Director's Forum: David Kappos' Public Blog
Progress Report on Satellite Office Openings
It has been a few months since we announced we would be opening three new USPTO satellite offices in Dallas-Fort Worth, Denver, and Silicon Valley, so I'd like to share details of the progress we are making in all three communities.
Our satellite office team visited all three cities within weeks of our announcement, scouting potential office space and meeting with local public officials, as well as business and community leaders. We have moved in partnership with the General Services Administration (GSA) to identify locations that will be the most cost-effective, provide the greatest economic impact for the region, and enable us to recruit and retain the best employees.
GSA’s procurement process requires us to initially consider space that already is owned or leased by GSA. We were recently able to find such space in the Central Business District of Denver, in the Byron G. Rogers Building, thus securing that site with record speed. A GSA renovation of the Denver building will be completed next summer, at which point USPTO will build out the interior office space.
In Silicon Valley and Dallas-Fort Worth, we are assessing the usefulness of existing federal space and considering whether to explore pursuing alternative leased space. It must be noted, however, that the timing of the identification of physical office space is in no way an indication of when we might be able to open these offices. Further, selection of physical space is not the sole metric of progress, but rather one of many steps we are simultaneously advancing. And in all three cities, we are moving ahead on all fronts.
We have from the time of our July announcement moved simultaneously in all three communities to take a number of steps that are necessary to open each of the offices in a timely fashion. We are underway in staffing up all of the new offices, working to identify leadership and staff who know the unique contours of the business landscape in each metro area. In all three communities, we are also reaching out to community stakeholders (business leaders, economic development commissions, and local officials) to help us spread the word about forthcoming Board of Appeals and patent examiner jobs, generating interest and helping to start the process of identifying key bases of skilled workers. For the Silicon Valley location, we’ve recently run job postings on USAJobs.com for administrative law judges and are now actively reviewing the applications received.
As Deputy Undersecretary Terry Rea noted just the other day, our Detroit office is fully operational, with patent applications under review and interviews with applicants being conducted. And the Detroit office is creating good jobs in that community: we anticipate having 100 patent examiners and 20 judges on site there by next summer—and a similar impact should be felt in our three other cities.
All of these steps and progress will lead to the point where regional entrepreneurs in Silicon Valley, Denver, and Dallas-Fort Worth will have greater insight into the patent application process and access to the USPTO facilities. Stay tuned to this blog as we provide more updates on our USPTO satellite offices, and as we continue to engage with our stakeholders around the country.
Posted at 09:48AM Sep 12, 2012 in America Invents Act | Comments[0]
Announcing Text2PTO: Online Filing of Your Patent Applications as Text Documents
Efficiency drives innovation, and the USPTO is determined to offer innovators the most efficient patent application process in the world. The latest improvement we plan to introduce to the application process will enable our Office to accept patent application submissions in text based format. This is the same format that most applicants currently use to prepare patent applications for filing. We are looking to implement this new service, which we call Text2PTO, with the goal of providing online filers significant benefits over their existing filing experience, while minimizing changes to their existing work practices. We will be working with you in the development process to get it just right.
Text2PTO builds on our existing Electronic Filing System, EFS-Web, improving the ease and functionality of electronic filing. Its benefits to applicants as well as to USPTO are many. It increases the accuracy and integrity of the application file, while eliminating the need for applicants to create three separate PDF documents for abstract, claims, and specification. Applications filed using Text2PTO will be able to use new USPTO analytical reporting tools, permitting some formalities checks as well as access to information related to patent families, continuity, claim dependencies and other application content. The overall process will result in significant efficiency gains throughout the authoring, prosecution and publication process.
How will Text2PTO work? Applicants will write their applications using a word processing tool as they currently do. Then, instead of converting the file to a PDF, they will simply upload the text file to the USPTO. As part of the text submission process, a web based validation tool will be available (but not required) to assist applicants in preparing their documents for submission and identify incorrectly formatted or inappropriately included content such as track changes and document properties information. Formalities checks—such as word counts, application part identification, and searching for legal terms--can be done prior to submission. Warning messages and detailed help will be provided through Text2PTO to assist the online filer in creating a properly formatted document for submission.
