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Wealth of Ideas
European Patent Office Filings Reach New Peak
In 2013, the European Patent Office (EPO) received over 265,000 patent applications. That represents an increase of 2.8 percent over 2012, when the EPO received 257,000 applications. 2013 was the fourth year in a row that the number of EPO patent applications grew.
The EPO also granted and published a slightly higher number of patents last year: 66,700, which was 1.7 percent more than the 65,600 granted and published the previous year.
The increase in filings comes despite new rule changes in the EPO patent application procedure.
"The figures are up and demand for patents in Europe is clearly on the rise," said EPO President Benoît Battistelli of the increase in patent filings.
Patent Office Named #1 Best Place to Work in Federal Government
Out of 300 federal agency subcomponents ranked in the "Best Places to Work in the Federal Government" rankings for 2013, the U.S. Patent and Trademark Office took the #1 spot. Since 2009, the USPTO has risen in these rankings, and placed at #5 in last year's list. The annual list is compiled by the non-profit Partnership for Public Service (PPS).
The USPTO's top ranking is due to a combination of morale-boosting factors, such as the agency's highly successful telework program, its team-based approach to projects, and its increased opportunities for leadership and technical training.
“This is a tremendous tribute to the tireless dedication of our hardworking employees, unions, and agency leaders,” said Commissioner for Patents Margaret A. (Peggy) Focarino. “Our employees have faced significant challenges, including the impact of budget sequestration despite being a fully fee-funded agency, and the completion of our implementation of the Leahy-Smith America Invents Act, the most sweeping overhaul of our nation’s patent system in generations. Yet despite those challenges we maintained our upward momentum in being recognized by our employees as a Best Place to Work in the federal government.”
Michelle Lee Named as Next Deputy Director of USPTO
In December, U.S. Secretary of Commerce Penny Pritzker announced that Michelle K. Lee has been named the next Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the U.S. Patent and Trademark Office. Lee took office on January 13, 2014.
Prior to this appointment, Lee served as the Director of the Silicon Valley satellite office of the USPTO. In that capacity she oversaw the establishment of a temporary USPTO satellite office in Meno Park, and worked with California politicians at the Congressional, state and local level to secure a permanent location for the office in San Jose.
As USPTO Deputy Director, Lee will perform the functions and duties of the USPTO Director, a position that has been vacant since the departure of David Kappos last year. In accordance with statutory law, Lee will assume the title of “Acting Director” once President Obama nominates a Director.
New Patent and Trademark Resource Center Opens in Kentucky
The United States Patent and Trademark Office held a grand opening celebration on December 5 to mark the opening of a new Patent and Trademark Resource Center (PTRC) in Highland Heights, Kentucky at the W. Frank Steely Library of Northern Kentucky University.
PTRCs are located across the country and provide patent office resources for anyone who isn't able to travel to the USPTO headquarters in Alexandria, Virginia. PTRCs serve inventors, IP attorneys, researchers, entrepreneurs, students, historians and the general public.
Some of the many free services PTRCs provide include training on using USPTO databases, using the USPTO website, and accessing and using patent and trademark documents. PTRCs also host public seminars on IP topics.
There are now 84 PTRCs housed in libraries located in 46 states, the District of Columbia and Puerto Rico. A current list of all PTRC libraries can be found on the USPTO's website at www.uspto.gov/ptrc.
USPTO Selects San Jose City Hall as Location of Silicon Valley Satellite Office
November 19, 2013 - The U.S. Patent and Trademark Office announced that the San Jose City Hall building at 200 East Santa Clara Street will be the permanent location of the Silicon Valley satellite office of the USPTO.
This past July, the search for a permanent office space for this satellite office was suspended due to sequestration budget cuts. Support and assistance from the City of San Jose, along with support for the satellite office from members of California's congressional delegation and others, will allow the Silicon Valley satellite office to be established in its permanent space by the end of 2014.
The permanent West Coast satellite office of the USPTO will offer training about USPTO services and allow inventors and entrepreneurs in the area to meet with patent examiners, access the USPTO's comprehensive search databases, and clarify application questions early in the patenting process. The USPTO hopes that the result will be a more efficient process for moving new Silicon Valley-developed products and technology to the marketplace.
The USPTO had been operating a temporary satellite office in Menlo Park since April 2013.
“The USPTO never faltered in its commitment to opening a permanent Silicon Valley satellite office, despite the setback caused by sequestration,” said Deputy Under Secretary of Commerce for Intellectual Property and USPTO Deputy Director Teresa Stanek Rea. “A permanent [Silicon Valley] office will allow us to attract additional intellectual property professionals who will work closely with regional entrepreneurs to process patent applications, reduce the backlog of unexamined patents, and speed up the overall process—creating good jobs and promoting American innovation.”
