Director's Forum: David Kappos' Public Blog
USPTO on the Hill: Supporting U.S. Innovators in Global Markets
Guest blog by Deputy Director Teresa Stanek Rea
Last week, I had the distinct honor to testify in front of the House Judiciary Subcommittee on Intellectual Property, Competition and the Internet at a hearing titled: “International IP Enforcement: Protecting Patents, Trade Secrets and Market Access.” This was my first opportunity, since joining the USPTO, to talk about the great successes we have had at this agency in front of Congress. I was pleased to be asked to share our experiences and successes with members of Congress and it was a positive experience.
In my testimony I highlighted the work we do at the USPTO to help our stakeholders protect their patents abroad. These efforts include Technical Assistance and Capacity Building for foreign officials who are responsible for enforcing intellectual property rights in their country. The USPTO has developed rigorous capacity-building programs in key countries and regions targeting foreign enforcement officials, such as police, prosecutors, customs officials, as well as the judiciary.
I also highlighted one of our most successful programs, the Intellectual Property Attaché program, wherein our IP Attachés work directly with our stakeholders on the ground in countries such as China, India, Russia, Brazil, Thailand and Egypt. Our IP Attachés work to promote U.S. government IP policy internationally, help secure strong IP provisions in international agreements and host country laws, and encourage strong IP protection and enforcement by U.S. trading partners for the benefit of U.S. rights holders. They also assist U.S. businesses with IP protection and enforcement and conduct training activities with host governments. The USPTO now has five years of experience building this successful program and the work our Attachés do has gotten praise from U.S. companies and others in the Federal government alike. I have also had the opportunity to meet several of our IP Attachés at their station in country as well as here at the USPTO and have been very impressed with their hard work and accomplishments. I am pleased that their efforts have gotten so much attention by Congress in this hearing and look forward to continuing to build this program.
I was also asked some questions during my testimony and want to take this opportunity to clarify my responses relative to data protection for biologics and compulsory licensing under TRIPS. Although compulsory licensing can be permissible under the TRIPS Agreement, we encourage our trading partners to consider ways to address their public health challenges while maintaining intellectual property rights systems that promote investment, research, and innovation. The broad interpretation of Indian law in a recent decision by the Controller General of Patents of India regarding compulsory licensing of patents, in my view, may undermine those goals.
I was also asked to comment on a twelve year period for data protection for biologics which is favored by the research-based pharmaceutical industry. The Trans-Pacific Partnership (TPP) negotiations are ongoing and the United States Government has not made a proposal for a longer term of data protection for biologic medicines. We will continue to work with our colleagues in the Office of the U.S. Trade Representative who are leading these negotiations as this process moves forward.
It was a great honor for me to represent the USPTO last week and I look forward to continuing to work with Director Kappos, Congress, colleagues within the Administration and our many stakeholders toward the goal of achieving IP protection and enforcement for U.S. innovators doing business in the global marketplace.
Posted at 12:33PM Jul 02, 2012 in ip |
Paving the Way Toward the Unitary Patent
Thanks to the tireless efforts of our colleagues in the European Union, and the leadership of Denmark, the last remaining obstacle to the Unitary European Patent System has been removed. Under the new system, innovators will be able to obtain patent protection and enforce patent rights in Europe at lower cost and with greater certainty, creating an optimal environment for growing innovation-based businesses and jobs. I applaud the tireless work of the European Union, and its members, in working toward this unified system—an important step in empowering innovators to compete in the global marketplace.
Coming on the heels of the 2011 America Invents Act, which is substantially revamping our own patent system and infrastructure, the Unitary Patent System will also bring greater harmony between American and European patent laws, improving trans-Atlantic trade, enhancing collaboration between our patent offices, and providing a more consistent global marketplace. This is an important milestone of which Europeans should be justifiably proud.
Posted at 09:44AM Jun 29, 2012 in patents |
A Milestone In Protecting Creative Content Around the World
In a landmark development for the multilateral intellectual property (IP) system, United States Patent and Trademark Office officials joined with other U.S. government negotiators at a diplomatic conference meeting in Beijing June 20-26, shepherding to completion a treaty that will strengthen the rights of film and television actors around the world. The World Intellectual Property Organization (WIPO) Audiovisual Performances (AVP) Treaty, or the “Beijing Treaty,” is the first successful example of international norm-setting in the copyright area in more than fifteen years, and represents a major stride for the global recognition of IP rights in an increasingly digital world. It is also a tribute to the persistence and skill of U.S. negotiators, who have pursued an agreement since 2000, when a diplomatic conference on the treaty was suspended.
