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Enhancements to Trademark Trial and Appeal Board Proceedings
Guest blog by Chief Administrative Trademark Judge Gerard F. Rogers
The Trademark Trial and Appeal Board (TTAB) announced the culmination of an in-depth outreach effort to stakeholders focused on enhancing the Board’s appeal and trial processes. In a Notice of Final Rule-Making (NFRM), published in the Federal Register on October 7, 2016, the USPTO said new rule changes will benefit the public by providing more clarity in the rules, flexibility for parties involved in Board proceedings, and increased procedural efficiency. At the same time, the rules further a USPTO strategic objective to increase end-to-end electronic processing of trademark matters, which reduce costs to the USPTO and the public, and helps avoid errors that may creep into records during manual entry of data contained in paper filings.
The last major set of TTAB rule changes took effect in 2007. Since then, there have been case law developments, changes in the Federal Rules of Civil Procedure, and the rollout of the USPTO’s Accelerated Case Resolution (ACR) process. Therefore, it is an ideal time to update the rules to make the benefits of ACR available to all parties, as well as to promote electronic filing and communication. The rule changes, major provisions of which are summarized below, reflect significant input from the Trademark Public Advisory Committee, individual stakeholders, and professional associations, and have been well-received since publication in the Federal Register.
One of the most overarching rule changes involves the Board assuming responsibility for service of the complaint filed to initiate an inter partes proceeding. This rule change shifts responsibility for service of the complaint in an opposition or cancellation proceeding from the plaintiff to the Board, in an effort to reduce the responsibilities of litigants during the commencement of a proceeding.
Another exciting change is the Board moving exclusively to use of electronic filings and communication. In this new all-electronic environment, instead of mailing hard copies of institution orders and complaints, the Board forwards an order by email, with a link to both the proceeding file and the complaint, as displayed in the Board’s electronic docketing system known as TTABVUE. The rule changes also mandate that parties file documents through ESTTA, the Board’s electronic filing system. That requirement results in cost-savings to the USPTO and to private litigants, and will increase the efficiency with which the Board can process matters. Finally, filings and papers are now required to be exchanged between parties by email, with exceptions made for technical problems or extraordinary circumstances; and to allow the parties flexibility, they may agree to alternate methods of communication or exchange of documents and information that work best in their particular circumstances.
Reflecting recent amendments to the Federal Rules of Civil Procedure, new discovery provisions in the rule changes help curtail abuse and reduce litigation expense for stakeholders. The number of requests for production of documents and requests for admission are now limited to 75, paralleling the current limitation on interrogatories. To avoid disadvantaging parties that use requests for admission to authenticate produced documents, the changes provide for one comprehensive request for admission to the producing party to seek authentication of identified documents or specification of those documents which cannot be authenticated. This option facilitates introduction of produced documents at trial by notice of reliance, rather than through painstaking witness identification and testimony, thereby providing the parties more flexibility during trial. Finally, the rule changes afford the parties substantial flexibility to stipulate to various limitations on discovery in terms of duration, number of requests, and the elimination of discovery altogether.
Additionally, the rule changes establish new deadlines in discovery, paving the way for another significant change -- a requirement that motions to compel discovery or to determine the sufficiency of responses to requests for admission be filed prior to the deadline for plaintiff’s pretrial disclosures. These revisions help parties avoid the expense and uncertainty that arise when discovery disputes erupt on the eve of trial and ensure parties make pretrial disclosures and engage in trial preparation only after all discovery issues have been resolved. As with the timing of motions relating to discovery disputes, motions for summary judgment must be filed prior to the deadline for plaintiff’s pretrial disclosures. This avoids disruption of trial planning and preparation which can occur by filing such motions late in the process.
ACR procedures have proven particularly effective at streamlining trial proceedings. These include agreements to limit discovery and to shorten trial periods or the time between trial periods, and stipulations to certain facts or to the admissibility of documents or other evidence. Accordingly, parties are still able to enter into stipulations regarding proffers of testimony, but the rules allow any party unilaterally to choose to present trial testimony by affidavit or declaration, subject to the right of cross-examination by the adverse party or parties.
Finally, the rule changes include expanding the parties’ options through which evidence is submitted during trial. Parties may now make of record, via notice of reliance, pleaded registrations and registrations owned by any party by submitting a current copy of information from the USPTO electronic database records showing current status and title; and the rule changes codify this option. In addition, parties may now also use the notice of reliance method for submitting internet materials.
The rule changes become effective January 14, 2017, and apply to all proceedings pending at that time or begun thereafter. All employees at the Board, including our 243 information specialists and paralegals, our 245 attorneys, and our judges, have been involved in identifying these improvements, and we strongly believe that these changes help streamline our trial proceedings and avoid unnecessary expense and complications for parties involved in our cases. We continue to welcome any feedback you have on TTAB trial proceedings in order to increase clarity, efficiency, and effectiveness of our processes.
