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A Historic Moment for the USPTO and Innovators Everywhere
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee
It’s been a momentous time for the U.S. Patent and Trademark Office in recent weeks, as we officially opened our West Coast Regional Office in Silicon Valley on October 15 and our Texas Regional Office in Dallas on Nov 9. And today we are announcing the hire of the first Director of our Texas Regional Office, stellar engineer and intellectual property attorney Hope Shimabuku. Her hire comes at a time of historic achievement, as we have completed the establishment of four USPTO regional offices, a commitment dating to September 16, 2011, when President Obama signed the America Invents Act into law. The regional offices embody the Administration’s commitment to promoting innovation and entrepreneurship across the United States. Of course, we at the USPTO know our work has only just begun. We can now, more than ever, engage directly and meaningfully with our nation’s inventors, entrepreneurs, IP practitioners, academics, and policymakers. And we plan to take full advantage of that opportunity.
Hope is a critical player in that mission. She brings to the Texas Regional Office nearly two decades of professional experience, with the added bonus of being a native Texan. Most recently, Hope was part of the Office of General Counsel at Xerox Corporation serving as Vice-President and Corporate Counsel responsible for all intellectual property matters for Xerox Business Services, LLC. She also worked for Blackberry, advising on U.S. and Chinese standards setting, cybersecurity, technology transfer, and IP laws and legislation. She was also an engineer for Procter & Gamble and Dell Computer Corporation, and holds a B.S. in Mechanical Engineering from the University of Texas at Austin and a cum laude J.D. from the Southern Methodist University Dedman School of Law.
As a veteran of the innovation ecosystem in Texas, she is well aware of the dynamic variety of economic giants as well as up-and-comers across the broader region, in industries ranging from semiconductors to bioengineering. She knows the emerging economic opportunities in that region, and is committed to advancing the mission of the USPTO as America’s Innovation Agency by assisting entrepreneurs to unleash game-changing innovations while creating high-paying jobs and fueling economic growth.
When Hope comes on board in January, she will actively engage with innovation communities in many states across the broader region, promoting USPTO services and initiatives that match the exact needs of those audiences. She will educate but she will also listen, the USPTO’s model of 21st Century governance. And she’ll supervise a stellar team of hard-working employees. The Texas Regional Office already boasts many Patent Trial and Appeal Board judges, with the first patent examiner class onboarding January 11, 2016. Once fully staffed, the Texas Regional Office will have more than 100 examiners, judges, and outreach and administrative staff.
The West Coast Regional Office, when fully staffed, will have approximately 125 employees, comprised of 80 patent examiners, over 25 Patent Trial and Appeal Board Judges, and outreach and administrative staff. The office has already been active in outreach efforts with organizations across Silicon Valley, the state of California, as well as across the other states in its region.
Despite having only been officially open in our permanent location for a month, the West Coast Regional Office has already provided assistance to over 100 walk-in visitors, trained new patent examiners, provided tours for local elected officials, and hosted patent and trademark learning events. U.S. Secretary of Commerce Penny Pritzker recently visited the office and spent time meeting with employees, and the office also hosted dignitaries in a World Intellectual Property Organization (WIPO) roundtable. Prior to the official opening of the permanent space, the office was already hard at work engaging with startups and incubators, providing technology focused and industry specific workshops and presentations specific to Silicon Valley and the region.
The Rocky Mountain Regional Office in Denver has also been busy, most recently hosting a Patent Quality roundtable on October 21, in conjunction with the IP Committee of the Colorado Chapter of the Association for Corporate Counsel (ACC) and the IP Section of the Colorado Bar Association. Members of the bar, local patent community and public-at-large are invited to come together with USPTO officials and share ideas, experiences and insights on patent quality. The Rocky Mountain, Midwest, and West Coast regional offices are now staffed with outreach officers who are dedicated to building relationships with innovators and partners in their regions.
The Elijah J. McCoy Midwest Regional Office in Detroit, staffed with 154 employees, continues to hold frequent events and actively engage with the innovation community. In 2015, since Director Christal Sheppard came on board, the office has engaged with over 10,000 stakeholders and held over 120 outreach events for audiences of senior citizen entrepreneurs to K-12 future innovators and everyone in between. The office’s Saturday seminars, free and open to the public, are a very popular event. One important focus of the Midwest Regional Office has been on K-12 STEM (science, technology, engineering, and mathematics) outreach. The office is working with local school districts and after-school programs to encourage innovation with K-12 education, particularly focusing on children and teens that, currently and historically, are underrepresented in STEM and the innovation economy. Since 2012, the office has reached over 700 K-12 students in underserved communities.
In each of the offices, we continue to look for talented and dedicated employees to join our team. If you are interested in working for the USPTO in one of these regional offices, please refer to www.usajobs.gov for openings.
We are very excited about the important role the USPTO regional offices will play in supporting the overall mission of the Agency including ensuring easier access by innovators and entrepreneurs to resources and intellectual property protections they need to compete in today’s global economy. Look for me to provide a new update on regional office activities in the spring, as the USPTO embarks on our next phase of community engagement with four permanent regional offices up and running.
Enhanced Patent Quality Initiative: Moving Forward
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee
Patent quality is central to fulfilling a core mission of the USPTO, which as stated in the Constitution, is to “promote the Progress of Science and useful Arts.” It is critically important that the USPTO issue patents that are both correct and clear. Historically, our primary focus has been on correctness, but the evolving patent landscape has challenged us to increase our focus on clarity.
