The growing importance of international cooperation to the protection of industrial designs
Blog by Drew Hirshfeld, performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and Mary Critharis, Chief Policy Officer and Director of International Affairs of the USPTO
Industrial design has been an essential aspect of developing new products since the beginning of the industrial revolution in the 18th century. This focus on making a product more appealing and intuitive to the user by improving its appearance, function, and manufacturing has driven designers for centuries and touches our everyday lives––from making a toothbrush fit more easily in one’s hand, to creating automobile dashboards that are easier to comprehend.
Today industrial design helps turn complex technologies into products that can be used by billions of people, surmounting massive differences in language and culture. But with industrial design’s growing complexity, its exponential growth in importance in our time, and the advent of new technologies—such as personal computing and the numerous digital devices on the market today—it is important to ensure that our systems for protecting designs are meeting the needs of global designers.
In response to these challenges, the world’s five largest industrial design offices—the China National Intellectual Property Administration, European Union Intellectual Property Office, Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), and the United States Patent and Trademark Office (USPTO)—came together in 2015 to create the Industrial Design 5 Forum, or ID5. Their goal was straightforward: the five offices pledged to “promote and further the development of user-friendly, highly efficient and interoperable industrial design protection systems.”
The ID5 celebrated its fifth anniversary in October 2020 at the annual meeting hosted by the United States (and the forum’s first-ever virtual meeting). Meeting virtually may have been driven by necessity, but it highlighted the forum’s versatility and provided representatives from the five intellectual property offices with the opportunity to take stock of the impressive progress they have made since 2015 and to map a way forward for future cooperation.
Those accomplishments include:
- Implementation of the World Intellectual Property Organization (WIPO) Digital Access Service for designs. This electronic document exchange system has made the process of seeking design protection in multiple jurisdictions around the world significantly more efficient, and has resulted in substantial cost savings for patent applicants. (And, given the challenges presented by the pandemic in obtaining certified paper copies of applications, has eliminated countless problems and headaches for applicants across the globe.)
- Agreement by the JPO, KIPO, and USPTO on a set of common recommended design formalities practices. This agreement is in line with the draft Design Law Treaty that is currently still pending at WIPO.
- Completion of 16 projects and comparative studies providing patent applicants with numerous new comparative reference manuals to help them more easily navigate the global design patent system. Key topics include eligibility, grace period, partial designs, and 3D printing.
For U.S. patent holders and applicants, these accomplishments mean simplified electronic procedures for design patent filings abroad, and the availability of a set of tools to help them understand the practices and procedures of the five partner offices where international protection is most often sought.
Over the coming years, it will be essential for the USPTO and its international partners to work together through forums such as the ID5 to anticipate and address the challenges that still exist in the global design system for applicants. The ID5 partners recognized this at their October meeting by undertaking a number of new projects, including studies on term and renewal of protection and deferred publication and examination. They also made plans to engage in further discussions regarding the use of new technologies in examining and issuing industrial design rights.
In addition, the ID5 partner offices underlined the importance of soliciting stakeholder input in the forum’s deliberations by unveiling a joint communication plan that will allow for improved engagement with stakeholders.
Finally, recognizing the important role of intellectual property offices in the current climate, the offices pledged in a special joint statement on COVID-19 that they “stand united in their efforts to respond to the pandemic and to continue to strengthen the international intellectual property system.”
More than ever, industrial designs are being used around the world to create intuitive interfaces that turn complex technologies into useful tools. Facilitating their development and protection within a workable, international framework will be important to meeting the needs of the international design community. The USPTO is hard at work with its ID5 partners to meet this collective challenge, and is actively engaged with U.S. stakeholders, through such means as a recent forum on global trends in industrial design, to ensure that the latest developments in international design protection are made widely known. To learn more, visit the ID5 website.
Spotlight on Commerce: LaRita Jones, Division Chief, Office of Human Resources, USPTO
Guest blog post by LaRita Jones, Division Chief, Office of Human Resources, USPTO
LaRita Jones, Division Chief, Office of Human Resources, USPTO
Black History Month is a time to honor and show gratitude to African Americans who have made contributions – whether extraordinary or minute, well-known or untold – to better humanity in some way. It is a time to express pride as we reflect on a heritage full of triumph over the harshest of adversities and celebrate innovations we have made in the arts, science, and technology and our achievements in politics and business. It is a time to remember the Black heroes of the past while uplifting our heroes of today.
A personal hero of mine is my father, Carl Ross. He was a career Army soldier who served two tours in Vietnam and retired as a master sergeant. He performed his duty with the highest work ethic and took so much pride in defending his country, even when fellow soldiers and officers did not treat him as their equal. I admire him for leading a life of bravery, honor, and integrity despite all the barriers to equality that he faced.
I remember him meticulously pressing his uniform and polishing the toes of his combat boots so perfectly that I could see my reflection. My father taught me that education was the top priority and that hard work starts with showing up and ready to work hard every day. He said that being a committed, responsible individual who can be trusted is important, particularly when things are not fair or favorable. I have leaned on all that my dad taught me about having integrity and dignity, showing up every day, working hard, and treating others with respect – even when I did not receive the same in return.
That advice was especially relevant when I attended the University of Washington to earn a degree in Sociology. There were few African Americans enrolled here and it was not always easy. As a way to connect with other students of color, I joined Alpha Kappa Alpha Sorority, Inc. and volunteered in communities with other Black sororities and fraternities.
It was through this sisterhood that I gained a deeper understanding of, and reverence for, my African American heritage, which is filled with heroes who continue to break barriers still today. With immense pride, I have witnessed the election of the first female, and first African American vice president Kamala Harris, who is also a member of our illustrious sorority.
Seeing my father give his entire career in service to his country and then joining an organization rooted in service to humanity, a career in public service was a natural fit for me. Currently, I serve as the division chief of a high-functioning team of human resources professionals responsible for recruitment, classification, and staffing consultation in support of the Patents business unit.
I extend my father’s advice to my employees and I can see in their work ethic that they share the same passion as I do for connecting top Science, Technology, Engineering and Mathematics (STEM) talent with fulfilling careers at the Commerce Department’s U.S. Patent and Trademark Office (USPTO). Careers in government are more progressive, inclusive, and agile than ever before. Opportunities today seem limitless compared to when I started my own government career. And I am proud to work at an agency that champions diversity and inclusion in the way that the USPTO does.
We are constantly striving to increase recruitment and retention among underrepresented populations as part of one of our agency’s key strategic goals to “recruit, enhance and sustain an engaged workforce.” As we continue to build deeper and more meaningful relationships to attract, hire, and retain talent from historically Black colleges and universities, Hispanic serving institutions, tribal and community institutions, and women in STEM organizations, it is my hope to see the USPTO significantly boost each of these employee groups in the years to come.
I also hope that my work in some way—whether extraordinary or minute—inspires students at those institutions who may not yet grasp that their personal and professional opportunities are indeed limitless, thanks in large part to the contributions of African Americans in this country.
Each celebration of Black History Month means that there is another opportunity to celebrate African American heroes. Hopefully, it also motivates and encourages future generations to value themselves and fully appreciate all they can become.
Ed. note: This post is part of the Spotlight on Commerce series highlighting the contributions of Department of Commerce African Americans during Black History Month.
Leading the way in the IP economy
Blog by Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO
Director Iancu at the quarterly meeting of the Patent Public Advisory Committee at the USPTO in Alexandria, Virginia on August 2, 2018. (Photo by Jeff Isaacs/USPTO)
At the outset of my tenure as Director of the USPTO in early 2018, I challenged the USPTO staff and stakeholders to focus on reclaiming our nation’s leadership on intellectual property, first by creating a new, pro-innovation, pro-IP dialogue and, second, by balancing our IP systems and increasing the reliability of the rights we issue.
Working together for the past three years, we did exactly that—and so much more. The list below summarizes a number of our accomplishments, but let me highlight a few.