UPSTO Forms Advisory Council to Oversee Pro Bono Programs
November 13, 2013 - The U.S. Patent and Trademark Office (USPTO) met with over 30 representatives from regional inventor assistance programs, IP law associations and law school IP programs to participate in a ceremonial signing of the charter for a new advisory council formed to oversee pro bono programs for inventors.
Per Section 32 of the Leahy-Smith America Invents Act (AIA), the USPTO is required to “work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.” The council will help promote the pro bono programs currently in place and assist in the creation of new ones.
The first of these programs was launched in June 2011 in Minnesota, and there are now seven regional pro bono programs covering more than 20 states. The USPTO hopes to have such regional pro bono programs in place for all 50 states by 2015.
For more information on the pro bono program and a list of the states now accepting clients, click here.
U.S. Patent Office Seeks Comments on 2014-2018 Strategic Plan
October 23, 2013 - The U.S. Patent and Trademark Office issued its draft strategic plan on October 17 for fiscal years 2014-2018. Because the USPTO worked with members of the IP community across the country to implement provisions of the America Invents Act (AIA), the agency wants to continue that kind of private-public partnership and has thus requested comments from the public as it plans for the next four fiscal years.
The USPTO's goals, as set forth in the draft plan, include: Optimizing patent quality and timeliness; optimizing trademark quality and timeliness; and providing global and domestic leadership to improve intellectual property (IP) policy, protection, and enforcement worldwide.
Some of the ways the USPTO proposes to accomplish those goals are through increasing efficiencies and examination capacity, refining long-term pendency goals, improving IT service delivery to patent office employees and stakeholders by stabilizing legacy IT systems (a longtime concern as the agency's IT equipment ages), improving patent quality through "refining the measurement of quality data, and maximizing its usage" and more.
The draft of the Strategic Plan for FY 2014-2018 can be viewed on the USPTO website. Comments will be accepted by email at firstname.lastname@example.org by November 25, 2013. (Although comments may be submitted by postal mail, the USPTO prefers submission by email to the above address.)
The comments will be available for public inspection on the USPTO website at www.uspto.gov.
Teresa Stanek Rea Steps Down as Acting Director of the USPTO
September 16, 2013 - Teresa Stanek Rea, the interim head of the U.S. Patent Office who earlier this year was said to be the frontrunner to be named to the post permanently, has tendered her resignation. Rea became the Acting Director of the USPTO in January, when Director David Kappos resigned to return to private practice.
Beginning with Kappos' tenure and continuing under Rea's watch, the Patent Office was able to hire more patent examiners and dramatically reduce the patent application backlog: The number of unexamined patent applications in August of this year was 591,665, down from almost 722,000 in December 2011.
The number of patent examiners on staff at the USPTO rose from 6,420 in December 2011 to 7,778 in March 2013.
Rea did not specify when her departure will occur or what her future plans are.
Patent Office to Reexamine Two of Apple's iPhone Design Patents
August 21, 2013 - The U.S. Patent and Trademark Office granted a request, filed by an anonymous party (which is probably Samsung), to reexamine two of Apple's design patents on the iPhone. Last year both of the patents, which cover the iPhone's appearance, were found to be infringed by Samsung products.
However, the patents may end up being found obvious because of three Japanese patents that were not taken into consideration when Apple's patents issued.
The two patents are the subject of two different patent cases - one before the International Trade Commission and the other from the high-profile case in a California District Court.
Patent Office Rejects Verizon's "Video on Demand" Gifting Patent
August 16, 2013 - Verizon, seeking a way to allow FiOS TV subscribers to give others the gift of on-demand movies, filed a patent on "video on demand" (VOD) gifting. However, the USPTO rejected the patent application and sent Verizon a "final rejection" notice in July.
However, the USPTO is apparently still considering an Apple patent application for "Media Gifting Devices and Methods." The Patent Office published the Apple patent application in question earlier this month, and the invention apparently relates to a way for iTunes customers to send gift certificates for digital content using near-field communications (NFC) technology.
17 Members of Congress Urge House Committee to Exclude Patent Office Fees from Sequester
July 5, 2013 - Seventeen members of Congress - led by three Democrats from the Silicon Valley area - wrote a letter to Representatives Frank Wolf (R-VA) and Chaka Fattah (D-PA), who are the Chairman and the Ranking Member (respectively) of the Subcommittee on Commerce, Justice, Science of the House Appropriations Committee.
