Director's Forum: David Kappos' Public Blog
PTAB and Patentability Challenges
Recently, some commentators have questioned whether the new Patent Trial and Appeal Board can consider patentability challenges brought under 35 U.S.C. § 101 in post-grant review proceedings or covered business method review proceedings. I'd like to address the issue squarely and clearly in this blog, and I apologize in advance that for extreme clarity I am going to use "lawyer-ese" in this blog.
The commentators note that, under the AIA, any ground that could be raised under 35 U.S.C. § 282(b)(2) or (3) can be raised in a post-grant review or (with exceptions not relevant here) in a covered business method review.
Those grounds include:
(2) Invalidity of the patent or any claim in suit on any ground specified in part II as a condition for patentability.
(3) Invalidity of the patent or any claim in suit for failure to comply with—(A) any requirement of section 112, except that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable; or (B) any requirement of section 251.
The commentators note correctly that § 101 is not included in § 282(b)(3). However they also assert that § 101 is not included in § 282(b)(2) even though § 101 is included “in part II” of Title 35. In their view, § 101 is not “specified in part II as a condition for patentability” because the title of § 101 is “Inventions patentable,” unlike §§ 102 and 103, which have titles including the term “Conditions for patentability.”
We disagree. As we described in our final rules implementing post-grant review and covered business method review in the Federal Register, in our view the “grounds available for post-grant review include 35 U.S.C. 101 and 112, with the exception of compliance with the best mode requirement.” 77 Fed. Reg. 48,680, 48,684 (Aug. 14, 2012). This interpretation is consistent with both the relevant case law and the legislative history.
Both the Supreme Court and the Federal Circuit have concluded that § 101 is a condition for patentability. In Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 12 (1966), the Supreme Court stated that the 1952 Patent Act “sets out the conditions of patentability in three sections,” citing 35 U.S.C. §§ 101, 102, and 103. The Supreme Court has also addressed invalidity under § 101 when it was raised as a defense to an infringement claim under § 282. See Mayo Collab. Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1305 (2012).
If that were not clear enough, the Federal Circuit expressly rejected the argument – raised by the dissenting judge in the case – that § 101 is not a “condition for patentability” under § 282, stating that “the defenses provided in the statute, § 282, include not only the conditions of patentability in §§ 102 and 103, but also those in § 101.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1330 n.3 (Fed. Cir. 2012) (internal quotation marks omitted) (citing Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 543 F.3d 657, 661 (Fed. Cir. 2008)).
The Federal Circuit in Dealertrack also made clear that the use of the term “Conditions for patentability” in the titles of §§ 102 and 103, but not § 101, did not change the result, relying on the Supreme Court’s pronouncement in Pennsylvania Department of Corrections v. Yeskey, 524 U.S. 206, 212 (1998) (quoting Trainmen v. Baltimore & Ohio R.R. Co., 331 U.S. 519, 528-529 (1947)), that a statute’s title “is of use only when it sheds light on some ambiguous word or phrase” in the statute and that it “cannot limit the plain meaning of the text.” Id. (quoting Trainmen v. Baltimore & Ohio R.R. Co., 331 U.S. 519, 528-529 (1947)).
The legislative history of the AIA also makes clear that Congress intended the PTAB to consider challenges brought under § 101 in post-grant reviews. For example, a key House Committee Report states that “the post-grant review proceeding permits a challenge on any ground related to invalidity under section 282.” H.R. Rep. No.112-98, at 47 (2011). On the Senate side, Senator Kyl also included “section 101 invention issues” among those “that can be raised in post-grant review.” 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011).
So, the courts and Congress have indicated quite clearly, in our view, that the PTAB should consider patentability challenges brought under § 101 in post-grant and covered business method reviews. Unless the courts or Congress tell us otherwise, we will do so.
Posted at 04:44PM Sep 24, 2012 in patents | Comments[1]
China’s SAIC Minister Zhou Visits USPTO
On Sept 10, 2012 the USPTO was privileged to host Minister Zhou Bohua and his senior delegation from the State Administration for Industry and Commerce of China (SAIC) of the People’s Republic of China. Minister Zhou, visited us for about four hours, as part of a stopover en route to a meeting in Brazil. This was likely the first time that a Minister from SAIC has visited USPTO.
SAIC remains one of China’s largest ministries, with 364,199 civil servants (according to their 2011 annual report). SAIC houses the CTMO, or Chinese Trademark Office, the Trademark Review and Appeals Board (TRAB), as well as other IP-related agencies. It implements and enforces laws regarding company and enterprise names and business licenses, trade secret, consumer protection, market regulation, and antitrust law. Unlike agencies such as China’s State Intellectual Property Office (SIPO) which has offices in provinces and major cities, SAIC has offices in local governments that reach down to Chinese municipal, county and even sub-county/township level. It is China’s largest IP-related agency in terms of overall employees and penetration into localities.
