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Spotlight on Commerce: Bismarck Myrick, U.S. Patent and Trademark Office
Ed. note: This post is part of the Spotlight on Commerce series highlighting the contributions of Department of Commerce employees during Black History Month.
As the Director of the Office of Equal Employment Opportunity and Diversity (OEEOD) at the U.S. Patent and Trademark Office, I provide strategic direction and guidance in carrying out the Agency’s equal employment opportunity and civil rights initiatives.
In June, I will celebrate a decade as the Director of OEEOD. Among my most proud accomplishments is the organizational transformation of a small Civil Rights office nestled within the agency’s administrative directorate, to a new Office of Equal Employment Opportunity and Diversity. Through this organizational transformation, I became the principal advisor to the Under Secretary and Director of the USPTO on equal employment opportunity, reasonable accommodation, civil rights compliance, and diversity strategies.
Prior to becoming the Director of OEEOD, I was the Supervisory Attorney Advisor and Assistant Director of the USPTO’s Office of Civil Rights from July 2003 until June 2008. Before joining the USPTO in 2003, I served as a civil rights attorney at the Equal Employment Opportunity Commission’s (EEOC) Office of Federal Operations, where I drafted hundreds of federal sector appellate decisions adjudicating the merits of complaints of employment discrimination, and provided training throughout the federal sector on civil rights law. Previous to my federal service, I was a trial attorney for the City of Baltimore, Maryland.
Bismarck Myrick (center) meets with staff at the U.S. Patent and Trademark Office's Alexandria campus.
I earned a Bachelor’s Degree in Communication Studies from Florida State University in 1993 and a Juris Doctorate Degree from the University of Missouri in 1996. I am a member of the bars of the District of Columbia and the State of Maryland. In 2008, I completed Harvard University’s Kennedy School of Government Senior Executive Fellow program. I entered the Senior Executive Service in 2012.
I am a second-generation federal executive. My father’s job in the United States Army and the Foreign Service required us taking up residence in Addis Ababa, Ethiopia, Monrovia, Liberia, Fayetteville, North Carolina, and Alexandria, Virginia, to name a few places. I admire my father’s professional accomplishments rising out of poverty in Portsmouth, Virginia, to achieve two consecutive, Senate-confirmed, ambassadorial appointments to the Kingdom of Lesotho and the Republic of Liberia. Despite all of this moving around, I consider my mother’s hometown, Columbus, Georgia, home. Growing up, she was the most influential person in my life. She always expects more than what can immediately be seen. I believe that to be one of the most important characteristics of effective leaders.
I struggle with providing career advice because I think of my career as being unconventional. Here are two pieces of advice for young professionals. First, work hard trying to leave more than you take; this is the only way to pay back the sacrifices which led you to a place of remarkable opportunity. Second, appreciate the counterintuitive fact that the greater your reputation for selfless service, the more likely you are to receive promotion and recognition.
Successful Track Record of Patents Customer Partnership Meetings
Guest blog by Commissioner for Patents Drew Hirshfeld and Deputy Commissioner for Patent Operations Andy Faile
In 2017, the USPTO’s Technology Centers held ten Patents Customer Partnership Meetings, and based on their success, we plan to increase the number of meetings this year. Started several years ago, these meetings provide a valuable opportunity for our customers to meet directly with Technology Center Group Directors, Supervisory Patent Examiners, and other agency representatives in a collaborative forum. The meetings focus on various technical areas such as manufacturing, biotechnology, cybersecurity, business methods, computer, and other electrical technologies. The events are free, open to the public, and are often webcast to include viewing sessions across the country.
Customer Partnership Meetings enable the patent community to share ideas, experiences, and insights as well as to discuss examination policies and procedures, mutual concerns, and solutions to common problems. These discussions help provide a solid foundation to facilitate resolution of any future prosecution related issues. Because these meetings are hosted by the Technology Centers, technology specifics can also be readily discussed as well as changes to the legal landscape that may impact some areas of filings more significantly than others. The meetings also allow the USPTO to share plans on any operational efforts and upcoming changes.
Technology Center 3600/3700 Customer Partnership Meeting
All of the events have received enormous positive feedback, including:
July 2017, Technology Center 2600 Customer Partnership Meeting – Attendees stated “In my experience, I feel that the quality of examination and the level of cooperation that I now receive from the PTO examiners (particularly over the last 2-5 years) is better than it has ever been” and “I’ve been in this business for 25 years, and I found the day to be extremely worthwhile.” Other attendees expressed that discussions held at these customer partnership meetings will help them in preparing responses to examiner office actions that will advance prosecution in a more productive manner.
September 2017, Business Methods Partnership Meeting – This was a great opportunity to bring stakeholders together to share ideas, experiences, and insights and provided a forum for an informal discussion of many topics specific to the Business Methods area. Attendees stated “This is a helpful, productive partnership meeting... A balance of USPTO updates, new initiatives, and panel discussions between USPTO and outside practitioners is great.”
October 2017, Partnering in Patents – One of the discussion topics was Alice in the Electrical Arts. Several of the attendees indicated that the discussion with those who are reviewing cases on a regular basis, specifically for statutory subject matter, really provided an insightful perspective in their approach to making decisions on abstract ideas, as well as what qualifies as significantly more.
The next event is a Technology Center 2600 (Communications Technology) Customer Partnership Meeting on January 17. We have also launched a page on the USPTO website to host all information related to Patents Customer Partnership Meetings. On the webpage, users can browse past and upcoming Patents Customer Partnership Meetings, and also sign up for Patent Alerts, which provide useful notifications about upcoming events, meetings, and updates.
Trademark Trial and Appeal Board Celebrates 60 Years
Guest blog by Chief Administrative Trademark Judge Gerard Rogers and Administrative Trademark Judge Susan Hightower
Employees of the Trademark Trial and Appeal Board (TTAB) like to say: “We have our trials, but our work is appealing.” So what does that mean, exactly? The Board’s 60th birthday in 2018 offers the perfect opportunity to take a closer look.