The Road to Beijing
Actors, singers, musicians, and dancers have historically enjoyed limited international protection for their performances recorded in audiovisual productions. The 1996 diplomatic conference (Dipcon) that adopted the WIPO Performances and Phonograms Treaty updated standards of protection for recording artists and record producers, particularly in the digital environment. Unfortunately, an agreement could not be reached on how to protect audiovisual performances at the international level. The stumbling block was the wide diversity of national laws from country to country.
A breakthrough to the stalemate occurred in 2010, when the WIPO Standing Committee on Copyright and Related Rights (SCCR) invited Member States to submit proposals for a transfer of rights provision that would be sufficiently flexible to adapt to different national laws and thus pave the way for the conclusion of a treaty. With substantial input from the Screen Actors Guild (SAG), the Motion Picture Association of America (MPAA), and the American Federation of Television and Radio Artists (AFTRA), the United States submitted a proposal, and then worked with other delegations that had submitted proposals (Mexico, India) as well as with delegations from other major film-producing jurisdictions (particularly the European Union, Brazil and Nigeria) to find compromise language. Once agreement was reached and the compromise language approved by the SCCR in June 2011, the WIPO General Assembly voted to hold a diplomatic conference to complete the treaty.
The Chinese government offered to host the diplomatic conference in Beijing—a step supported by the United States as a means to strengthen China's commitment to copyright. Members elected Liu Binjie, minister of the National Copyright Administration of China and president of the General Administration of Press and Publications, to be president of the conference.
Significance of the Beijing Treaty
The “Beijing Treaty” will strengthen the precarious position of performers in the audiovisual industry by providing a clearer international legal framework for their protection, particularly for performances that take place in the digital environment.
For American actors—represented by SAG and AFTRA—the treaty will increase global protection for performers and bring other countries legal norms into line with U.S. standards. It will not disrupt American motion picture companies’ global distribution networks. It represents a win-win for labor and industry, allowing them to work even more closely in fighting global piracy. Ratification by the United States and key trading partners will also give American stakeholders another mechanism to promote protection of the intellectual property in their films.
Our thanks and congratulations go out to the USPTO team, the U.S. Department of State, the U.S. Copyright Office, and our entire U.S. delegation for their hard work in advancing the rights of American performers—and setting the stage for a more global framework in protecting intellectual property rights in the 21st century.
Posted at 12:07PM Jun 26, 2012 in ip |
The Kids Are Okay
Guest blog by USPTO Commissioner for Patents Peggy Focarino
It was my great pleasure to speak at the second annual FIRST® LEGO® League Global Innovation Award ceremony earlier this week. The event, which took place in the USPTO’s Madison Auditorium in Alexandria, Va., brought together some of the most innovative young minds from across the world. Four teams, out of 272 from 11 countries, were selected as finalists.
Team MATobot (New York, N.Y.) created a milk pitcher that detects spoiled milk by measuring pH levels. Team Moderately Confused (Dublin, Ohio) devised a technique that alerts consumers when meat has been improperly stored and erases the packaging barcode, thereby preventing its purchase. Team Seven World Wonders (Yeruham, Israel) created the FreezeStick, which uses chemical reactions to refreeze ice in coolers. And team S.I.S. Robotic Revolution (Shelton, Conn.) came up with the Smart Sticker to alert when eggs (and other foods) have been stored above the acceptable temperature range for an extended period of time. (You can see videos of the teams explaining their inventions through the above link.) I have no doubt these important innovations will find their way to market. And I hope they do soon, because I really want to use them in my own home!
One thing that truly inspired me at this event was being able to watch members from each team sit on a panel and answer questions from the audience about their inventions, about their lives, and about their dreams for the future. They were smart, they were funny—they were so obviously still children, and yet to see them in all their exuberance was to also witness a young generation accepting its roles and responsibilities as the next innovators and problem solvers.
These kids are wise beyond their years and I am sure I am joined by everyone who was with us that day, or watched via webcast, in congratulating them and saying that the future is in good hands. After all, the finalists of the FIRST® LEGO® League Global Innovation Award are already changing the future and making our lives better. Today it is in the area of food safety. Tomorrow, computers and nanotechnology. After that . . .
Posted at 01:18PM Jun 22, 2012 in ip | Comments[2]
Ensuring Quality Inter Partes and Post Grant Reviews
In pursuing our mission to ensure the highest possible level of patent quality, the USPTO has for decades employed the BRI standard—broadest reasonable claim interpretation—to construe claims before the Office. Using this standard, we give patent claims in front of the USPTO their broadest reasonable interpretation. This approach has for decades been uncontroversial, because it represents good policy and strikes a fair balance. It ensures that the public can clearly understand the outer limits applicants and patentees will attribute to their claims. And since applicants and patentees have the opportunity to amend their claims when working with the USPTO, they are able to resolve ambiguities and overbreadth through this interpretive approach, producing clear and defensible patents at the lowest cost point in the system.