Posted at 03:03PM Nov 03, 2016 in trademarks |
When Patents and Trademarks Go Bump in the Night
Innovation comes in all shapes and forms, and every October 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 intellectual property (IP) and how it impacts their everyday lives. Halloween is crawling with countless examples of intellectual property. From the registered trademarks protecting the candy you eat and the costumes you wear, to the utility and design patents behind the tools to make them, IP is alive and well.
Several years ago, the USPTO decided to explore the deepest and darkest corners of more than two centuries worth of patent and trademark archives as a seasonal extension of its Today in Patent and Trademark History series known as “Creepy IP.” Whether it’s the trademark for Ghostbusters®, a sound mark for Darth Vader®, a patent for a winged suit to fly away from a burning building, a patent for producing lifelike simulations to inanimate objects, or a patent for vampire-shaped pasta, the USPTO’s public records are full of interesting inventions and commercialized products from the past.
Since its initial launch in October 2011, the #CreepyIP hashtag has generated wide appeal and 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 contribute their own intellectual property-inspired posts. Part of the USPTO’s mission is to educate the public about the importance of IP, and it does this through programs throughout the year as well as digitally and with social media.
Creepy IP generates tremendous awareness by highlighting the touchpoints where patents and trademarks impact 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.
Posted at 10:47AM Oct 21, 2016 in ip |
National Trademark Expo October 21-22
Guest blog by Commissioner for Trademarks Mary Boney Denison
I am pleased to invite you to attend the 2016 National Trademark Expo on Friday October 21st and Saturday October 22nd in Washington, D.C. The two-day event is free and designed to educate the public about the instrumental role that trademarks play in business development and the value of trademarks for growth in the global marketplace.
The theme of the 2016 Expo is “Movement and Energy.” Highlighting key themes such as “Unusual Trademarks” and “Brand Evolution,” the Expo will offer a variety of educational seminars including “Trademark Basics,” “Applying to Seek Federal Registration” “What Happens After Registration,” and “Why Buy Legit.” A number of our country’s leading corporations, small businesses, and governmental agencies will also be on site, highlighting their trademarks and providing information on the benefits of federal trademark registration.
We’re very excited that this year’s opening ceremony, which takes place on Friday October 21st at 10 a.m., will feature the U.S. Army’s Continental Color Guard wearing replica 1784-style infantry uniforms as well as a singing of our National Anthem. This year, the guest speaker at the Expo’s opening ceremony will be Kevin Haley, Under Amour’s President of Category Management & Innovation, who will discuss the importance of Under Amour’s federal trademark registrations.
The Expo will also feature children's workshops and guided tours of educational content and exhibits. Costumed characters, led by our very own T. Markey, will be introduced during the opening ceremony and make appearances throughout both days of the Expo, and inflatable characters will be on display. This year’s Expo will feature exhibits and display cases of authentic goods alongside counterfeit goods, including a display by the Indian Arts and Crafts Board. Losses to U.S. businesses from counterfeiting of trademarked consumer products are estimated at billions of dollars and hundreds of thousands of jobs annually and create serious public health risks and safety hazards. The Expo is part of the Trademark organization’s continuous efforts to educate the public on the role of trademarks. The last several Trademark Expos attracted thousands of visitors of all ages and I encourage you to bring your friends and family.
If traveling by metro, the auditorium is a short walk from the Federal Triangle Metro station, or if driving, view directions and parking information. For additional information, please visit the Trademark Expo page of the USPTO website.
Posted at 09:51AM Oct 17, 2016 in trademarks |
Protecting the Rights of American Innovators in Cuba
Guest blog by Russ Slifer, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO
President Obama’s historic announcement, just two years ago, paved a new course of history for a more open U.S.-Cuba relationship—and today the Administration is taking steps to not only break down economic barriers, but also give way to more scientific collaboration, unlocking new opportunities for innovation. That presents a dynamic opportunity for the U.S. Patent and Trademark Office (USPTO) — an agency of the U.S. Department of Commerce — to support and facilitate trade and investment between our countries. That’s why under leadership of President Obama and Secretary Pritzker, we are working to create a framework for strong intellectual property rights that will anchor investment, and fuel research and development in both countries. And it’s also why last week I participated in an historic office-to-office meeting between the USPTO and the Cuban Intellectual Property Office (OCPI) during the World Intellectual Property Office (WIPO) General Assemblies in Switzerland, to exchange perspectives on how each of our systems can be strengthened for the 21st century.
As authorized commercial ties between Cuba and the United States strengthen, intellectual property (IP) plays a key role in future trade and foreign direct investment. Strong IP rights help anchor foreign direct investment and capital flows both by bringing adequate rule of law but also by inspiring market confidence in terms of the commercial enforceability of IP. Accordingly, the USPTO has begun to engage with our Cuban counterparts in ground-breaking meetings over the past few months to develop a long term strategy to protect IP in the region.