Text2PTO will provide applicants the ability to retrieve a copy of the text-based document from the USPTO at any time throughout prosecution, facilitating review and/or amendment. If desired, the Text2PTO amendment validation tool will generate the properly formatted mark-up language based on the types of changes made to the document.
On the USPTO side we anticipate significant cost savings, as we will eliminate the need to scan, OCR, and error-correct incoming patent applications. We will pass these savings on to applicants through filing fee discounts for applications submitted through Text2PTO.
We are seeking stakeholder feedback during the developmental phase of the project. We are holding focus sessions over the next few months to obtain input as we develop specific project requirements. As we develop this new system we will also be looking for volunteers from the stakeholder community to participate in user-center design sessions and the test pilot group.
To get involved, contact our eFiling Modernization Project team at efilingmodernization@uspto.gov.
And as always, comments in response to this blog post are welcome.
Posted at 01:39PM Aug 31, 2012 in patents | Comments[2]
Up and Running in Detroit
Guest blog by Deputy Director Teresa Stanek Rea
Our first-ever USPTO satellite office is off and running. I saw evidence of that first-hand after a recent, post-opening visit to the Elijah J. McCoy satellite office in Detroit. The examiners and their colleagues on the Board of Patent Appeals and Interferences (BPAI) are our first “western pioneers,” so I was curious about their experiences so far and it prompted my return to Detroit.
It was only mid-July when I participated in the opening of the office, and on my subsequent visit in August, patent examiners had recently finished their month-long training program in the lab and moved to their new offices. We are committed to ensuring that all our examiners, whether they are located in Alexandria or in our satellite offices have the tools they need to do the best job they can. And, indeed, they’re doing that job. In fact, when I visited in August they had already completed their first in-person examiner interview.
When I was there, I spent some time with our senior staff, including our Regional Manager Robin Evans and Resource SPE Boyer Ashley, who told me of the interview. It turns out that the examiner doing the interview works from home full time and lives in the Detroit region. The attorneys flew from Denver and Silicon Valley—coincidentally the location of two of our future satellite offices—for the interview, and the primary examiner participated via a video conference from his home office in Pennsylvania. At the conclusion of the interview, the attorneys were excited that they were the first interview held in the Detroit satellite office, and they were of course also pleased with the indication of possible allowable subject matter. This is a great example of how the Detroit USPTO and the future satellite offices will serve the needs of our entire country, engaging attorneys and applicants throughout the country and allowing our employees to telework or work in the satellite offices.
I also met with our BPAI (soon to be Patent Trial and Appeal Board) Detroit judges. I am a member of the Board, and I shared with them some of my experiences working on cases. We talked about the challenges they face using new software and procedures and familiarizing themselves with the BPAI’s procedures and systems. The Detroit judges are excited to be a part of our USPTO team and are looking forward to working with their Alexandria counterparts. They are especially looking forward to conducting oral hearings and conferencing cases using some of our collaborative software tools.
It was such a pleasure to me, a native of the Detroit area, to go home and see the great work that our folks are doing on the ground in Michigan. At the one-month mark, the USPTO Detroit satellite office is up and running and serving the needs of patent applicants. I couldn’t be prouder of the work they are doing.
Posted at 02:22PM Aug 27, 2012 in USPTO | Comments[3]
Got an Idea as Big as Texas?
The USPTO’s mission is empowering U.S. innovators to protect great ideas with patents and trademarks. The small business and independent inventor community is responsible for many of those great ideas, and we know the challenges they face in filing and earning IP protection. That’s why, for the last 17 years, we’ve been reaching out to independent inventors and small business owners with regional conferences designed to educate entrepreneurs working to turn innovative ideas into marketable goods and services.
This time we’re bringing our program to beautiful Austin, Texas. Our Texas Regional Independent Inventors Conference will take place September 14–15. If you’re an entrepreneur—or even an aspiring entrepreneur—please consider attending.