Recently it has been suggested that the Office use the district court’s higher standard, construing claims more narrowly so as to preserve their validity in implementing the new America Invents Act (AIA) inter partes and post grant review proceedings. Unfortunately, this change would not be workable or appropriate. Employing a district court approach to claim construction in the new proceedings would impair the efficient operation of the Office and result in facially inconsistent results, as well as constitute bad policy for our country’s IP system.
As alluded to above, patent claims serve an important public notice function. An essential purpose of the broadest reasonable claim interpretation standard in the amendment process is to encourage an inventor to fashion clear, unambiguous claims. Patent owners in inter partes and post grant reviews will be afforded opportunities to amend their claims commensurate with their contribution to the art. Only through the use of the broadest reasonable claim interpretation standard can the Office ensure that uncertainties of claim scope are removed by the inventor. In contrast, patents before a district court are presumed valid with a heightened “clear and convincing” standard of proof to demonstrate invalidity. Consistent with this heightened presumption of validity—and as there is no opportunity to amend and resolve ambiguities—district courts construe claims to uphold validity. The Office however, is not so limited in its approach to claim interpretation, given its authority to amend patent claims.
Some have expressed a concern that applying the broadest reasonable interpretation standard to inter partes and post grant reviews could lead to double standards between ongoing patent litigation and the Office’s reviews. The AIA however, addresses this concern. Specifically, the AIA imposes limitations on a petitioner’s ability to file a review when there is ongoing district court litigation, while providing time limits for the Office to complete its reviews. By placing limits on the filing and completion of the reviews, and encouraging coordination between the Office and district courts, the AIA provides improved mechanisms to avoid conflicts.
On the other hand, inconsistent results would become a major issue if the Office adopted a standard of claim construction other than the broadest reasonable interpretation for post-grant reviews. Specifically, the AIA contemplates that there will be multiple proceedings in the Office, and thus requires the Office to establish rules concerning the relationships between the various proceedings. For example, there may be an inter partes review of a patent that is also subject to an ex parte reexamination, where the patent is part of a family of co-pending applications all employing the same claim terminology. Major difficulties would arise where the Office is handling multiple proceedings with different claim construction standards applicable. In this world, the same amendment made in an inter partes review and a pending application could result in an allowance in one case and a rejection in the other. Or, the introduction of narrower language in a pending application and broader language in an inter partes review could result in an allowance of the broader language and a rejection of the narrower language. Clearly, these examples and many others would produce bizarre results, unhelpful to patentees, applicants, the public, and the system.
To avoid the potential of having distinct alternative claim constructions for a claim term arising in the various proceedings before the Office and the inconsistent results flowing therefrom, the Office has chosen to continue to employ a single standard, the broadest reasonable interpretation standard, for proceedings before the Office. Continued use of the broadest reasonable claim interpretation will ensure the Office serves the patent community and makes full use of its resources in processing patent claims efficiently, effectively and consistently.
Posted at 03:37PM Jun 19, 2012 in America Invents Act |
Top Reasons Why USPTO Is Moving to CPC
Today I'd like to return to our work on patent classification. With the planning and development phases of the Cooperative Patent Classification (CPC) project well underway, this is a good opportunity to reemphasize the importance of CPC and highlight why the USPTO is cooperatively pursuing this initiative with the European Patent Office (EPO). Last year we began working with the EPO on the requirements for a bilateral classification system that would be jointly managed by both offices. We provided an overview of our efforts to the examining corps in February of this year. Throughout the transition to CPC, we will continue to work collaboratively with the EPO and the Patent Office Professional Association (POPA) on implementation details. I am strongly committed to the benefits CPC will bring. CPC will greatly benefit the USPTO and its employees, as well as the entire U.S. and indeed global innovation communities. To highlight the benefits, here are the top reasons why we are moving to CPC:
1. CPC Is Up-to-Date.
The U.S. Patent Classification System (USPC) has not been updated and maintained over time. Thanks to EPO's efforts, CPC will start out current. And the USPTO and EPO will jointly maintain CPC, so it will remain current and affordably so, with revisions made on a regular basis to provide manageable breakdowns.
2. CPC Is Dynamic.
CPC will allow for more frequent updating that will improve our ability to adapt to and incorporate filing trends and emerging technologies quickly into the scheme through more frequent revisions.