We issued new guidance to our examiners on patent subject matter eligibility in 2019. The USPTO’s Chief Economist confirmed in a study released in April 2020 that the uncertainty of examination in this area has decreased by a remarkable 44% in the one year following publication of the guidance.
We balanced post-grant proceedings at the Patent Trial and Appeal Board through a series of carefully calibrated initiatives, including aligning the claim construction standard with the district courts, improving the amendment process, reducing duplicative proceedings, and increasing transparency and consistency of decisions. We decreased patent examination pendency to 23.3 months on average, the lowest since 2001. We also reduced the average patent appeal time to a remarkable 13 months, down from 30 months in 2015.
We reduced fraudulent trademark applications through improved technology, examination, and various new procedures. And we saw the passage of the Trademark Modernization Act, the most important trademarks legislation in decades.
Furthermore, we improved operations at the USPTO, and upgraded, backed up, and secured our vast data repositories, information technology systems, and telecommunications networks. We completely revamped and modernized our website. And we created artificial intelligence tools for classification, examination, and much more to come. Importantly, we maintained continuity of operations during the pandemic and during a government shutdown due to lapse in funding.
Director Iancu and Director General Juan Lozano Tovar, Instituto Mexicano de la Propiedad Industrial (IMPI) at the signing ceremony for the USPTO-IMPI Work-Sharing Agreement on February 5, 2020.
Internationally, we forged a broad-based coalition of countries to elect new leadership at the World Intellectual Property Organization (WIPO) that respects and champions intellectual property rights. We implemented a first-of-its-kind Parallel Patent Grant with Mexico. And we signed a patent validation agreement with Cambodia, and many MOUs with countries around the world.
We recognized the need for a renaissance in American innovation – one that opened doors for more women, minorities and geographic regions to participate in the American intellectual property system. As a result, last fall we kicked-off the inaugural meeting of the ground-breaking National Council for Expanding American Innovation, which is now fully operational and in the process of helping us develop a first-ever National Innovation Strategy aimed at substantially broadening participation in the innovation economy, demographically, geographically and economically.
Director Iancu meets with a kindergarten class at Terra Centre Elementary School in Burke, Virginia on April 4, 2019, where he took part in their Kindergarten Invention Expo and gave a presentation on IP and invention. (Photo by Jay Premack/USPTO)
Additionally, I’ve spent the past year presenting to faculty and students at dozens of America’s top intellectual property universities, seeking to establish among our next generation of IP professionals a common understanding of, and appreciation for, the theories, benefits, and practical applications of intellectual property laws.
Through these and numerous other engagements, we have highlighted for teachers, parents, and students from kindergarten through college the virtues of invention, IP protection, and entrepreneurship, and shared information about the important and exciting careers that exist for innovators and IP professionals. Additionally, we created new training programs, such as the Legal Experience and Advancement Program, for fledgling patent attorneys so they can gain confidence and experience in patent and trademark proceedings.
Director Iancu interviews Dr. Martine Rothblatt, the creator of SiriusXM Satellite Radio, former CEO of GeoStar, and the founder and CEO of the Board of United Therapeutics on December 4, 2019, as part of the USPTO Speaker Series. (Photo by Jay Premack/USPTO)
We have promoted the incredible—yet mostly unheralded—stories of the people whose inventions have fundamentally changed the lives, and livelihoods, of millions of Americans. For example, we created the first-ever USPTO Speaker Series, bringing to USPTO employees and the public some of our nation’s greatest inventors and entrepreneurs. We also took the opportunity of promoting the grant of Patent 10 Million to raise the profile of our inventors and entrepreneurs, and we created the Journeys of Innovation series of online articles about innovators who have made a positive difference in the world. These people should be our most celebrated national figures, role models, and mentors for the next generation of Americans.
We have worked to improve the dialogue surrounding IP in many other ways too. When I arrived at the USPTO, I noted that for too long, the words used to describe our patent system focused too heavily on its faults. Our IP system—born from the Constitution and steeped in our history—is a crown jewel, a gold standard. It must be defined by its goals, aspirations, and successes. As a result, we worked to create a new, pro-innovation narrative that focuses on the brilliance of inventors, the excitement of invention, and the incredible benefits they bring to society, while still ensuring patent and trademark examination of the highest quality.
Director Iancu and Deputy Director Laura Peter, shown with Ray Latypov, patent-holder and CEO of Virtusphere, (a device created for full body immersion into virtual reality) and joined by his son Alfred. Latypov’s invention was displayed at the USPTO on July 23, 2019 in conjunction with an event commemorating the 50th anniversary of the moon landing. (Photo by Jay Premack/USPTO)
This pro-innovation, pro-IP dialogue is more important than ever, since we depend on inventors and entrepreneurs to solve mankind’s most vexing problems, including the current pandemic. These and creators of all kinds have always defined America, and, with a robust IP system, will continue to do so.
Director Iancu visits Camp Invention at Hyattsville Elementary School, Maryland, on June 26, 2019. (Photo by Jay Premack/USPTO)
Through it all, the most amazing people I met these past few years are the inventors of the future—starting with kindergarteners making their first creations and excitingly explaining them to me. Jumping up and down, many would say, “Director, I want to be an inventor when I grow up!” Their unbridled enthusiasm assures me that America’s best days are yet to come.
Thank you for the opportunity to serve this great country that I love.
Highlights of USPTO Accomplishments (2018-2021)
1. Strengthened the USPTO’s Patent and Trademark Operations
- Reduced patent pendency to below 15 months for a first Office action and below 24 months for final disposition, the lowest patent pendency since 2001.
- Reduced ex parte appeal pendency to 13 months, down from 30 months in 2015.
- Accomplished mandatory electronic filing for all trademark filings.
- Developed artificial intelligence and machine learning tools for patent and trademark application processing and examination.
- Achieved permanent congressional authorization of the TEAPP telework program, which will ensure strong hiring, retention, and cost savings.
- Achieved enactment of legislation to allow the USPTO to limit response periods for trademark Office actions in order to further reduce pendency.
2. Increased the Certainty, Reliability, and Quality of IP Rights
- Issued Section 101 examiner guidance on patent eligibility, improving certainty of examination by 44%.
- Improved and added to patent examiners’ search tools, including launch of collaborative search pilot training and enhanced examiner search training.
- Established a new automated routing system for patent applications to help ensure incoming applications are best matched with examiners with relevant experience.
- Adjusted the performance appraisal plan for patent examiners to focus on improved search and examination quality.
- Reorganized senior patent management to broaden responsibility for operations and quality.
- Increased the rate of patent examiner interviews to an all-time high.
- Negotiated a revised policy with the U.S. Department of Justice and the National Institute of Standards and Technology on standard essential patents.
- Prepared and released multiple reports on public views on artificial intelligence and IP policy.
- Achieved the enactment of trademark legislation to strengthen trademark owners’ enforcement rights in court and to create additional tools for the USPTO to combat fraud on U.S. IP systems.
- Achieved the enactment of legislation to implement the Marrakesh Treaty, which enables greater access to copyrighted content by the blind, visually impaired, and otherwise print disabled.
- Multiple legislative achievements to balance and strengthen the copyright system.
3. Changed the Dialogue on IP
- Created a public relations and media campaign celebrating the patent system, including the signing of patent 10 million.
- Held Patents for Humanity awards ceremonies for inventors who create solutions to humanitarian crises.
- Achieved enactment of legislation to enhance the Patents for Humanity program by allowing the award benefits to be transferable.
- Conducted numerous briefings for Members of Congress and their staff on the importance of patents to producing lifesaving technologies.
- Promoted the induction of 56 inventors into the National Inventors Hall of Fame.
- Created the USPTO Speakers Series to allow leaders in the IP system to share innovation success stories with Office employees and the public.
- Created the Journeys of Innovation series on the USPTO’s home page to celebrate inventors and their personal stories.
