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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 firstname.lastname@example.org 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 |
PTAB Replaces Patent Review Processing System
Guest Blog by David P. Ruschke, Chief Judge for the Patent Trial and Appeal Board (PTAB)
The USPTO deployed an e-filing system known as the Patent Review Processing System (PRPS) for trials under the America Invents Act (AIA) on September 16, 2012. Since then, usage of PRPS has exceeded our expectations, and the time has come to transition to a new system to better serve the needs of the public.
That new system is called Patent Trial and Appeal Board End to End (PTAB E2E). PTAB E2E uses a web browser (Chrome is the preferred browser) and a step by step filing program to enable petitioners and patent owners to provide metadata and upload pdf documents to the system. PTAB E2E also provides an interface to the USPTO Next Generation financial system (FPNG) for paying fees.
The target date to deploy PTAB E2E is July 9, 2016. Upon initial deployment, PTAB E2E will be used for Inter Partes Review (IPR), Covered Business Method Review (CBM), and Post Grant Review (PGR). Derivations (DER) will still be processed in PRPS until they are migrated into PTAB E2E later in 2016. During this initial deployment both PRPS and PTAB E2E will be unavailable beginning Saturday, July 9, 2016 at 12:01 AM until 5:00 AM, Monday, July 11, 2016.
The new features of PTAB E2E include:
For all external users, with or without a login email address:
• full text document search
• metadata search
• additional search filters
For external users with a login email address:
• a dashboard that includes the most recent document upload activity and status of filed cases
• an improved docket
• easier navigation of AIA review papers and exhibits
• filter search on the docket
The PTAB E2E system link, a user manual, FAQ, and quick reference guides will be available on July 11, 2016 at http://www.uspto.gov/ptab in the upper right portion of the web page.
In the near future, an Application Programming Interface (API) will make PTAB trial data available for bulk data downloads.
As the system is deployed, we encourage you to provide feedback about the PTAB E2E system by sending your comments to PTABE2EADMIN@uspto.gov.
Customer support will be available Monday-Friday from 8:00 AM until 6:00 PM EST at 571-272-7822. Additional transition coverage will be available during the week of July 11th until 12:30 AM EST.
Posted at 04:22PM Jul 05, 2016 in patents |
Teaming Up to Cure Cancer
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee
Anyone who has held the hand of a friend or family member suffering through chemotherapy and radiation or comforted a friend or colleague dealing with the loss of a loved one understands the savagery of cancer. With a disease that causes such devastation and loss, we are often left feeling alone and with more questions than answers.
During his final State of the Union, President Obama reminded all of us that we are not alone in this fight against cancer, and that if we work together, answers are within our reach. With a nearly $1 billion dollar budget and a commitment to success, the President is committed to doubling the rate of progress in cancer research and treatment.
The President’s “Cancer Moonshot” initiative is not an endeavor that one person or one institution can accomplish in isolation. Such a herculean goal requires, as Vice President Biden opined, “… the need for more team science and increased collaboration among the private sector, academia, patient foundations, and the government.” Working together through public and private partnerships, we can overcome the many barriers that currently impede progress towards treatment and we can identify where resources can be more strategically included to foster and advance solutions.
The USPTO is proud to join this team of allies in the President’s effort to refocus, reinvent, and reprioritize the fight to cure cancer. As “America’s Innovation Agency,” it fits squarely in our mission to contribute to this massive and just cause. And, in collaboration with the Vice President’s office, we are excited to unveil two major projects to support the National Cancer Moonshot.
To start, we are implementing a free initiative in July called Patents 4 Patients that will “fast-track” reviews of patent applications related to cancer treatment. The goal of this accelerated program is to complete review of applications that are accepted into the program in one year or less after they are received. The sooner we can identify and patent these innovations, the closer we are to a cure.
In addition to this “fast-track” program, we will unveil an Intellectual Property (IP) “Horizon Scanning Tool”. This tool will allow the public and the federal government to analyze and build rich visualizations of intellectual property data, often an early indicator of meaningful R&D. When combined with other economic and funding data (such as Security and Exchange Commission filings, FDA reports and National Science Foundation grants), the Horizon Scanning Tool can illuminate trend lines for new treatments and allow federal funding and policy efforts to be more targeted.
