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 ip.policy@uspto.gov (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:

• AIPLA claims that the increased fees for Requests for Continued Examination (RCEs) and the appeals process are not "balanced for all constituents." Regarding the proposed fees for post-grant review and inter partes review, the AIPLA writes that "[t]he fees currently proposed are very high, and at first glance appear to many members to be significantly out of line."
  
• The ABA's Section of IP Law, like AIPLA, feels that high fees don't create a level playing field for all patent applicants. "[T]he Office should not set fees for access to newly mandated proceedings and procedures in the Office that would have the effect of inappropriately discouraging their use," says the ABA letter, noting also that the fees for post-grant review and inter partes review will "render those proceedings effectively inaccessible in many instances." In addition, the ABA letter points out that the fee for filing a post-grant review petition depends on the number of claims in the patent. The starting price for post-grant review is $35,800 for a patent with 20 or fewer claims; for a 200-claim patent, filing a petition for post-grant review would cost a whopping $590,700. The unintended consequences of this fee structure are that claim-heavy patents will be more or less immune from this procedure, and that inventors will be more likely to pad their patent applications with extra claims to make them more expensive to challenge.
  
• The IPO took a different tack in its letter, arguing that "[w]hile innovative small businesses and universities certainly are a critical part of the innovation-based economy, so are large businesses. We note that AIA section 10 gives the PTO Director authority to impose limits on who may qualify as a micro entity if reasonably necessary to avoid an undue impact on other patent applicants or owners. Also, when subsidies are necessary for small and micro entities, we believe it would be better public policy for Congress to appropriate money for those subsidies from general government funds."

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 them. It places our agency at risk, and is just not right for our employees or for our stakeholders."

USPTO Hosts "Roadshows" As Patent Law Changes Begin Taking Effect

Last month, the USPTO America Invents Act (AIA) Implementation Team wrapped up a cross-country series of "AIA roadshows". The team met with inventors, patent attorneys, law students and other members of the public to talk about the AIA and the USPTO's proposed rules based on the new law.

Since the America Invents Act (AIA) is here to stay and gradually taking effect, American Innovators for Patent Reform offers an informative white paper available as a free download on the AIPR website.

The white paper, "What Innovators Need to Know − and Need to Do − under the America Invents Act", is designed to help patent owners, attorneys, business owners and anyone who works with IP to prepare for the dramatic changes the patent system will undergo in the next few years.

USPTO Announces Trademark Expo, Calls for Exhibitors

March 13, 2012 - The United States Patent and Trademark Office will host the 2012 National Trademark Expo on October 19-20, and is looking for exhibitors who wish to showcase their federally-registered trademarks and educate the public about the value of trademarks.

Last year's Trademark Expo brought more than 15,000 visitors of all ages, so exhibits can include kid-friendly elements such as costumed characters and inflatables. There will also be educational seminars for adults.

The event is open to the public and admission is free. For exhibit criteria, application deadlines and contact information, see the USPTO's press release.

USPTO Announces 2012 Inductees into National Inventors Hall of Fame

March 5, 2012 - The U.S. Patent and Trademark Office is one of the sponsors of the National Inventors Hall of Fame Induction ceremony, which will take place on May 2 in Washington, D.C. at the historic Patent Office Building (now the home of the Smithsonian American Art Museum and the National Portrait Gallery).

This year's nine inductees include Akira Endo, the scientist who discovered the first of the cholesterol-lowering statin drugs; Gary Starkweather, an inventor at Xerox who developed the first laser printer that could print any images that could be created on a computer; and Steve Jobs, who was a named inventor on over 300 patents.

The full list of inductees and their accomplishments can be found in the USPTO's press release.

USPTO Launches the Thomas Alva Edison Visiting Professionals Program

February 17, 2012 - The USPTO recently established a program to have IP professionals from academia and the private sector help the USPTO by giving of their time and expertise. Each professional will devote up to six months of service to the agency on a full-time basis.

The first Visiting Professional under the new program is Jay Thomas, who previously served as an instructor at the USPTO's Patent Academy and is a tenured member of the law faculty at Georgetown University.

“I am honored to undertake the inaugural Edison visitorship," Thomas said. "The enthusiasm, leadership, and professionalism of USPTO management have truly motivated me and I am grateful for the opportunity to contribute to the crucial work of this agency.”

USPTO Programs and Policies for Independent Inventors

Did you know the Patent Office has several programs in place to help small entities? Independent inventors, nonprofit organizations, entrepreneurs and small businesses can benefit from the USPTO Inventors Assistance Program and other policies and initiatives.

The Patent Office helps small entities in several ways, such as operating an inventor inquiry hotline, producing webcasts and podcasts, and hosting education conferences.

Find out more about these services and many others in the Independent Inventors section of the USPTO website.