The three most prominent signers of the letter are all Democrats: Congressman Mike Honda (D-San Jose), Congresswoman Zoe Lofgren (D-San Jose) and Congresswoman Anna G. Eshoo (D-Palo Alto). Their letter makes it clear why the Patent Office should be excluded from the sequester:
"USPTO funding is fundamentally different than other government spending," they write, "and does not contribute to the budget deficit. USPTO is funded entirely by fees paid to the agency by those seeking patents. Congress explicitly intended for those fees to be used solely to carry out USPTO's operations - not the government at large."
The authors of the letter further warn that the "sequestration of USPTO's user fee funds will weaken American competitiveness in the global economy, exacerbate the current backlog of patent applications, and delay the opening of vital new satellite offices."
That last item has already become a reality, as the planned Silicon Valley satellite office of the USPTO has been indefinitely delayed. The signers of the letter warn that reducing the Patent Office's ability to process patent applications in a timely manner may cause a further decline in fee revenue.
The 17 Congress members who signed the letter urge that the $150 million of USPTO revenue that has been sequestered be made available to the USPTO in the FY2014 Commerce, Justice, Science, and Related Agencies Appropriations bill.
Global Patent Filings on the Rise - and the U.S. Tops the List
June 11, 2013 - In a brighter piece of patent news, total global patent filings rose 6.6 percent in 2012, and the United States maintained its lead with the most filings.
The figures come from the World Intellectual Property Organization (WIPO), which oversees the Patent Cooperation Treaty (PCT) global patent filings. PCT applications allow inventors to file only one application for patent protection in all the WIPO nations.
194,400 PCT applications were filed in 2012, of which 51,207 came from U.S. inventors. Japan was in second place with 43,660 filings, Germany was in third place with 18,855 filings, China came in a very close fourth, and South Korea rounded out the top five.
Permanent USPTO Satellite Office in Silicon Valley Put on Hold Due to Budget Cuts
June 7, 2013 - Prospective landlords for the permanent Silicon Valley satellite office of the U.S. Patent and Trademark Office had expected a decision on the location of the new patent office to come sometime in July, with the office opening around April 2014. But according to an article that appeared in the Silicon Valley Business Journal and was reported by CBS News, plans for establishing the satellite office have been put on hold indefinitely due to sequester-related budget cuts.
The USPTO opened a temporary 4,700 square foot satellite office in Menlo Park in March. The anticipated satellite office would have been many times larger, from 35,000-40,000 square feet.
Since March 1, when the sequester took effect, 5 percent of the patent office's fee revenue - or about $148 million - has been diverted to the federal government's general fund.
USPTO Acting Head Likely to Be Made Permanent Director
May 17, 2013 - Reuters reports that Teresa Stanek Rea, the former Deputy Director of the U.S. Patent and Trademark Office who became the Acting Director following David Kappos's departure earlier this year, is likely to be nominated for the position permanently.
President Barack Obama has nominated several new cabinet members in the past few weeks, leading to speculation that the USPTO Director spot will be filled soon.
Patent Office Faces Budget Crunch Due to Sequester, Lower than Expected Fee Collection
May 3, 2013 - Like all government agencies, the USPTO faced a budget cut when the sequester took effect on March 1 of this year. The Patent Office's budget was cut by $176 million in April, and Acting Director Teresa Stanek Rea says that fee collection this year was already "substantially below" what the office had projected at the beginning of the fiscal year.
The budget cuts and diversion of Patent Office revenues into the general fund or to other agencies under the terms of the sequester have angered many in the IP community.
"Sequestration of user fees paid by IPO members and others to obtain USPTO services is terrible public policy," said Herbet Wamsley, executive director of the Intellectual Property Owners Association.
Unlike most federal government agencies, the USPTO is supposed to operate independently, funded by the fees it collects from patent applicants and patent owners. The Patent Office has said that it needs any and all excess fees to work down the patent application backlog and improve its outdated infrastructure.
For those reasons, the IP community has long supported the USPTO in its attempts to keep all the fees it collects for its own use.
Patent attorneys warn that the budget cuts will lead to poor patent quality and affect the USPTO's ability to function.
USPTO Facing "Immediate and Significant" Budget Cuts Due to Sequester
April 19, 2013 - The Patent Office will have to make do with even less because of the congressionally mandated budget cuts known as the sequester. Acting USPTO Director Teresa Stanek Rea told employees in an email that the Patent Office faces "substantial budgetary uncertainty" and that "immediate and significant" spending reductions would be necessary.
That's bad news for the USPTO, which already has to deal with fee income that's lower than the projected levels. However, President Obama's proposed 2014 budget, if passed by Congress, would allow the USPTO access to all the fees it collects.
Obama's Proposed Budget for FY2014 Would Give Patent Office Control Over Its Fees
April 11, 2013 - If Congress approves President Obama's proposed budget for fiscal year 2014, the U.S. Patent and Trademark Office will be authorized to spend up to $3.071 billion and will be allowed to use all the fees it collects in 2014.