4. Balanced AIA Review Proceedings at the Patent Trial and Appeal Board
- Promulgated rules to change claim construction standard to match district courts, to allocate burdens with respect to motions to amend, to respond to all claims and grounds in a petition, and to weigh all evidence at the institution stage equally for both patent owners and petitioners.
- Created a Precedential Opinion Panel to address important issues before PTAB.
- Designated numerous decisions as precedential and issued guidance memoranda to improve consistency of PTAB proceedings.
- Developed institution factors to reduce multiple patent challenges.
- Created a Motion to Amend Pilot Program to improve amendment process.
- Established standard operating procedures to improve transparency.
5. Bolstered the United States’ Leadership in IP
- Extended the U.S.’s lead as first in the U.S. Chamber of Commerce’s Global IP Index, and increased the U.S.’s rank in patents from twelfth (2018) to tied for second (2020) and in trademarks from fifth (2017) to tied for first (2020).
- Led effort to elect a WIPO Director General with strong support for intellectual property protection.
- Helped lead the Administration in adding new IP provisions as part of the USMCA.
- Achieved the first ever Parallel Patent Grant Agreement with Mexico and Patent Validation Agreement with Cambodia.
- Negotiated new work-sharing agreements with multiple foreign IP offices.
- Elevated the diplomatic rank of four USPTO IP Attachés.
- Worked with international IP forums to assist innovators and stakeholders to create
6. Reduced Abuse of the IP System
- Established U.S. Counsel Rule to reduce fraudulent trademark filings.
- Worked with the National Crime Prevention Center to launch a nationwide public awareness campaign regarding the dangers of counterfeit products.
- Established a special task force to monitor and identify fraudulent trademark filing behaviors and to develop tools, including policies, to address them.
- Established a successful pilot program and then a permanent program to conduct random audits of post-registration maintenance and renewal documents to ensure the accuracy of the trademark register.
7. Strengthened the USPTO’s Fiscal Health
- Extended USPTO fee-setting authority for an additional eight years, through the end of 2026.
- Restructured patent and trademark fees to ensure better cost recovery.
- Increased the reserve fund to ensure stability and continuity of USPTO operations.
- Maintained USPTO operations during temporary suspension of funding.
- Identified $1B in diverted fees in the U.S. Treasury.
8. Expanded American Innovation
- Submitted the SUCCESS Act report to Congress, which studied participation rates among women, minorities, and military veterans in patenting.
- Prepared and released well-received Progress and Potential Report and update, which studied participation rates among women in patenting.
- Launched a National Council of private, academic, non-profit, and public sector executive-level leaders to expand American innovation.
- Created the LEAP program at PTAB for training and developing new patent attorneys, and established a PTAB law clerk program.
- Supported independent inventors, small business concerns, and nonprofit organizations in filing patent applications and encouraged collaboration with the federal Government by expanding the opportunities to qualify for the small entity discount for inventions made during the course of federally-funded or federally-supported research.
- Enhanced the USPTO’s home page to allow first-time inventors and small businesses to easily access a map of all the resources the USPTO offers in their local areas.
- Launched an online platform available on the USPTO website that provides resources for inventors and practitioners to encourage greater participation in the patent system.
- Renamed Alexandria headquarters’ auditorium after Clara Barton, the first public space at the USPTO ever named after a woman.
9. Ensured Continuous Operations During Pandemic
- Transitioned seamlessly to all telework presence for employees during pandemic.
- Transitioned to all-virtual board hearings.
- Successfully sought enactment of statutory authority to provide relief at the onset of the COVID-19 pandemic.
- Issued extensions of time for patent and trademark filing and fee deadlines, due to COVID-19 issues, within three days of enactment of statutory CARES Act authority.
- Established fast-track examination programs for COVID-19-related medical treatments and devices.
- Established the Patents 4 Partnership program to facilitate licensing of COVID-19 innovations.
- Launched the first all-virtual, entry-level training program to on-board over 400 new examiners.
10. Modernized the USPTO IT System
- Upgraded the USPTO IT system with new, faster, more efficient, and secure servers.
- Established redundant systems to ensure continuity of operations in case of certain IT failures.
- Initiated transition to the cloud for essential services.
- Rebuilt the USPTO website for a more modern look and a more interactive interface.
Launch of the National Council for Expanding American Innovation
Blog by Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO
On September 14, the National Council for Expanding American Innovation had its inaugural meeting, virtually of course. The National Council includes respected leaders in the private and public sectors who are committed to fostering a more inclusive innovation ecosystem. The National Council is charged with helping develop a National Strategy to expand American innovation by tapping into the strength of our nation’s diversity, and increasing innovation opportunities for all Americans. I encourage you to learn more about the initiative by reading the excellent remarks made by the council members or by watching the recording of the event.
The National Council was born out of a report we transmitted to Congress in 2019 in response to the Study of Underrepresented Classes Chasing Engineering and Science Success (SUCCESS) Act of 2018. This report came on the heels of one of the most comprehensive studies on women inventors that was published by the USPTO in February 2019 titled “Progress and Potential: A profile of Women Inventors on U.S. Patents.” In that study, we found that only about 12 percent of inventors named on U.S. patents are women. The 2020 update to our Progress and Potential study reviewed an additional nearly one million issued patents and three years of new data and found that more women are entering and staying active in the patent system than ever before. Despite this progress, however, the gap is still wide, and there is still much that remains to be done to close it.
One of the foremost priorities for the National Council is to help the USPTO develop a long-term comprehensive plan aimed at expanding participation in America’s innovation ecosystem among women, minorities, other underrepresented groups, and Americans across the geography of the United States. It is imperative that we substantially broaden participation in the technologies that are driving a new industrial revolution.
This national strategy will encourage and equip Americans across all demographics and across the United States to become innovators and ensure they have equal opportunities to succeed. It will include innovation and intellectual property education at all levels—from kindergarten to graduate school—and emphasize employment development, access to capital, and product commercialization.
Our plan will identify specifically where along a potential inventor’s path we come up short and specifically how we can address it, and will also include metrics against which results can be measured over time. Mere rhetoric will no longer suffice. To move the needle, we must act with specificity, and we must insist on measurable results.
Expanding participation in the innovation ecosystem is one of our nation’s best and most tangible opportunities for enhancing economic growth and improving the standard of living and quality of life for every American. Industry, government, academia, and professional groups must work together to ensure that all Americans have the opportunity to innovate, start new companies, succeed in established companies, and achieve the American Dream. This will help unleash the next technological revolution, drive economic growth, and solidify America’s competitive edge as a global innovation leader.
In the upcoming months, the USPTO will have numerous engagement activities that focus on the pursuit of expanding American innovation. We have already enjoyed a number of speaking engagements at universities around the country discussing with students and faculty the importance of diversity in the innovation and intellectual property ecosystems. And in order to consider everyone’s suggestions as part of this strategy, a request for comments was published in the Federal Register asking the public to provide input to assist in the development of the national strategy. Comments can be submitted until February 8, 2021.
To more broadly engage with the public on our Expanding American Innovation initiative, we also kicked off a series of virtual “innovation chats.” The first one is a recently-recorded conversation between myself and Lisa Jorgenson, the newly appointed Deputy Director General for Patents and Technology at the World Intellectual Property Organization. You can view the video here. For more information about the National Council for Expanding American Innovation, please contact NCEAI@uspto.gov, and join the conversation on social media using #ExpandingAmericanInnovation.
A year to remember
Blog by Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO
“Hope smiles from the threshold of the year to come, whispering ‘it will be happier’.”
― Alfred Lord Tennyson
The end of a year is always a time for reflection on what we’ve accomplished and where we want to go. In 2020, the world faced a pandemic unlike anything we have seen in a century. Yet, as they always do during difficult times, inventors and entrepreneurs rose to the challenge.
Consider, for example, the multiple COVID-19 vaccines that were developed in less than a year, but are based on decades of research and countless inventions in dozens of scientific and technology disciplines. The importance of our nation’s consistent support of such creativity over time is more evident now than ever. As one COVID-19 vaccine manufacturer noted in its press release: “Intellectual property rights play an important role in encouraging investment in research.”