3. CPC Is Compatible.
USPC is not compatible with any other classification system used in the world today. The other four major intellectual property offices (EPO, KIPO, JPO, SIPO), all utilize a classification system based on the International Patent Classification (IPC) standard. Moving to CPC will provide the USPTO with a classification system that is compatible with the IPC.
4. One Search, One Source.
U.S. patent examiners will be able to select one set of CPC classification codes pertinent to a technology, and then have before them the available U.S., European, and other foreign art.
5. CPC Has More Breakdowns.
The CPC scheme (or classification schedule, as it is known at the USPTO) will initially have approximately 200,000 breakdowns as compared to 150,000 breakdowns in USPC. This will provide, in many art areas, a more targeted search that will yield more focused results.
6. CPC Will Have U.S. Documents from Day One.
Since CPC is initially based on European Classification (ECLA), and since the EPO has already classified U.S. documents from 1920 to date in the ECLA, we can leverage the work already done by EPO and use it as a starting point for CPC.
7. CPC Promotes Work Sharing.
After a transition period, the USPTO will only have to classify U.S. documents filed first in the U.S. Likewise, EPO will only have to classify EPO and member states’ documents filed first in Europe. By jointly sharing the work to classify new documents, CPC will save resources for both USPTO and EPO.
8. CPC Is Collaborative.
Collaboration tools will be developed for USPTO and EPO examiners to share and exchange classification and search ideas.
9. CPC Is For All Users.
Use of the CPC classification system will provide both examiners and patent system users worldwide the ability to conduct patent document searches by accessing the same document collections.
10. CPC Facilitates Harmonization.
CPC will foster patent harmonization efforts by enhancing our ability to leverage and use work of other intellectual property offices.
11. CPC Is Accommodating.
CPC is targeted to be launched in both the EPO and the USPTO on January 1, 2013. At the USPTO, there will be a two-year period when both USPC and CPC will be running in parallel to allow USPTO examiners sufficient opportunity to learn and transition to the CPC scheme.
12. CPC Is Global.
CPC will be used by the USPTO and more than 45 patent offices in their internal search systems. This user community totals more than 20,000 patent examiners who will share the same classification scheme, i.e., the CPC. This diverse community will help establish the CPC as an international standard.
I hope you will share in my enthusiasm for this important undertaking. Please check the co-owned and jointly maintained CPC website periodically for further updates.
Posted at 10:55AM Jun 13, 2012 in patents |
Eleven New Judges Join Board of Patent Appeals and Interferences
Guest blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Teresa Stanek Rea
Today at the U.S. Patent and Trademark Office in Alexandria, Va., the Honorable Sharon Prost, Circuit Judge for the U.S. Court of Appeals for the Federal Circuit, administered the oath of office to 11 new administrative patent judges on the Board of Patent Appeals and Interferences: Rama Elluru, John Evans, Larry Hume, Ulrike Jenks, Hyun Jung, Brett Martin, John Martin, Brian McNamara, Annette Reimers, Sheridan Snedden, and Michael Strauss.
The appointment of these new judges was another important milestone in our Agency’s continuing efforts to implement the historic America Invents Act passed into law last fall. Thanks to that far-reaching act of bipartisanship, we are diligently rebuilding our intellectual property system from the ground up so that new ideas and technologies can get to the marketplace faster and help create more jobs in our struggling economy. A key part of that effort is reducing patent pendency and appeals.
This year, new administrative patent judges have increased the output of the Board more every month. In the first five months of 2012, new judges added 300 more decisions to the Board’s dispositions total. We expect that by the end of the calendar year, new judge output will equal that of incumbent judges on the order of 600 to 700 decisions per month—significant and meaningful progress in reducing appeals that our newest group of judges will continue to help accelerate.
These talented new judges bring a wealth of education and experience to their new jobs at the USPTO, collectively representing more than 25 distinguished universities and 16 prestigious law firms. Their education and experience will serve them well in navigating the new challenges of our evolving patent terrain. Through judicious rulemaking, thoughtful guidelines, and policy-based interpretations of the new laws, they will each play a vital role in generating value from creativity—and helping move new inventions into the marketplace.
Please join me in welcoming these 11 new judges to our USPTO team and offering best wishes to all of them.
Posted at 02:00PM Jun 08, 2012 in America Invents Act |
China as an IP Stakeholder
The USPTO and the U.S. Court of Appeals for the Federal Circuit May 28-30 co-sponsored an intellectual property adjudication program with Renmin University of China, the China Law Society, the Bar, and others. More than 1,200 people attended the three-day program, including nearly three hundred judges from China’s judiciary; hundreds of lawyers and business people from the United States and China; several hundred Chinese academics; and, most importantly, seven judges from the Federal Circuit, as well as a like number of judges from the Supreme People's Court. There was an “en banc” Q-and-A session between the Federal Circuit and China’s Supreme People’s Court, a moot court involving a common fact pattern that resulted in a nearly identical adjudication on the same set of facts, and breakout sessions on such topics as pharmaceutical patent adjudication, copyright (including online infringements) and trademark developments (including “squatting”). The program was a milestone in bilateral judicial, intellectual property and rule of law exchanges.