The Patent Office has been lobbying for years for access to its user fees. According to the Intellectual Property Owners Association, the budget states that the USPTO will continue its "aggressive" efforts to reduce patent pendency.
Those efforts have been fruitful thus far: According to information posted on the USPTO website regarding the America Invents Act (AIA) implementation (see slide 6 of the presentation), the USPTO is on track to reduce total pendency by more than eleven months during the period of FY 2013 to FY 2017.
Patent Office Issues Rules to Eliminate Patent Review "Dead Zone"
April 5, 2013 - The America Invents Act created two procedures for challenging an issued patent - post grant review (PGR), which can be requested within the first nine months after a patent issues; and inter partes review (IPR), which could only be requested after that initial nine-month period was over.
However, PGR only applies to patents for which the applications were filed on or after March 16, 2013 - the date on which the "first inventor to file" provision became law. That meant that many patents would not be subject to PGR, since the applications for those patents were filed prior to March 16.
To solve the problem of the "dead zone" this situation created for the review of those patents, the USPTO published final rule changes to "Implement the Technical Corrections to the Leahy-Smith America Invents Act as to Inter Partes Review."
To read the Final Rule changes as published in the Federal Register, click here.
Patent Office Will Host Roundtables on Requests for Continued Examinations
February 22, 2013 - Together with the Patent Public Advisory Committee (PPAC), the U.S. Patent and Trademark Office will host a series of roundtables that will be open to the public. The focus of these roundtables will be on how the USPTO can reduce the number of filings for Requests for Continued Examination (RCE).
Reducing the number of RCEs filed would help the USPTO further reduce patent application pendency, which remains one of the USPTO's core objectives. From 2009 to the present, the agency has managed to reduce the patent application backlog from 750,000 to 600,000. The USPTO has also reduced the average amount of time it takes to get a patent from 27 months to just over 20 months.
More information on this roundtable series, along with dates and locations, can be found on the RCE Outreach website.
Final Rules and Guidelines for First-to-File Published by USPTO
February 18, 2013 - The United States Patent and Trademark Office (USPTO) has published its final rules of practice regarding the switch to a first-to-file patent system. This provision will become effective on March 16, 2013.
To help the IP community prepare for the transition, the USPTO will hold a public forum on Friday, March 8 in the Madison Auditorium on the USPTO campus. The forum will also be available as a webcast, and details about how to view the webcast will be made available on the AIA micro-site.
Patent Office Fees to Increase for Larger Companies
February 14, 2013 - On March 19, 2013, patent fees will increase in order to provide the USPTO with enough revenue to cover its operating costs, upgrade the agency's outdated technology infrastructure, and continue the work of reducing the patent application backlog.
The minimum total fees for filing a patent application will increase by $340 for a large entity, but micro entities will be able to pay patent application fees 75 percent below the large entity fee level. And small entities will enjoy a 50 percent reduction of the large entity patent application filing fee.
New "Patent Term Calculator" Available for Download
February 4, 2013 - The USPTO announced the launch of its Patent Term Calculator tool, which can be downloaded here. This calculator "enables members of the public to estimate the expiration date of a utility, plant, or design patent."
The USPTO cautions that a patent's expiration date depends on a number of factors, and that the calculator only provides a "best estimate." For more accurate information about a particular patent's expiration date, consult a patent attorney.
USPTO Opens Resource Center on Long Island
January 10, 2013 - As part of its continuing effort to make patent and trademark information and services more accessible to the public, the U.S. Patent and Trademark Office has opened a Patent and Trademark Resource Center (PTRC) on Long Island in Smithtown, New York.
There are now over 80 PTRC-designated libraries throughout 46 states, the District of Columbia and Puerto Rico. The Long Island PTRC is located in the Smithtown Library and offers free electronic IP services. It also employs librarians trained by the Patent Office to help customers learn to use the patent and trademark databases, and to offer public seminars on IP topics.
“Patent and Trademark Resource Centers (PTRC) are the face of the USPTO on a local level,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The PTRC-designated libraries promote innovation and entrepreneurship and help ensure that members of the public interested in getting a patent have access to the resources they need.”
USPTO Seeks Nominations for National Medal of Technology and Innovation
January 4, 2013 - The U.S. Patent and Trademark Office announced today that it is accepting nominations for the National Medal of Technology and Innovation - America's highest award for technological achievement.
Each year, the award is presented by the President of the United States to individuals, teams, companies or divisions of companies in recognition of their "outstanding contributions to America’s economic, environmental and social well-being." According to the USPTO, the medal is also intended to inspire young Americans to prepare for and pursue careers in technology so that the U.S. can continue to be a leader in global technology and economic leadership.