Patent Office Announces "Patents for Humanity" Pilot Program

February 13, 2012 - The U.S. Patent and Trademark Office has launched a new 12-month pilot program that will award a prize to inventors who use their patented technology for humanitarian purposes in underserved regions of the world.

Applicants who enter the competition will need to show how they have leveraged their patented inventions to solve problems related to public health, quality of life and other challenges faced by people in impoverished populations.
Winners will receive a USPTO "acceleration certificate" good for accelerating the examination of a patent to ensure that the final decision comes within twelve months, or moving patent appeal cases or patent re-examination proceedings to the front of the queue. The certificate can be used for accelerating one matter, and cannot be used for matters related to the Patents for Humanity program.

“Sweeping revolutions in technology remind us of what the innovative drive and entrepreneurial spirit can do to build a better world,” said David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the USPTO, in a press release. “This pilot program underscores that in the face of some of the most daunting challenges humans confront on this planet, the power to innovate is the power to lead by design and by solution.”

The Patents for Humanity website has more information about the program.

USPTO's Detroit Office Gets a Home

January 12, 2012 - The Patent Office announced that it has chosen a location for its Detroit satellite office, and has signed a five-year lease for space at 300 River Place Dr., Detroit, Michigan 48207.

The new office will be located in a 31,000-square-foot historic building that formerly housed Parke-Davis Laboratories and the Stroh's Brewery headquarters.

The Elijah J. McCoy United States Patent and Trademark Office (USPTO-Detroit Office) is scheduled to open no later than July 2012.

USPTO to Host Seven "Roadshows" to Educate Public about America Invents Act

January 9, 2012 - The U.S. Patent and Trademark Office announced that it will host a series of "roadshows" regarding the Leahy-Smith America Invents Act. The events are open to the public, and their dates and locations is available here.

“The USPTO hopes that the public will find the roadshows to be an ideal forum to engage with the Office about our various proposed rules implementing provisions of the America Invents Act,” USPTO Patent Reform Coordinator Janet Gongola said in a press release. “The roadshows also give the agency the opportunity to visit members of the patent community in different parts of the country as part of our ongoing effort to create a 21st century patent and trademark office.”

Patent Office Extends Deadline for Green Technology Pilot Program

December 29, 2011 - The U.S. Patent and Trademark Office announced earlier this month that the deadline for participating in the Green Technology Pilot Program has been extended from its original expiration date of December 31, 2011 through March 20, 2012 or until 3,500 applications have been accepted to the program.

The USPTO reports that the program has been a success, with over 2,900 applications already accepted and accorded special "green" status. The average time between the granting of a green technology petition and first office action on the merits of the application is only 78 days.

USPTO Director David Kappos said, “While the Green Technology program will soon draw to a close, in the future all applicants may use the newly enacted Prioritized Examination (Track I) program, which is currently available to all technologies and categories of invention, to have their application accorded special status.”

Guidelines for applying to the Green Technology Pilot Program can be found in the Federal Register.

USPTO's Detroit Satellite Office On Track for 2012; Patent Office Seeks Comments on Other Locations

December 2, 2011 - Congressional budget cuts last spring derailed several plans for expanding and improving the U.S. Patent Office - including indefinitely postponing the opening of a USPTO satellite office in Detroit (see our Wealth of Ideas feature article from May 2011).

The Detroit office is back on track, and is now scheduled to open in the second half of 2012. Not only that, but the Patent Office placed a notice in the Federal Register seeking comments on possible sites for other satellite offices.

The establishment of such satellite offices is mandated by the America Invents Act, Section 23. The USPTO plans to establish at least two more satellite offices (subject to available resources), and the purpose of these additional offices will be to reduce patent application pendency, improve the quality of issued patents and recruit and retain a highly skilled workforce.

Contact information for those wishing to submit comments to the USPTO can be found in the Federal Register notice, and comments are requested on or before January 30, 2012.

USPTO Announces New Small Business Innovation Research Program

November 21, 2011 - The U.S. Patent and Trademark Office, following a Presidential Memorandum from President Obama that directs all Federal agencies with research facilities to improve the flow of research from labs to the marketplace, launched a new pilot program last month to help small businesses develop their inventions and secure patent protection.

The Small Business Innovation Research Pilot Program, or SBIR, uses a competitive awards-based program to encourage small businesses to engage in research, development and commercialization. It also provides comprehensive IP support through the USPTO's small business resources and programs.

USPTO Meets or Exceeds Goals for FY2011; Reduces Patent Backlog by 10%

October 24, 2011 - In a bit of welcome news for the IP community, the United States Patent and Trademark Office announced that it has met or exceeded its goals - in both Patents and Trademarks - for fiscal year 2011.

The backlog of unexamined patent applications was reduced to 669,625 at the end of FY2011 - a ten percent decrease since David Kappos became USPTO Director in FY2009. That reduction occurred in spite of the fact that patent application filings have continued to increase by five percent each year.