President Kennedy’s revolutionary moonshot challenge to the American people more than 50 years ago was a galvanizing call to collective action to achieve a worthwhile yet potentially unattainable goal in a very short period of time. That historic call to action echoes today.
President Obama recognizes that data and technology innovators can play a role in revolutionizing how medical and research data are shared and used to reach new breakthroughs. Innovations in data and technology can break down silos and bring all the cancer fighters together. Working together and sharing information, we can provide hope to the more than 1.6 million Americans who will be diagnosed with cancer this year.
It is my desire that we also inspire a new generation of scientists to pursue new discoveries. I am proud of the part the USPTO will play in this most worthwhile effort, and I count as well on your strong support.
With the leadership of President Obama and under the guidance of Vice President Biden, we can make a difference and we can change the future so that upcoming generations do not have to experience the same pain that cancer has caused over the last decades.
For information and updates on how the USPTO is advancing President Obama’s call for a Cancer Moonshot, please visit www.uspto.gov/about-us/national-cancer-moonshot.
Posted at 09:44AM Jun 29, 2016 in USPTO |
Trademarks Moving Forward
Guest blog by Commissioner for Trademarks Mary Boney Denison
Our Trademarks Team is leading efforts to meet the continually changing intellectual property environment – by updating our IT systems, developing educational outreach programs, improving the accuracy and integrity of the trademark register, and ensuring that our trademark fees are fair and that they reflect the full cost of our services and products. It is our ongoing commitment to ensure accountability and to guarantee customer satisfaction.
As part of our multi-year effort to update our IT systems, I am pleased to announce that we have established the Office of the Deputy Commissioner for Trademark Administration to support IT, finance, and strategic planning. Earlier this month, Greg Dodson joined USPTO to fill this role. Greg’s primary responsibilities will be to manage the completion and transformation of the next generation of Trademark electronic systems, lead the financial management of the Trademark Organization, and guide the strategic vision of the Trademark Organization. A retired Air Force Colonel, Greg is a strong strategic thinker and an experienced senior leader who has led thousands in the U.S. and abroad throughout his career. His most recent position was a Senior Analyst and A2AD Subject Matter Expert in General Dynamics’ War Gaming Division. Greg has a Bachelor of Science degree in Management Information Systems from Florida State University, a Master of Science in National Resource Strategy from the National Defense University, and a Masters of Education in International Relations from Northwestern Oklahoma State University.
The Deputy Commissioner for Trademark Administration will be supported by two newly created senior level positions: the Information Technology Administrator and the Information Technology Legal Administrator. Information Technology Administrator Glen Brown is our subject matter expert for the continued development of Trademark IT systems, and Information Technology Legal Administrator Tanya Amos will serve as our subject matter expert for the interactions of Trademark applicants and their attorneys regarding Trademark IT systems.
Additionally, Trademarks is actively engaged in developing educational outreach programs that will offer the best possible intellectual property (IP) guidance and training to all. One of the ways in which we are educating the public is through a series of videos from our Trademark Information Network (TMIN). There are numerous videos covering an array of subject matters. One of our most popular videos, “Basic Facts About Trademarks: What Every Small Business Should Know Now, Not Later,” has now surpassed 500,000 views. It is quite apparent that the public sees value in these learning materials. We will continue to provide this service and look forward to expanding upon it in the future. We know that trademark litigation has the potential to harm small businesses, and we are committed to providing our stakeholders with resources to promote understanding of trademark basics, enforcement measures, and available tools for protecting and enforcing trademark rights.
Moreover, Trademarks is continually taking strides to improve the accuracy and integrity of the trademark register. In 2012, the USPTO instituted a pilot program which required additional specimens or other proof of use in connection with 500 randomly selected Section 8 or 71 Affidavits of Continued Use. 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/services queried. This was in spite of the owner having previously sworn to such ongoing use as part of a Section 8 or 71 affidavit filed to maintain the registration. We issued a report on the results and held a roundtable to discuss the results and next steps. The results of the pilot are available on the Trademarks Recent Postings page on the USPTO website. 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.