To submit a nomination or to learn more about the requirements for submitting a nomination for the National Medal of Technology and Innovation, click here. All completed nominations must be submitted to the USPTO by April 1, 2013 at 5:00 PM ET.
USPTO Issues Request for Comments on Creation of a Patent Small Claims Court
December 18, 2012 − The U.S. Patent and Trademark Office is seeking comments from the IP community on whether there is a desire or need for the development of a small claims court for patent disputes.
Patent litigation is at an all-time high, and the America Invents Act failed to reduce it. In fact, the number of patent cases has risen dramatically since the AIA became law, as we demonstrate in this month's Wealth of Ideas feature article. A small claims court for patent cases might be helpful in reducing the time and expense involved in patent enforcement.
According to the USPTO, what is needed is "information about core characteristics of a patent small claims proceeding including characteristics such as subject matter jurisdiction, venue, case management, appellate review, available remedies, and conformity with the U.S. constitutional framework (e.g. 7th Amendment)."
Written comments must be received before March 18, 2013, and can be emailed to email@example.com (with "Patent Small Claims" in the subject line) or mailed to Mail Stop OPEA, P.O. Box 1450, Alexandria, VA 22313-1450, ATTN: Elizabeth Shaw.
More information and the full text of the request are available here.
Patent Office Chooses Site for Dallas-Fort Worth Satellite Office
December 3, 2012 - Last July, the U.S. Patent and Trademark Office announced plans to open new satellite offices in the Dallas, Denver and Silicon Valley areas. On November 29, the USPTO announced that the Dallas-Fort Worth office will be located in the Terminal Annex Federal Building in Dallas.
The Dallas satellite office will be modeled after the first USPTO satellite office, which is located in Detroit and is on track to employ over 100 patent examiners and 20 administrative patent judges by the end of its first full year of operation.
“The Dallas-Fort Worth area is exceedingly rich in engineering talent, patent applicants, and patent grants, and boasts an above average population of potential Veteran employees," said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. "This office location positions us well to serve the broad innovation community throughout the Central time zone and the South.”
The site was chosen, in part, because it is convenient to public transportation. The Dallas satellite office will help entrepreneurs and inventors in the region with services such as offering meetings with patent examiners and assistance in accessing the USPTO's search databases.
First Annual IP5 Statistics Report to Be Issued by World's Five Largest Patent Offices
November 20, 2012 - The five patent offices that handle about 80 percent of the world's patent applications between them announced the upcoming release of the IP5 Statistics Report for 2011. The IP5 coalition includes the U.S. Patent and Trademark Office (USPTO), the European Patent Office (EPO), the Japanese Patent Office (JPO), the Korean Intellectual Property Office (KIPO) and the State Intellectual Property Office of the People's Republic of China (SIPO).
The report will compare procedures and operations used at the five offices. Though some combination of the offices has been producing such reports since 1983, this is the first year all five have been involved in producing a statistics report. The purpose of the report, and the IP5's other collaborations, is to create a global standard for patent office procedures and information sharing.
“As we continue to move forward with our global partners toward implementing an optimal 21st Century harmonized patent system, the IP5 statistics report will provide valuable insight into our operations and procedures,” said David Kappos, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO.
For more information about the 2011 IP5 Statistics Report and the IP5's other projects, visit the IP5 website.
Patent Office Extends Pro Bono Patent Assistance to Inventors in California, DC
November 5, 2012 - Getting a patent is expensive, and obtaining a strong, high quality patent is even more pricy - meaning that larger corporations often have an automatic advantage over small businesses and independent inventors. To help smaller entities obtain patent protection, the U.S. Patent and Trademark Office announced that it will open two regional pro bono patent assistance programs in cooperation with area attorney groups. The programs will operate in California and the District of Columbia, and will provide legal assistance to individuals and businesses that otherwise would have difficulty affording patent protection.
California Lawyers for the Arts will operate the California program, and the Federal Circuit Bar Association (FCBA) will run the D.C. program. The USPTO will "offer insight, guidance, and training assistance to help lawyers provide the best possible IP legal advice to their clients," according to the USPTO's press release.
The regional attorney groups will screen requests from interested individuals and businesses, determine applicants' eligibility and forward their information to regional pro bono law organizations which will match applicants with suitable attorneys.
According to the Patent Office, it has helped create four pro bono programs nationwide and will partner with other IP law groups to help start another 10 pro bono programs by the end of 2013.
If you're an inventor or business owner interested in applying for pro bono patent help, or if you're a patent attorney interested in volunteering for a pro bono patent program, see the FCBA's pro bono patent assistance website.
