville, just up I-35 from here, if you’re curious.

So the number of patent attorneys and agents has gone up, we’ve gone from red pens to track-changes, and from hard copy to digital, but the strategies for patent prosecutions didn’t change for decades. Unfortunately, that enabled whole new business models designed to exploit nebulous patents, increasing the cost for operating companies of all sizes while burdening our judiciary. Everyone recognized that broadly constructed patents could be used as leverage and lawyers and businesses would make the calculated choice to debate enforceability and infringement in front of a jury of laymen. But as I’ve said the times have changed, and the IP landscape with it. We can’t ask ourselves, or especially our junior patent attorneys who are new to this landscape, to navigate it the old way. Instead of a hard and fast rule about drafting in the broadest terms possible, we have to accept the reality that IPRs and Post Grant Reviews demand a new and heightened level of precision and detail in our patent prosecutions. Without that heightened level of precision and detail, your clients’ intellectual property is at risk.

As lawyers, too often we change only when we have to—both in style and in substance. But if we as a profession wait to change how we practice patent law until we have had patents invalidated, then we’ve waited too long.  So I think we need to do a much better job not only keeping ourselves abreast of the latest changes in patent law—which of course this institute excels at—but in passing that knowledge on to the next generation of IP attorneys, and mentoring them to succeed on this new landscape.

And it’s an exciting new landscape, with far more potential and possibilities than existed before. I certainly sensed that while leading the Rocky Mountain Regional Office and meeting with innovators across the region. Their excitement about having a USPTO presence closer to home was palpable. They welcomed better access to examiners and judges, and to our resources for innovators and entrepreneurs. I sense that same enthusiasm when engaging with members of the public at our Alexandria, Virginia headquarters, or in events around the country—including those focused on patent quality. Everyone is invested in our IP system like never before. They know it matters, and they want to do their part to make it even better. Who would have imagined that just 15 or 20 years ago;  or in 1849, when Abraham Lincoln was issued his one patent, for a device to lift boats over sandy shoals; or 225 years ago when George Washington signed the First Patent Act into law?

It’s worth reminding ourselves of something we learned back as first-year law students or earlier—that our Founding Fathers, in the U.S. Constitution, committed the new government to promoting “the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” That commitment has borne tremendous fruit for our nation over the centuries, and continues to do so to this day, with the help of all those in our broader IP community who are passionately invested in it. And through efforts like our new regional offices, the Enhanced Patent Quality Initiative, and new post-grant proceedings like those you’ll hear about tomorrow, we’ll continue to do so long into the future.

Thank you for having me here today. I realize I’m ending a little early, so I’m happy to answer any questions you might have at this time.

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