We at the USPTO agree with this conclusion and are now working to make the random audits permanent and to increase the solemnity of the declaration for Sec. 8 affidavits. A Notice of Proposed Rulemaking (NPRM) to make our random audits program permanent published June 22 in the Federal Register. Increasing the solemnity of the declaration does not require a rule change, but, later this summer, we plan to post the new language on Ideascale, an interactive online program that allows you to provide suggestions and comments. Additionally, we are considering proposing one or more new or revised procedures to cancel registrations for marks that are either no longer in use or have never been used. 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 TTAB cancellation procedures. Preliminary meetings have since begun with various stakeholder groups and will continue over the next month to discuss our ideas and obtain feedback to aid us in fully developing the concepts.
Finally, last month, Trademarks published an NPRM to modify some of our fees. The purpose of this fee proposal is to further USPTO strategic objectives by: (1) better aligning fees with the full cost of products and services; (2) protecting the integrity of the register by incentivizing more timely filing or examination of applications and other filings, and more efficient resolution of appeals and trials; and (3) promoting the efficiency of the process, in large part through lower-cost electronic filing options.
We hope to implement these fee changes in January 2017. Some key proposals are:
• Increase the fee for the paper filed application for registration by $225 to $600 per class.
• Increase fees for all other paper filings by $100 per class.
• Increase the fee for a regular TEAS application for registration by $75 to $400 per class.
• Increase the fee for failing to meet TEAS Plus or TEAS RF requirements from $50 to $125 per class.
• Increase fees for filing an affidavit of use under section 8 and 71 by $50 for filing electronically or $150 for filing on paper.
• Increase the fee for filing an ex parte appeal from $100 to $200.
• Increase the fees for filing oppositions and cancellations from $300 to $400.
By modifying these fees, we hope to discourage paper filings and responses (which cost the office more to process), further incentivize electronic filing and communication, and promote fairness so that the cost of paper processing is not being subsidized by electronic filers. Comments on the fee proposals are due by July 11, 2016. Please let us know what you think.
The Trademarks Team remains committed to increasing the efficiency of its processes and procedures. We are excited about moving forward, as we enhance our customers’ experience of doing business with the USPTO.
Posted at 03:29PM Jun 24, 2016 in trademarks |
Topics Announced for Case Studies Pilot
Guest blog by Deputy Commissioner for Patent Quality Valencia Martin Wallace
In December 2015, the USPTO published a Federal Register Notice inviting the public to submit patent-quality related topics to be the subjects of case studies in our new Topic Submission for Case Studies Pilot. You enthusiastically responded to our invitation for suggested topics, and I’m pleased to announce that six main topics have been selected.
This pilot is one of several programs that is part of our Enhanced Patent Quality Initiative (EPQI). We defined a USPTO case study as an in-depth examination of applications with respect to a single issue to provide a better understanding of the quality of our work products. Specifically, we use case studies to assist us in formulating best practices to enhance patent quality by improving our patent work products and examination processes, and to identify areas where further examiner training may be needed. Read more in my last guest blog post.
By the time the comment period closed in February 2016, we had received more than 135 qualified case study submissions from 110 requestors, which included intellectual property (IP) organizations, law firms, companies, and individuals. All the submissions are viewable on our webpage.
In view of the overwhelming response, we devised a process to systematically identify the most popular topics to be addressed. To begin, we assessed whether the topic was appropriate or capable of being timely assessed via a case study. After identifying the topics deemed appropriate for study under this pilot, and to avoid duplicating our efforts, we next determined whether other programs or mechanisms within the USPTO were more appropriate for addressing the issue.
For example, the suggested topic of evaluating the consistency of the application of lack of unity practice in 35 U.S.C. §371 applications is currently being investigated by our Office of International Patent Cooperation, and the submissions requesting review on the frequency and effects of claim interpretation are being evaluated as part of another EPQI program, the Clarity of the Record Pilot. These and other submissions have been forwarded to the appropriate offices for further evaluation.
Finally, we grouped the remaining submissions by subject matter and the following six topics have been selected for the pilot:
1) Evaluation of the deviation of 35 U.S.C. §101 rejections from official guidance, correctness of rejections and completeness of the analysis. This study will evaluate whether examiners are properly making subject matter eligibility rejections under 35 U.S.C. §101 and clearly communicating their reasoning.
2) Review of consistency of the application of 35 U.S.C. §101 across art units/technology centers. This study will take a look at applications with related technologies located in different art units or technology centers and determine whether similar claims are being treated dissimilarly under 35 U.S.C. §101.