At the conference you will have the opportunity to hear presentations from a variety of experts on intellectual property. Sessions are designed to appeal both to the first-time filer as well as those who have gone through the process before. You’ll be able to choose from a range of subjects, including basics of patents and trademarks, advanced patent prosecution, as well as discussion of local resources available to Texas innovators.
Attendees will have the opportunity to meet one-on-one with the presenters. Visit www.uspto.gov/Austin2012 to learn more, and please share the notice with others who may be interested.
Our job at USPTO is to help steward innovation so that it can reach the marketplace as effectively as possible. We do this by protecting intellectual property and by encouraging the smart folks who create it. The Texas Regional Independent Inventors Conference exemplifies the USPTO’s commitment to ensuring that the next wave of American inventors is well-equipped to continue leading the world in turning great ideas into positive marketplace outcomes.
Posted at 12:11PM Aug 16, 2012 in USPTO | Comments[1]
Introducing the Global Dossier Initiative
Imagine having a single, global portal for all stakeholders working on patent filings in multiple patent offices. Well, we’re working on that. It’s a transformative concept currently in development within the IP5 framework, in cooperation with the United Nation’s World Intellection Property Organization (WIPO). This groundbreaking initiative is called the “Global Dossier,” and it will provide a 21st century, all-stakeholder-inclusive electronic environment.
Global Dossier was initially proposed by the USPTO in November 2011, and further developed jointly with the Japan Patent Office last winter for introduction to the IP5 offices this spring. At an IP5 and WIPO heads-of-offices meeting hosted by the European Patent Office in June, the Global Dossier concept was endorsed as a forward-looking way to advance the international patent system, providing stakeholders tremendous cost savings through new efficiencies, while improving patent quality through advanced worksharing mechanisms.
The advantages we envision from Global Dossier include: facilitation of preplanned cross-filings; one-portal management of cross-filed applications; elimination of the need to file duplicate documents in multiple offices (e.g., priority documents, prior art citations, and so on); and cost savings through the use of modern machine translation tools. Among IP offices, it provides tremendous worksharing leverage not only through information exchange, but also examiner collaboration—activities adding to patent quality worldwide.
Many of the ideas included in Global Dossier are not new – indeed some are already under review and development as IP5 Foundation Projects and as pilots in other fora. The Global Dossier initiative gives cohesion to them, providing a unified outcome with clear benefits to all stakeholders in the patent system. It gives the IP5 Offices and WIPO a new opportunity to consolidate, conclude, or re-mission current IT initiatives, and will reduce IT development costs and provide usable results for stakeholders quickly.
The Global Dossier has generated substantial enthusiasm. I invite you to watch a short video that introduces Global Dossier. We welcome feedback on this initiative at globaldossier@uspto.gov. All ideas are welcome—we aim to create a system that works for you, the IP community.
Posted at 01:15PM Aug 02, 2012 in patents | Comments[3]
Some Thoughts on Patentability
The recent Federal Circuit decision CLS Bank International v. Alice Corporation raises some important points that offer insight on advancing prosecution of patent applications. In CLS Bank, the claims to a computer-implemented invention were found to fall within an eligible category of invention and not to mere abstract ideas. In answering the question of eligibility under § 101, I found it interesting that the court looked at the different roles of the various statutory provisions, § 101, 102, 103, and 112. Sections 102, 103 and 112 do the substantive work of disqualifying those patent eligible inventions that are “not worthy of a patent”, while § 101 is a general statement of the type of subject matter eligible for patenting. The court notes that, while § 101 has been characterized as a threshold test and certainly can be addressed before other matters touching on patent validity, it need not always be addressed first, particularly when other sections might be discerned by a trial judge as having the promise to resolve a dispute more expeditiously or with more clarity or predictability. The court in CLS Bank also recognized that the exceptions to eligibility—laws of nature, natural phenomenon, and abstract ideas—should arise infrequently.
Based on my experience, I appreciate the wisdom of the court’s discussion relating to resolving disputed claims by focusing initially on patentability requirements of § 102, 103, and 112, rather than § 101. I have found that when claims are refined to distinguish over the prior art, recite definite boundaries, and be fully enabled based on a complete written description, they do not usually encounter issues of eligibility based on reciting mere abstract ideas or broad fundamental concepts. Put another way, every business looks for opportunities to sequence workflow so that the first issues addressed are the ones that can simplify or completely resolve other issues. This is good basic management for businesses, and for patent offices.