On May 29, USPTO also paid a remarkable visit to China’s State Intellectual Property Office, to review a range of issues in our bilateral cooperation agenda. The Commissioner of SIPO hosted our visit, which included me and my co-author of this blog post—Senior Advisor on China Mark Cohen—as well as Solicitor Ray Chen, Attorney-Advisor Joel Blank, and one of the local lawyers in our Attache’s office, Li Jing. I delivered a public speech at SIPO on the America Invents Act.
Commissioner Tian is currently the longest serving commissioner of the five largest patent offices, and is likely the only major patent office director who has been there since his office was first established. According to Prof. Guo Shoukang of Renmin University (another remarkable contributor to China’s IP system), Tian Lipu was in the first class of his students who were educated to help establish an IP system in China over 30 years ago.
One of the issues we discussed with Commissioner Tian was how to handle design protection for graphical user interfaces (GUI). Design protection of GUIs is important in addressing the increasing phenomenon of migration of real objects to virtual objects, such as cell phones or laptops, or the GUI of a refrigerator to enable its remote control. There is also a need to provide more robust protection for designs in the borderless computing “cloud.” Although SIPO’s patent examination guidelines currently deny design protection to GUIs, Commissioner Tian recognized that as a technology-based organization, SIPO needs to address emerging new technologies and adjust its examination and patentability policies accordingly. He also welcomed discussion on other issues, such as test data requirements for pharmaceutical patents.
On issues involving patent law harmonization, patent prosecution highways, improving PCT procedures to insure greater efficiency and reduce costs, and patent classification, Commissioner Tian showed an openness and willingness to engage on shared challenges facing major patent offices, including consideration of solutions USPTO has been proposing.
Commissioner Tian’s leadership was also evident in discussing issues such as software asset management. We discussed the possibility of working together to insure both our offices, as leaders in IP protection, have strong software asset management practices. The Commissioner took up the opportunity, and we look forward to working on this together in the near future.
Perhaps the most remarkable proposals reflected SIPO’s efforts to expand its role on the international stage. First, Commissioner Tian offered to provide training to U.S. examiners on Chinese patent examination techniques. Currently SIPO runs two sessions of these training programs, one in English and one in Chinese, which he invited USPTO to participate in. Second, he noted that SIPO was planning to propose an effort at the forthcoming IP5 meeting to provide cloud-based sharing of patent and patent application information, an idea similar to USPTO efforts in this area. SIPO was also supportive of our efforts to improve the efficiency and operation of the PCT system, including measures that can reduce costs and improve PCT availability for smaller enterprises.
Commissioner Tian also took the time to note the contribution of the United States in inviting China to join the IP5, as well as the contribution of the United States to initial establishment of the Chinese patent office. For many years, China had been reluctant to recognize the hard work we have done. Some scholars, such as Bill Hennessey at Franklin Pierce Law School, have also recently called attention to the early contributions of the United States to China’s IP regime, as well as the importance of IP to China’s overall economic reforms. The recognition we received from SIPO was most welcome.
Since the 1980’s, China’s patent office has grown to be one of the largest offices in the world—now about the same size as USPTO. In this respect, the decision made six years ago by the USPTO to invite China to expand the IP trilateral (USPTO, JPO and EPO) to include the Korean Patent Office and SIPO was not only historic, but in retrospect mandatory. Mark Cohen was the person who first placed the phone call to SIPO to initiate that process on Dec. 24, 2006, which resulted in a formal invitation in 2007.
SIPO’s early development relied heavily on European, particularly German support, and SIPO's growth reflects well on the contributions made by European colleagues. Nonetheless, many of us involved in China IP matters have wondered whether SIPO, as a rising IP force, will be a responsible stakeholder in global intellectual property, and play a constructive role as other major offices have. Former U.S. Trade Representative Robert Zoellick first raised the issue in 2005 in terms of China’s overall engagement on trade and foreign policy issues, and has continued to raise the issue since. In the area of intellectual property the issues are further burdened by contentious bilateral and multilateral disputes with China, concerns over China’s innovation policies, and China’s willingness to respond to emerging challenges of new technologies as well as the pressures placed on patent offices globally and support efforts such as PCT reform and patent law harmonization. The answers that the USPTO heard at our meeting with SIPO were encouraging.