3) The practice of compact prosecution when 35 U.S.C. §101 rejections are made. This study will determine whether all appropriate rejections are being made in a first Office action when a subject matter eligibility issue is also identified.
4) Correctness and clarity of motivation statements in 35 U.S.C. §103 rejections. This study will evaluate whether reasons for combining references set forth in rejections under 35 U.S.C. §103 are being set forth clearly and with correct motivation to combine statements.
5) Enforcement of 35 U.S.C. §112(a) written description in continuing applications. This study will evaluate claims in continuing applications to determine if they contain subject matter unsupported by an original parent application and whether examiners are appropriately enforcing the requirements of 35 U.S.C. §112(a) written description.
6) Consistent treatment of claims after the May 2014 35 U.S.C. §112(f) training. This study will determine whether claims invoking 35 U.S.C. §112(f) are being properly interpreted and treated.
We look forward to sharing more details and updates on the selected studies as we move forward with our data gathering and analysis process. Currently, we project the timing of the studies to be varied, but we expect to publish the results of the first study this summer, and to complete the remaining studies early next year. As each study is concluded, we will post the study’s results on the Topic Submission for Case Studies Pilot webpage. Thank you again for all your great ideas for topics, as your feedback helps us continue to work to enhance patent quality and improve our processes.
Posted at 06:18PM May 18, 2016 in patents |
USPTO Regional Offices Forge Ahead in 2016
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee
USPTO regional offices support our core mission of fostering American innovation and competitiveness by offering services to entrepreneurs, inventors, and small businesses, while effectively engaging communities and local industries. All four of our regional offices now have directors, making us well-positioned to fully advance this mission. The establishment of four USPTO regional offices fulfills a commitment dating to September 16, 2011, when President Obama signed the Leahy-Smith America Invents Act (AIA) into law. All the regional offices have been busy these last few months, including holding events for World IP Day and enabling local innovators to participate virtually in the Patent Quality Community Symposium.
Since its grand opening on November 9, 2015, the Texas Regional Office in Dallas welcomed its first class of patent examiners in January, and they are expected to complete their initial training and move into their offices by the end of April. The office also welcomed five new Patent Trial and Appeal Board (PTAB) judges in the first quarter of 2016, thereby reaching a total of 17 PTAB judges. The Texas Regional office has already held a number of outreach events in 2016, including three seminars on patents, trademarks and petitions, and a Congressional App Challenge celebration for students and their families who participated in the competition from Congresswomen Eddie Bernice Johnson’s district.
The West Coast Regional Office in Silicon Valley continues to engage in conversations about policy decisions that affect innovation. It’s hard to believe the Silicon Valley office officially opened only six months ago, on October 15, 2015. It has already celebrated the graduation of its first training academy of examiners and welcomed its second academy in February.
The office is serving the regional entrepreneurial community with events such as “Speed Dating for Startups,” co-sponsored by Santa Clara University, where over 150 entrepreneurs, small business owners, and students learned about incorporating IP into their business strategies. Several top USPTO officials also participated in an “Inventor and Entrepreneur Forum” at the University of California, Irvine Applied Innovation Lab, which had 700 attendees in person and online. The office also recently welcomed Secretary of Commerce Penny Pritzker, who discussed the importance of open data to innovation in an entrepreneurs’ showcase, and Deputy Secretary Bruce Andrews who met with the newest class of examiners and the newest PTAB judge.
The Rocky Mountain Regional Office, which will celebrate its second anniversary in June, has experienced a number of firsts since our last update. The office hosted its first Trademark Trial and Appeal Board (TTAB) argument, with participants in Denver appearing before the TTAB via the USPTO’s telecommunications system, and will also be holding its first AIA trial proceeding in the month of April. The office is now fully staffed with PTAB judges and examiners, with the addition of two new PTAB judges, and a third class of patent examiners that graduated recently.
Under the leadership of Regional Director Molly Kocialski, education efforts and partnerships in the Rocky Mountain region have expanded significantly, with outreach visits and events across Colorado, Utah, Nebraska, South Dakota, Wyoming and Montana. These include conferences, listening tours, participation in startup weeks in the region, STEM engagement, presentations, office hours, and meetings with members of the public and partners across the region. Additionally, we were very excited to release a new USPTO inventor trading card featuring Rocky Mountain inventor and noted autism advocate Dr. Temple Grandin.