While courts can resolve patent disputes in the most expeditious manner given the facts of the case, the Office has the unique duty of ensuring that all patentability requirements are met before issuing a patent. Applications that are presented in the best possible condition for examination with clear and definite claims that are believed to distinguish over the prior art and are supported by a robust disclosure will most likely not encounter rejections based on eligibility. Avoiding issues under § 101 can have a very positive effect on pendency and help examiners focus on finding the closest prior art, leading to strong patent protection. Hopefully, the guidance supplied by the Federal Circuit in CLS Bank can help us as we continue to work on reducing pendency and enhancing quality of issued patents.
Posted at 02:09PM Jul 27, 2012 in patents | Comments[2]
Still Smooth Sailing in Trademarks
Guest blog by USPTO Commissioner for Trademarks Deborah Cohn
Our dashboard showcasing performance in Trademarks for the third quarter of the fiscal year is out and you’ll notice that we added a new metric to highlight some meaningful differences in pendency based on how the application is filed. As you may know, applicants have several filing options to consider when they register their trademark – paper filing, electronic filing using the TEAS or the TEAS Plus form, and filing through the Madrid system for international registrations. Applicants who wish to reduce the time for approval of a mark for registration should consider the method of filing in order to best meet their needs.
TEAS Plus applications require additional information at the time of filing but in return receive the best overall pendency. As the dashboard shows, more TEAS Plus applications receive first action approval from our examining attorneys than any other type of filing.
Overall, our record performance for pendency over the past five years continues. First action pendency has stayed in the range of our goal to issue a first action between 2.5 and 3.5 months from filing. As I’ve noted in the past, our record performance is the result of a number of factors including greater use of the systems, tools, and resources necessary to manage new application filings electronically and by having dedicated and qualified people to manage them well. When you look at our performance dashboard for the third quarter you’ll see how well we are meeting our target goals.
Despite a five percent increase in new application filings, trademark pendency to registration continues to remain at historically low levels. Disposal pendency – the time from when an application is filed until a trademark is registered or abandoned – has been under 12 months for the past eight quarters in a row. Again, this is due in part to the increase in electronic processing, which now comprises 76 percent of all trademark applications filed, processed and disposed.
Posted at 03:34PM Jul 24, 2012 in trademarks | Comments[0]
USPTO and INTA Roundtable Discussions with Stakeholders
Guest blog by USPTO Commissioner for Trademarks Deborah Cohn
The USPTO has been co-hosting roundtable discussions with the International Trademark Association (INTA) since January. The purpose of these roundtable discussions is to bring together USPTO officials with trademark professionals from around the country so we can interact on current topics of interest to practitioners.
In addition to receiving updates on trademark initiatives and processes, attendees share practice tips and raise problems and issues that they have encountered. The roundtables have allowed us to receive input on a variety of developing issues in the trademark operation, and reactions to the sessions have been extremely positive.
To date, roundtables have been held in New York, Alexandria, Va., Wilmington, Del., Boston, and Raleigh, N.C. The next cities we will be visiting are Chicago (July 23), Seattle (Sept. 27), and Charlotte, N.C. (Oct. 14). We are also planning to schedule a session at our new Detroit office. We hope to connect with additional areas of the country in FY 2013.
As Commissioner for Trademarks, I have made it a priority to not just receive feedback from users, but also to seek it out. By going directly to our stakeholders, instead of just waiting for them to come to us, we can be sure the user community is heard.
We welcome any feedback you have on our user outreach. Is there an area of the country you might suggest for a roundtable? We have a dedicated mailbox for your comments (TMFeedback@uspto.gov) and we look forward to hearing from you.
Posted at 10:56AM Jul 18, 2012 in trademarks | Comments[0]
Methodology for Appeal Fees
Continuing our series on implementation of the Leahy-Smith America Invents Act (AIA), allow me to discuss one type of fee being set using Section 10 fee-setting authority: appeal fees.