There are many other innovations that helped confront the global health crisis. Some companies built ventilators, masks, testing equipment, and other life-saving necessities at a previously unimaginable scale. Many others facilitated a quick and massive shift to telework. The advanced networks making this possible are keeping large segments of the U.S. economy operational. They have reduced exposure to the virus and will permanently change how we work, shop, and live.
The USPTO has been instrumental in spurring these innovations. When we do our job right, individuals and companies are motivated to keep inventing, secure in the knowledge that our great nation will protect their IP. And when it mattered most over this tumultuous year, we certainly did our job right.
Most importantly, we remained open for business and we worked harder than ever before. Because we have been a national leader in telework, we were well positioned to transition the USPTO’s 13,000-plus employees to full-time telework. Still, this required herculean efforts on the part of everyone, but especially our IT professionals who continue to make it possible. As a result of their amazing efforts, our employees’ productivity did not suffer. In fact, we are examining patent applications faster than last year.
We also implemented a number of programs to directly assist our stakeholders. We recognized that small companies and individual inventors play a critical role inventing treatments and cures for COVID-19, and we were vigilant in ensuring that they received the support they needed. To that end, we instituted the COVID-19 Fast Track Program, which enabled small- and micro-entities to accelerate prosecution of COVID-19-related patent applications, at no charge. We also launched Patents 4 Partnerships, which provided a repository of COVID-19-related patents and patent applications, and created a voluntary platform for connecting patentees and potential licensees.
More generally, we instituted a number of temporary changes providing the greater innovation community with more flexibility in meeting filing deadlines and making fee payments. Within days of Congress passing the CARES Act, we waived many patent and trademark-related deadlines for situations where an applicant could not meet a deadline or make a payment because of the pandemic. We lifted all original signature requirements; and we moved to an entirely electronic filing system, including even for plant patents.
And, notwithstanding the difficulties caused by COVID-19, we continued to implement broader improvements to the American innovation ecosystem. For example, we improved our Section 101 analysis, increasing the certainty of examination by a remarkable 44%. And we restored balance to post-grant proceedings at the PTAB through a series of carefully-crafted reforms. We initiated a major national effort to broaden participation in the IP community by launching an Expanding Innovation hub, and starting the National Council for Expanding American Innovation. And we launched the Legal Experience and Advancement Program (LEAP) to help develop the next generation of attorneys. We saw the new – and very significant – Trademark Modernization Act signed into law. And we helped more trademark applicants than ever before, with the Trademark Assistance Center answering 128,370 calls, a 10% increase over the prior year.
This year, during the pandemic, we also greatly increased our collaboration with other countries to the benefit of our stakeholders. We entered new bilateral agreements, such as a parallel patent grant agreement with Mexico; a patent validation agreement with Cambodia; and a new memorandum of understanding with India. And on the multilateral stage, we worked closely with many other nations to create a broad coalition of countries to elect new leaders at WIPO who champion the importance of, and respect for, intellectual property. We also elevated the rank of our IP attachés at several major embassies, in a clear signal that the United States takes very seriously the protection and enforcement of IP rights around the world.
These are just some of the highlights. You can find others on our website and news releases. I am so very proud to have led the dedicated employees of the USPTO who stepped up to the challenges of a most remarkable year to help keep America moving forward with critical innovations that are now saving lives across the globe.
And the best is yet to come. Our intellectual property system — born from our Constitution and steeped in our history — is strong and it supports our nation’s innovators who are more creative and more capable than they have ever been. “Hope smiles” on this great country, and I am convinced that its future is bright indeed.
On behalf of our entire nationwide USPTO workforce, I wish for you a safe, healthy, and prosperous 2021. For, as Alfred Lord Tennyson ventured, “It will be happier.”
Interview practice and its importance at the USPTO
First Action Interview Pilot Program to end on January 15, 2021
Blog by Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and Drew Hirshfeld, Commissioner for Patents
Virtual interview between a patent attorney and a patent examiner
Whether initiated by the applicant or the examiner, interviews during patent prosecution provide an opportunity for the participants to discuss the merits of an application and gain insights that are sometimes not apparent through written exchanges. Examiners are available for telephonic or video interviews, with video interviews gaining in popularity. The USPTO’s improved information technology infrastructure is now permitting high-quality virtual interactions that far exceed past experiences.
Interviews can lead to a better understanding of an applicant’s invention, bridge gaps between the examiner and applicant, and serve as an effective mechanism for facilitating agreement and furthering prosecution. Recent data shows that applications with at least one interview had an allowance rate 10% higher than those with no interview, demonstrating that interviews are an effective tool to place claims in a condition for allowance. This statistic is especially meaningful, as interviews most commonly occur when rejections or objections are pending and the path to allowability is not immediately clear.
As a result of the USPTO’s efforts to promote interview practice at all stages of prosecution, the percentage of applications having at least one interview is now at an all-time high, having risen from 19.6% at the beginning of FY 2010 to 38.1% at the end of FY 2020. To maintain steady progress in this area, we are constantly monitoring and refining our programs. Over time, the USPTO has introduced a number of successful enhancements to facilitate interviews, including: Automated Interview Requests, a convenient web-based method to request an interview; Technology Center Interview Specialists, subject matter experts on interview practice and policy; video conference interviews, allowing an examiner and an applicant to interact in real time from anywhere using video and document sharing; and public interview rooms, available at each USPTO office (when our physical premises reopen).
On the other hand, the Full First Action Interview Pilot Program has not been as successful. The program couples an interview before a first office action on the merits at the request of the applicant with modified prosecution procedures. During the 12 years of the program’s existence, it has been used for only approximately 0.2% of eligible applications. Due to its limited use, the program will be discontinued effective January 15, 2021. This will allow us to concentrate on more effective actions.
We look forward to continued engagement with our stakeholders not only through general interview practice, but also through Patents Customer Partnership Meetings, the Patent Examiner Technical Training Program, and other programs designed to provide unique and invaluable opportunities to communicate, collaborate, and cooperate. If you have ideas to improve our interview process, please contact us at ExaminerInterviewPractice@USPTO.gov.
USPTO releases FY 2020 Performance and Accountability Report
Guest blog by Jay Hoffman, Chief Financial Officer of the USPTO
The USPTO’s Performance and Accountability Report (PAR) for fiscal year (FY) 2020 is now online and available to members of the public. The PAR serves as the USPTO’s annual report, similar to what private sector companies prepare for their shareholders. Each year, the USPTO publishes this report to update the public on our performance and financial health. With the added challenges of the COVID-19 pandemic, the PAR highlights some of our most notable successes during this historic year.
The PAR also charts the agency’s progress toward meeting the goals outlined in our 2018-2022 Strategic Plan: optimizing patent quality and timeliness; optimizing trademark quality and timeliness; and providing domestic and global leadership to improve intellectual property (IP) policy, enforcement, and protection worldwide. These goals govern the quality and quantity of our service to IP stakeholders. In addition, the PAR provides information on the USPTO’s progress toward a broader management goal: delivering organizational excellence. The PAR also contains a wealth of data and historical information of interest to our stakeholders, including data on patent and trademark examining activities, application filings, and agency staffing levels.
While the PAR is a record of our achievements, it is also a frank assessment of the challenges we face as an agency. We will continue to address these challenges, including: working to maintain stable and sustainable funding, particularly in a highly uncertain economic climate; continuing to enhance our IT capabilities for all business areas and maintain effective legacy systems during the transition to their approaching retirement; and meeting legal challenges to various USPTO rules and procedures (e.g., challenges to the way in which our administrative judges for our Trial and Appeal Boards are appointed).
FY 2020 marks the 28th consecutive year that the USPTO’s financial statements have received an “unmodified” (i.e., clean) audit opinion. Our clean audit opinion gives the public independent assurance that the information in the agency’s financial statements is presented fairly and follows generally accepted accounting principles. The auditors also reported no material weaknesses in the USPTO’s internal controls and no instances of non-compliance with laws and regulations affecting the financial statements.