The critical importance of cooperation was underscored by Commissioner Tian himself a day earlier at the Renmin University Judicial Conference, when he noted that the USPTO and SIPO now account for approximately 50 percent of all patent applications in the world. From USPTO’s perspective, as we together carry such a large share of global patent applications, we need to both be fully committed to the global IP system. We may not always agree on policies and strategies, but having another partner emerge who is committed to the development of the global IP system is a welcome development.
(This blog was jointly written by Director Kappos and Mark Cohen, Senior Advisor to Director Kappos on China matters.)
Posted at 10:39AM Jun 01, 2012 in ip |
USPTO Co-Sponsors IP Small Claims Roundtable
Last Thursday (May 10, 2012), a roundtable of intellectual property experts convened at the George Washington University Law School. It was co-sponsored by the USPTO and the U.S. Copyright Office. The purpose of this roundtable meeting was to consider the possible introduction of small claims proceedings for patent and/or copyright claims.
The day began with framing of the challenge: offering access to IP justice to creators least resourced but often most in need, in an age in which creative works (both in the copyright and patent domain) are more subject to disputes, of all magnitude, than ever before. Presentations followed on the small claims system in the UK, and the U.S. Constitutional limitations on the nature of such procedures, including the Seventh Amendment right to a jury, Article III judicial power, and due process.
In breakout sessions on patents and copyrights, attendees discussed the need for and ways to structure a small claims system in both areas.
This productive session was a first step in determining whether and how it makes sense for the government to help set new parameters for the resolution of small claims in the patent and copyright areas. USPTO will continue to work with the Copyright Office on taking these ideas forward, so stay tuned. And of course, as always, if you have thoughts on this topic please let us know.
Posted at 11:03AM May 16, 2012 in ip | Comments[5]
Building a Better Post Grant
Guest blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Teresa Stanek Rea
Currently, the USPTO has two principal ways of challenging granted patents - inter partes reexamination and ex parte reexamination. Both of these are an examination performed in the Patent Examining Corps, specifically in the Central Reexamination Unit (CRU). Inter partes reexamination has not proven as efficient as was originally intended. It has taken an average of 32 to 38 months to move from filing to issuance of a final reexamination certificate. The time to a final determination within the USPTO is even longer, when you factor in appeals. To best serve the applicant community, Congress directed the Agency in the America Invents Act (AIA) to implement more efficient and timely alternatives to litigation.
On September 16, 2011, President Obama signed the AIA into law. It establishes three post grant proceedings conducted by the Board of Patent Appeals and Interferences (Board). These proceedings include post grant review, inter partes review and the transitional program for covered business method patents. The AIA also renames the Board as the Patent Trial and Appeal Board.
The size and experience level of the Board is being significantly expanded to handle the new proceedings. The Board now has more than 120 judges, with many of the new members coming from outside the USPTO. Many of the new judges have considerable litigation and patent prosecution experience, augmenting the considerable examination experience of other judges. This Board is well positioned to handle the new contested cases. We at the USPTO are pleased to have fresh viewpoints and diverse experiences as we take on the challenges of the AIA.
We are hard at work on the final rules concerning post grant procedures as we implement and fulfill Congress’ intent with the AIA. The need to provide an efficient way for the Board to reconsider granted patents is an important feature of the new law. The process desired by Congress is one that is efficient and cost-effective, and relies on expertise within the Agency to provide high-quality decisions. Congress also specifically limited the length of these new proceedings to 12 months, with an additional six months in exceptional cases.
Our rulemaking is taking into consideration a wide variety of information, input, and experience. The experience and procedures used in Federal District Court litigation were considered as well as the experience and procedures in the CRU. We studied procedures used by other administrative agencies, such as the Board of Veterans’ Appeals, and the International Trade Commission. We actively engaged the user community in the rulemaking process. We discussed a wide range of procedures and recommendations from a variety of sources including associations, corporations, law firms and individuals.
The Board also has some direct experience in handling contested cases. Interference practice has a long history within the Agency, and the Agency evaluated those procedures in order to identify best practices. I have practiced in the interference area for many years, and watched the development of efficient trial proceedings take root at the Board. About 15 to 20 years ago, interferences took approximately four to seven years, costing stakeholders time while adding uncertainty. They allowed for dilatory practices, wasteful motions, and procedural traps. The process eventually was modified—much to its benefit—and is now a trial-like proceeding, streamlined by careful involvement of judges. The average interference today is completed in less than a year, approximately 11 months. We in the practice learned to trust the involvement of the judges in shepherding proceedings to a quick and efficient conclusion.