Patents of the highest quality can help to stimulate and promote efficient licensing, research and development, and future innovation without resorting to needless high-cost court proceedings. Through correctness and clarity, such patents better enable potential users of patented technologies to make informed decisions on how to avoid infringement, whether to seek a license, and/or when to settle or litigate a patent dispute. Patent owners also benefit from having clear notice on the boundaries of their patent rights. After successfully reducing the backlog of unexamined patent applications, our agency is redoubling its focus on quality.
We asked for your help on how we can best improve quality—and you responded. Since announcing the Enhanced Patent Quality Initiative earlier this year, we received over 1,200 comments and extensive feedback during our first-ever Patent Quality Summit and roadshows, as well as invaluable direct feedback from our examining corps. This feedback has been tremendously helpful in shaping the direction of our efforts. And with this background, I’m pleased to highlight some of our initial programs under the Enhanced Patent Quality Initiative.
First, we are preparing to launch a Clarity of the Record Pilot, under which examiners will include as part of the prosecution record important claim constructions and more detailed reasons for the allowance and rejection of claims. Based on the information we learn from this pilot, we plan to develop best examiner and applicant practices for enhancing the clarity of the record.
We also will be launching a new wave of Clarity of the Record Training in the coming months emphasizing the benefits and importance of making the record clear and how to achieve greater clarity. Recently, we provided examiners with training on functional claiming and putting statements in the record when the examiner invokes 35 U.S.C. 112(f), which interprets claims under the broadest reasonable interpretation standard and secures a complete and enabled disclosure for a claimed invention. Training for the upcoming year includes an assessment of a fully described invention under 35 U.S.C. 112(a) and best practices for explaining indefiniteness rejections under 35 U.S.C. 112(b).
Second, we are Transforming Our Review Data Capture Process to ensure that reviews of an examiner’s work product by someone in the USPTO will follow the same process and access the same facets of examination. Historically, we have had many different types of quality reviews including supervisory patent examiner reviews of junior examiners and quality assurance team reviews of randomly selected examiner work product. Sometimes the factors reviewed by each differed, and the degree to which the review results were recorded. With only a portion of these review results recorded and different criteria captured in those recordings, the data gathered was not as complete, useful, or voluminous as it could have been. As a result, the USPTO has been able to identify statistically significant trends only on a corps-wide basis, but not at the technology center, art unit, or examiner levels. We are working to unify the review process for all reviewers and systematically record the same review results through an online form, called the “master review form,” which we intend to share with the public.
What are the implications of this new process and new form? This new process will give us the ability to collect and analyze a much greater volume of data from reviews that we were already doing, but that were not previously captured in a centralized, unified way. As we roll out this new review process the amount of data we collect will significantly increase anywhere from three to five times. This will allow us to use big data analytic techniques to identify more detailed trends across the agency based upon statistically significant data including at the technology center, art unit, and even examiner levels. Also, this new process will give us better insight into not just whether the law was applied correctly, but whether the reasons for an examiner’s actions were spelled out in the record clearly and whether there is an omission of a certain type of rejection. For example, for an obvious rejection we are considering not only whether a proper obvious rejection was made, but whether the elements identified in the prior art were mapped onto the claims, whether there are statements in the record explaining the rejection, and whether those statements are clear.
The end results will be the (1) ability to provide more targeted and relevant training to our examiners with much greater precision, (2) increased consistency in work product across the entire examination corps, and (3) greater transparency in how the USPTO evaluates examiners’ work product. You can read more about these and our many other initiatives, such as our Automated Pre-examination Search pilot and Post Grant Outcomes, which incorporates insight from our Patent Trial and Appeal Board and other proceedings back into the examination process on our new Enhanced Patent Quality Initiative page on our website.
Finally, let me close by emphasizing that our Enhanced Patent Quality Initiative is not a “one-and-done” effort. Coming from the private sector, I know that any company that produces a truly top quality product has focused on quality for years, if not decades. The USPTO is committed to no less. The programs presented here are just a start. My goal in establishing a brand new department within the USPTO was to focus exclusively on patent quality and the newly created executive level position of Deputy Commissioner for Patent Quality will ensure enhanced quality now, and into the future. With your input we intend to identify additional ways we can enhance patent quality as defined by our patent quality pillars of excellence in work products, excellence in measuring patent quality, and excellence in customer service.
To that end, we will continue our stakeholder outreach and feedback collection efforts in various ways, such as our monthly Patent Quality Chat webinars. The next Patent Quality Chat webinar on November 10 will focus on the programs presented in this blog and our other quality initiatives. I encourage you to join in regularly to our Patent Quality Chats and visit the Enhanced Patent Quality Initiative page on our website for more information. The website provides recordings of previous Quality Chats as well as upcoming topics for discussion. We are eager to hear from you about our Enhanced Patent Quality Initiative, so please continue to provide your feedback to WorldClassPatentQuality@uspto.gov. Thank you for collaborating with us on this exciting and important initiative!
Icons for Intellectual Property Concepts Unveiled
Guest blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Russ Slifer
With startup activity in the United States surging and small inventors changing the global economic landscape, entrepreneurial spirit is thriving. Each day, more people are entering a sometimes unfamiliar world of intellectual property (IP). The USPTO is committed to explaining that world, and ensuring that current and future inventors, innovators, entrepreneurs, and business owners understand IP concepts. One way we are doing this is by creating a universal language to help describe these concepts via graphic design. By putting a visual mark on common intellectual property notions, we hope to help spread awareness about IP while engaging with the public.
Enter the USPTO Iconathon, a workshop to create a set of icons that universally represent intellectual property. Partnering with the Noun Project, we called on students, civic activists, artists, and intellectual property enthusiasts to collaborate, brainstorm, and sketch designs. The result: 19 new icons that are now in the public domain, ready for use around the world.