Here at the USPTO, we take pride in our long record of producing annual PARs that meet the highest standards of transparency, quality, and accountability. In August, the Association of Government Accountants (AGA) recognized the USPTO with its Certificate of Excellence in Accountability Reporting for the 18th consecutive year. The AGA also awarded the USPTO its “Best in Class” honors for demonstrating “proactive financial management support for mission continuity and accountability.” Our team has worked hard to ensure this year’s PAR continues to deliver this standard of excellence.
I hope you find value in this document, including greater insights into the agency’s many important activities and achievements. Finally, I want to thank everyone who contributed to this year’s PAR, especially during the COVID-19 pandemic. This document is truly a team effort. I hope you enjoy looking back and reflecting on a successful FY 2020.
Advances in searching for prior art
Blog by Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO and Drew Hirshfeld, Commissioner for Patents of the USPTO
Patent examination, though inherently complex, is in large part a fact-finding mission with the goal of providing predictable and reliable intellectual property rights. The prior art search is the foundation for achieving this mission.
Our patent examiners’ ability to find the best prior art at the earliest possible time ensures both quality and timeliness, two primary goals of the USPTO’s Strategic Plan. Indeed, the best and most appropriate time to ensure patent quality is during the examination process, before issuance. This is why we have worked tirelessly to improve the search capabilities of our examiners so they can more readily identify patentable subject matter and the appropriate scope of patent rights.
As technology evolves and advances, so too must our examination process and the underlying tools and mechanisms, particularly those used for prior art search. To enhance examiners’ ability to efficiently find the most relevant prior art in a body of references that is expanding both numerically and globally, we have improved our processes, added search tools, leveraged the abilities of our highly skilled workforce, and promoted knowledge exchange, all while upholding the fundamental pillars of our world-class patent system. Our recent endeavors include:
- Launching our new Patents End-to-End (PE2E) Search Tool for examiners on a modern, web-based platform with a focus on performance and adaptability. This tool will allow for the flexible development of additional search functionality and access to over 70 million foreign documents with full image and text by April of 2021. A version of this tool will be available to the public later in FY 2021.
- Developing and testing promising new search capabilities that utilize artificial intelligence (AI), including an AI-based prototype search system to further assist examiners in finding relevant prior art as well as an auto-classification tool that leverages machine learning to classify patent documents using the Cooperative Patent Classification system.
- Conducting the Peer Search Collaboration Pilot, a valuable mechanism for learning and collaboration in which paired examiners independently search the same case and exchanged results and strategies.
- Establishing a Search and Classification Examiner position in every utility technology center to serve as an added resource for examiners by providing searching expertise and training.
- Offering continuing education classes on search techniques and strategies, database searching, and non-patent literature searching using discipline-specific examples.
- Training examiners on Global Dossier, which provides unparalleled access to an entire patent family in one location, English machine translations, and the ability to view all citations in a single list.
- Updating examiner performance appraisals to increase the emphasis on searching, both at the planning and conducting stages, and providing the most relevant prior art as early as possible in prosecution.
We continue to explore additional avenues to improve examiners’ access to prior art and ensure that their efforts are most effective. From making prior art in related applications more accessible, to assessing incoming applications and identifying attributes that can increase the quality of searches, from continuous and advanced training, to further exploring the potential of AI capabilities, we owe it to our patent applicants and stakeholders to leave no stone unturned. Our unwavering commitment to explore new tools and technologies is inextricably linked to our commitment to provide the utmost certainty and reliability in the patents we grant.
PTAB’s Motion to Amend Pilot Program shows promising results
Blog by Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and Scott Boalick, Chief Judge of the Patent Trial and Appeal Board of the USPTO
On March 15, 2019, the USPTO implemented a pilot program for motions to amend (MTAs) in AIA trials before the PTAB. In MTAs, patent owners may request to cancel challenged claims or propose substitute claims to replace challenged claims if they are found unpatentable. We have seen promising results for claim amendments made under this pilot program and want to share these with you.
Under the pilot program, a patent owner has two new options. First, the patent owner can request preliminary guidance from the Board on its MTA. Second, the patent owner may file a revised MTA in response to preliminary guidance (if requested) or to the petitioner’s opposition. In short, by providing for guidance and an opportunity to revise the MTA, the pilot program provides for back and forth between the Board and the patent owner that did not previously exist.
If a patent owner requests preliminary guidance, the Board will provide feedback on the statutory and regulatory requirements for an MTA, as well as on patentability of the proposed substitute claims based on the record at that time. The patent owner may then file a revised MTA in response to the preliminary guidance. Alternatively, if the patent owner does not request preliminary guidance, it may file a revised MTA in response to the petitioner’s opposition to the original MTA. Notably, if a patent owner does not choose either pilot option, then the MTA proceeds under effectively the same practice as before implementation of the pilot program.
The pilot program applies to all AIA trials instituted on or after March 15, 2019, and patent owners could start filing MTAs under the program in June of 2019. Between June 1, 2019 and September 30, 2020, patent owners requested preliminary guidance in 76% of MTAs, or 78 out of 102 MTAs. Thereafter, 79% of patent owners filed a revised MTA. From April 1, 2020 through September 30, 2020, the PTAB issued 31 Final Written Decisions addressing pilot-eligible MTAs. So far, the pilot program options are being used in the vast majority of MTAs. Moreover, early results suggest that patent owners who chose at least one of the pilot program options are more likely to have their MTAs granted for at least one proposed substitute claim as compared to MTAs that do not use the pilot program options.
Specifically, out of the 31 Final Written Decisions with MTAs that were eligible for the pilot program, 22 elected at least one of the pilot program options. And out of the 22 MTAs in which patent owners elected at least one pilot program option, 36% had at least one proposed substitute claim granted. By contrast, of the nine MTAs where patent owners did not elect either pilot program option only 11% had at least one proposed substitute claim granted. Before the pilot program, only about 14% of MTAs had at least one proposed substitute claim granted.
The USPTO implemented the MTA pilot program with the goal of providing a more robust amendment practice in AIA trials, in a manner that is fair and balanced for all parties and stakeholders. Through this practice, the aim is to ensure that patent owners have viable opportunities to amend claims challenged by third parties. Preliminary data indicates that the pilot program is working as intended.
We remain committed to monitoring and evaluating the effects of the MTA pilot program, and welcome all feedback.
Posted at 09:29AM Dec 03, 2020 in ip |
USPTO fights trademark scams
Guest blog by David Gooder, Commissioner for Trademarks, U.S. Patent and Trademark Office
At the United States Patent and Trademark Office (USPTO), our fundamental mission is to provide stable, reliable, and predictable intellectual property (IP) rights for those who receive a patent or a trademark registration. Over the years, the USPTO has developed systems to protect trademark owners and innovators from fraud, theft, and abuse from those intent on stealing their proprietary ideas, their designs, their brand identities, and their livelihoods.
One disturbing trend lately is the rise of fraudulent solicitations from so-called IP “experts” offering their services to assist owners of trademark applications and registrations at the USPTO. These solicitations often mislead owners into believing they are from the USPTO. Yet, the spurious offerings are either never performed or are botched, potentially putting a trademark application or registration at risk of failure. Often, these charlatans are charging inflated fees for bogus services. The scams target owners of U.S. trademarks from around the world.
Although the USPTO does not have the legal authority to sue or prosecute those who attempt to defraud our customers, or to stop private companies from sending trademark-related offers and notices, we are shining a spotlight on the issue to raise awareness in the community and do our part to fight back. As such, we are actively engaged where possible, with the Department of Justice (DOJ), the Federal Trade Commission (FTC), and the United States Postal Inspection Service (USPIS).