Just this September, the USPTO participated in a regional WIPO seminar on the Patent Cooperation Treaty (PCT) held in Havana to explore ways in which we are currently enabling country to country filings. USPTO staff discussed the U.S. experience with implementing the PCT, which aims to simplify the process of filing foreign patent applications. Additionally, I traveled to Havana to meet with Cuban officials, including OCPI, to discuss the USPTO’s mission and to reaffirm our interest in possible future collaboration on IP matters.
In May 2016, USPTO staff traveled to Cuba to participate in a series of events organized by WIPO and the OCPI to begin a dialogue to strengthen the relations between our two offices. Participants included academia, local industry, IP professionals, and government officials and focused primarily on patents and technology transfer issues. During this trip, USPTO officials were able to conduct the first face-to-face meetings with OCPI officials in over fifty years. We provided background information about the USPTO’s patent and trademark operations and expressed interest in establishing a solid foundation for future collaboration.
This series of steps is just the beginning, but it builds upon actions Secretary Pritzker and President Obama have taken to help position businesses for future growth in both our countries, facilitate trade, and drive investment. We are focused at the USPTO on championing IP both domestically and abroad, as businesses in a global economy need the security of knowing that their innovative technology, brands, creative works and even trade secrets, are secure in foreign markets.
As our authorized commercial ties with Cuba begin to strengthen, there is no doubt that U.S. companies will increase their use of the Cuban IP system. With this in mind, it is important for the USPTO to establish a line of communication and build a relationship with our Cuban counterparts to help achieve this objective. We are optimistic that our relationship with OCPI, and with Cuba in general, will continue to strengthen.
Improving the Trademark Register
Guest Blog from Commissioner for Trademarks Mary Boney Denison
When selecting a mark for a new product or service, a business will search the USPTO database of registered marks to determine whether a particular mark is available. Registered trademarks that are not actually in use in commerce unnecessarily block someone else from registering the mark.
To ensure the accuracy of our trademark registry, in 2012, the USPTO launched a pilot program to gather data on whether registered marks were actually being used on the products and services listed on their registrations.
During the pilot, in 500 randomly-selected maintenance filings we required the registrant to submit proof of use for two additional items for each class listed on the registration. Although the registrant must submit one example of use per class in a maintenance filing, typically the registration will list multiple products or services for each class.
At the conclusion of the pilot, the USPTO determined that in more than half of the trademark registrations selected, the owner was unable to verify the actual use of the mark for the goods or services queried. This was in spite of the owner having recently sworn under penalty of perjury to such ongoing use as part of the maintenance filing. We issued a report on the results and held a roundtable to discuss the results and next steps. The consensus among roundtable participants was that the results of the pilot program indicated a need for some action to improve the accuracy and integrity of the register. As a result of these findings and input from the trademark community, we are now taking a three-pronged approach to tackling the so-called “deadwood” in our searchable database of registered marks.
First, we are increasing the readability of the registration declaration. We have reformatted the declaration to it make it more readable and therefore more likely for the signer to read the declaration swearing to use for each and every good or service listed.
Figure (1): Current Form
Figure (2): New Form
Second, we are planning to make the random audits of existing registrations permanent. A Notice of Proposed Rulemaking (NPRM) to make our random audits program permanent published June 22 in the Federal Register. The comment period recently closed and we are now drafting a final rule.
Once implemented, attorneys representing trademark registrants will be able to make registrants aware that, in order to maintain their registrations, they may be asked to submit and prove use on more than the one item of goods or services per class. Specifically, for selected registrations, we may require submission of information, exhibits, affidavits or declarations, and additional specimens to ensure that the register accurately reflects the marks are in use in United States for all goods and services identified in registrations, unless excusable nonuse exists.
Third, we are considering proposing one or more new or revised procedures to cancel registrations for marks either no longer in use or never in use. On April 28, the Trademark Public Advisory Committee convened an executive session to discuss the possibility of a new expungement procedure as well as several streamlined Trademark Trial and Appeal Board (TTAB) cancellation procedures. Preliminary meetings with various stakeholder groups continue. We are close to fully developing these concepts. Under consideration are options that include:
Ensuring the integrity of the Federal Trademark Register is of utmost importance to the USPTO. Please be on the lookout for further updates on this important topic.
USPTO Launches New Jobs Pages and Outreach to Hispanic Millennials
Guest Blog by Director of the Office of Equal Employment Opportunity and Diversity Bismarck Myrick
USPTO’s mission, providing timely and high quality examination of patent and trademark applications, could be compromised with 18% of our workforce eligible to retire in the next 3-5 years. Therefore, it is crucial that we actively recruit new talent from across the country and from all backgrounds.
As we celebrate Hispanic Heritage Month, we recognize that Hispanic employees at the USPTO provide a richness in skill, creativity, thought leadership and determination.
Through our newly redesigned careers pages, “USPTO Jobs,” social media, and other digital means, the USPTO is modernizing the way we recruit prospective employees, with special attention paid to reaching highly-qualified jobseekers from underrepresented groups. In particular, I am delighted to announce a new digital outreach strategy designed to reach Hispanic Millennials, making sure they know about job opportunities at the USPTO.