To make the language universal, it was critical to include members of the public, not typically working in the intellectual property field, to create and select icons that would resonate with all stakeholders, including international audiences.
Sitting at round tables with sketchbooks and pencils, participants tackled concepts including infringement, invention, pro se, patent pending, STEM, trademark, and counterfeit. The workshop was an opportunity for us to consider each concept and discuss how to capture it as an image that would appeal to various audiences. This type of interaction is at the root of building a culture of open government and greater understanding of government actions.
At the conclusion of the workshop, all the sketches were displayed for workshop participants and intellectual property experts to review. After all the votes were in, the group discussed the strengths and weaknesses of each of the sketches.
Thank you to all the participants who joined us in Alexandria, Virginia on August 28. Your collective talent and experience yielded high-quality, well designed icons.
New Patents Petitions Timeline
Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO Michelle K. Lee
People have asked us for more information on the patents petition process, and based on that input, I’m pleased to announce that the USPTO has developed a new Patents Petitions Timeline. This new timeline gives you easy-to-use information in a single page on our website about petitions filed with the Office. Petitions (for example, to revive an application, for correction of inventorship, or to file a Track One request) can be submitted during each stage of the patent prosecution process, and the timeline provides applicants with information on each specific petition and deciding office, as well as information on both the historical grant rates and the pendency of decided petitions.
By supplying as much detailed information as possible at every stage of the patent prosecution process, our customers will be able to make more informed decisions on when and how to file a petition and who to contact with questions. Users can also click on each petition type to link directly to specific sections of the Manual of Patent Examining Procedure (MPEP) or other pages of the USPTO website. For example, if an applicant seeks to secure small entity status, the Patents Petitions Timeline contains a specific link for this type of filing to educate the applicant on the requirements contained in the MPEP for such a petition. Additionally, the applicant can see from the timeline that a small entity petition is pending on average for 89 days with a 100 percent grant rate.
The Patents Petition Timeline supports the USPTO’s Enhanced Patent Quality Initiative, which strives to enhance the quality of our patent examination process while providing excellent customer service. The timeline also comes on the heels of another outreach project related to petitions—namely status updates on petitions data posted on our Patents Dashboard. And it’s another step towards increasing the transparency of the USPTO and making our data open and accessible to the public. We hope our users will find the Patents Petitions Timeline useful and informative, and we look forward to receiving your comments and suggestions, which you may send to Patents Petitions.
Posted at 03:03PM Sep 03, 2015 in patents |
PTAB Update: Proposed Changes to Rules Governing PTAB Trial Proceedings
When the Leahy-Smith America Invents Act of 2011 (AIA) created three new kinds of post-patent issuance review proceedings to be conducted by the Patent Trial and Appeal Board (PTAB), it also explicitly gave the USPTO broad regulatory authority to create and improve these new proceedings. As such, since we first issued rules and guidance for the proceedings in 2012, the agency has engaged the public and received extensive input through events like our eight-city public listening tour and responses to our request for formal comments last year. Based on this input, in March, we issued a first set of changes – or “quick fixes” – that were relatively simple in scope, and I promised that the agency would have a second package of more involved proposed rules ready to share with you this summer. So today, I am pleased to tell you about that promised set of additional proposed improvements (as further detailed in our Federal Register Notice) as well as share some key PTAB statistics to date, and detail some further opportunities for public input that are coming up.
First, by way of additional background, I wanted to share with you a few key statistics. The AIA created three new post-issuance review proceedings in 2011, which the PTAB practice rules govern: inter partes review (IPR); post-grant review (PGR); and the transitional post-grant review for covered business method patents (CBM).
While we have only three years’ worth of data at this point, the following provide a helpful picture of the significant activity occurring before the PTAB to date – and, in particular, how and by whom these proceedings are being used:
• As of July 31, 2015, the PTAB has received a total of 3,655 petitions, of which 3,277 are IPRs, 368 are CBMs, and 10 are PGRs.
• Of all of the AIA petitions filed so far, 63 percent were filed in the electrical/computer technology centers (TCs), 23 percent in the mechanical/business methods TCs, 9 percent in the bio/pharma TC, and 5 percent in the chemical TC.
• Trials have been instituted on 1,389 of 3,277 IPR petitions, 185 of 368 CBM petitions, and 2 of 10 PGR petitions.
• Of the first IPRs to reach a conclusion, 12 percent of total claims available to be challenged (4,496 of 38,462), were determined by the PTAB to be unpatentable in a final written decision. Other claims were either not challenged, resolved by settlement, cancelled, or upheld as patentable.Of the first IPRs to reach a conclusion, 25 percent of claims actually challenged (4,496 of 17,675) were found to be unpatentable.
More PTAB data and statistics (as of the end of July 2015) are available here.
Although the total number petitions filed to date reflect around three times more than what we initially anticipated, we are especially pleased that the PTAB has nonetheless maintained a perfect record in rendering all its final decisions within the mandated time frame of one year. (And without using the six-month “good cause” extension for any trial or employing the temporary safety-valve “cap” provided by Congress to decline further petitions.) We are also pleased that those final PTAB decisions that have been appealed to the U.S. Court of Appeals for the Federal Circuit (CAFC) have been affirmed at a very high rate. Taken together, the demand for these new proceedings (as reflected by the large number of filings) and the results we are seeing at the CAFC appear to indicate that the PTAB proceedings are succeeding in their Congressional mandate to effectively and efficiently resolve patent validity disputes, while providing timely, low-cost alternatives to district court litigation.