In preparation for public hearings—as directed by the AIA—we delivered an initial fee schedule proposal to the Patent Public Advisory Committee (PPAC) on February 7, 2012. In that preliminary proposal, the USPTO included changes to fees relating to appeals. We proposed these changes with the understanding that in some instances an appeal may be filed, but then the matter is resolved sufficiently early in the appeal process that there is no need to forward the appeal to the Board of Patent Appeals and Interferences (BPAI) for a decision.
The Office has made great strides in connecting with applicants to resolve prosecution issues before appeal. However, we recognize that it is sometimes necessary for these efforts to occur after an appeal is commenced, and indeed we want to encourage such post-appeal outreach between examiners and applicants. However, this can result in appealed cases proceeding unnecessarily to the BPAI while applicants are working with examiners toward resolution of the underlying issues.
We are working to find ways to minimize the cost impact on applicants in these situations. In constructing our preliminary fee proposal, our initial thought was to refund most appeal fees if the application did not proceed to the BPAI. However, this proved to be a non-viable option as the law does not permit us to provide refunds of appeal fees.
As an alternative, the Office presented an option during the preliminary proposal at the PPAC hearings that included two components: (1) Shifting the payment timing for some of the appeal-related fees, and (2) Offering a combined $0 PGPub and Issue fee if the examiner withdraws a Final Rejection prior to an appeal being forwarded to the BPAI.
The second aspect of the initial proposal ($0 PGPub and Issue fee) raised implementation issues. As originally envisioned, a $0 PGPub and Issue fee would have been considered if the examiner withdrew a Final Rejection prior to an appeal being forwarded to the BPAI. However, withdrawing the Final Rejection can happen under many circumstances, including times when there is no error in prosecution by the examiner. For example, examiners often properly consider After Final amendments filed after notice of appeal, resulting in an allowance. Assessing when a $0 PGPub and Issue fee would be proper would require the USPTO to review the circumstances of each withdrawal of Final Rejection on a case-by-case basis, increasing the cost of patent operations.
Another consideration is that a $0 PGPub and Issue fee would eliminate the need for the notice of issue fee payment. Applicants often use this notification to decide if there is a need to file a continuing application. So after reviewing the resources that would be required to consider these situations on a case-by-case basis, and the possible negative impact applicants would experience, this particular piece of the initial proposal will not be pursued.
However, the Office does plan to maintain the first component in our rulemaking proposal as a means to provide savings to applicants—shifting the timing of when some of the appeal-related fees are paid. This approach provides the benefits related to the staging and timing of fee payments, without creating potential harm to applicants or additional implementation issues.
Posted at 08:31AM Jul 09, 2012 in America Invents Act |
New Examining Procedure Related to Mayo v. Prometheus
Guest blog by USPTO Commissioner for Patents Peggy Focarino
I am pleased to report that Deputy Commissioner for Patent Examination Policy Drew Hirshfeld issued a memorandum to all patent examiners implementing a new procedure for examining process claims for subject matter eligibility in view of the Supreme Court decision Mayo v. Prometheus. The memorandum explains that this new procedure is intended for analyzing process claims in which a law of nature, natural phenomenon, or naturally occurring relation or correlation is a limiting element or step. This procedure will assist examiners in making the determination of whether a claim is a patent-eligible practical application of a law of nature or whether the claim is effectively drawn to the law of nature itself, like the claims found ineligible by the Supreme Court in Mayo. Along with determining subject matter eligibility in accordance with this new procedure, examiners will complete a full examination of the claims to determine whether the additional patentability requirements are met, such as novelty and non-obviousness in view of the relevant prior art.
This memorandum is designed to focus on examination of claims most directly impacted by the Mayo decision while the courts continue to address eligibility questions in pending cases, such as Assn. for Molecular Pathology v. Myriad Genetics and WildTangent v. Ultramercial. The Office will continue to follow the guidance issued after Bilski v. Kappos for examination of other types of process claims for eligibility, and it is expected that additional guidance will be issued as these pending cases are decided.
Posted at 09:42AM Jul 05, 2012 in patents |
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 |