The TTAB is an administrative tribunal within the U.S. Patent and Trademark Office (USPTO) and seeks to spur job creation by the timely adjudication of trademark disputes. The Board’s trial proceedings are similar in many ways to a federal district court, except that we don’t hear testimony from live witnesses. Instead, our proceedings are conducted outside the Board and in writing; and we make decisions based on written administrative records, although parties can opt for an oral hearing in their cases, after the presentation of evidence is complete.
Today, most cases commenced at the TTAB – around 70% – are trial cases, but most cases decided on the merits – around 75% – are ex parte appeals by applicants whose applications to register trademarks have been refused by a Trademark Examining Attorney. The trial part of the Board’s work involves deciding trademark registration disputes between two or more parties, known as inter partes proceedings. Most of these inter partes proceedings before the TTAB are oppositions, where a plaintiff attempts to prevent registration of a pending trademark. Cancellations are cases in which the plaintiff is trying to cancel an existing registration. Approximately 50 paralegals, attorneys and administrative trademark judges work on these cases. Our decisions in both ex parte appeals and inter partes proceedings can be reviewed by either a U.S. district court or the U.S. Court of Appeals for the Federal Circuit.
Things were very different 60 years ago. When the Trademark Act (15 U.S.C. §§ 1051-1141) – also commonly known as the Lanham Act – was enacted in 1946, ex parte appeals were heard directly by the Commissioner of Patents, while inter partes cases were decided by an Examiner of Trademark Interferences, with the right to appeal to the Commissioner of Patents. (Both types of cases could be delegated to an Assistant Commissioner of Patents.) Due to the volume of these cases, in a 1955 article in the Journal of the Patent Society, Assistant Patent Commissioner Daphne Leeds, who was the first woman Assistant Commissioner and an active member of the American Bar Association committee that assisted in drafting the Trademark Act, suggested creating an administrative board to handle the workload.
Leeds’ idea came to fruition on August 8, 1958, when President Eisenhower signed an amendment to Trademark Act Section 17, 15 U.S.C. § 1067. The amendment created the Trademark Trial and Appeal Board “to determine and decide the respective rights of registration” and provided for the appointment of Board members to hear and issue, by a three-member panel, final decisions in inter partes cases and ex parte appeals. Four members were appointed, and the Board consisted of those original four members through 1974. The Board still decides the merits of its cases by panels of three judges, now called administrative trademark judges – ATJs for short – appointed by the Secretary of Commerce. Board paralegals and attorneys handle motions and “interlocutory” filings to keep cases moving through the appeal and trial processes, so that they are ready for submission “on brief” or after oral argument.
The Board’s leader was known as the “Chairman of the Board” until 1993 and today has the title “Chief Administrative Trademark Judge.” Past and present Chairmen of the Board/Chief Administrative Trademark Judges include Saul Lefkowitz (1975-81), Dan Skoler (1982-84), David Sams (1984-2009), and Gerard F. Rogers (Acting Chief Judge 2009-10; Chief Judge 2010-present). The first Deputy Chief Judge, Susan Richey (2014-2017), was appointed in 2014.
Throughout the years, the TTAB has presided over a variety of cases presenting issues of “first impression” or which garnered significant public attention. While most cases involve word marks or designs such as logos, the Board has also had to rule on the registrability of scent marks, sound marks, color marks and the shape or “configuration of” products or product packaging.
TTAB decisions rarely are discussed in cases reaching the U.S. Supreme Court, but in 2015, in the case of B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293, that court held that Board decisions “can be weighty enough to ground issue preclusion” when the parties that were involved in a Board case later are involved in a case in a U.S. district court. In other words, the Board decision may, in appropriate circumstances, bind the district court and bar the parties from relitigating the issue in that subsequent court proceeding.
Most recently, the U.S. Supreme Court issued a ruling in Matal v. Tam, 137 S. Ct. 1744 (2017), in which musician Simon Shiao Tam applied to register the mark “The Slants” for his dance-rock band. Tam’s application was denied as disparaging to people of Asian descent under a provision of the Trademark Act that prohibits registration of any mark that “may disparage persons, institutions, beliefs, or national symbols,” a decision which the TTAB affirmed. The U.S. Court of Appeals for the Federal Circuit, in an en banc decision, vacated the TTAB’s decision on constitutional grounds and the case wound up before the Supreme Court. The Supreme Court ultimately agreed with Tam that the disparagement clause of the Trademark Act violated the Free Speech Clause of the First Amendment.
Twice within the last decade, the Board also decided challenges brought by Native Americans seeking to cancel as disparaging the “Redskins” trademark owned by the Washington Redskins professional football team. Though both decisions were appealed to district courts, neither reached the Supreme Court. The more recent of these two cases was rendered moot by the Supreme Court’s decision in Matal v. Tam.
Examples of some other recent high-profile cases include refusals to register marks for marijuana products (illegal under federal law); disputes over who owns registrations after musical groups break up; and attempts to register someone’s name as a trademark without their permission (“Obama Bahama Pajamas,” for one).
In the years to come, the Board will continue to hear and decide trials and appeals of cutting-edge trademark issues reflecting the rapid changes in U.S. commerce and society, and the products and services that we all use. We look forward to the challenge.
For more information, please visit the TTAB page of the USPTO website.
IP Attachés - Providing Resources to Texas Businesses
Guest blog by Director of the Texas Regional United States Patent and Trademark Office Hope Shimabuku
During the week of December 4, I was fortunate to have the opportunity to travel through the Dallas area with several of the USPTO’s intellectual property (IP) attachés, who came here from their international posts in Brazil, China, Kuwait, Mexico, and Thailand to conduct outreach visits to local businesses and stakeholders. These included the Dallas Bar Association and several local Dallas businesses with an interest in learning about our efforts to protect and enforce IP rights abroad through the USPTO’s IP Attaché Program. Outreach activities such as this are conducted by the attachés several times a year. The last one was in Southern California this past October.