We recognize that, while we believe the proceedings are working well, there are improvements that could be made based on our and the public’s experiences with the proceedings. Along with the PTAB’s refinement and improvement of its proceedings that it has made through specific decisions, today’s proposed rules represent the next step in making improvements to these proceedings. In particular, the package of changes:
• Proposes to allow patent owners to include, with their opposition to a petition to institute a proceeding, new testimonial evidence such as expert declaration. This change responds to commentary raising concerns that patent owners are disadvantaged by current rules that let petitioners’ evidence go unanswered before a trial is instituted.
• Proposes a new requirement on practitioners before the PTAB, akin to the Rule 11 requirements in federal courts, to give the USPTO a more robust means with which to police misconduct.
• Proposes to clarify that the PTAB will use the claim construction standard used by district courts for patents that will expire during proceedings and therefore cannot be amended, while confirming the use of broadest reasonable interpretation (BRI) for all other cases.
• Notes the PTAB’s development of motions-to-amend practice through its own body of decisions, including a recent decision that clarified what prior art a patent owner must address to meet its burden of proof.
In addition, the proposed rulemaking in this Federal Register Notice also addresses comments made about requests for additional discovery, live testimony, and confidential information.
I encourage you to review the proposed rule package which addresses the comments provided to us during our listening tour and request for comments. We welcome your comments to our proposed rules, and ask that you submit them on or before October 19, 2015.
In addition to this current Notice, we are also considering issuing a request for comments related to the staffing of the PTAB panels for the institution phase of the proceedings shortly. Given the still-continuing rise in petitions being filed, the agency is seeking sensible ways to proactively manage its operations and resources by making these proceedings more efficient, while being fair and continuing to provide decisions of high quality. Please consider filing comments in this upcoming request. (Update: the request for comments on a pilot program has now been posted and is available here. Comments are due on October 26, 2015.)
And finally, in cooperation with the American Intellectual Property Law Association (AIPLA), we will conduct further public road shows later this month to discuss these proposed rules and improvements to PTAB proceedings, continuing to gain your valuable feedback. The road shows, entitled “Enhancing Patent Quality and Conducting AIA Trials,” will be held: August 24th in Santa Clara, CA, August 26th in Dallas, TX, and August 28th at USPTO headquarters in Alexandria, VA. Our goal is to issue final rules, based on the input we receive on these proposals, before the end of the year.
Thank you to all who provided feedback during our listening tours and/or request for comments. We are committed to working with you, now and in the future, to ensure that the PTAB proceedings are as effective and fair as possible within the Congressional mandate, and we look forward to continuing this productive partnership as we review and improve the PTAB trial proceedings to better meet your needs.
Posted at 09:03AM Aug 19, 2015 in ip |
Modernization of Electronic Patent Application Process
Guest Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Russ Slifer
I’m excited to let you know about one of our newest initiatives, eCommerce Modernization (eMod), which will improve the electronic patent application process by modernizing the filing and viewing systems. Development will start later this summer, with the initial pilot program anticipated to start in the summer of 2016. The new system will be implemented in phases over the next few years, and once completed, will replace our current EFS-Web, Public PAIR, and Private PAIR.
For patent applicants, eMod will help provide a simpler authentication process, improved functionality, and a more user friendly interface and documents. For patent examiners, the updated systems will streamline patent submission, review, and management processes, and increase accuracy of application processing and publication. Overall, a more easy to use electronic patent application process will improve efficiency, communication, and patent quality.
We want to hear from you as we proceed with modernizing our filing and viewing systems. We have already started receiving feedback from the IP community and the public, and are incorporating these suggestions into the development process. I encourage you to review the ideas that have already been submitted on our Ideascale page and vote or comment on them. You can also share your thoughts with us through our eMod mailbox or by attending one of our outreach events.
Find more information about eMod on our website , or contact us directly at eMod@USPTO.gov. I will continue to share updates with you on eMod, as we work to make our patent application process as effective, efficient, and user friendly as possible.
Posted at 11:51AM Aug 06, 2015 in patents |
25th Anniversary of the Americans with Disabilities Act
Guest Blog by Director of the Office of Equal Employment Opportunity and Diversity Bismarck Myrick
At the United States Patent and Trademark Office, (USPTO) we derive our strength from the vast array of backgrounds and experiences of our employees, including those with disabilities. We are proud to be one of the most diverse workforces in the federal government, ranked the #2 best place to work in the federal government for employees with disabilities as well as the #2 place to work overall in the agency subcomponents class by the Partnership for Public Service in 2015. On the 25th Anniversary of the ADA, it is important to re-dedicate ourselves to providing equality of opportunity and to eradicating myths, fears, and stereotypes about people with disabilities.
The USPTO takes an innovative approach to accessibility in the workplace. In August 2014, we deployed an online, self-service system called Accommodation Point, which initiates and manages reasonable accommodation requests from employees and job applicants with disabilities. The system makes requesting, evaluating, and deploying requests for reasonable accommodations easier and more efficient. This is a unique system within the federal government, and the only system known to be in use by a federal agency that allows job applicants to easily and electronically request an accommodation needed for pre-hiring situations, such as a sign language interpreter or wheelchair escort during job interviews.
According to the most recent U.S. Census Bureau data, 1 in 5 Americans had a disability, and 1 in 10 had a severe disability that substantially limits one or more basic life activities. The most recent study on disability employment, the Kessler Foundation 2015 National Employment and Disability Survey, showed that the most requested accommodation for people with disabilities in the workplace is a flexible schedule or the ability to work from home. At the USPTO, our employees are able to take advantage of these benefits regardless of disability status.