In the past several years USPTO has worked on several areas of common concern with SAIC, including: training of examiners and translation of our Trademark Manual of Examining Procedure (TMEP) into Chinese; training on three dimensional and sound trademarks; exchanging information on protection of geographical indications; discussion of measures to deal with abusive trademark registrations; discussions on trademark dilution and well-known marks; training in on-line counterfeiting and IP infringement; and encouraging SAIC to develop an on-line trademark database including an English language search interface. Many of these developments took place in the context of the memorandum of understanding (MOU) we signed with SAIC in 2008, and with the assistance of our IP Attaches. Minister Zhou observed that many of these exchanges have helped in not only promoting better understanding of our IP systems, but also in assisting market reforms in China and providing more global opportunities for new businesses.
Minister Zhou toured USPTO headquarters, met on a government to government basis with USPTO and colleagues from Office of the United States Trade Representative (USTR), United States Department of Justice (USDOJ) and Federal Trade Commission (FTC), and later met with representatives from organizations such as the U.S. Chamber, International Trademark Association (INTA), American Intellectual Property Law Association (AIPLA), Licensing Executives Society (LES) and the US-China Business Council. He was extremely candid and helpful in responding in a constructive and informed manner to all the questions we raised, including several pages of questions from industry.
We learned of several important new developments and areas of concern. One key area is improvements in trademark pendency. Although SAIC has succeeded over the past three years in eliminating the huge backlog at the CTMO and TRAB, the rapid escalation in trademark filings may present real challenges in continuing to maintain past improvements. The current goal of the CTMO is “the year you apply for a trademark, is the year you will be granted one.”
Minister Zhou hoped that the revisions to the trademark law, which are now pending at the State Council Legislative Affairs Office (SCLAO) will help in sustaining quality and growth. He noted in particular that the revisions will help with appropriate use and prosecution of trademarks, and he hopes that passage by the NPC may occur as early as next year. He also expected that there would be greater deterrence from the administrative trademark system with higher fines available under the revised law. He also separately noted that new guidelines on referrals of administrative trademark cases to criminal prosecution are being prepared jointly with other IPR and law enforcement agencies. This “referral rate” is often used to measure the deterrence of the administrative system and has traditionally been quite low. Last year the rate of referral from administrative enforcement to criminal prosecution was only 0.61%.
China has also become a member of the “TM 5” in Trademarks, much as it has been a member in patents, and Minister Zhou indicated an interest in participating in an ID List Project of the TM 5, which could help in insuring harmonization of sub-classifications of goods and services.
Trade secret matters have been a hot topic of discussion between the U.S. and China, with several high profile cases that have brought considerable media attention. Our focus with Minister Zhou was on two key areas of his responsibility: administrative enforcement of trade secrets and revisions to the rather old law governing trade secrets, the Anti Unfair Competition Law (AUCL) (1993). Minister Zhou was candid in acknowledging that theft of trade secrets affects Chinese and foreign companies alike and due to restrictions on evidence gathering and other compulsory measures by administrative agencies, SAIC’s administrative enforcement cases to date have been relatively modest matters brought mostly against small companies or individuals. Under current Chinese law, he believed that the courts and police are better equipped to handle complex trade secret theft cases.
SAIC has been discussing means to improve the Anti Unfair Competition Law with the SCLAO. On our suggestion, Minister Zhou said he would look into recommending that the AUCL be amended to clarify that preliminary injunctions, evidence and asset preservation measures would be available in the new law, as they are already provided for in the trademark, copyright and patent laws. Minister Zhou quickly recognized that immediate provisional relief is critical in trade secret matters in order to prevent further loss to rights holders. He also welcomed further exchanges on trade secret matters, which we plan to follow-up on.
SAIC also discussed the fifth draft of its guidelines on handling of IPR in antitrust matters. We urged that these guidelines will be available for public comment. On the substance, Minister Zhou did state that SAIC did not view intellectual property and antitrust law as contradictory concepts; both laws have a goal of promoting market efficiency and innovation. Minister Zhou advised that SAIC would only investigate licensing transactions that hurt competition, and that his agency has not yet had one case in this area since the law’s passage (2008), although it had prosecuted 16 antimonopoly enforcement cases. Minister Zhou welcomed the USPTO’s participation in this area, and noted that he was working closely with our colleagues from USDOJ and FTC on the IPR guidelines.
Industry also raised a question concerning SAIC’s role in enforcing trademark rights when the local trademark owner asserts the rights against a foreign trademark owner who has commissioned the manufacture of products in China, as was the case in the recent Proview/iPad dispute. Minister Zhou said the iPad issue was raised by many local AIC’s after the initial trial court decision in Shenzhen that was adverse to Apple. His Ministry’s position was not to take any administrative enforcement action until a final decision from the Guangdong High Court on appeal. One of the key reasons for this was that any action could adversely affect Apple and the iPad trademark at a time when matters had not been settled.