A highlight of the week came on December 5, when the attachés gave a half-day presentation on the IP Attaché Program to members of the Dallas Bar Association’s Intellectual Property Section at the association’s headquarters, the Belo Mansion. During the course of the program, the attendees—many of whom were unfamiliar with the IP Attaché Program—heard from the visiting attachés about how their expertise has helped U.S. businesses already operating in, or considering entering, foreign markets to better navigate IP issues. They also heard some real-life examples from the attachés’ case files.
IP attachés at the Dallas Bar Association’s headquarters
For example, the IP attaché in Shanghai, Mike Mangelson, recounted how he provided information to a U.S. shoe manufacturer that helped it to enforce its IP rights against local counterfeiters. The situation was successfully resolved when a raid conducted by Chinese authorities resulted in the seizure of more than 1,000 pairs of counterfeit shoes. Another example came from the USPTO’s IP attaché in Kuwait City, Pete Mehravari, who related how introductions made to a senior Kuwaiti Customs official and Kuwait’s Criminal Investigations Department on behalf of a U.S. entertainment company led to the successful resolution of an important trademark enforcement issue.
“Such real-life examples,” notes Dominic Keating, the IP Attaché Program’s director, “demonstrate how the USPTO’s IP attachés are helping U.S. companies improve their understanding—and avoid the pitfalls—of foreign laws, regulations, and court systems and thereby better protect and enforce their IP rights overseas.”
The IP attachés also provided some valuable best practices for IP protection and enforcement in their respective regions. These included filing trademark applications early in China to avoid trademark squatters in this first-to-file jurisdiction. Other recommendations included considering the creation of a multilayered IP portfolio in key markets, consulting with competent IP counsel, and working closely with your IP attaché.
I also joined the IP attachés in visiting and touring the headquarters of several other major U.S. stakeholders the Dallas area during the week. Our visits included Bell Helicopter, Texas Instruments, AT&T, Flowserve, and Mary Kay.
It was during our visit to Mary Kay—a Texas-based company that sells hundreds of products in approximately 40 countries—that a senior representative shared with us that the attachés possess “a wealth of knowledge” that should be fully utilized to assist U.S. businesses abroad. It’s a sentiment that I couldn’t agree with more.
If you would like to learn more about the USPTO’s IP Attaché Program—and see first-hand the “wealth of knowledge” that these dedicated professionals use to advocate on behalf of U.S. business interests—I urge you the visit the IP Attaché Program page of the USPTO website.
PTAB Issues Guidance for Motions to Amend After Aqua Products
Guest Blog by Chief Administrative Patent Judge of the Patent Trial and Appeal Board David Ruschke
The Patent Trial and Appeal Board (Board) has been conducting America Invents Act (AIA) trials for about five years. The trials were designed by Congress to be a faster and less expensive alternative to district court litigation for challenging the validity of a patent. The ability to amend the patent is one aspect of the trials that is particularly unique to the Board as compared to district court litigation. If the Board institutes a trial, the patent owner may file a motion to amend the challenged claims. In the motion, the patent owner may propose substitute claims in place of the originally-patented claims to overcome any unpatentability arguments raised by the petitioner.
In October, the Federal Circuit, sitting en banc, issued a decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), concerning motion to amend practice before the Board. The Federal Circuit addressed the burden of proof that applies to proving patentability of the substitute claims. The en banc court concluded that the USPTO had not appropriately placed the burden on the patent owner through rulemaking.
The Board recently issued guidance in view of Aqua Products. The intent of the guidance is to provide certainty and transparency on how the Board will handle motions to amend going forward. Consistent with the Court’s decision, the Board will not place the burden of persuasion on a patent owner with respect to the patentability of substitute claims presented in a motion to amend. Rather, if a patent owner files a motion to amend, the Board will determine whether the substitute claims are unpatentable based on the entirety of the record, including any opposition made by the petitioner.
We believe this guidance will continue to promote patent quality, allowing the USPTO to fulfill its statutory mandate to issue amended claims that are “determined to be patentable.” Any new amended claims will be narrower than the original claims that were previously examined, and will have overcome the prior art that had cast doubt on the sufficiency of that initial examination, as well as any other prior art of record. Although the Board will rely on submissions made by the parties, rather than a new examination of the amended claims, this approach is consistent with the AIA’s post issuance review paradigm, rather than the patent prosecution examinational model.
The Board also recognizes that the pre-Aqua Products approach of placing the burden of persuasion on patent owners with respect to amended claims may have been perceived as requiring patent owners to prove the negative, i.e., that no prior art read on their claims. Understandably, some may have been frustrated by the perception that amended claims might be rejected because of a failure to analyze and address prior art that was not of record. Under the new guidance, if a motion to amend meets obligations of the statute and rules, such as a showing of written support and a narrowing of claims, the Board will analyze amended claims under the same framework applied to original claims, that is, whether they are patentable over the prior art of record.
For the present time, the technical aspects of motion to amend practice before the Board will not change. The Board will continue its current briefing practice as to the types, timing, and certain procedural requirements. In addition, a patent owner must continue to confer with the Board before filing a motion to amend.
If a party in a particular case believes there is a need to discuss the impact of Aqua Products with the Board, they may contact us to arrange a conference call. During the call, they may request briefing changes or an additional briefing, and the Board generally will permit a supplemental briefing if requested. For more details, please read the Guidance on Motions to Amend in view of Aqua Products.
The Board continues to evaluate its processes to keep the AIA trial proceedings fair and balanced for all parties. To that end, we welcome comments and feedback on the Aqua Products guidance. Please share your views by emailing PTABAIATrialSuggestions@uspto.gov.
Updates on Modernizing the Electronic Patent Application Process
Guest Blog by Commissioner for Patents Drew Hirshfeld
Launched in 2015, the eCommerce Modernization (eMod) Project aims to improve the electronic application process for patent applicants by modernizing the USPTO’s filing and viewing systems. Our goals with eMod are to streamline and enhance our systems for an easier, faster, and improved user experience. An important milestone for eMod will be the upcoming replacement of EFS-Web and PAIR, called Patent Center, which we are implementing in phases.