The Elijah J. McCoy Midwest Regional Office in Detroit has continued to host PTAB hearings, including their first live Inter Partes Review trial in January, and recently welcomed a new Administrative Patent Judge, bringing the total to 11 PTAB judges. The office has been active in the community as well, recently hosting the first Patent Drafting Competition in conjunction with University of Detroit Mercy. Law schools from around the Midwest region sent teams to Detroit to present in front of a panel of judges including patent examiners, PTAB judges and IP practitioners, with Indiana University Maurer School of Law winning the competition.
In March, Commissioner for Trademarks Mary Boney Denison joined Midwest Regional Director Dr. Christal Sheppard at the IP Spring Seminar in East Lansing, Michigan, coordinated by the Michigan State Bar IP Section, and also spoke to 60 local entrepreneurs at a Trademark Lunch and Learn at TechTown Detroit. In a continuous effort to attract a talented workforce, the Midwest Regional Office will be hiring a new class of patent examiners soon and has been on the recruiting trail with stops at several local university career fairs and informational sessions.
The USPTO regional offices play an important role in supporting the overall mission of our agency, including ensuring easier access by innovators and entrepreneurs to resources and intellectual property protections they need to compete in today’s global economy. To find out more about events in any of our regional offices, visit the events page of the USPTO website, and for employment opportunities, visit USAjobs.gov for openings. I will continue to keep you informed about new updates on our regional offices throughout the year on this blog.
Posted at 10:01AM May 17, 2016 in USPTO |
Protecting U.S. Trade Secrets
Innovators of all types, from independent inventors to large corporations, rely on trade secrets to safeguard their creativity, gain competitive advantage, and further their business goals. Congressional passage of the Defend Trade Secrets Act, and the signing of the bill by the President this week, strengthens U.S. trade secret protection for U.S. companies and innovators, allowing trade secret owners to now have the same access to federal courts long enjoyed by the holders of other types of IP.
Read more in my opinion editorial, “Protecting America’s Secret Sauce: The Defend Trade Secrets Act Signed Into Law,” in The Huffington Post.
Posted at 09:20AM May 13, 2016 in USPTO |
Patent Trial and Appeal Board Leadership and Accomplishments
Guest blog by Russ Slifer, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO
Last week was Public Service Recognition Week, a time for Americans everywhere to reflect on the value of public service and the exceptional, often unheralded work government employees do for their fellow citizens. At the USPTO, we are blessed with many such employees whose hard work is making a positive difference for innovators, entrepreneurs, and our nation’s economy—which relies more than ever on the power of intellectual property. Recognizing the service of such employees is something we should do not just once a year, but all year round.
I want to single out several individuals whose leadership has been truly exceptional and merits the thanks of our agency. For the past 10 months, Nate Kelley served as acting Chief Judge of the Patent Trial and Appeal Board at a critical time in the Board’s history. Just three and a half years after its creation under the America Invents Act, (AIA) the Board needed a skilled leader to navigate management challenges and ensure execution of important post-grant proceedings. Nate was a wonderful leader of the Board during this time and I am excited that he will return to his previous position as Deputy General Counsel for IP Law and Solicitor. The USPTO and the American people are lucky to have such a skilled jurist serving to improve our intellectual property system.
Under Nate’s leadership, the Board reduced ex parte appeals by 18%, implemented a change to AIA trial practice under which patent owners can now submit new testimonial evidence, and significantly increased the rate at which precedential opinions are issued while meeting all AIA statutory deadlines.
Nate’s accomplishments would not have been possible without a strong team at the Board and at the Solicitor’s Office. A critical member of this team was Tom Krause, who as acting Solicitor played a leading role in developing the USPTO’s position in over five Supreme Court cases. One of his most significant accomplishments was spearheading the team in the Shammas case, in which the appellate court agreed with the USPTO’s position that plaintiffs are responsible for the USPTO’s expenses, including USPTO attorney time.