In June 2009, engineers at the USPTO formed the first U.S. government professional chapter of the Society of Hispanic Professional Engineers, SHPE-USPTO. SHPE-USPTO programs foster the professional, educational and cultural support that members rely on for career advancement and success at USPTO.
SHPE-USPTO also played an instrumental role in supporting the expansion of the agency’s telework program to Puerto Rico. As of April 2016, interested and eligible employees now have another telework option outside of the USPTO's 50-mile commuting radius. We expect that this step will not only help the USPTO’s efforts to spur innovation in more regions, but that enhance the Puerto Rican economy by bringing federal employee positions to the island.
Watch our video to learn more about the impact that Hispanic employees are having at the USPTO.
Positions at the USPTO are available not only in our headquarters in the Washington DC area, but also in our regional offices in Detroit, Denver, Dallas, and Silicon Valley, as well as remotely through our telework program. Speak to us this fall as we visit over 24 universities, and hold events from info sessions to Twitter chats. Follow us on Linked In, Twitter, and Facebook for the latest details. And be sure to check out USPTO Jobs, which provides prospective employees with improved navigation, accessibility of agency news and information, and a live feed of job openings from USAJobs.gov.
We are a workforce of nearly 13,000 highly-skilled and motivated professionals including engineers, scientists, attorneys, strategists, and computer specialists – all dedicated to protecting U.S. intellectual property rights. The USPTO is one of the Best Places to Work in the Federal Government,® rankings produced by the Partnership for Public Service. Read about some of our talented professionals, and learn more about our benefits, student programs, veteran employment and disability hiring programs.
Posted at 11:30AM Oct 04, 2016 in USPTO |
USPTO Proposes Patent and PTAB Fee Adjustments
Guest blog by Commissioner for Patents Drew Hirshfeld and Chief Judge of the Patent Trial and Appeal Board David Ruschke
The Patent and Patent Trial and Appeal Board (PTAB) organizations continue to identify ways to deliver increasing value to the global intellectual property community. The USPTO has 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). While great progress has been made, there is still much to be accomplished.
Today, the USPTO issued a notice of proposed rulemaking (NPRM) using the fee setting authority of the AIA to strategically change certain patent and PTAB fees. The targeted fee increases proposed in the NPRM are projected to produce approximately 5% more patent revenue each fiscal year once fully implemented. With the added funding, we aim to:
After consultation with the Patent Public Advisory Committee (PPAC), several key Patent organization fees have only modest increases, e.g., utility filing, search, examination, and issue fees; others have slightly larger increases, e.g., design filing, search, examination, and issue fees. Small and micro entity fees remain in place to foster innovation among small businesses and independent inventors. Maintenance fees remain unchanged. We propose to increase slightly the request for continued examination (RCE) fees to better align them with our costs. Other fee proposals affect excess claims, information disclosure statement (IDS) submissions, and Office of Enrollment and Discipline (OED) fees among others. A full list of fee change proposals is available on the USPTO’s Fee Setting and Adjusting 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 backlog, which reached over 27,000 (in 2012), to under 17,000 (in August 2016). Additional fee revenue from higher appeal fees will support further backlog and pendency reductions.
The PTAB has significantly strengthened capacity in recent years to manage its growing workload. The PTAB received more than 4,700 petitions for AIA trial proceedings since 2012 and has met every deadline set by Congress for such trials. In the last iteration of patent fee setting, we had to estimate both demand (e.g., workload) and cost with little data available for the Inter Partes Reviews (IPRs), Post Grant Reviews (PGRs), and Covered Business Method Reviews (CBMs). Now, with three years of historical cost data, we have better insights into the full cost of services and can better estimate demand, which enables the USPTO to align fees more appropriately. Still, compared to their FY 2015 unit cost, all of the trial fees remain at or below our cost to deliver the service and offer a lower-cost alternative to costly litigation.
Given our goal to support the global intellectual property community, we take fee setting very seriously and thoroughly analyze the effects of proposed fee changes on our stakeholders. Following the last AIA patent fee setting that became effective in March 2013, this current rulemaking is the result of a comprehensive biennial fee review that began in 2015 and concluded with a recommendation for additional, targeted fee adjustments to help us achieve the aims delineated above.
In keeping with the AIA fee setting process, the results of the comprehensive biennial fee review were presented to the PPAC in October 2015 as an initial fee setting proposal. The PPAC conducted a hearing in November 2015 and accepted public comments before preparing a written report in response to the initial proposal. The USPTO considered the PPAC report (released in February 2016) and as a result made several revisions to the initial proposal to arrive at the package of fee adjustments contained in the NPRM.
A 60-day public comment period has now opened, and we welcome feedback from our stakeholders. After reviewing the comments, we plan to prepare a final rule for publication during the summer of 2017. The NPRM can be accessed here. Comments on the fee proposals are due by December 2, 2016.