Recent improvements leading up to the rollout of Patent Center have included modernizing our authentication process and implementing structured text functionalities. With Patent Center, additional users from the same firm will be able to have their own accounts and access shared information. Structured text allows applicants to more easily submit their documents in text-based documents, rather than having to create PDF documents. This streamlines the application and publication processes for the applicants, examiners, and the USPTO. We tested the capabilities of structured text within EFS-Web and PAIR with our eMod Text Pilot Program, implemented from August 2016 until September 2017. The pilot was successful and many improvements were made based on user feedback from applicants, which include independent inventors, law firms, and corporations. Structured text features are now available to all EFS-Web Registered and Private PAIR users, and include the ability for applicants to file structured text via EFS-Web, and access structured text submissions, structured text office actions, and XML downloads via Private PAIR. Additional information can be found in the associated DOCX Intake, and Access and Download DOCX guides.
Our next milestone will be the Patent Center beta release in early 2018. Patent Center is the new and unified system in development to replace the EFS-Web and PAIR systems. The next generation system will be more user friendly and allows applicants to file and view their patent applications in one central location. New features will include the ability to upload multiple documents at a time, drag-and-drop documents, and save submissions at any time. During the testing or beta phase, Patent Center will be available to participants for live filing and managing of patent applications. This beta phase will be a great opportunity to start the transition to using the new tool and provide feedback for improvements towards further development. If you would like to join the beta phase, guidelines and registration will be posted to the eMod page of the USPTO website, under eMod Programs as the release date approaches.
The eMod project team will continue developing and enhancing Patent Center based on public feedback, and anticipate the completed product to be ready to replace EFS-Web and PAIR in 2019. There will be a transition period while EFS-Web and PAIR are available in parallel with Patent Center.
If you have any feedback, we encourage you to contribute via eMod Ideascale by sharing, voting, and/or commenting on ideas. For more information, please visit our eMod page of the USPTO website or attend one of our outreach events. You can also contact us directly at eMod@uspto.gov.
We will continue to share updates and work with you on eMod to make our patent application process as effective, efficient, and user friendly as possible.
Posted at 10:32AM Dec 14, 2017 in ip |
Leveraging Open Data to Fuel American Innovation
Leveraging open data is a priority for the Trump Administration, as part of its long-term commitment to modernize government and as a key driver of the American economy.
Recently, the U.S. Patent and Trademark Office (USPTO) announced newly-released data giving the public new insights regarding the ins and outs of the patent process, while also providing the USPTO with more meaningful metrics so it can continue to efficiently issue high-quality patents.
“It’s been nearly impossible to unlock this valuable data effectively in the past, but by leveraging emerging technologies such as big data and machine learning, we are able to better serve our customers”, said the USPTO Chief Data Strategist Thomas A. Beach.
Data visualization of the patent examination process
The USPTO receives and reviews thousands of patent applications each year. Included in these applications are mountains of scientific knowledge. Today’s release of the USPTO Patent Prosecution Research Data: Unlocking Office Action & Citation Traits marks the first time that comprehensive data on over 4.4 million office actions from the last several years has been made readily available to the public. An “office action” is a notification from a patent examiner to an applicant on whether their invention is patentable, and why or why not. It includes information such as the grounds for approval or rejection as well as the pertinent prior art, or in other words, the relevant past inventions that have come before it as shown in the visualization of the patent examination process (shown above).
By improving access to patent data, the public and private sectors can be empowered to identify trends in technology and innovation and open data can be freely and easily accessed, shared and analyzed. Analyzing and connecting government datasets can result in useful insights for entrepreneurs and innovators, from assessing risks to increasing sales.
Posted at 01:35PM Dec 13, 2017 in ip |
Update: Improving the Accuracy of the Trademark Register
Guest Blog by Chief Administrative Trademark Judge Gerard F. Rogers
The public counts on the accuracy and integrity of the U.S. Trademark Register when selecting and clearing new marks, so as to avoid conflicts with already registered marks. Registered trademarks that are not actually in use in commerce unnecessarily block someone else from the Register. Based on analysis of the results of the Post Registration Proof of Use Pilot, Trademarks found that more than half of registrations being maintained include at least some goods or services for which the registered mark is not actually being used. In the wake of these findings, the USPTO has been exploring ways to improve the state of the Trademark Register. Some changes have already been made, as Commissioner for Trademarks Mary Boney Denison described in her blog post last year. The Trademark Trial and Appeal Board (TTAB) is considering revision of its rules to allow a party to seek cancellation of registrations for marks no longer in use or that never were in use, through streamlined proceedings.
These new streamlined cancellation proceedings would facilitate challenges to registrations for unused marks by those who believe that the mark’s continuing presence on the Register will damage them in some way, often because it is blocking the challenger’s attempt to register the same or a similar mark. A party seeking to “clear” a mark for use and registration who encounters a registered mark that presents a potential likelihood of confusion may investigate and find that the registered mark seems not to be in use in commerce. Instead of commencing a full cancellation proceeding, the party could initiate a streamlined proceeding and, by providing evidence of nonuse, quickly and efficiently clear the blocking mark from the Trademark Register. Unlike a full proceeding in which a challenger must bring all available claims or run the risk of being barred from raising them in the future, the challenger may focus solely on claims of nonuse or abandonment, without endangering its option to bring other claims in the future.
Chief Administrative Trademark Judge Gerard F. Rogers
Specifically, the grounds a party could assert would be limited to: (1) abandonment of one or more goods/services (nonuse plus intention not to resume use); or (2) no use for one or more of the goods/services prior to the relevant date of an allegation of use Counterclaims by the registrant would not be permitted. Procedures that would facilitate speed and efficiency of these proceedings could include: requiring the challenger to submit evidence sufficient to support its grounds at the time of filing the petition, and the registrant to submit proof of use of the mark with its answer; limiting discovery to the challenger’s standing if it would prove dispositive; and an abbreviated schedule with no oral hearing. The TTAB would commit to determination of the cases within an expedited timeframe, potentially 70 days from commencement (in cases of default by the registrant) to approximately 170 days from commencement for cases decided on the merits. The cases also could be less expensive, with lower fees and legal costs, due to the relative simplicity of the proceedings.