Thanks to the great work of both Nate and Tom, newly selected Chief Judge David Ruschke will be taking over the helm of a Patent Trial and Appeal Board that is stronger than ever, and will now have an outstanding, permanent Deputy Chief Judge in Scott Boalick—a vice chief who has been acting deputy for some time now. Scott’s dedication to the Board will be a huge asset to Chief Judge Ruschke and the Board as they continue their vital mission of effectively and efficiently resolving patent validity disputes while providing timely, low-cost alternatives to district court litigation.
Please join me in congratulating Nate Kelley, Tom Krause, and Scott Boalick on a job well done, and in welcoming the new Chief Judge of the Patent Trial and Appeal Board, David Ruschke, to the “Innovation Agency.”
Posted at 02:11PM May 12, 2016 in ip |
Patent Quality Community Symposium Gathers Public Feedback on USPTO Programs
The USPTO held an all-day Patent Quality Community Symposium on April 27, 2016, bringing together a broad range of stakeholders—patent prosecutors, litigators, inventors, academics, and patent examiners—for a public discussion about patent quality. More than 2,200 individuals attended at the peak, including in-person at USPTO headquarters in Alexandria, Virginia, at our Regional Offices (in Detroit, Denver, Dallas, and San Jose), and online.
Since we kicked off our efforts at last year’s Patent Quality Summit, we have focused on developing programs designed to enhance quality through identifying best practices and leveraging the latest in technological advances and international collaborations.
I opened the day with a summary of our major efforts. Following me were presentations featuring highlights of our accomplishments so far, including:
Deputy Director Russell Slifer outlined our recent advances in using “big data”—mining large collections of data—to identify trends and patterns and improve patent quality. This will help us to improve consistency and identify areas for targeted training, as well as better measure the impact of training and increase the transparency of our operations.
The symposium also included two interactive segments. The first was a workshop on our Master Review Form (MRF), one of our newest efforts to improve the measurement and reporting of patent quality, announced in the Federal Register on March 26. The MRF provides a standardized way to review USPTO work products, such as office actions, which places greater emphasis on assessing the clarity of an examiner’s reasoning while maintaining focus on the correctness of that action. Read more about the Master Review Form. We continue to welcome your input as we work towards our first revision of the Form—the comment period for the Federal Register Notice closes May 24, 2016. The second interactive portion was a panel of experienced patent practitioners who discussed the role that both attorneys and applicants play in patent quality.
Thank you all for your participation in the Patent Quality Community Symposium, and for your continued collaboration on our Enhanced Patent Quality Initiative. If you missed this event, I encourage you to watch any portion of the recording that interests you, view our slide show presentation on the Patent Quality Community Symposium page, or read more about each of our programs on the USPTO website.
Posted at 09:39AM May 10, 2016 in patents |
Further Insight Provided on PTAB Amendment Motions with New Study
Guest Blog by Acting Chief Administrative Patent Judge Nathan Kelley
Regular readers of our blog know of the USPTO’s commitment to seek feedback on how we can improve our programs, procedures, and services to best serve American innovators. We value and rely on your input to help us do our job at the USPTO, and we are always open to ideas for improvement within our statutory mandate.
One topic that comes up frequently, especially recently, is our Patent Trial and Appeal Board (PTAB) trials, particularly regarding motions to amend claims. We’ve heard concerns that, while the America Invents Act (AIA) gives patent owners the right to file a motion to amend its claims during a trial, few such motions have been granted as compared to the number of total petitions filed. Given the degree of public interest on this topic, and to provide greater transparency into our practices, we wanted to aid the ongoing dialogue by providing current aggregated data on PTAB amendment motions.
Here are some highlights from our study (based on data current through April 30, 2016):
This leaves 118 motions to amend (out of the 192) that a PTAB panel has had a chance to review. Of these, the PTAB granted or granted-in-part 6. Of those denied, including the denial portion of those granted-in-part, 22 were denied solely on procedural grounds (only one of which was that the patent owner failed to state that the substitute claims were patentable over the prior art “in general”), and 94 were denied after identifying specific grounds of patentability that the proposed amended claims did not satisfy. To use conventional prosecution as a comparison, this latter category is like an examiner rejecting an amended claim because it is anticipated, obvious, not described, etc. But unlike in the examination context, the PTAB proceedings must be completed within a year, and there is no time for the back-and-forth between the applicant and the USPTO that happens during prosecution. Instead, the PTAB acts as the final arbiter of these newly proposed claims based solely on the briefing presented to it by the parties—if the PTAB grants such a motion, the new claims will issue (and be enforceable against the public) without any examination to ensure compliance with the statutory requirements for patentability. A disappointed patent owner who believes the PTAB erred in refusing to allow a claim amendment can, of course, seek review from the Federal Circuit.