Posted at 10:29AM Oct 03, 2016 in patents |
Commemorating Five Years of the America Invents Act
Guest Blog by Dana Robert Colarulli, Director of the Office of Governmental Affairs
We’ve come a long way in five years. The Leahy-Smith America Invents Act (AIA), signed in 2011 by President Obama, modernized the U.S. patent system and, as a result, helped strengthen America’s competitiveness in the global economy. Together with our stakeholders, the USPTO sought to implement the act consistent with the intent of Congress to increase certainty in our nation’s intellectual property (IP) landscape and enable the brightest ideas and most ambitious endeavors in the world to come to light.
I was there in 2011 and the years leading up to the President signing the AIA and have watched the agency embrace and implement the numerous provisions in the act. On Wednesday, September 21, members of Congress and key congressional staff, USPTO leadership, and stakeholders from industry and the inventor community came together again to commemorate the 5th anniversary of the AIA on Capitol Hill.
The event featured remarks from USPTO’s Director Lee, Representative Lamar Smith and Senator Patrick Leahy on the history of the AIA, the need for change, and the AIA’s impact on the IP system – even as we continue to evaluate these sweeping changes and look for ways to further improve our system. A panel discussion at the event focused on the impact the act has had on businesses and inventors of all sizes and what may be next in the way of improvements to the patent system.
The AIA implemented a number of significant changes to update and improve the U.S. patent system. Upon signing the bill in 2011, the President described what the bill hoped to accomplish this way:
“It’s a bill that will put a dent in the huge stack of patent applications waiting for review. It will help startups and small business owners turn their ideas into products three times faster than they can today. And it will improve patent quality and help give entrepreneurs the protection and the confidence they need to attract investment, to grow their businesses, and to hire more workers.”
The USPTO has delivered on that promise by reducing the patent application backlog by nearly 30 percent from its high in early 2009, speeding up examination including introducing a fast track option with discounts for small entities, and leveraging the increased financial stability and fee setting authority provided by the act to reinvest user fees into increasing quality under Director Lee’s Enhanced Patent Quality Initiative.
And just this week, the USPTO and the Economics & Statistics Administration at the Department of Commerce released an updated report on the impact of IP on the U.S. economy, reiterating in quantifiable terms the importance of a well-functioning IP system.
The increased attention and focus on our IP system in recent years is critical, and our job to look for ways to further improve did not end with the AIA. Again, the President stated in 2011:
“And we have always succeeded because we have been the most dynamic, innovative economy in the world. That has to be encouraged. That has to be continued.”
Inventors and innovators in the U.S. and around the world deserve a system that evolves and improves right along with the pace of technology – an important reminder as we celebrate the 5th anniversary of the AIA.
Learn more about the impact AIA has had over the last five years in:
Posted at 12:07PM Sep 26, 2016 in ip |
Transparency in Patent Examination Prosecution: Master Review Form
Guest blog by Deputy Commissioner for Patent Quality Valencia Martin Wallace
One important component of the USPTO’s commitment to achieve greater accuracy, clarity, and consistency in examination and prosecution is the Clarity and Correctness Data Capture (CCDC) program. As part of our Enhanced Patent Quality Initiative, the goal of the CCDC is an improved data capture system to enable all reviewers of finished work products to consistently document and access quality review data in one place. By entering the results of these reviews into a single database, the USPTO will ultimately capture three to five times more data as a single data set than we have previously captured. With this larger data set, we will be able to identify trends at a more granular level, and in doing so, we will be poised to provide training and other educational opportunities to examiners, in order to achieve greater transparency in examination and prosecution. We are also updating our quality metrics in view of this new data, which will be the subject of a future blog post.
As part of this effort, the USPTO is standardizing reviews of finished work products through the use of a single review form, called the “Master Review Form” (MRF). Reviewers in the Office of Patent Quality Assurance (OPQA) and supervisors in our technology centers are already using this form. The MRF places a much greater emphasis on assessing the clarity of an examiner’s reasoning in a rejection compared to past review forms, while maintaining our historic focus on addressing the correctness of an examiner’s action. In addition, the MRF provides reviewers with a greater ability to flag instances of high quality or best practices during their reviews to allow the USPTO to acknowledge these high-performing examiners as well as to provide a set of readily identifiable examples of high quality work that can be used for training purposes. Further, the Master Review Form is a “smart”, software-based form, so reviewers see only those sections of the form that are pertinent to the review that they are doing, which allows reviewers to be more efficient when recording the results of their reviews.
We are continuing to assess the Master Review Form to ensure it strikes the right balance between the level of detail captured by the form and the time it takes to fill out the form. To this end, we have conducted surveys and focus sessions with OPQA reviewers as well as supervisors in the technology centers. These surveys and focus sessions have identified changes to questions as well as a need for better guidance on how to fill out the form. We also published a Federal Register Notice in March 2016 seeking comments on the MRF. We received 32 comments expressing a general desire for more detail in the MRF’s sections to evaluate causal effects, especially the search section, as well as identifying a need for a guidance document for the public. Based on all of this feedback, we created a new version of the Master Review Form, which OPQA and the technology centers are currently using, and updated guidance for this new version.