USPTO Announces Groundbreaking Partnership with Cornell University
October 15, 2012 - The U.S. Patent and Trademark Office announced that it has made an agreement with Cornell University to install a permanent staff member of the U.S. Commerce Department at Cornell's New York City Tech Campus (Cornell NYC Tech).
The USPTO employee stationed at Cornell NYC Tech will be known as an Innovation and Outreach Coordinator for the greater New York region, and will help connect students and faculty with government grants, academic partners, early-stage investors and other resources. The agreement between the USPTO and Cornell is the first partnership between the Patent Office and a major research institution.
“By bringing the full suite of our innovation-enabling resources to bear on this campus, we’re not just able to meet the research, development, and commercialization needs of regional enterprises in real time—we’ll also be able to test new ways to move ideas from the lab to the marketplace,” said David Kappos, Director of the USPTO. “This collaboration allows us to optimize intellectual property for the 21st century and further empowers universities to fuel our nation’s innovation ecosystem.”
Cornell, which is partnered with the Technion-Israel Institute of Technology, was the university chosen by Mayor Michael Bloomberg in 2011 to build an applied science and engineering campus in New York City. The future home of the NYC Tech campus is being built on a 12-acre site on Roosevelt Island in Manhattan and is scheduled to open in 2017 and to be completed by 2037.
USPTO Forms Three New Patent Prosecution Highway Partnerships with Foreign Patent Offices
October 4, 2012 - The U.S. Patent and Trademark Office launched a Patent Prosecution Highway (PPH) partnership with the Czech Republic's patent office on October 1, and announced two future PPHs to be launched in January 2013 with the patent offices of Portugal and the Phillipines.
The Patent Prosecution Highway is designed to help inventors filing for patents on the same invention in multiple countries to obtain corresponding patents faster. Thus, if a certain claim is found to be patentable in one participating country, the applicant may request that the other patent office fast track the examination of corresponding claims in their application filed in that patent office.
“These new partnerships with the Czech, Philippines, and Portuguese offices are further evidence of the growing, global appeal of the PPH and the importance of work sharing to improving the international patent system,” said USPTO Director David Kappos, speaking from meetings of the World Intellectual Property Organization (WIPO) General Assembly in Geneva, Switzerland. “Patent offices cannot be bystanders—we must be driving forces for innovation, economic growth, and job creation, and I welcome our new partners in this effort.”
Patent Office Creating New Process for Derivation Proceedings
September 11, 2012 - As per the America Invents Act (AIA), the U.S. Patent and Trademark Office (USPTO) created a new proceeding to determine that the person applying for a patent is in fact the true inventor - a process referred to as a derivation proceeding. The USPTO published its final rule regarding the new derivation proceeding process on September 11 in the Federal Register.
The new rule will take effect on March 16, 2013, at the same time as the First-to-File provision and eighteen months after the AIA was enacted into law. Although the AIA will transform the U.S. patent system from a first-to-invent process to a first-to-file process, these derivation proceedings will make it possible for the true inventor to challenge the first applicant's right to patent the invention.
“This derivation proceeding will ensure that under a first-inventor-to-file system, the inventor is always the one who obtains the patent," said David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the USPTO. "We’re pleased to release this final rule to the public months in advance of its implementation, to allow stakeholders greater time to prepare.”
To learn more about the final rule regarding derivation proceedings, see this PDF.
Patent Office Releases Final Rules for Prior Art Submission under AIA
August 7, 2012 - On August 6, the U.S. Patent and Trademark Office published its final rule in conjunction with the provision of the America Invents Act (AIA) that expands the types of information a patent owner or third party can submit to a patent file as prior art. These new types of information include written statements the patent owner made in a federal court or Patent Office proceeding about patent claim scope. The new rule will also provide for how such patent owner statements may be considered in ex parte reexamination, inter partes review and post grant review.
“The citation of prior art and written statements provision of the America Invents Act ensures that any statements a patent owner makes about the scope of the patent claim will be known to the courts as well as to the Office,” said David Kappos, Director of the USPTO. “We’re pleased to have them posted in the Federal Register well before the effective date.”
This final rule also references the AIA provision revising the ex parte reexamination rules. That provision requires that a third party's request for ex parte reexamination contain a certification by the requester that the statutory estoppel provisions of inter partes review and post grant review do not bar the requester from filing a request for ex parte reexamination.
USPTO Publishes Final Rule for Statute of Limitations Provision for Office Disciplinary Actions Under AIA
July 31, 2012 - On July 30, per the America Invents Act, the Patent Office published its Final Rule changing the statute of limitations for bringing disciplinary actions against patent practitioners in the Office of Enrollment and Discipline (OED).