To obtain preliminary feedback on whether streamlined proceedings would be useful and how they should be structured, on May 16, 2017, the USPTO published a request for comments in the Federal Register (82 Fed. Reg. 22517). A variety of stakeholders and customers responded with comments. The USPTO received valuable feedback on the potential effectiveness of the proceedings overall, as well as on specific issues such as safeguards against potential abuse, timing and deadlines, the appropriate fee amount, procedural points, standing, the burdens of production and proof, the use requirement, and the preclusive effect of Streamlined Proceedings.
After the comment period closed, stakeholders gathered for a public meeting on September 25, 2017, where the USPTO reported on the comments and attendees engaged in a lively discussion about various aspects of the Streamlined Proceedings. The conversation addressed some discussion questions posted on the USPTO website.
As indicated at the public meeting, the USPTO continues to welcome additional input on the discussion questions and other issues related to streamlined proceedings. Written comments may be submitted via TTABFRNotices@uspto.gov. The success of this type of initiative depends heavily on members of the public, sharing their insights and experience. These contributions allow the USPTO to better understand the participants’ perspectives in weighing the costs and benefits of Streamlined Proceedings. Should the USPTO move forward with Streamlined Proceedings, the next step would be issuance of a notice of proposed rulemaking to set out the specific rule changes needed to implement streamlined proceedings. The USPTO looks forward to continued engagement on this important initiative.
Posted at 09:46AM Nov 17, 2017 in trademarks |
Revised Patent Fee Schedule Finalized
Guest blog by Commissioner for Patents Drew Hirshfeld and Chief Judge of the Patent Trial and Appeal Board David Ruschke
The USPTO is celebrating the culmination of a multi-year effort to secure the financial security of the Patent and Patent Trial and Appeal Board (PTAB) organizations in order to better serve the United States economy We have made tremendous progress reducing overall patent pendency, reducing our inventory of unexamined applications, enhancing patent examination quality, reducing the ex parte appeal inventory, and implementing the post-grant review proceedings established by the America Invents Act (AIA). These are all vital to ensure steady domestic job growth. While great progress has been made, there is still much to be accomplished, which requires additional funding. After years of preparation, deliberation, analysis, and consideration of stakeholder opinion, the USPTO issued a final rule, “Setting and Adjusting Patent Fees during Fiscal Year 2017,” using the fee setting authority of the Leahy-Smith America Invents Act (AIA) to strategically change certain patent and PTAB fees.
The revised fee schedule is projected to produce approximately 4% more patent revenue each fiscal year once fully implemented. With the added funding, we aim to:
• Continue progress towards strategic goals and objectives including reaching target pendency and backlog levels
• Build upon the success of quality efforts and continue to strengthen the work products, processes, and services at all stages of the patent process
• Advance our multi-year effort to update our critical information technology infrastructure via solutions like Patents End-to-End (PE2E) and PTAB End-to-End (PTAB E2E)—modern, enterprise solutions designed to improve efficiency, enhance accountability, and provide greater stakeholder satisfaction during interactions with our organizations
• Support the PTAB’s continued efforts to recruit and retain staff to deliver high quality and timely decisions, particularly for AIA trials and reexamination and ex parte appeals
• Work towards an optimal reserve balance, which will enable the USPTO to maintain service delivery when faced with immediate and temporary changes in economic conditions and/or operating circumstances
The final rule is responsive to feedback gathered from stakeholders during the 60-day public comment period following the publication of the Notice of Proposed Rulemaking (NPRM) in September 2016 and was developed after extensive review and consultation with the current administration to ensure alignment with key priorities. Compared to the financial outlook presented in the NPRM, the revised financial outlook of the final rule is more moderate due to revised fee change proposals. Specifically, the USPTO opted to reduce the proposed increase in design and plant issue fees after stakeholders raised concerns about accessibility. Next, the notice of appeal fee remains at its current level ($800) instead of a proposed $200 increase. Further, the fee to forward an appeal to the Board increases only moderately. Finally, the final rule increases the Inter Partes Review (IPR) request and post-institution fees to better align them to their unit costs. The total combined fee ($30,500) is significantly greater than the current combined fee ($23,000) but these fees remain accessible compared to the costs required to pursue court proceedings. The other fees proposed in the NPRM remain the same in the final rule. A full list of fee change proposals is available on the Fee Setting and Adjusting page of the USPTO website.
For the PTAB organization, since the initial AIA patent fee rulemaking in 2013, ex parte appeal fees have enabled the PTAB to hire more judges and greatly reduce the appeals inventory, which reached over 26,500 (in 2012), to just over 13,000 (in September 2017). Additional fee revenue from higher appeal fees will support further inventory and pendency reductions.
The USPTO takes its fee setting authority very seriously and continues to invest significant resources and time in developing proposals, working with our stakeholders, and analyzing potential effects of proposed changes on fee payers. When first conceived, this final rule was to take effect in fiscal year 2017, but significant consultation, analysis, and consideration of multiple stakeholder perspectives led us to delay the implementation date. Given the pending sunset of the USPTO’s fee setting authority, barring an action by Congress to extend or make it permanent, this particular fee setting effort took on greater significance. We at the USPTO strive to be good stewards of our financial resources and we continue to welcome feedback and accountability from our many stakeholders.
Posted at 10:06AM Nov 16, 2017 in patents |
Traveling with a Group of Global IP “Rock Stars”
Guest blog by Director of the Silicon Valley Regional U.S. Patent and Trademark Office John Cabeca
I recently had the opportunity to join several of the USPTO’s intellectual property (IP) attachés in Long Beach, California, to deliver presentations at the American Bar Association’s IP West conference and meet with local U.S. stakeholders and businesses.