The USPTO sees hiring disabled employees as a smart business decision. The USPTO relies on a highly trained, specialized workforce to carry out our mission to protect innovation in the United States and provide global leadership in intellectual property policy. The USPTO recognizes that people with disabilities are an incredibly important talent pool that goes underutilized.
Both in the private and public sectors, people with disabilities in the workplace tend to go underreported and under-accommodated. Oftentimes, employees with disabilities do not come forward with requests until their performance has been significantly affected and their jobs are in jeopardy. The reason for this hesitance is varied, from employee fear that an accommodation will negatively impact their organization to pre-existing negative attitudes in the workplace regarding disability. Sometimes, employees will not request an accommodation because they perceive the process to be a greater inconvenience than the lack of accommodation.
The key is to empower employees to understand how and when to request an accommodation so that they can continue to perform at an acceptable level before a major problem arises. Accommodation Point at the USPTO helps facilitate this, and provides employees and prospective employees with disabilities the tools and resources they need to excel in their positions and contribute to the agency’s mission. To learn more, visit the Office of Equal Employment Opportunity and Diversity page of the USPTO website.
Posted at 03:15PM Jul 27, 2015 in ip |
Joint Communique Between U.S. and Brazil on Patent Work Sharing
Guest blog by Chief Policy Officer and Director for International Affairs Shira Perlmutter
Under the U.S.-Brazil Commercial Dialogue IPR working group, the U.S. Patent and Trademark Office (USPTO) and the Brazilian National Institute of Industrial Property (INPI) have a long history of working together to exchange best practices aimed at capacity building and reducing each country’s patent backlogs. During President Rousseff’s visit to the United States on June 30, Commerce Secretary Penny Pritzker and the Brazilian Minister of Development, Industry & Foreign Trade (MDIC) Armando Monteiro signed a Joint Statement on Patent Work Sharing. This agreement is part of broader government-wide efforts to expand trade and investment with Brazil and is something the private sector has been urging both governments to adopt for some time. The USPTO’s Office of Policy and International Affairs (OPIA) and the International Trade Administration’s Brazil Desk facilitated the completion of this Joint Statement.
The Joint Statement emphasizes the importance and value of work sharing to improve efficiency in the patent application process—a benefit to patent applicants as well as patent offices. For applicants, work sharing facilitates the granting of patent rights and reduces the cost of obtaining patent protection in multiple jurisdictions. For patent offices, work-sharing mechanisms are effective in grappling with increased workload demands, leading to improved efficiencies in patent examination practice. More broadly, patent work sharing will help boost the economic growth and development of both the United States and Brazil.
At the White House, President Obama and Brazilian President Rousseff issued a Joint Communique which specifically referenced the Joint Statement, and recognized each country’s work sharing potential. The Joint Communique is an important milestone for the USPTO. It emphasizes the importance of intellectual property in bilateral discussions with partner nations, while highlighting the central role OPIA serves in providing expert IP advice to the various branches of the U.S. government, as well as the patent offices of foreign governments.
Pursuant to the goals outlined in the Joint Statement, OPIA is now working closely with counterpart officials in the Brazilian patent office -- the National Institute of Intellectual Property (INPI) -- to establish a technical framework for a future patent work-sharing program between the two offices. We hope to finalize an agreement on such a work-sharing program by the end of summer.
USPTO Offering Expedited Patent Appeals
Guest Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Russ Slifer
The USPTO recently launched a new pilot program that will allow appellants with multiple ex parte appeals pending before the Patent Trial and Appeal Board (PTAB) to expedite review of one appeal in return for withdrawing another appeal. This pilot program—a first for the PTAB—offers several advantages while being simple to use.
The Expedited Patent Appeal Pilot is designed to allow appellants having multiple ex parte appeals currently pending to have greater control over the priority with which their appeals are decided. It also serves to reduce the backlog of appeals pending before the PTAB. Additionally, this pilot program will permit an appellant having multiple appeals pending to accelerate the PTAB’s decision on an appeal involving an invention of greater importance to the appellant.
Appeals to the PTAB are normally taken up for decision in the order in which they are docketed. The current average pendency of an ex parte appeal at the PTAB is approximately 30 months. An appeal that is accorded special status under the Expedited Patent Appeal Pilot Program will be advanced out of turn for a decision on the appeal. The goal of the pilot is to render a decision on the appeal accorded special status no later than six months from the date of filing of the petition. Thus, participation in the pilot could save up to 2 years in wait time for a decision on an appeal.
Appellants wishing to participate in the pilot program need only make a certification and file a petition to the Chief Judge. We have waived the petition fee and provided a form-fillable PDF (Form PTO/SB/438) for use in filing the certification and petition. Although an application having no allowed claims becomes abandoned upon withdrawal of an appeal, applicants are permitted under the pilot program to file a Request for Continued Examination (RCE) in the application of the appeal sought to be withdrawn to continue prosecution and avoid abandonment of that application.
As well as the Expedited Patent Appeal Pilot, the USPTO is working on other initiatives to reduce the ex parte appeal backlog, which the agency will release soon. The PTAB continues to hire administrative patent judges, patent attorneys, and paralegals. In addition, the PTAB is starting a law clerk fellowship pilot program and is identifying further ways to provide more support to administrative patent judges to increase efficiency.
Posted at 09:23AM Jul 14, 2015 in patents |
Update on our Enhanced Patent Quality Initiative
Guest blog by Deputy Commissioner for Patent Quality Valencia Martin Wallace
I am encouraged that we have received more than 1,100 comments and suggestions about our Enhanced Patent Quality Initiative in response to our Federal Register notice, internal Patents Forums, and Patent Quality Summit. We have taken the ideas and suggestions you provided and are making improvements in all aspects of patent quality.