In fact, in July 2017, we held a public roundtable to discuss how to combat these scams. As a result of this meeting, in 2018, the DOJ invited the USPTO to provide two IP attorneys to support the DOJ and the USPIS in a two-year “detailee” program as those agencies investigated and prosecuted offenders.
Our detailees assisted in several investigations, including one led by Homeland Security Investigations, in conjunction with USPIS that resulted in the recent arrest of an individual who allegedly defrauded trademark owners out of more than $1 million. The individual was offering bogus services that were falsely associated with the USPTO. The defendant allegedly sent solicitation letters under business names like “Patent and Trademark Office” from a Washington, D.C. address and from a non-existent “Patent and Trademark Bureau LLC” at a New York address. The case is currently pending in federal district court.
To further assist trademark owners, the USPTO posts a listing of third-party solicitations on the USPTO website from entities known for sending scams and offering misleading services and notices. The webpage provides trademark owners and those applying for trademarks with examples of recent fraudulent solicitations that have been the subject of complaints.
The USPTO warns customers about misleading solicitations at various points in the trademark registration and maintenance processes. For example, applicants are warned at the time when they receive confirmation of the filing of an application and when they receive a new registration certificate. In addition, representatives from the USPTO speak frequently on the topic at outreach events with counsel and business owners.
If you receive information from, or have been misled or paid money to one of these scammers, please file a consumer complaint with the FTC immediately. Do not discard the offer, the envelope, or the electronic message as it may be used to trace the source.
Additionally, if you receive a phony solicitation from a company that is not on our list of abusers, please email us at TMScams@uspto.gov. Include copies of the solicitation and, if applicable, the envelope it came in so we can assess whether to add the sender to the list. You do not need to notify us about firms that are already listed.
The USPTO is here to promote and protect the intellectual property of those who have worked so hard to create it. We want every person and company that has received a trademark registration to have the chance to be successful in the marketplace, hire workers, and create a more prosperous future for our country.
Five years of innovation – Texas Regional USPTO
Blog by Laura Peter, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO
Recently, I spoke with Hope Shimabuku, USPTO’s Texas Regional Director in Dallas, about the five year anniversary of the Texas Regional U.S. Patent and Trademark Office (TXRO), innovation in the region, and her passion for championing the pursuit of STEM fields.
LP: Congratulations on the fifth anniversary of the Texas Regional Office! For those not familiar with the office, please tell us which states are in your region and what resources you provide to the public?
HS: Thanks Deputy Director Peter! I am happy to be celebrating this landmark event for the TXRO.
The region covered by the TXRO includes eight states: Arkansas, Alabama, Louisiana, Mississippi, New Mexico, Oklahoma, Tennessee, and of course Texas. Throughout the region, we provide a number of resources both at the TXRO as well as within those states.
Onsite, we provide in-person, written, and now virtual resources across the region to stakeholders who are interested in learning about intellectual property (IP) in general, as well as information about the patent and trademark processes. Additionally, we have facilities for stakeholders to conduct patent and trademark searching using the same software that our USPTO personnel use. Stakeholders can also meet one on one with patent examiners and engage in our many patent and trademark hearings held by the Patent Trial and Appeal Board and the Trademark Trial and Appeal Board. Additionally, the TXRO provides a number of IP training courses for stakeholders, including our monthly Meet the Patent Experts and Meet the Trademark Experts – available to all stakeholders virtually.
Throughout the region, we work with a host of different organizations to provide resources closer to home. For example, we have collaborated with a number of providers to offer a Patent Pro Bono Program which covers the entire United States. The program matches volunteer patent professionals with a financially under-resourced inventor or small business owner to provide counsel for securing a patent. Seven programs are available to qualified stakeholders in the states covered by the TXRO.
Additionally, we have engaged libraries throughout the country as Patent and Trademark Resource Centers (PTRC). Each PTRC is able to access the search tools used by the USPTO. The PTRC also has at least one librarian trained by the USPTO to answer basic IP questions, as well as to provide support to stakeholders who are conducting searches. 12 PTRCs support the states associated with the TXRO.
Finally, the USPTO works with law schools in the region through the Law School Clinic Certification Program to establish and provide patent and trademark clinics for under-resourced inventors and small business owners. Students, under the supervision of practicing attorneys, work with stakeholders to secure patent and trademark protection for their inventions and businesses. In the TXRO region, there are six patent clinics and seven trademark clinics.
How many USPTO employees work in the TXRO and what are their roles?
The TXRO began with four female Patent Trial and Appeal Board (PTAB) judges housed in a temporary location in 2013 – all four of these judges are still with the USPTO to date, with three of them still associated with the TXRO. Since then, six classes of patent examiners, over two dozen PTAB judges, and many others have been hired to work based out of TXRO.
At of the end of FY20, the TXRO had 113 onsite employees: a Regional Director (me), an Assistant Regional Director, patent examiners, Patent Trial and Appeal Board judges, Patent and PTAB managers, an outreach team including a Regional Outreach Officer and outreach detailees, a Program Analyst, and support staff (including administrative, IT, ITRP, and security). Each employee supports the day-to-day activities and long-term strategic objectives of the USPTO and TXRO through examining patents, reviewing patent appeals review, hearing patent cases, supporting recruiting efforts, and engaging stakeholders through IP training and outreach activities.
What have been your proudest accomplishments so far as Director of the TXRO?
The TXRO has made a tremendous impact throughout the entire innovation ecosystem. And the community and stakeholders in our region have welcomed us through all of it. The USPTO has been able to attract top, diverse talent in all capacities – historically, there is an incredibly high response rate for any job announcement to work at TXRO. I am particularly proud that 27% of the TXRO’s workforce are veterans, giving them the opportunity to continue to serve our nation through innovation.
The TXRO has planned or participated in 1200+ outreach events, and reached 83,000+ stakeholders over the last five years. Every year since the opening of the TXRO, we have participated in the innovation segment of South by Southwest – an annual event focusing on emerging technologies – as well as EarthX – an event celebrating innovation in the sustainable energy realm.
The TXRO was able to provide a STEM-based IP education during the total eclipse of 2017. We have also collaborated with the Greater Dallas-Fort Worth-based Congressional representatives and provided a Congressional Challenge Coding Kickoff Event--an event for which we provided hands-on training on coding as well as intellectual property to high school students.
I am particularly proud of the Pro Bono Tour that we developed in collaboration with the State Bar of Texas – IP Section. This program reaches small business owners, entrepreneurs, and independent inventors in geographic locations which does not have access to IP resources, thereby enabling them to capitalize and use the IP system. From Girl Scout IP Patch programs to the Artificial Intelligence roundtables to the Patriot Bootcamps, the TXRO has been able to engage stakeholders in all facets of the innovation landscape.
Most importantly, the USPTO’s executive and senior leadership’s visible and regular engagement has been critical for ensuring the successful launch and sustained growth of the TXRO. USPTO leadership from our headquarters in Alexandria, as well as from our sister regional offices in Silicon Valley, Detroit, and Denver, has actively participated in town halls and met one on one with employees throughout the last five years, enabling our employees’ voices to be heard and creating a culture of investing in our employees’ future and success at the USPTO. Speaking and meeting with an executive at the TXRO is considered the norm rather than the exception.
Texas is an innovation and technology hub. How have you seen various sectors change and grow these last few years? How about in other states in your region?
Over the last five years, innovation and technology hubs have increased and expanded in Texas and throughout the region. In Texas, many corporate headquarters have relocated to the area, expanding the technology footprint to now include increased automotive, construction, entertainment, military defense, cybersecurity, transportation and logistics, and pharmaceutical technology sectors. This growth adds to the existing aerospace, aviation, information technology, telecommunications, banking, finance, and energy technology industries. With the increase in these sectors, there has been a tremendous growth in flexible shared workspace locations and incubators for technology startups and services throughout Texas as well as in the region. Several well-known retail companies and university partnerships have also expanded and developed similar models throughout the entire region and seen similar growth.