The USPTO’s IP attachés, who came here from their regional posts in South America, Central America, Asia, Mexico, and the Caribbean, are U.S. diplomats assigned to embassies or consulates to advocate U.S. positions on IP matters for the benefit of U.S. stakeholders. They are committed to advancing U.S. business interests internationally. They also provide information to U.S. businesses entering foreign markets, including how to navigate foreign laws and protect their IP abroad.
In addition to their extensive work abroad, the attachés regularly work with USPTO headquarters and its regional offices to hold meetings and conduct programs with stakeholders throughout the United States. These activities are designed not only to expand awareness of the IP attachés’ efforts, but also provide expert assistance to U.S. industry associations and individual businesses in their efforts to protect and enforce IP rights overseas.
One of the highlights of our visit to Southern California was a three-hour roundtable discussion held at the University of California–Irvine’s Applied Innovation incubator, The Cove. It consisted of a series of wide-ranging discussions on global IP protection, and gave about 100 attendees—who represented startup companies, academia, and IP law firms—the opportunity to get answers to their questions about the IP challenges faced by U.S. stakeholders abroad and the best methods to help them. It also addressed several related areas of concern, such as counterfeit goods, patents, and trade secret protection. In addition to The Cove, we also visited other associations and companies while we were in Southern California, including Boeing, Western Digital, The Walt Disney Company, and the Orange County IP Law Association.
A group of the USPTO’s intellectual property attachés recently met with representatives of The Walt Disney Company in Burbank California. The visit was part of a series of outreach events that the attachés conducted in southern California, meeting over a three-day period with a wide variety of local U.S. businesses and other stakeholders.
A group of the USPTO’s intellectual property attachés recently met with representatives of The Walt Disney Company in Burbank California. The visit was part of a series of outreach events that the attachés conducted in southern California, meeting over a three-day period with a wide variety of local U.S. businesses and other stakeholders.
Working alongside the IP attachés reminded me what a tremendous service they provide to our country and its businesses. For example, Ann Chaitovitz, our attaché based in Lima, Peru, related how her work conducting IP enforcement workshops for Peruvian officials had led to improvements in Peru’s enforcement activities. A subsequent raid by Peruvian officials, conducted on behalf of U.S. footwear and apparel manufacturers, netted large quantities of counterfeit goods bearing U.S. trademarks. Success stories like this show the important role our IP attachés play, and help explain why attendees at some of this week’s events referred to the attachés as “rock stars.”
According to the program’s director, Dominic Keating, “the USPTO’s IP attachés bring an average of more than 20 years of IP experience to the table to help secure the highest of standards in international agreements and host country laws. The attachés’ experiences range from government—in such agencies as U.S. Customs and Border Protection and the Office of the United States Trade Representative—to work with major trade associations and some of the best law firms in the country.”
We are truly fortunate that the USPTO has such dedicated and talented individuals advocating on behalf of U.S. business interests and working with foreign government officials for the enactment and enforcement of strong IP policies, laws, and regulations.
In addition to their most recent visit, similar IP attaché outreach programs have been held in other major U.S. cities near or in one of our regional offices, including Detroit, Michigan; Denver, Colorado; and Washington, D.C. The next one, in early December, will be in Dallas, Texas. I urge you to learn more about the work the attachés do by visiting the IP Attaché Program page on the USPTO website.
Posted at 11:49AM Nov 15, 2017 in International Affairs |
The Importance of Independent Inventors to America – and America’s Economy
Blog by Joe Matal, Performing the Duties and Functions of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO
Throughout history, independent inventors have transformed our lives with their innovative ideas and played a key role in the growth of the U.S. economy. Regardless of whether these ideas spawned small family businesses or large corporations, the work of small inventors is part of the fabric of American innovation. Think of names like Dupont, Ford, Kellogg, and Wright; and technology such as the telephone, the electric lightbulb, the steam engine, and the airplane. A disproportionate number of the most important technological advances started in the minds of small-scale, independent inventors, and their ideas have helped create new jobs, businesses, and even entire global industries. Today, the importance of small inventors and small business endures. According to the Small Business Administration (SBA), two out of three net new jobs in the U.S. are created by small businesses.
The resourcefulness and resilience of today’s independent inventors are indeed impressive, and at the USPTO, and because they’re responsible for so many great technological leaps, we want to help them succeed. The USPTO needs to hear about the real challenges they face as they work to protect and manufacture their innovations and start and grow their own businesses. In the months I’ve been leading this agency, I’ve made time to meet with inventors to hear their stories and learn how they believe the USPTO can help them overcome roadblocks. Just recently, for example, I attended a meeting of the Tampa Bay Inventors Council. Some of them expressed concern about the fairness of the IP system, and some criticized the USPTO’s post-issuance review proceedings, arguing that they are stacked against patent owners. Others noted that they found the process of obtaining a patent to be too lengthy, cumbersome, and cost-prohibitive. They’re also extremely concerned about the ease in which their product ideas can be copied and sold into the United States from other nations.
After a meeting with members of the Tampa Bay Inventors Council, Joe Matal (left) speaks with Steve Gordon, the inventor and manufacturer of the INSTANT-OFF Water Saver. (Photo by Paul Morinville)
Our policies and processes throughout the USPTO are intended to drive entrepreneurship and innovation, and create a fair, accessible, and easy-to-use system for all inventors. As I explained in Tampa, there’s always room for improvement at the USPTO. Every aspect of our agency is continually being refined to better serve the patent and trademark owner community. Hearing from them helps us identify ways we can make that happen.
To that end, the USPTO has a wide variety of resources designed to help independent inventors. They can take advantage of our Patent Pro Bono Program and Pro Se Assistance Program, which help applicants who seek patents without the assistance of a lawyer. Historically, USPTO has found that pro se applicants have substantially higher abandonment rates than do other applicants. The agency has recently begun expanding its pro se assistance program in order to ensure that every pro se inventor who wants to can be assisted by this art unit, in which examiners play an active role in guiding the inventor through the prosecution process. The USPTO also offers its Track One program, which provides expedited patent prosecution, and does so with significant discounts for small, independent inventors. Our Inventors Assistance Center, which is staffed by former patent examiners, intellectual property specialists, and attorneys, can answer general questions concerning patent examining policy and procedure.