The USPTO is committed to providing the most current and robust training for our patent examiners. In view of the U.S. Supreme Court’s recent decisions in Alice Corp., Myriad, and Mayo, we are now offering our examiners additional training on subject matter eligibility and claim clarity issues related to 35 U.S.C. § 101 and § 112. We are also further enhancing our training for patent examiners on search skills and the interviewing process.
In order to streamline our patents organization, we have consolidated the Office of Process Improvement, Office of Patent Quality Assurance, Office of Patent Training, and Office of Patents Ombudsman and Stakeholder Outreach into our newly created Office of Quality Management. I am confident this will also improve oversight and coordination of our quality processes.
We continue to provide helpful resources for the public, and recently launched a monthly “Patent Quality Chat” webinar series. The topic of our first webinar on June 9 was clarity of the record, our next webinar on July 14 will focus on in-person patent examiner interviews, and our August 11 webinar will discuss measuring patent quality. For those of you who were not able to tune into the clarity of the record webinar, you can view the PowerPoint slides and recording on the Patent Quality Chat page of the USPTO website. Be sure to check our online events calendar for more details on upcoming webinars and other events.
To better serve patent applicants, practitioners, and stakeholders, we are offering expanded business hours to contact our Patents Ombudsman in our regional offices. I encourage you to take advantage of this program, which assists applicants or their representatives with issues that arise during patent application prosecution. The ombudsman representatives help improve communication between the applicant and examiner, more quickly address issues that arise during prosecution, and reduce unnecessary delays during the process.
Finally, we will be embarking on a Patent Quality Roadshow this summer to update our stakeholders about our efforts and to hear your thoughts. The roadshow will visit Silicon Valley on August 24, Dallas on August 26, and Alexandria on August 28.
The USPTO is dedicated to issuing the highest quality patents possible. We hear you, we thank you, and we will continue to update you on our progress on our Enhanced Patent Quality Initiative.
Posted at 10:09AM Jul 13, 2015 in patents |
Update on our Regional Offices
It’s an exciting time for our four regional offices as we are reaching entrepreneurs across the country, hiring new patent examiners and judges, and getting ready to open our permanent office space in Dallas and Silicon Valley later this year. In addition, June 30 marks the one-year anniversary of our Rocky Mountain Regional Office in Denver and July 12th marks the three-year anniversary of the Elijah J. McCoy Regional Office in Detroit.
We’re increasingly excited to cut the ribbon at the permanent space for our Texas Regional Office in Dallas later this year. We’ll be located in the Terminal Annex Federal Building, a prime location in Downtown Dallas. We’re currently reviewing applications for a Regional Director for the Dallas office, who will be responsible for general oversight of the office as the most senior ranking official representing the USPTO. Later this summer, we will be advertising for patent examiner positions in Dallas. These will be posted on www.usajobs.gov, so please help spread the word.
We continue to participate in high profile events such as Dallas’s first Startup Weekend Women's Edition, at which several of our top USPTO leaders spoke in late May. On July 12, Deputy Director Russell Slifer will open the second annual National Summer Teacher Institute on Innovation, STEM, and Intellectual Property at the University of Texas in Dallas. This multi-day professional development training opportunity is designed to help middle and high school teachers incorporate concepts of making, inventing, and intellectual property creation and protection into classroom instruction. On August 7-8, the USPTO, the Dallas Entrepreneur Center, and Southern Methodist University (SMU) are sponsoring the Dallas Entrepreneur Conference, which will be held at SMU’s Dedman School of Law in Dallas. The event will provide resources to help entrepreneurs protect their intellectual property and grow their businesses.
With the West Coast Regional Office in Silicon Valley opening later this year in San Jose, hiring for the office is a key priority. In March, the office held a livestreamed recruitment webinar in cooperation with the office of U.S. Representative Zoe Lofgren, where a panel of USPTO patent examiners discussed their careers, sharing their personal experiences and taking questions from prospective candidates. As a follow up, we recently held a series of recruitment events across the region to search for top talent. We are seeking patent examiners in the fields of electrical engineering, computer engineering, and mechanical engineering, and are also hiring PTAB judges for all of our regional offices. You can learn more about the role of an administrative patent judge by watching our video series.
Over the last few months, the Silicon Valley office has been active in outreach efforts with organizations including the San Francisco Economic Development Council, Maker Faire Bay Area, Licensing Executives Society, and IP law associations across the region. The office is actively engaging with startups and incubators, providing technology focused and industry specific workshops and presentations. Further, in June, the office worked with the USPTO’s IP Attaché program to hold outreach meetings in San Diego and Los Angeles. The purpose of these meetings was to hear directly from stakeholders about their international IP-related concerns and challenges, and how the IP Attaché Program can help. Read more in a recent post to this blog.
It has been a busy year since the Rocky Mountain Regional Office in Denver opened in June 2014, a one-stop shop for innovators in the region. It is currently operating with 80 patent examiners and eleven Patent Trial and Appeal Board (PTAB) judges. Under the direction of interim Regional Director Robin Evans, the Denver office has been working with important industries in the region such as clean tech and biotech and organizations such as the Denver Mini-Maker Fair, Rocky Mountain IP Institute, and SXSW V2V. On April 2, the Metro Denver Economic Development Corporation awarded its Metropolitan Cooperation Award to individuals whose collective work resulted in the selection of Denver as a USPTO office location, and Deputy Director Russell Slifer and Senator Bennett accepted the award, demonstrating the office’s strong connection with the community.