Recently, the USPTO launched the National Council for Expanding American Innovation, aimed at expanding the innovation ecosphere nationwide. Can you tell me a little about your journey and your work expanding the innovation ecosphere?
Expanding the innovation ecosphere and the launching of the National Council are initiatives that are critical to increasing participation and access to innovation throughout the entire innovation landscape, something that I have always been passionate about throughout my entire career. I am a native Texan and come from a long of line of engineers – my grandfather was a civil engineer and my dad is a mechanical engineer. After graduating from the University of Texas at Austin with a mechanical engineering degree, I worked as an engineer for two large corporations in the food and beverage and computer industries for six years before attending law school at Southern Methodist University – Dedman School of Law.
The idea of becoming a patent attorney came initially from my father – he mentioned the idea of patents and a post graduate law degree since I was in high school. I was introduced to the idea of patents again when I started working as an engineer.
During my time at the USPTO, the TXRO has actively engaged in a number of different efforts associated with expanding the innovation ecosphere throughout the country with the aim and goal of broadening, according to USPTO Director Andrei Iancu, the “intellectual property ecosystem demographically, geographically, and economically.”
Much of the outreach at the TXRO focuses on entrepreneurs and small business owners who have questions on the best way of entering the innovation ecosystem.
As mentioned above, one of my proudest accomplishments is the establishment of the Pro Bono Tour, which directly impacts and expands the innovation ecosphere in communities where intellectual property and innovation resources are not prevalent.
Recently, the USPTO launched an Expanding Innovation Hub on its website where readers can find our Progress and Potential reports. Before and after the release of these reports, the TXRO participated in many panels discussing the importance of expanding the innovation ecosystem. Director Andrei Iancu and I were able to meet with a number of corporate stakeholders and industry leaders in the greater Dallas-Fort Worth area and host roundtables discussing barriers to entry as well as how each of us can move the needle more quickly.
Members of the TXRO and other USPTO leaders have been and continue to be invited to work with industry leaders to help identify gaps, brainstorm ways to close the gaps, as well as develop best practices. The TXRO is already moving forward and supporting the wonderful efforts of the National Council by hosting roundtables and dialogues throughout the region to continue to expand the innovation ecosphere.
The pandemic has created a number of challenges, including the move to 100% telework at the USPTO. Can you tell us how the TXRO adapted to these new circumstances?
The TXRO rose to the occasion and rallied to ensure the safety and well-being of all employees throughout the entire pandemic. When the agency was moving towards mandatory telework, the management and support staff at the TXRO moved quickly to enable a new class of patent examiners, as well as other onsite employees, to make the move to telework. This included finding out-of-the box, creative ways to procure PIV badges and telework equipment for the new and non-teleworking employees, training employees on how to use equipment remotely, as well as ensuring continued training for the new class of patent examiners (who were only with the USPTO for three weeks before being sent to mandatory telework).
Throughout the entire pandemic, the work-life committee, as well as the other local affinity groups, have made regular engagement and contact with TXRO employees a priority, holding meetings and virtual coffee breaks. All employees were able to switch to support virtual hearings and virtual examiner interviews, as well.
From an outreach perspective, the team quickly converted from in-person to virtual events, including hosting a TXRO record-breaking (with 1100+ unique attendees) all-day Trademark Boot Camp, which featured the first ever live, virtual Trademark Trial and Appeal Board oral hearings. Many of the regular scheduled monthly programs also saw an increase in participation, particularly with respect to increased geographic diversity. The TXRO has also increased collaborations and program offerings with the other regional offices to create regional programs, including ethics CLE programs for lawyers, as well as similar programs with universities. The TXRO participated in 186 total outreach meetings and events in FY20, with 86 of the meetings and events held in the second half of the year when we were working in a virtual environment.
The TXRO, along with the Rocky Mountain Regional Office, entered into Phase 1 reopening in June 2020, allowing employees to work onsite as needed.
What lies ahead for the TXRO in the next five years?
The theme for the five year anniversary is “Innovation Heroes: Serving the Nation through Innovation.” As we look into the future for the TXRO, I have no doubt that everyone in the TXRO will continue to carry the torch in expanding the innovation ecosystem. We are sewing together the future innovation fabric for the region as each patent and trademark is examined, as each case is heard, and as each individual learns about how to protect his or her intellectual capital. The work our employees do to serve the nation contributes to this fabric. Throughout the entire process, I believe that our employees are heroes serving the innovation community – they perform an incredibly difficult job where law, business, and technology converge. I look forward to being a part of that over the coming years.
Posted at 10:59AM Nov 13, 2020 in ip |
2021 National Patent Application Drafting Competition
Guest blog by Commissioner for Patents Drew Hirshfeld
The 2021 National Patent Application Drafting Competition has kicked off! The competition, which began as a regional competition led by our Elijah J. McCoy Midwest Regional Office in Detroit in 2014, has expanded into a nationwide competition, with participation from law school teams from across the country and all of our USPTO regional offices.
The competition challenges the teams on the fundamentals of patent prosecution, including by drafting a patent application and arguing its patentability. It consists of two rounds: a preliminary regional round where teams compete and the National Finals where the winners of the regional competitions compete against each other at an event hosted at USPTO headquarters. Team registrations are being accepted until November 7, 2020, and regional and final rounds will take place virtually in Spring 2021.
The competition replicates the experience of prosecuting a patent application before the USPTO. Students are given a hypothetical invention statement and are asked to perform a prior art search, write a specification, prepare drawings, and write a brief memo explaining their drafting choices. They present their applications and the rationale for patentability and argue claim scope to a panel of judges. The judges consist of senior USPTO officials and patent attorneys from the local communities with extensive experience in patent prosecution and enforcement, who provide feedback and advice to help competitors improve their arguments and legal reasoning. Because the competition assesses the strength of contestants’ reasoning and patent drafting skills over technical knowledge, it is accessible to law students from all technical fields and interests.
Participating in the competition is an excellent opportunity to gain practical and indispensable experience drafting and prosecuting patents and to hone public speaking and communication skills. Last year‘s competition hosted a record 34 teams. Learn more about the 2020 finalists and winners. According to Mark Landauer, a member of last year’s winning team from the University of St. Thomas School of Law:
“This competition is a great way to build practical patent skills that are otherwise outside the scope of a traditional legal education. We learned not just the administrative side of patent filing, but the strategies which go into the practice, the history, the rationale for certain strategies and the ways to draft claims. Overall, we were given a glimpse into patent drafting and litigation strategies that is nearly unrivaled.”
The National Patent Application Drafting Competition has been successful due to the overwhelming support from the intellectual property (IP) law community. The USPTO works closely with the American Intellectual Property Law Association in organizing the competition, as well as with local attorneys, local bar associations, local Inns of Court, and law school faculty mentors. Interacting with practitioners provides students with useful feedback from experienced attorneys and promotes connections with future colleagues. This year, students will be able to build vital connections by hosting virtual networking events throughout the competition.
In addition, the USPTO is expanding the competition’s contestant pool to include law students traditionally underrepresented in patent prosecution, including those students enrolled in law schools located outside the major IP markets. Virtual information sessions will instruct students in the fundamentals of patent drafting, patent searching, and conducting examiner interviews. The USPTO will also regularly reach out to law schools to inform students of registration deadlines and competition dates.
The USPTO looks forward to the participation of law school teams from across the country in this year’s competition and to this opportunity to assist students as they pursue future careers in IP law.
Visit the 2021 National Patent Application Drafting Competition page of the USPTO website for further information on deadlines, competition dates, details and rules about the competition or contact PatentDraftingCompetition@uspto.gov with any questions.
Posted at 09:41AM Oct 22, 2020 in patents |
Legal Experience and Advancement Program conducts virtual mock arguments
Blog by Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and Scott Boalick, Chief Judge of the Patent Trial and Appeal Board
Practitioners in the Legal Experience and Advancement Program participate in a mock argument practicum on August 7, 2020.