The volume and variety of work handled by SAIC is indeed staggering, and Americans have important interests in these developments. SAIC has been the largest trademark office in the world for the last 10 years based on their data of trademark applications. We were told that there are 206,000 registered American-owned trademarks in China, and 120,000 new foreign trademarks are filed each year in China. With approximately 1,500,000 trademark applications expected this year, and with 68,836 reported administrative trademark enforcement actions last year, engagement on trademark office related matters has been especially important for Americans. Of particular note, there were 17,022 administrative trademark enforcement actions taken by SAIC on behalf of foreigners in 2011, which was nearly 14 times the number of all foreign-related civil litigation involving all types of IP rights that were disposed of by the China courts in 2011 (1,321).
We highly valued this exchange with Minister Zhou and his delegation, and we hope we can have more exchanges with SAIC in the future.
(This blog was jointly written by Director Kappos and Mark Cohen, Senior Advisor to Director Kappos on China matters.)
Posted at 02:53PM Sep 18, 2012 in ip | Comments[0]
PTAB Submissions Have Commenced
I thought I'd write to observe the occasion of the first submissions to our new Patent Trial and Appeal Board (PTAB) through their new IT system called Patent Review Processing System (PRPS).
We've had a team of PTAB judges and IT folks working together for several months to prepare IT systems and associated processes so that, from the start, the big new post-grant processes (post-grant opposition, inter partes review, covered business method review) could be submitted and managed electronically using a modern workflow system—PRPS.
The start date for these new submissions was this last Sunday, September 16. In view of the weekend timing—commencement of the new procedures at midnight Saturday/Sunday morning—it would have been business-like for the team to declare that the brand new IT systems would be brought online Monday morning at start of normal business. Anyone wanting to make a submission between midnight Saturday/Sunday and Monday business could do it using the old mail submission approach. But of their own accord the team chose the harder, best way. As you may have learned in Chief Judge James Smith’s guest blog a few days ago, they declared they would bring PRPS up at midnight in the middle of a nice early fall weekend, and accept whatever requests might come in via our spiffy new software from the beginning.
This decision of course necessitated advance planning and staffing to make a significant version 1 IT deployment over a weekend, going live at midnight. So the team worked through last week, then brought staff into the office Saturday evening to prepare for the big bring-up. Frankly we did not even know if any users were going to spend their Saturday night filing new post-grant challenges. But we were ready.
As of midnight on Sunday September 16, just as the new PTAB went into effect per AIA, the team switched online PRPS for intake of post-grant challenges. It worked, and sure enough, users accessed the system immediately to do business. Within minutes numerous users were working with the new software, and soon our first submissions began coming into the Office. In those first 24 hours, we had five inter partes and five covered business method submissions in the system, and all continues to function well. Not without a few glitches to be sure (there always are some glitches in a new system), but it is functioning well overall.
So there you have it. A new, ambitious IT system up and running and USPTO employees electing to work an entire weekend evening and overnight to ensure maximum uptake for the newly effective provisions of the AIA.
I don't often crow externally about the dedication and professionalism of our folks at the USPTO—mostly I think it is for our users to say if we are doing a good job. But in this case I will declare I am enormously proud that our team has reached higher than anyone asked them to, or even had the right to ask them to. And they have made a big success of a big project in a short period of time.
Thanks team for a job superbly done on the PRPS V1 deployment and bring-up of USPTO's new post-grant IT system!
Posted at 12:12PM Sep 18, 2012 in America Invents Act | Comments[0]
Announcing the Patent Trial and Appeal Board (PTAB)
Guest Blog by Chief Judge James D. Smith, Board of Patent Appeals and Interferences
September 16, 2012 marks a momentous occasion for the Board of Patent Appeals and Interferences. On that day, we become the Patent Trial and Appeal Board (PTAB). In keeping with that change, the Board will open for business to accept petitions for some of the new America Invents Act (AIA) post grant proceedings using the Patent Review Processing System (PRPS), our new, web-based e-filing tool. We are extremely excited to take part in this historic transition.
To commemorate the transition to the new Patent Trial and Appeal Board and as a demonstration of our desire to serve, the Board will be staffed during the entire 24-hour period of that first day. From early Sunday morning at 12:01 a.m., until late Sunday evening at 12:00 p.m., Board personnel will be available to assist the public with filing new cases. After opening day, Board personnel will be available during normal business hours, 8:30 a.m. to 5:00 p.m. Questions may be submitted by phoning 571-272-PTAB (7822) or by emailing Trials@uspto.gov. Feedback on the PRPS system is also welcome, and we have established a separate email box for receiving such feedback at PRPS-Suggestions@uspto.gov.
As Chief of the Board, I am extremely happy of the many accomplishments made by the Board team toward meeting our AIA responsibilities. Many team members have worked tirelessly, preparing for the big day – September 16th, 2012. I would like to thank all those people involved, both internally and externally, for making September 16th a reality.
Posted at 01:58PM Sep 14, 2012 in America Invents Act | Comments[0]
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.gov 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 |
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 |
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 |