The Rocky Mountain office also helped spearhead the recent expansion of the USPTO’s Patent Pro Bono program to Colorado, in conjunction with the Colorado Bar Association Intellectual Property Section and the Mi Casa Resource Center. The Colorado Pro Bono Patent Initiative, or the ProBoPat program, seeks to connect low income Colorado inventors with Colorado patent professionals for patent preparation and prosecution legal services on a pro bono or significantly reduced-fee basis.
In April, I had the chance to visit the Elijah J. McCoy Regional Office in Detroit, Michigan, our first regional office. We are operating with ten PTAB judges and more than 120 patent examiners. I enjoyed speaking to entrepreneurs and startups throughout my trip, including at the Detroit Techweek LAUNCH competition and entrepreneurship summit. Christal Sheppard, the Regional Director of the Detroit office, joined me for a roundtable on patent innovation with Senator Gary Peters, Congressman John Conyers, and Congresswoman Debbie Dingell, where we discussed intellectual property issues impacting the region and how we can work together to promote economic growth. The Detroit office continues to actively engage with the innovation community, as well as hold Saturday seminars, which are free events open to the public.
I look forward to updating you again in a few months about more exciting developments with our regional offices, including the grand openings of our permanent offices in Dallas and Silicon Valley. USPTO regional offices help protect American innovation and competitiveness, and we are dedicated to providing services to entrepreneurs, inventors, and small businesses, while actively engaging communities and local industries.
Posted at 01:56PM Jun 30, 2015 in ip |
IP Attaché Program Outreach in San Diego and Los Angeles
Guest blog by Chief Policy Officer and Director for International Affairs Shira Perlmutter
USPTO IP attachés provide valuable assistance to U.S. stakeholders doing business overseas by advising them on intellectual property matters including protection, enforcement, use and licensing. Last month, the IP Attaché Program conducted a set of outreach meetings in San Diego and Los Angeles. In these meetings, the USPTO engaged in an interactive dialogue with a wide variety of stakeholders, explaining how the IP Attaché Program works, and identifying more ways for IP attachés to address stakeholders’ needs.
The IP Attaché Program is overseen by USPTO’s Office of Policy and International Affairs (OPIA). The attachés are intellectual property experts who serve as diplomats in our embassies and consulates overseas to advocate U.S. positions on intellectual property matters for the benefit of U.S. stakeholders. The program currently has 11 attachés based in Rio de Janeiro, Moscow, New Delhi, Beijing, Guangzhou, Shanghai, Bangkok, Mexico City, Kuwait City, and Geneva, and they work closely with teams of specialized patent, trademark, copyright, and enforcement attorneys in OPIA. In August, we will be posting our first attaché in Brussels, who will be working with the European Commission and EU Member states.
Participants in the May meetings included senior representatives of industry associations, legal associations, law schools, IP practitioners, and U.S. companies. IP attachés based in Brazil, Russia, India, China, Mexico and Kuwait, as well as Dom Keating, the IP Attaché Program Director, addressed questions on topics including counterfeiting, piracy, and patent, trademark and copyright protection overseas. The IP attachés also spoke in sessions of the International Trademark Association (INTA) Annual Meeting.
If you would like the assistance of an IP attaché, you can contact him or her directly using the contact information listed on the IP Attaché pages of the USPTO website. We look forward to holding additional IP Attaché Program public outreach meetings in the future.
Posted at 10:27AM Jun 26, 2015 in International Affairs |
Farewell from USPTO’s Commissioner for Patents
Guest blog by Commissioner for Patents Peggy Focarino
As many of you know, I will be retiring from the USPTO at the end of the month after 38 years of service. I started my career here as a patent examiner in 1977, a few months after I graduated from college. At that time my goal was to become a Primary Examiner - I never dreamed I would rise through the ranks and have the opportunity to serve as Commissioner for Patents. I’m so honored to have had this job, and I feel privileged to have worked here at the USPTO over the years with so many talented colleagues.
As I prepare to leave the office, I’ve had some time to reflect on my career here – where I’ve spent nearly two thirds of my life – and to think about my colleagues and the values they represent.
It’s been an honor and pleasure to work with such a wonderfully diverse group of people. That diversity is part of our strength, and it is so gratifying to have watched it grow to a level I could never have imagined back in 1977. We have accomplished so much over the years by working together – and I believe the agency has never been stronger.
I’m grateful to Under Secretary Michelle Lee for the confidence she has placed in me and her collaborative leadership style in continuing to move the agency forward. I know the USPTO will continue to achieve great things under her inspired leadership.
I’m confident that with the addition of Deputy Under Secretary Russ Slifer to the team, the agency is poised to continue on a path of excellence in the quality of the products and services we provide.
I want to personally thank all the members of my staff for their dedication and support over the last several years. I could not have survived without them!
And finally, I want to wish everyone at the USPTO the best of success as you continue your vital work for the agency – and our great country.
Addressing IP Rights Issues in China
It was clear during my recent trip to Beijing, China, that the timing for the visit could not have been better. China is at a crossroads in its economic evolution, and as such governmental officials are considering changes to every aspect of intellectual property law. After a series of high-level meetings, what was clear to both me and my China team—led by Senior Counsel Mark Cohen—was an increased recognition in China of the value of IP to the nation’s economic ambitions. It is through a mutual respect for the importance of IP rights and protections that U.S. companies will be able to fully and successfully compete in the Chinese market.