Further, we are testing the MRF by using it when conducting case studies as part of the Topic Submission for Case Studies program. Historically, OPQA was able to conduct a very limited number of case studies every year due to resource constraints because each case study typically required a large number of extensive reviews. The Topic Submission for Case Studies program has allowed us to test the extent to which we can use data from the Master Review Form in place of such extensive reviews.
Even though we only began using the Master Review Form in OPQA in November 2015, we have completed over 11,000 reviews so far this fiscal year and expect to complete at least another 1,000 reviews by the end of the year. In contrast, OPQA completed 7,900 reviews in fiscal year 2015. Next fiscal year, OPQA expects to complete over 18,500 reviews. As the MRF’s database continues to grow over the coming years with hundreds of thousands of reviews covering a large range of issues, the USPTO will have an even richer data set to use when identifying quality trends, answering questions we would otherwise have had to answer through a case study, and providing more precise quality metrics. This will have an impact for years to come.
Posted at 09:57AM Sep 20, 2016 in patents |
Five Years of Patent Pro Bono Success
Guest blog by Will Covey, Deputy General Counsel and John Kirkpatrick, Patent Pro Bono Coordinator
Five years ago, President Obama signed the America Invents Act (AIA) into law, bringing sweeping changes to the U.S. patent system. In addition to those major changes, other aspects of the AIA focused on leveling the playing field for inventors and entrepreneurs. Today, we want to talk about one of those aspects, Section 32.
Section 32 provides that the U.S. Patent and Trademark Office (USPTO) “work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.” In doing so, Congress acknowledged “the importance of individuals and small businesses to the patent system and our national culture of innovation.”
The ink had barely dried on the President’s signature when the pilot Patent Pro Bono Program officially launched in Minnesota, as a collaboration between the USPTO and LegalCORPS, a nonprofit legal resource center based in Minneapolis. By late summer 2013, the first patents had begun issuing from the program, and multiple other programs were being established throughout the country. Further direction from the President’s Executive Action dated February 20, 2014, prompted the USPTO to appoint a full-time Pro Bono Coordinator and designate additional resources to establish programs across the country. Today, there are 20 programs that provide coverage for the entire United States, with many patents already issued and new applicants being accepted every day.
In every patent, there’s a story. Take for example Travis Kelly, from Backus, Minnesota.
Travis invented a simple but effective device to take the guesswork out of home door installations. He couldn’t afford to hire an attorney and had filed a provisional patent application on his own. After finding out about the pro bono program, he applied and received legal representation from volunteer attorney Kate DeVries Smith. His patent issued in 2014. Today, Travis and his wife Jennifer run a small business, JenTra Tools. They’re selling thousands of units per year, and providing jobs and generating revenue in their community.
Then there is Deborah Campbell, from Grand Junction, Colorado, who after years of designing and prototyping, developed a manual sushi-making machine that can churn out rolls in just two minutes. She received pro bono assistance from the law firm of Merchant and Gould through Mi Casa Women’s Business Center in Denver. Having just received her patent this past May, Deborah plans to go into production and sell the device.
Glenn Vogel, a custom metal worker and father of three from Evergreen, Colorado, also received assistance through Mi Casa. In 2015, thanks to volunteer attorney Aaron Kraft, he patented a customizable wine storage rack and saw his revenue increase by 20 percent.
The Patent Pro Bono Program offers patent legal professionals a way to give back to their communities in a structured and proven system. The program also helps establish lasting relationships between inventors and attorneys and agents that can prove valuable for both in the future.
But it’s not just inventors, attorneys, and agents who benefit. When inventors enlist the help of attorneys or agents, their applications tend to be more complete and meet statutory requirements, thereby enhancing patent quality.
As we celebrate the fifth anniversary of the AIA, we’d like to acknowledge the numerous individuals who have worked behind the scenes to make this program an overwhelming success. For many of them, from partners in the first firms to sign on, to the USPTO employees who traveled the country promoting the program, this was a unique opportunity to make a difference in the lives of independent inventors. In just five years, the Patent Pro Bono Program has launched dreams. In the next five, it will only continue to help turn new dreams into reality.
Posted at 11:07AM Sep 16, 2016 in America Invents Act |
Importing Prior Art Automatically to Streamline Patent Examination Process
Guest blog by Mark Powell, Deputy Commissioner for International Patent Cooperation
As part of our continuing efforts to improve patent examination quality and efficiency, the USPTO will host a roundtable on September 28, 2016 to discuss new ways to more efficiently identify prior art for patent applications. The USPTO plans to leverage electronic resources (e.g., Global Dossier and USPTO internal databases) to automatically import relevant information (e.g., prior art and search reports) into pending U.S. applications from sources such as domestic parent and counterpart foreign applications. This will streamline the patent examination process for both examiners and applicants, as outlined in our Federal Register Notice.