In addition, our four regional offices, located in each of the U.S. time zones, serve to make our services more readily available to local communities, and their unique industry and innovation needs, whether it be an event on the basics of patents and trademarks, or meeting directly with an examiner to discuss an application. Representatives from across the USPTO regularly meet with groups of inventors, startups, and businesses. I encourage you to browse our list of all upcoming events to find one that interests you.
I look forward to continuing the discussion with inventors to learn what we’re doing well, what we can do better, and how best to serve their needs. Only by working together will we achieve the best outcomes for our nation’s inventors and entrepreneurs, and help grow our economy, create new jobs, and build new industries.
Posted at 10:23AM Nov 08, 2017 in USPTO |
2017 Collegiate Inventors Competition Winners Announced
The future of American innovation was on display November 3rd at the 2017 Collegiate Inventors Competition held at the U.S. Patent and Trademark Office (USPTO) in Alexandria, VA.
Cutting-edge inventions created by the nation’s brightest young innovators from colleges and universities across the country – solving challenges from water decontamination to wearable power generation – were showcased at the competition’s public expo, providing the students a forum to answer questions and discuss their inventions with USPTO patent examiners, patent attorneys, trademark examiners and senior officials; corporate sponsors; members of the intellectual property community; and the public.
During the competition, the 29 undergraduate and graduate students from 12 teams all had the opportunity to interact one-on-one with inductees of the National Inventors Hall of Fame (NIHF). These legendary innovators – who have invented many tools, processes, or devices that are now commonplace in our lives (optical fiber, implantable defibrillator, Post-it® Notes, digital camera) — served as judges for the competition, and provided advice and inspiration for the students. USPTO officials also served as judges.
2017 CIC gold medal winners
The winner in the undergraduate category was a team from University of Iowa, Abraham Espinoza and Matthew Rooda. Their invention, SwineTech, is an audio processing technology that determines if piglets are in distress, allowing farmers to provide a higher quality of life to their livestock.
The graduate winner was Ning Mao from Boston University for Engineered Probiotics. Her priobiotic solution is an affordable and convenient way to provide early detection of cholera and help further contain the spread of the disease.
The top undergraduate and graduate winning teams each received $10,000. Second- and third-place finishers also were awarded cash and prizes. Read more about all the 2017 CIC finalists and winners and hear what they love about inventing.
Through this competition, the skills that these students gained through the process of invention and by learning about intellectual property will be assets to them as they continue with their research or commercialize their inventions.
The Collegiate Inventors Competition is one of several important programs that the USPTO and NIHF offer to young inventors. Others include Invention Playground for preschool children, Camp Invention and Club Invention for elementary school children, and Invention Project for middle school students. Since 1990, NIHF’s education programs have served more than 1.25 million children, and 125,000 teachers and leadership interns — promoting a better understanding of the vital role intellectual property and innovation play in our lives and our economy and helping build entrepreneurial skills for the next generation of inventors.
Posted at 02:08PM Nov 07, 2017 in ip |
Something Spooky This Way Comes – Strange, Weird and Unsettling IP
Americans will spend an estimated 9.1 billion dollars on Halloween this year, and yet many trick-or-treaters remain unaware that this holiday is crawling with countless examples of intellectual property (IP), from the registered trademarks protecting the candy you eat and the costumes you wear, to the utility and design patents behind the tools to carve pumpkins or manufacture Halloween decorations. As in past Octobers, the U.S. Patent and Trademark Office (USPTO) uses social media as a fun and timely way to educate the public about the importance of IP and how it impacts their everyday lives.
Seven years ago, the USPTO decided to explore the deepest and darkest corners of more than two centuries worth of patent and trademark archive to unearth some particularly Halloween-appropriate patents and trademarks, in a campaign that became known as “Creepy IP.” Whether it’s the trademark for Ghostbusters®, Count Chocula® cereal, a sound mark for Darth Vader®, or patents for the electric extraction of poison or a flesh brushing apparatus from the 1880s, the USPTO’s public records are full of interesting inventions and commercialized products, some of which would fit right in at your local haunted house.
Since its initial launch in October 2011, the #CreepyIP hashtag remains one of the USPTO's most successful interactive social media campaigns, with other federal agencies, private companies, the press, and members of the general public routinely using the hashtag to share the IP they find spooky, creepy or downright strange. This year, the USPTO has even gotten other international IP offices searching their archives for Creepy IP.
USPTO Creepy IP Team
Part of the USPTO’s mission is to educate the public about the importance of IP, and Creepy IP generates tremendous awareness by highlighting how patents and trademarks are ingrained in our daily lives. Innovation and creative endeavors are indispensable elements that drive economic growth and sustain the competitive (and sometimes creepy) edge of the U.S. economy. In turn, IP protection provides incentives to invent and protects innovators from unauthorized use of their creepy inventions. The importance of IP to our economy is illustrated by a major study by the Economics & Statistics Administration which found that in 2014, IP-intensive industries directly and indirectly supported over 45 million jobs (nearly a third of all U.S. jobs) and over 38% of our national GDP.
On October 31 at 9:30 a.m. ET, the kooky minds behind Creepy IP at the USPTO will be hosting a Reddit “Ask Me Anything.” Join the discussion to ask questions about the weirdest and most memorable creepy patents and trademarks that they’ve discovered over the years. Follow the USPTO on Twitter and Facebook for more spooktacular IP, and from all of us – Happy Halloween!
Posted at 01:10PM Oct 30, 2017 in USPTO |
Spotlight on Commerce: Juan Valentin, Education Program Advisor, USPTO
Ed. note: This post is part of the Spotlight on Commerce series highlighting contributions of Department of Commerce employees during Hispanic Heritage Month.