The team working on the rules consists of individuals with a balanced set of viewpoints. The Director, myself, and the Chief and Vice Chief of the Board have all practiced in firm and corporate settings, and are well aware of the needs and concerns of external stakeholders. We do not wish to retain any of the elements of an overly complex interference practice. We have started from scratch and take a fresh look in our rulemaking.
Post-AIA proceedings will be very different from reexamination proceedings or interferences. First, they must be completed within a year, which means streamlining. There will be no examination, no counts, no determination of priority, no complex procedures of inter partes reexamination, and no establishing priority of invention. Complex inter partes reexamination and interference practices will not return. We envision reaping the benefits of a straightforward trial proceeding, implemented by experienced judges, resulting in a fair and efficient proceeding.
The user community has provided diverse and, at times, contradictory recommendations on aspects of the rule implementation. We are diligently taking this information into consideration as we draft procedures that will provide high quality decisions that are clear and predictable. We aspire to present final rules which will accomplish Congress’ intent of efficiency and cost-effectiveness within a 12-month window. I appreciate the interest and helpful input of the entire user community.
Posted at 08:55AM May 15, 2012 in America Invents Act |
Focusing on Funding Continuity
As USPTO continues to work toward improving effectiveness, a key to maintaining progress will be financial stability, predictability, and sustainability.
Towards this end, the Leahy-Smith America Invents Act (AIA) authorized a 15 percent surcharge on most patent fees, which went into effect on September 26, 2011. The AIA also entrusted the USPTO with the responsibility to set fees through regulation— a new authority that the Office, in collaboration with our stakeholders, is working to put in place in the coming months. Our target is to have a new fee schedule operational by the middle of FY 2013.
In addition to these in-process AIA fee adjustments, the USPTO recently published a Notice of Proposed Rulemaking (NPRM) that proposes an increase to statutory fees based on inflation as of October 1, 2012, using the Consumer Price Index. CPI adjustments have routinely been implemented in the past—generally on an annual basis—to help the Office adjust to the higher costs of doing business resulting from increases in the price of products and services. Given this mix, it is quite understandable that I am sometimes asked why we need the additional fee increase, given the 15 percent surcharge already in place and plans to implement a revised fee schedule by the first quarter of next year.
The answer is: leveling, cash flow, continuity -- much like with any large enterprise. Think of the CPI adjustment as ensuring “bridge funds.” This planned CPI adjustment will provide a small but needed increase in funding, allowing the USPTO to continue reducing the backlog and pendency until our new fee schedule--which will provide long-term financial resources--is in place.
An adequately funded USPTO will optimize the administration of the U.S. intellectual property system, moving your innovative ideas to the marketplace more quickly, while creating and sustaining U.S. jobs and enhancing the health and living standards of Americans and indeed people everywhere around the globe.
Posted at 11:59AM May 14, 2012 in USPTO |
USPTO Exhibit on Steve Jobs Opens at Smithsonian
If you missed our wonderful exhibit—The Patents and Trademarks of Steve Jobs: Art and Technology that Changed the World—while it was on display several months ago here at the USPTO campus, you now have another chance. This exhibit, which commemorates the far-reaching impact of Steve Jobs’ innovation on our daily lives, opens today at the Smithsonian Institution. Head to the concourse of the Smithsonian’s Ripley Center, and you’ll see displays of the more than 300 patents that bear the name of the iconic innovator, along with many of the trademarks that have given Apple its instantly recognizable identity around the world. You’ll gain insights into the visionary commitment Jobs gave to each of the products and designs he influenced during his time with Apple, the company he co-founded at the age of 21 with his friend and fellow computer enthusiast Steve Wozniak. You might also be interested to know that on May 2nd, Jobs was inducted posthumously into the National Inventors Hall of Fame at a dinner held in the Smithsonian American Art Museum and Portrait Gallery, the historic home of the USPTO. The Patents and Trademarks of Steve Jobs: Art and Technology that Changed the World runs through July 8th.
Posted at 08:36AM May 11, 2012 in ip |
GAO a Helpful Partner on AIA Implementation
USPTO is making it a major focus to actively engage and have regular conversations with our stakeholders on a host of issues. Look no further than how we have managed the rulemaking process to implement the Leahy-Smith America Invents Act (AIA), including – for the first time in the Agency’s history – proposing and setting a new fee schedule.
Recently, the Government Accountability Office (GAO) released a report that looked at USPTO’s user fee design. GAO’s report is quite positive. The report found that the USPTO has a robust fee review process in place, and applauded our efforts to manage funding uncertainty by creating an operating reserve, borrowing from a practice widely used in industry. The report also notes that the USPTO has a strong stakeholder communication base on which to build, assisting us in our ongoing pursuit of transparency and two-way communication.