An automated solution to deliver relevant information to the U.S. application file will enhance the examiner’s ability to identify the most relevant prior art as early as possible and likely increase efficiency of prosecution procedures. Of course, it will be critical to ensure our examiners are provided with the most relevant information without being overburdened with immaterial and marginally relevant information. The goal is to create a searchable application file that is built from applicant submissions, the examiner’s own search results, and information retrieved automatically.
This new system will more efficiently identify prior art in applications and streamline the process for both examiners and applicants. We are planning extensive stakeholder outreach to better understand the needs of applicants, such as how such a system should be controlled and what information should be documented relative to the imported information. (e.g., date, source, examiner consideration, etc.) We hope to hear from you on this initiative and look forward to receiving your input at our upcoming roundtable on September 28, 2016.
Posted at 12:42PM Aug 29, 2016 in patents |
USPTO Launches Cancer Moonshot Challenge
Guest Blog by Chief of Staff of the USPTO Vikrum Aiyer and Senior Advisor Thomas A. Beach
The USPTO is playing an important role in the National Cancer Moonshot, a Presidential initiative we blogged about earlier this summer, to speed up cancer advances, make more therapies available to more patients, and improve the ability to prevent cancer and detect it at an early stage. Today, we are launching the USPTO Cancer Moonshot Challenge to enlist the public’s help to leverage our intellectual property data, often an early indicator of meaningful research and development (R&D), and combine it with other economic and funding data (ie. SEC U.S. Securities and Exchange Commission filings, Food and Drug Administration reporting, National Science Foundation grants vs. philanthropic investments, venture capital funding, etc.). This comes on the heels of our Patents 4 Patients program, which was launched in July and aims to cut in half the time it takes to review patent applications in cancer therapy.
The USPTO Cancer Moonshot Challenge will conclude on September 12 and winners will be announced on September 26. Learn more about the prizes.
Participants will have the opportunity to leverage USPTO Cancer Moonshot patent data to reveal new insights into investments around cancer therapy research and treatments. Some questions to address include: What are the peaks and valleys in the landscape of cancer treatment technologies? What new insights can be revealed by correlating R&D spending/funding to breakthrough technologies? What would trace studies of commercially successful treatments from patent to product tell us? With the data sets released through the USPTO Developer Hub, users will be able to use analytic tools, processes and complimentary data sets to build rich visualizations of intellectual property data, which will help illuminate trend lines for new treatments. During the three week challenge the USPTO will hold a USPTO Cancer Moonshot Workshop to assist participants on Thursday August 25.
After the challenge has concluded, the USPTO, in tandem with other Moonshot Task Force partners, will look at further ways to use the findings. By bringing together cancer experts, policymakers, and data scientists, we can explore and identify how intellectual property data can be better leveraged and combined with other data sets to support cancer research and the development of new commercialized therapies. This will empower the federal government—as well as the medical, research, and data communities—to make more precise funding and policy decisions based on the commercialization lifecycle of the most promising treatments, and maximize U.S. competitiveness in cancer investments.
We recognize that by enlisting the public’s assistance through our USPTO Cancer Moonshot Challenge, we can identify new and creative ways to fight cancer and work towards breakthroughs in treatment. And by harnessing the power of patent data, and accelerating the process for protecting the intellectual property undergirding cancer immunotherapy breakthroughs, the USPTO is standing up and doing its part to help bring potentially life-saving treatments to patients, faster. Are you up to the challenge?
Posted at 10:30AM Aug 22, 2016 in ip |
Keeping International Competition Front of Mind
Guest blog by Chief Communications Officer Patrick Ross
Empowering bold entrepreneurship by inventors and businesses drives the U.S. economy in a global marketplace. We at the U.S. Patent and Trademark Office know that entrepreneurs today must keep the challenge of global competition front of mind. That’s why we provide an array of tools and resources designed to assist innovators in ensuring their intellectual property rights are respected across the globe. Check out our International IP Toolkit to learn more about our Global Dossier program, our Global Intellectual Property Academy, and so much more.
As part of her leadership on behalf of the Obama Administration on intellectual property issues, USPTO Director Michelle K. Lee recently met in Japan with the leaders of the largest patent offices in the world – the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the State Intellectual Property Office of the People’s Republic of China (SIPO)—at an annual meeting known as IP5. You can learn more about the USPTO’s focus on furthering international IP cooperation in Director Lee’s editorial for IAM.
Likewise, Commissioner for Trademarks Mary Boney Denison recently sat down in China with the Trademarks leaders of those same offices—at the annual TM5 meeting—to focus on increased harmonization efforts on that critical element of any company’s IP portfolio. I invite you to read Commissioner Denison’s editorial, “A Smoother Road Thanks to TM5 Harmonisation Efforts,” published by Managing IP.