Under the existing patent law, disciplinary actions for violations of the USPTO Code of Professional Responsibility were subject to a five-year statute of limitations. Under the AIA, that period will change to ten years - allowing more time to discover and take action against misconduct, but staying within the limits of what attorneys and other patent practitioners can be expected to remember.
The full text of the OED Final Rule can be downloaded here (PDF file).
USPTO Publishes Proposed First-to-File Rules
July 30, 2012 - This month, the United States Patent and Trademark Office (USPTO) published its proposal for amending the patent system from first-to-invent to first-to-file. The first-to-file provision of the America Invents Act (AIA) takes effect March 16, 2013.
“The first-inventor-to-file provision of the America Invents Act, one of its hallmarks, brings greater transparency, objectivity, predictability, and simplicity in patentability determinations,” said USPTO Director David Kappos. “At the same time, the provision brings the United States closer in harmonizing our patent law with those in other countries around the globe.”
The change to a first-to-file system has been criticized for its potentially negative effects on individual inventors and small businesses. For information on the AIA and how to deal with its changes, download “What Innovators Need to Know – and Need to Do – under the America Invents Act,” a white paper developed by American Innovators for Patent Reform and sponsored by General Patent Corporation.
Four New Regional U.S. Patent Offices Planned
July 5, 2012 - The U.S. Commerce Department and the U.S. Patent and Trademark Office announced that in addition to the Detroit, Michigan satellite office opening this month, new regional patent offices are also planned in the areas of Dallas, Texas; Denver, Colorado; and Silicon Valley, California.
The satellite offices are intended to help businesses and inventors move products to market more quickly, reducing the backlog of patent applications and creating new jobs in the process.
“By expanding our operation outside of the Washington metropolitan area for the first time in our agency’s 200-plus year history, we are taking unprecedented steps to recruit a diverse range of talented technical experts, creating new opportunities across the American workforce,” said David Kappos, Director of the USPTO, in a press release.
Patent Office Publishes Proposed Rules for Implementing "Micro Entity" Status
June 3, 2012 - The America Invents Act contained a provision allowing micro entities to pay reduced patent fees. Recently, the U.S. Patent and Trademark Office proposed changes to its rules of practice that will establish the procedures for patent applicants to claim micro entity status and qualify for the reduced patent fees.
The changes will also outline how to notify the USPTO if the applicant loses micro entity status and needs to correct payments erroneously made at the micro entity level.
“The new micro entity provision in the America Invents Acts makes our patent system more accessible for smaller innovators by entitling them to a 75% discount on patent fees,” said David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, in a press release. “By paying discounted patent fees as micro entities, smaller innovators can access the patent system to move their ideas into the marketplace and accelerate U.S. economic growth.”
The proposed rules were published in the Federal Register.
USPTO Opens New Resource Center in Concord, New Hampshire
June 1, 2012 - In January, the Patent Office designated the University of New Hampshire School of Law Library as the Concord Patent and Trademark Resource Center (PTRC). Now, that PTRC is open to the public.
There are over 80 PTRC-designated libraries in 46 states, the District of Columbia and Puerto Rico. PTRCs support innovation on a local level by providing free electronic services and other resources to potential patent and trademark filers. The new Concord PTRC will offer assistance in using the USPTO's patent and trademark databases, as well as public seminars on IP topics.
“PTRCs serve as the face of the USPTO on a local level and promote a culture of innovation and entrepreneurship that ensures that potential filers have the resources necessary to draw on for support as they begin their quest for commercial success with their intellectual property,” said USPTO Director David Kappos. “We look forward to working with the University of New Hampshire School of Law, formerly Franklin Pierce Law Center, to better serve New Hampshire’s IP community.”
USPTO Announces Initiative to Expedite Patent Application Processing
May 17, 2012 - The United States Patent and Trademark Office (USPTO) announced that it will offer a new pilot program to help speed up patent prosecution and reduce pendency.
The Quick Path Information Disclosure Statement (QPIDS) pilot program will reduce the number of Requests for Continued Examination (RCEs) filed for consideration of an Information Disclosure Statement (IDS) after the issue fee has been paid. Under QPIDS, examiners will consider IDS submissions and determine whether the items of information there require prosecution to be reopened, or whether the application can return to issue. Fewer RCEs means fewer delays and expenses involved in bringing patents to issue - and inventions to the marketplace.
“The Quick Path IDS pilot is another example of USPTO’s commitment to eliminating delays and increasing efficiency for our stakeholders,” said David Kappos, Under Secretary of Commerce for Intellectual Property and USPTO Director.
To qualify for QPIDS, a patent application myst be an allowed utility or reissue application for which the issue fee has been paid, but the patent has not yet issued. For more information, see the USPTO's press release about the QPIDS pilot program.