The report did, however, note opportunities to ensure superior implementation going forward, opportunities we have already begun pursuing. Because the Office has not yet issued a notice of proposed rulemaking for setting fees under section 10 of the AIA, the findings are based largely upon past practices going back several years. Since we are just now reaching the mid-point for our fee-setting process, and the “new” information available to GAO was gathered very early in the process, the report comes at a great time for us to gain value going forward. As such, the report serves as a guide to help the Office successfully carry out the authorities entrusted to it, and not as a comprehensive review of the entire fee setting process.
The report recommends that the USPTO continue to build upon the communication successes we have already achieved, by enhancing transparency through providing detailed accounting of program costs as well as communicating clearly our policy choices. This is a fair recommendation, especially considering the GAO’s review and conclusions were based on the high-level informational materials provided in advance of the fee setting hearings held in Alexandria and Sunnyvale in February. Enhancing transparency remains critical to our business model.
Finally, GAO encouraged us to continue building on current successes by establishing guidance and protocols for communication with the PPAC and other stakeholders regarding our fee setting process. This will help ensure consistency far into the future. We have taken this recommendation to heart, and plan to incorporate specific protocols for communication into our fee-setting process.
We welcome the guidance and assistance that GAO has provided to us in their report, and look forward to continuing this strong relationship. We’ll be looking for additional ways to engage and seek help from our stakeholder community to ensure the best possible implementation of AIA, as well as numerous other initiatives underway at PTO.
Posted at 10:01AM May 10, 2012 in America Invents Act | Comments[1]
USPTO Official Honored for Public Service
One of our stars here at the USPTO was honored this morning for her excellent work as a public servant. Senior Telework Advisor Danette Campbell is one of 33 Samuel J. Heyman Service to America Medal finalists in the category of Management Excellence. Under Danette’s guidance, the USPTO has created a teleworking program that is a model not just for the federal government but for any employer. A full two-thirds of USPTO employees telework in some manner, which saves millions of dollars, increases productivity, and boosts employee job satisfaction and retention.
The “Sammies,” as the awards are known, is a project of the nonprofit Partnership for Public Service, which honored the finalists at a breakfast today at the Ronald Reagan Building here in DC. Danette and her fellow finalists were profiled Monday in The Washington Post, and we’ve already been contacted by TV and radio outlets looking to hear Danette’s story. Of course, her story is really the story of the thousands of USPTO employees who have embraced teleworking to everyone’s benefit. We all will be pulling for Danette when they announce the winners on September 13th.
Posted at 10:50AM May 09, 2012 in USPTO | Comments[3]
Continued Success in Improving the Global IP System
Guest blog by Acting Administrator for Policy and External Affairs Shira Perlmutter
As fiscal year 2012 moves forward, the Office of Policy and External Affairs (OPEA) continues to make great strides toward improving the global intellectual property system. Our dedicated staff promotes the protection of U.S. intellectual property interests around the world—from the World Intellectual Property Organization, to our work with the Office of the United States Trade Representative on trade agreements, to our collaboration with other offices via the Trilateral and IP5 processes. We are engaged in initiatives across the entire spectrum of intellectual property rights focused on enhancing the contribution the intellectual property system makes to global economic and social prosperity. I wanted to take this opportunity to give you an update on some of these initiatives and point you to details and statistics found on our updated Policy and External Affairs dashboard.
One of our most important projects is the Patent Prosecution Highway (PPH). The PPH is a worksharing framework designed to promote more efficient and higher quality examination, while enabling innovators to obtain patent protection more quickly and with greater certainty in multiple jurisdictions. The basic concept is that when one office determines claims to be allowable in an application, the applicant can fast-track examination in another office on a related application (filed via the Paris Convention or the Patent Cooperation Treaty (PCT)) containing the same or similar claims.
The USPTO has PPH arrangements with 22 patent offices around the world and the PPH network continues to expand. Furthermore, improvements made to the program were launched in January of this year as PPH 2.0, which are expected to encourage increased use of the program. As of the end of the second quarter, the USPTO had received a cumulative total of 10,322 PPH requests from applicants worldwide since the program’s inception.
Another of our key activities is providing educational and training programs for foreign government officials through our Global Intellectual Property Academy (GIPA) to improve intellectual property protection and enforcement worldwide. As of the end of the second quarter of this fiscal year, GIPA had conducted 68 training programs for 3,949 participants from 79 countries.
I am proud of the work OPEA is doing to advance these important initiatives, and I look forward to reporting continued progress in the future.
Posted at 12:22PM May 07, 2012 in ip |