Guest blog post by Juan Valentin, Education Program Advisor, U.S. Patent and Trademark Office
If you had told me ten years ago that in October of 2017 I would be traveling across the United States educating children and adults alike on how important intellectual property (IP) protection is for the development of our youth and nation, I would have laughed you out of the room. Growing up as one of the only Hispanics in a small, Upstate New York community, one thing that was always important in my life was my Puerto Rican ancestry. The music, food, culture and the family life-force was sewn into my soul at an early age.
I started my career as a patent examiner, putting my engineering degree from Clarkson University to good use, examining patent applications in the field of optical measuring and testing devices. Two key events in my life were the catalysts that set me on my current career path. The first took place about five years into my USPTO career when a friend invited me to Langdon Elementary School in D.C. to make slime with third graders. This was for a program called RESET that takes volunteers and matches them with local elementary schools to do hands-on science and engineering activities with the students. My life was changed that day. I was hooked, first as a volunteer, then as an activity lead, then as a team lead who developed new activities and was responsible for finding new volunteers.
My mother had a huge impact on this change of direction. Some of my first memories are of her giving spirit, of the sacrifices she made for not only me but for those in need around her. My mother not only worked in public service, she volunteered and as a single parent always had me at her side, helping with activities. For me, seeing the excitement, smiles, and appreciation on the students’ faces after doing educational activities brought back childhood memories of giving back to my community and it showed me there’s a need for this type of service in underrepresented communities. It reminded me of the potential my mom saw in other people and her willingness to help.
Juan Valentin (center) with students during Engineering Week
The second event came in 2009 when I co-founded the first ever U.S. federal government chapter for the Society of Hispanic Professional Engineers (SHPE) at the USPTO. Members of SHPE are a family. We take pride in helping new employees transition to the agency, while creating a community of learning here at the USPTO. As the SHPE President for past two years, I have really seen the impact of the organization over the last eight years, helping mentor and support Hispanic employees in their growth as leaders at the USPTO, while also giving back to the community. We’ve recently been focusing on ways to help the areas ravaged by the hurricanes, and have organized a donation drive for supplies to be sent to Puerto Rico. This year’s theme for Hispanic Heritage Month is “Shaping the Bright Future of America,” which is very fitting for the tremendous work I’ve been blessed to be a part of through SHPE.
In 2011, I applied for and was accepted to a detail to work on K-12 IP educational initiatives at the USPTO’s Office of Education and Outreach (OEO), for eight months. That eight months went by so fast I remember thinking, “Wouldn’t it be amazing if I could do this full time?” As my detail came to an end, a full-time vacancy was announced for an education specialist. I was determined to apply for the position and was hopeful that through my experiences I would be given the opportunity to help expand innovation, invention, and IP outreach at the USPTO. Life doesn’t always go as planned and I didn’t get the position, but I knew that showing students how to be innovative problem solvers and critical thinkers was my future; now I just needed to make it a reality. I was determined to build up my resume so I would be ready when the next opportunity opened up. My patience was well worth it; three years later another position became available and I was selected.
I still pinch myself from time to time when the fast pace of my life slows down just enough for a moment of self-reflection on the past three years. Not everyone is lucky enough to say they have their dream job. As an education program advisor at the USPTO, I can proudly say without a doubt, I have found my dream job, or rather it has found me! My career advice to others is not to get discouraged by setbacks, but to be determined and pursue what you love to do.
USPTO and Denver Startup Week – What’s the Connection?
Guest blog by Director of the Rocky Mountain Regional U.S. Patent and Trademark Office Molly Kocialski
Today’s small businesses and entrepreneurs are faced with many decisions as they pursue their dreams of creating and building their own businesses. While raising funds from investors or applying for loans from the Small Business Administration (SBA) or other lenders, they are also formulating business plans, identifying the right business partners, hiring technical help, finding manufacturing assistance, and developing an overseas marketing strategy. In short, the “to do” list is long and ever-evolving. There are also intellectual property concerns to consider. What should my brand be? Do I need a patent? How do I protect my products and services from competitors? The USPTO can help answer many of these questions, and one venue where we are able to reach and assist a lot of small businesses and entrepreneurs is at local and regional “startup weeks.”
Every year, the Rocky Mountain USPTO participates in Denver Startup Week (DSW), which showcases the area’s entrepreneur community in tech, design, business, and manufacturing. DSW was started in 2012 and in the years since has grown into the largest free entrepreneurial event in the world, with over 13,300 people attending in 2016. Over the course of five days, the USPTO provides assistance to these small businesses and entrepreneurs, ensuring they understand the ins and outs of the intellectual property (IP) system. This year, the USPTO held sessions on intellectual property as a business decision and on why licensing partnerships enhance the chance of success.
Rocky Mountain Regional USPTO Director Molly Kocialski presents during Denver Startup Week
Small businesses and entrepreneurs are the engine of the U.S. economy. According to the SBA, they make up:
• 99.7 percent of U.S. employer firms,
• 64 percent of net new private-sector jobs,
• 43 percent of high-tech employment,
• 98 percent of firms exporting goods, and
• 33 percent of exporting value.
In addition to reaching entrepreneurs at startup weeks, the USPTO offers a wide range of resources for small businesses and innovators across the country. Our regional offices in Denver, Dallas, Detroit and San Jose provide a support system for entrepreneurs, offer free information and resources to individuals and businesses, and host frequent events. In addition, our Patent and Trademark Resource Centers (PTRCs) are a nationwide network of public, state, and academic libraries designated by the USPTO to support the public with trademark and patent assistance. Individuals and small businesses with limited financial resources can also receive free legal assistance in order to help them secure patent protection for their invention. Through the Law School Clinic Certification Program, assistance is provided by law students who are supervised by licensed IP attorneys, and through the USPTO’s Patent Pro Bono Program, now in all 50 states, attorneys volunteer their time as a way to give back to their communities.
At the USPTO, we understand that when starting a business, there are many IP-related concerns to consider. That is why we are working to provide local and regional innovators with the tools, information and resources they need to succeed and ultimately, protect U.S. innovation.
Posted at 10:07AM Oct 06, 2017 in ip |