European Union Patent Office Increases Fees
May 16, 2012 - As of April 1st of this year, the European Patent Office raised several of its fees - among them the fees for e-filing patents, patent renewal, patent search, patent examination.
Click here for a full schedule of the new fees.
USPTO Seeks Nominations for Patent, Trademark Advisory Committees
May 4, 2012 - The United States Patent and Trademark Office (USPTO) has requested nominations for its Patent Public Advisory Committee and Trademark Public Advisory Committee. The Patent Committee has three openings, and the Trademark committee has two. Each committee consists of nine members who each serve a three-year term.
The Public Advisory Committees were established in 1999 to review the USPTO's policies, budget, goals, performance and user fees, and to advise the agency's Director on those matters.
“Our Public Advisory Committees help us work in concert with our stakeholder community to launch transformative initiatives to improve the way Americans innovate,” said David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, in a press release. “Committee input is critical to our continuing efforts to support American innovation, create U.S. jobs and make U.S. businesses more competitive in the global economy.”
Nominations will be accepted until June 11, 2012 and must be either postmarked or emailed on or before that date. More information can be found in this Federal Register notice.
IP-Intensive Industries Boost U.S. Economy by $5 Trillion and 40 Million Jobs
April 23, 2012 - A report the U.S. Commerce Department developed jointly with the USPTO underlines just how vital intellectual property is to the U.S. economy.
The report, “Intellectual Property and the U.S. Economy: Industries in Focus,” identified 75 industries that make the most extensive use of patents, trademarks and copyrights. Manufacturers of computer and peripheral equipment, audio and video equipment manufacturers, newspaper and book publishers, pharmaceutical companies, makers of semiconductor and other electronic components, and medical equipment manufacturers were among the IP-rich fields the study examined.
These IP-intensive industries support at least 40 million jobs (or 27.7 of all American jobs) and contribute more than $5 trillion dollars to, or 34.8 percent of, U.S. gross domestic product (GDP). What's more, the merchandise exported by those industries accounted for 60.7 percent of total U.S. merchandise exports in 2010.
“Every job in some way, produces, supplies, consumes, or relies on innovation, creativity, and commercial distinctiveness,” said Under Secretary of Commerce for Intellectual Property and USPTO Director David Kappos in a press release. “America needs to continue investing in a high quality and appropriately balanced intellectual property system that will promote innovative, open, and competitive markets while helping to ensure that the U.S. private sector remains America’s innovation engine.”
Several IP Groups, Inventors Protest USPTO Fee Increases
April 11, 2012 - After the US Patent and Trademark Office posted information about its planned fee increases in early February, it requested comments from the public. That feedback is available on the USPTO website's "Public Comments for Fee Setting" page and includes criticism from some high-profile IP groups.
The American Intellectual Property Law Association (AIPLA), American Bar Association (ABA) Section of Intellectual Property Law, Association of American Universities (AAU), Japan Intellectual Property Association (JIPA), Minnesota Intellectual Property Law Association (MIPLA), and eighteen individuals all submitted comments on the new fees. Among their complaints:
Some individuals suggested that the Patent Office wait until after hiring additional examiners to raise fees, and more than one individual said that the exorbitant fees would squeeze independent inventors out of the patent process.
Kappos: Patent Office Filings Increase, Backlog Decreases
March 26, 2012 - On March 1, the USPTO's Director David Kappos gave testimony before the House Appropriations Committee’s Subcommittee on Commerce, Justice, Science and Related Agencies on the proposed fiscal 2013 budget. In his testimony, Kappos delivered the good news that patent application filings are at an all-time high and the backlog of applications is at the lowest level in several years.
Kappos said that the agency received over 506,000 patent applications in FY 2011, and expects to receive about 533,000 in FY 2012.
In addition, the backlog of utility patent applications is down to under 670,000, and the USPTO expects that number to drop below 622,000 by the end of FY 2012. Kappos says the "final goal" is a backlog of 329,500 by the end of FY 2015.
"These figures confirm that innovation is alive and well and will help speed our nation's economic recovery," Kappos said in his testimony, which is available here as a PDF document.
However, despite the good news, the USPTO will be raising certain fees in order to continue making progress on reducing the backlog and streamlining the patenting process going forward. These fee increases were criticized at public meetings held by the agency, with detractors saying that the Patent Office needs to focus on being more efficient rather than implementing price hikes.
Kappos responded to that criticism on his blog.
"Our experience...reminds us that implementing improvements frequently causes short term disruptions, and likely won't immediately translate into efficiencies," Kappos wrote. "Anyone who runs a business will tell you that productivity investments often take years to pay off.
"Moreover, my judgment as the steward of this agency is that I cannot proceed with a funding model that assumes further efficiency gains, especially if we have not yet achieved the