In May 2020, the USPTO launched the Patent Trial and Appeal Board’s (PTAB) Legal Experience and Advancement Program (LEAP). LEAP was established to help develop the next generation of patent practitioners by creating opportunities to gain oral argument experience before the Board. To qualify for LEAP, a patent agent or attorney must have three or fewer substantive oral arguments in any federal tribunal, including the PTAB, and seven or fewer years of experience as a licensed attorney or agent. The USPTO recognizes that oral argument opportunities before tribunals are limited and that gaining courtroom experience is valuable for newer practitioners’ career development. Developing strong oral advocacy skills in such patent practitioners benefits clients, the USPTO, the courts, and the whole IP system.
A key component of LEAP is training, and the USPTO has initiated a variety of opportunities with sessions taught by PTAB judges. We have provided three types of training so far. The first is a one-hour classroom-style lecture where PTAB judges explain the basics of an oral hearing. In particular, judges orient participants to PTAB hearing rooms, discuss how to handle virtual hearings as well as in-person hearings where one or more judges appear remotely, and share best practices for navigating the flow of a hearing. Additionally, judges offer tips for managing argument time and demonstratives.
The second type of LEAP training is an interactive discussion focused on viewing and evaluating actual recorded court presentations. By assessing what works and does not work in an argument, judges aim to mentor practitioners into adopting effective techniques and avoiding ineffective ones. Also, practitioners can witness first-hand the ramifications on the case of making missteps during the argument.
The third type of LEAP training we have provided is a live mock argument practicum in front of a panel of three judges. Practitioners are grouped in pairs and must determine how to argue multiple issues in a mock inter partes review case. The mock argument is 30 minutes per side and simulates the oral argument in an actual case. After the argument, the panel gives individual feedback to each practitioner, pointing out the strengths and weaknesses of the presentation. The mock argument practicum is closed to the public to foster an open and honest coaching opportunity.
PTAB held the first LEAP mock argument practicum on August 7, and the second took place October 9. 40 practitioners from a variety of different law firms argued before a total of 30 administrative patent judges, including the Director, Chief Judge, and executive management team of the Board. The arguments were conducted virtually, and all judge panels were extremely active in probing the issues. The practitioners did an excellent job in making their cases and handling judge questions. In fact, Deputy Chief Judge Jackie Bonilla commented, “If I did not know it, I would have thought I was sitting in an actual hearing as the practitioners were steeped in the mock record and well versed in the case law.”
And in the “real world,” the Board has heard 18 arguments by LEAP practitioners in actual pending cases, 30 percent in appeals, and the rest in AIA trials. Feedback from judges who heard cases with LEAP practitioners has been positive and encouraging.
One judge shared, “It is good to hear from newer attorneys because they are usually more intimately involved in the prosecution of an application. They know what the specification says and can answer detailed questions about claim construction issues.”
Another judge offered words of reassurance to future LEAP practitioners: “No matter how intimidating it is to stand up and argue before judges, the more you do it, the more comfortable you will be. The ability to stand up and argue is paramount to progressing your career.”
The USPTO created LEAP not only to advance the careers of less experienced practitioners, but also to further the USPTO’s goal to ensure America’s continued economic strength and technological leadership. A well-trained, inclusive patent bar is a critical element of this effort.
Posted at 12:27PM Oct 15, 2020 in patents |
Fall 2020 brings exciting changes to the Patents organization
Blog by Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and Drew Hirshfeld, Commissioner for Patents
Commissioner for Patents Drew Hirshfeld, and Deputy Commissioners Bob Bahr, Robin Evans, Andy Faile, Valencia Martin Wallace, and Rick Seidel.
The primary objective of the reorganization was to integrate examination and non-examination groups across Patents. Traditionally, these groups have been in five separate reporting chains, but, as the organization has grown, this structure has resulted in one of the reporting chains in Patents having more than 9,000 of the approximately 10,000 Patents employees. This integration of examining and non-examining functions helps accomplish several goals, including: 1) fostering improved teamwork and the sharing of diverse perspectives, 2) facilitating cross-training of the management staff, 3) providing enhanced developmental opportunities, and 4) better balancing the number of employees within the deputy commissioners’ reporting chains.
An important part of the reorganization includes the recent selection of Robin Evans to serve as a Deputy Commissioner. Prior to her selection, Robin was the Acting Associate Commissioner for Patent Quality and had prior experience serving as the Director of Technology Center 2800, the interim Director of the Rocky Mountain Regional Office in Denver, and the first regional manager of the Elijah J. McCoy Regional Office in Detroit. Robin brings a wealth of experience to the job and is a fantastic addition to the current deputy commissioner team that also includes Bob Bahr, Andy Faile, Valencia Martin Wallace, and Rick Seidel.
As you can see on the organizational charts before and after the reorganization, deputy commissioners will no longer have unique titles. We have not, however, diminished any of their responsibilities. Rather, the broader and shared responsibilities of each deputy commissioner enable us to be more effective as a team. For example, while there is no longer a deputy commissioner with the title “Deputy Commissioner for Patent Quality,” the responsibility for ensuring patent quality is shared by all, enabling a more expansive focus on patent quality that is directly integrated with those having oversight of patent examiners.
We are confident these changes will improve our collaborative abilities and enhance the operations of the senior Patents management team. We look forward to announcing the assistant commissioners and the assignment of technology centers to deputy commissioners in the coming weeks. Above all, we remain committed, through these improvements and others, to providing the best customer service possible and to fostering ever greater American innovation, competitiveness, and economic growth.
Posted at 01:46PM Sep 29, 2020 in patents |
A seamless transition to all-virtual hearings
Blog by Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and Scott Boalick, Chief Judge of the Patent Trial and Appeal Board of the USPTO
Remote PTAB hearing on July 27, 2020.
As the coronavirus pandemic began in early March, the Patent Trial and Appeal Board (PTAB) held its first all-virtual hearing, seamlessly adjusting to the new format and showcasing yet another example of our state-of-the-art efforts to support America’s “innovation agency.”
In the 60 days after this transition, the PTAB has held 263 virtual hearings. Of note, 95 of these hearings were AIA trials, 100% of which were all virtual. By comparison, in the 60 days prior to the transition, there were 99 AIA trials and only one of those trials had counsel appear remotely. Despite the sudden switch in format, PTAB work has continued unabated.
Past innovations allowed this transition to be possible. For example, PTAB has long permitted counsel to appear remotely in ex parte appeals to save travel-related costs and time for applicants. Likewise, up to two of the three judges assigned to any PTAB proceeding (ex parte appeal or AIA trial) have appeared remotely, supporting the USPTO’s well-known hotel programing where judges and examiners are recruited throughout the United States and permitted to work outside the DC metro area. And just this year, PTAB allowed parties in all proceedings to request to appear from a USPTO regional office.
Still, transitioning all PTAB hearings to a complete virtual environment required the PTAB and its support staff to work efficiently and creatively as they addressed everything from court reporting to virtual public access.
We continue our work to improve the user experience and welcome any suggestions parties and practitioners might have. Please send us a note at PTABhearings@uspto.gov. We also realize that for many practitioners, appearing remotely is a new experience that poses some challenges. To that end, we have identified some best practices that we share with counsel in advance.
On a related note, the USPTO launched the Legal Experience and Advancement Program (LEAP) during this time of remote hearings, and it has shown tremendous interest so far. LEAP fosters the development of the next generation of patent practitioners by creating opportunities for them to gain skills and experience in oral arguments before the PTAB.
Finally, with the expansion of remote hearings, we are also able to offer stakeholders opportunity to listen to hearings remotely. For more information, please visit the PTAB page of the USPTO website for schedules and further instructions.
The USPTO’s top priority is to maintain the health and safety of our employees, contractors, and the American public,
while continuing to provide valuable services, programs, and resources at the highest level. The option to appear
remotely before the PTAB is one of the many ways that we have met, and will continue to meet, the needs and
priorities of those who appear before the Board.
Posted at 06:43AM Sep 18, 2020 in ip |