From May 25th to the 27th, I met with senior leaders across China’s IP landscape, starting with Vice Premier Wang Yang. The Vice Premier stated quite clearly that China aspires to be an innovation-based economy. China is no longer content with manufacturing goods invented by others, he and other leaders said, as the country aims to move up the economic value chain and compete in the global marketplace of inventors. As such, we were told that China recognizes that improving IP rights and enforcement is not just in the interest of the U.S., it is also in the interest of China. We heard this not just from the Vice Premier but in meetings with China’s State Intellectual Property Office (SIPO), the Ministry of Commerce (MofCOM), the State Administration for Industry and Commerce (SAIC), the National People’s Congress (NPC), and the Supreme People’s Court (SPC).
Much progress needs to be made in China in all forms of IP law, from patents and trademarks, to copyrights and trade secrets. I made clear in my meetings that we seek to work with China to develop a market-oriented, business-driven innovation environment that allows businesses the freedom to license and contract as conditions warrant. Those businesses need to be free from governmental interference in an environment comprising transparency and rule of law. Already assisting U.S. businesses in China are three USPTO IP attachés, including Beijing-based Joel Blank, who was part of my delegation.
We discussed with our counterparts China’s new IP specialized courts, offering input on how to ensure this reform guarantees justice for IP owners. We pushed for reforms to ensure effective protection and enforcement of trade secrets that would include revisions to its criminal law. We emphasized the need for increased protection for copyright and trademark owners while recognizing the importance of reforms already enacted, offering feedback on further reform efforts being discussed in China on those issues. And we did so, in each case, by emphasizing how these changes would be mutually beneficial for both countries.
I also had the unique opportunity to meet with U.S. industry representatives while in Beijing. It’s invaluable to hear about the IP challenges and issues faced by those “on the ground,” and to discuss the ways in which the U.S. government can help them.
This visit built on a successful trip by Deputy Director Russell Slifer to the IP5 Heads meeting in Suzhou, China, a week earlier. Along with signing a Memoranda of Cooperation with the Korean IP Office and the Japanese Patent Office, Deputy Director Slifer met with SIPO Commissioner Shen Changyu. Deputy Director Slifer and I had just hosted Commissioner Shen at the USPTO in April, and I had a productive meeting with him on this recent trip.
During that meeting, I signed a Memorandum of Understanding with Commissioner Shen that commits the USPTO and SIPO to a general framework of bilateral cooperation. We both committed to educational programs on how best to protect patents in each country’s legal system, and could organize activities related to USPTO programs such as the Patent Prosecution Highway and the Global Dossier initiative. SIPO and the USPTO process more patent applications than any of the other IP offices in the world, and I am encouraged by the furthering of our agencies’ collaboration.
As evidence of this collaboration, SIPO also participated in a cause close to my heart. On May 25, I gave a speech at Columbia University's East Asia Center in Beijing to an audience of 60 people, mostly women between the ages of 25 and 40, on the importance of women in STEM (science, technology, engineering, and mathematics) fields. A representative from SIPO echoed my remarks, and emphasized the link between a strong STEM education system and an innovative society.
Engagement with SIPO—and Chinese policymakers more broadly—will continue later this year with the next meeting of the U.S.-China Joint Commission on Trade and Commerce that I co-chair with Deputy U.S. Trade Representative Robert Holleyman. This trip helped lay the groundwork for that very important bilateral trade dialogue, in which IP is a top priority. We’re moving forward on plans for that meeting with a commitment to continue to encourage China’s evolution to an innovative economy that increasingly respects and promotes IP rights.
Reduced Trademark Filing and Renewal Fees
Guest Blog by Mary Boney Denison, Commissioner for Trademarks
The USPTO is dedicated to serving the public in the most efficient and cost-effective manner possible. In January 2015 we implemented reduced trademark application and renewal fees. Lower fees lessen the burden for entrepreneurs and small businesses to obtain the crucial trademark protection they need to grow their businesses, while increased electronic processing enhances the USPTO’s efficiency of examination.
An important part of the USPTO’s mission is to optimize trademark quality and timeliness. Our Trademark Electronic Application System (TEAS) allows easy electronic filing by applicants. Since January 17, a new reduced trademark application filing fee option, TEAS Reduced Fee (TEAS RF), has been available to the public. This new filing option promotes electronic communication and application processing while giving applicants more flexibility in identifying their goods and services. With the TEAS RF option, applicants pay a reduced fee if they agree to two-way electronic communication throughout the process. This option has proven to be popular with the majority of trademark filers. In addition to introducing TEAS RF, we’ve also reduced the TEAS Plus initial application fee and reduced the fee to renew a trademark registration electronically. Visit the Trademarks page of the USPTO website for specific information on the reduced fees.
Prior to January 17, the electronic trademark application options consisted of a TEAS “regular” application and a lower-cost TEAS Plus application with stricter filing requirements, introduced to encourage end-to-end electronic processing of applications. While these options did increase the number of applicants submitting initial applications electronically, approximately 20 percent of applicants were still filing subsequent documents on paper. We conducted outreach to determine what specifically discouraged filers from filing electronically. I personally called many of the firms which did not, or rarely file completely electronically in order to get an idea of what we could do to encourage end-to-end electronic filing. The feedback we received led us to add the TEAS RF option and reduce the TEAS Plus fee and trademark registration fee.
Since introducing the reduced fees in January, TEAS “regular” applications have dropped while TEAS RF filings have increased. The increase in online filing is beneficial to the USPTO’s workflow processes, data collection, and file management, while supporting our objective of end-to-end electronic processing of applications. We will continue to engage with the public to identify ways to streamline our processes, lessen the financial burden on applicants, and efficiently process trademark applications.
Posted at 11:20AM May 29, 2015 in ip |