Finally, although we sometimes hear that motions to amend are no longer being filed because parties think they’re futile, we are currently on track to have about 50 motions filed this year, which is consistent with the level they were filed in 2013 and 2015.
I encourage you to read the Motion to Amend Study for yourself, and continue to engage with us on this topic and any others of interest to you.
Posted at 10:17AM May 09, 2016 in patents |
Update to Examiner Guidance on Patent Subject Matter Eligibility
Guest blog by Deputy Commissioner for Patent Examination Policy Robert Bahr
The USPTO is committed to providing the most current and robust training for our patent examiners, and we have just released our next iteration of examiner guidance on patent subject matter eligibility, as described in our Federal Register notice.
In our July 2015 Federal Register notice, the USPTO issued an update to the patent subject matter eligibility guidance to assist examiners in evaluating claims under 35 U.S.C. § 101, in view of the U.S. Supreme Court’s decisions in Alice Corp., Myriad, and Mayo. Using the comments we received from the public along with feedback from the patent examining corps and other stakeholders, we prepared this latest examiner guidance, which includes a new set of life science examples, a memorandum to the patent examining corps with instructions on formulating subject matter eligibility rejections and responding to applicant’s replies, an index of eligibility examples, and an appendix of subject matter eligibility court decisions. We encourage members of the public to submit comments on issues related to subject matter eligibility. All related documents can be viewed on the Subject Matter Eligibility page of the USPTO website.
Our newest examiner guidance includes new life science examples, which use hypothetical fact scenarios to illustrate exemplary analyses for subject matter eligibility in view of the Supreme Court decisions in Alice Corp., Mayo, and Myriad. The examples are designed to show various ways that patent claims can be drafted for eligibility, and thus assist patent applicants and patent examiners in resolving subject matter eligibility issues in the life science areas. Further, the examples cover certain technologies specifically requested by our stakeholders, including vaccines and diagnostics.
The examiner memorandum included in our new guidance seeks to improve the quality and consistency of subject matter eligibility determinations and rejections (when appropriate) by explaining that a reasoned rationale must be provided in the Office action, and provides guidance on how to effectively communicate that rationale to the applicant. The memorandum also reinforces that examiners must carefully consider all of an applicant’s arguments and evidence rebutting the subject matter eligibility rejection, and either withdraw the rejection when the response is persuasive, or provide a rebuttal when the rejection is maintained. The guidance in the memorandum and subsequent training should lead to greater consistency throughout the patent examining corps in evaluating whether the claimed subject matter is eligible for patenting, more thorough office actions that will assist applicants in determining how to respond to subject matter eligibility rejections, and greater assurance that applicant responses are thoughtfully considered by the examiner in determining whether to maintain a subject matter eligibility rejection.
We will be providing comprehensive training on this new guidance in interactive workshops where examiners will receive hands on experience evaluating eligibility and have the opportunity to facilitate discussions with subject matter experts. The life science training will follow the same format as the abstract idea workshops given this past year, using worksheets to analyze the eligibility of claims from select life science examples. In the memorandum training, examiners will evaluate a hypothetical subject matter eligibility rejection and hypothetical applicant remarks to the rejection, allowing them to clarify the grounds of rejection, while considering all of the applicant’s remarks and each of the amendments in determining whether to maintain the rejection. This training directly addresses the public feedback we received about the adequacy and consistency of subject matter eligibility rejections across technology centers. All training materials will be available to the public on the Subject Matter Eligibility page of the USPTO website when training is conducted.
Providing more specific guidance and training on subject matter eligibility to our examiners supports the USPTO’s dedication to issuing patents of the highest clarity and quality possible. We appreciate our stakeholders’ comments and find them to be an invaluable resource in further developing guidance in this evolving area of the law. We welcome and will consider all viewpoints as we continue to refine our examination procedures for claims for subject matter eligibility. Comments will be accepted on an ongoing basis and can be sent via email to email@example.com.
Posted at 12:52PM May 05, 2016 in patents |