Posted at 04:41PM Jul 25, 2016 in ip |
Intellectual Property and the Challenge of 3D Printing
Guest blog by Chief Policy Officer and Director for International Affairs Shira Perlmutter
3D printing—also known as stereolithography or additive manufacturing—is a printing technology that uses computer-controlled lasers to build three-dimensional structures from liquid polymers and other materials. Once the domain of fantasy, 3D printing was brought to life in the 1980s, most notably by National Inventors Hall of Fame inventor Chuck Hull, and since then has grown to be a truly paradigm-shifting technology, with uses in a wide variety of industries, from bioengineered cardiac tissue to pollution mitigation devices to custom-manufactured machine tools.
But as with many new technologies, 3D printing raises complex issues—including in the realm of intellectual property rights such as patents, designs, trademarks, and copyrights. On June 28, the U.S. Patent and Trademark Office (USPTO) hosted a conference at its headquarters in Alexandria, Virginia, to address the legal issues and policy challenges faced by the owners of intellectual property by the expanding 3D printing industry.
The USPTO is well aware of the growth of the 3D printing industry: in 2015, there were 23 times more patent applications filed for 3D printing technologies than in 2010. Similar growth was seen on the trademarks side, with filings having grown by more than 300 percent over the same period. And since the beginning of 2016 alone, there have been 425 new trademark applications filed for 3D printing-related goods and services.
At the all-day gathering, the 400-plus attendees heard from keynote speakers—including USPTO Deputy Director Russ Slifer, and author and attorney John Hornick—on the basic concepts of 3D printing and the legal challenges it presents. They then had the opportunity to hear from (and pose questions to) four panels of authorities who focused on the issues raised by 3D printing in the areas of innovation, industrial design, trademark law, and copyright. Participants discussed how the explosion of 3D printing technologies may eventually place intellectual property rights at a greater risk of infringement from a widening base of infringers. Improvements in additive manufacturing technologies suggest that, in the not-too-distant future, copies of protected products may be easier than ever for anyone to make.
The best way to respond to rapid technological change is to collaborate—not just with colleagues, but with those working across disciplines. That was exactly the case for the attendees at the USPTO’s conference, who represented law firms, small businesses, patent examiners, and representatives of other federal government agencies. The event was also streamed live to attendees at its four regional offices. It was a gathering designed to encourage collaborative thought and action.
Posted at 11:25AM Jul 15, 2016 in ip |
New Post-Prosecution Pilot Under Way
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee
I am pleased to announce the launch of the Post-Prosecution Pilot (P3), which was developed as part of the USPTO’s commitment to collaborating with our stakeholders and providing new programs to assist applicants and practitioners during the application process. It is our job to ensure that patent quality and our larger patent system keep up with the rapid pace of American innovation. The P3 program, which is part of the Enhanced Patent Quality Initiative, provides applicants with the opportunity to make an oral presentation to a panel of examiners after a final rejection has been issued at the close of prosecution but before the filing of a notice of appeal to discuss a proposed amendment. It is our goal to illuminate the next available steps and offer an after final option that is more useful to you.
Specifically, the P3 program combines the best features of two of our existing programs, the Pre-Appeal Brief Conference Pilot Program (Pre-Appeal) and the After Final Consideration Pilot Program 2.0 (AFCP 2.0). Under the Pre-Appeal program, applicants can request a panel of examiners to formally review the legal and factual basis of rejections made in their application before a formal appeal brief is filed. Additionally, the AFCP 2.0 program further includes an interview with the examiner for instances when applicant’s after final response does not result in an allowance. Now, through the P3 program, an applicant with a utility patent application can submit a proposed after final amendment to be considered by a panel of experienced examiners. Further, the applicant will have the opportunity to make a presentation to the panel, either in-person or via phone, and the panel will provide a brief written summary of the status of the pending claims as well as the reasoning for maintaining any rejection.
The P3 program runs until January 12, 2017. Under the terms of the program, each technology center will accept a maximum of 200 compliant requests. Thus, the ability to take advantage of the P3 program may end earlier in a given technology center. The P3 web page on the USPTO website includes a tally for each technology center to allow you to see whether a technology center is still accepting applications for the pilot.
Please refer to the Federal Register Notice for more information about the P3 program including its submission requirements. The Federal Register Notice also requests comments and feedback from our stakeholders on ways to improve after final practice to reduce the number of issues and applications appealed to the Patent Trial and Appeal Board and to reduce the number of Requests for Continued Examination. The USPTO plans to evaluate this feedback as well as the results of the P3 program to determine what we can do to improve after final practice.
Simplifying and strengthening the after final landscape is an important piece of the Enhanced Patent Quality Initiative, and my team and I are excited to work together with all of you to improve the quality of the patents issued by the USPTO. I encourage you to share your feedback on the Federal Register Notice via email to email@example.com or via postal mail addressed to: United States Patent and Trademark Office, Mail Stop Comments – Patents, Office of Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Raul Tamayo. The deadline for public comment is November 14, 2016.
Thank you for your collaboration in this important effort.
Posted at 01:22PM Jul 12, 2016 in patents |