The corps of examiners processed 257,642 of the oldest pending patent applications through first Office action, exceeding the USPTO's FY2011 goal by more than 20,000 applications.

USPTO to Conduct Two Studies per the America Invents Act

October 18, 2011 - The USPTO announced public hearings for two studies it is required to conduct under the America Invents Act in order to prepare reports for Congress.

The Prior User Rights Study concerns the availability of prior user rights in foreign countries. The study asks participants about their level of experience with prior user rights in foreign countries, the availability of those rights, and whether prior user rights are or are not needed in particular jurisdictions.

The International Protection Study concerns international patent protection in foreign countries, specifically, options for aiding independent inventors and small businesses in securing such foreign patent protection.

The Federal Register includes more information about these studies, for which the USPTO's reports are due in mid-January 2012.

500th Patent Issued through USPTO's Green Technology Pilot Program

October 5, 2011 - The USPTO announced that it issued its 500th patent under the Green Technology Pilot Program, and it is for a “Wind Turbine Rotor Blade with Aerodynamic Winglet” (U.S. Patent No. 8,029,241).

The milestone patent was awarded to General Electric Company, which has obtained 116 patents in all through this program.

The Green Technology Pilot Program was designed to accelerate the review of patent applications related to energy conservation, environmental quality and the reduction of greenhouse gas emissions.

Applications accepted to the program involve no extra cost to the inventor for the accelerated review, and many Green Technology applicants have received a patent less than a year from the application filing date.

The Green Technology Pilot Program will be open to new applications until December 31, 2011.

U.S. Patent Office Issues Patent No. 8,000,000

August 25, 2011 - The U.S. Patent and Trademark Office announced that it recently issued its eight millionth patent. The patent covers a “Visual Prosthesis Apparatus” that enhances visual perception for people with impaired vision due to outer retinal degeneration. It was awarded to Second Sight Medical Products, Inc., which holds 90 issued U.S. patents relating to sight restoration for the blind and the correction of various other medical conditions.

Though the Patent Office is notoriously backlogged, it is perhaps a good sign that it took 75 years to get from the first patent to Patent No. 1,000,000 in August 1911 - but just under six years to get from number 7 million to number 8 million.

House Subcommittee Approves Major Boost for USPTO Budget in FY 2012

July 13, 2011 − On July 7, the House Appropriations Subcommittee on Commerce, Justice and Science approved a fiscal year 2012 budget for the U.S. Patent and Trademark Office that is a 28% increase over its FY2011 budget. The budget boost is, in part, the result of a compromise that removed the provision from the House version of the America Invents Act (H.R. 1249) that would have ended the diversion of fees from the Patent Office.

Currently, Congress sets a budget for the Patent Office, and the money for that budget comes from the fees the USPTO collects. If the fees the USPTO collects exceed that budget, the overage is appropriated and diverted to other government programs. However, over the past several years, the budget set for the USPTO has been insufficient for growth and expansion − such as opening new offices, hiring more patent examiners and replacing obsolete equipment. With a backlog of as many as 1.2 million unprocessed applications (according to some estimates), ending fee diversion is now seen as a necessity for the American patent system to keep up with demand.

Thus both versions of the America Invents Act (S. 23 and H.R. 1249) initially included a provision to end fee diversion. But while the Senate version passed easily, some House members balked, saying that it would be unconstitutional for one government agency to be able to both set and keep the fees it collects without having to go through an appropriations process.

Fortunately for the Patent Office, the FY2012 funding bill accomplishes much the same thing. Any fees the office collects above the $2.706 billion budget (which includes a new 15% surcharge on all fees) will be available to the Patent Office − but only after the PTO submits its plans for the extra funds and those plans are approved by the two Appropriations Committees of Congress (House and Senate). The difference is that the excised "fee diversion" provision would have made the "excess fees" available to the Patent Office without any such limitations or approval process.

"This additional language in the funding bill is represented by the appropriators as guaranteeing that there will be no diversion," explained Hayden Gregory of the American Bar Association's Governmental Affairs Office.

USPTO Requesting Additional Funding from OMB

June 24, 2011 - GPC Vice President and AIPR Executive Director Alec Schibanoff, while attending a public hearing at the Patent Office on June 1, talked with U.S. Patent and Trademark Office Director David Kappos and newly appointed Deputy Director Teresa Rea. Mr. Schibanoff learned that the USPTO applied to the Office of Management and Budget (OMB) for additional funding in the expectation that the America Invents Act will be enacted into law.

As readers of the Wealth of Ideas newsletter know, when the Fiscal 2011 Federal Budget was finally passed in April of this year, the USPTO had its budget cut along with most federal agencies. As a result, several programs − the hiring of additional patent examiners, the opening of an office in Detroit and the launch of an expedited patent application program, to name just a few − were put on hold.

US Patent Office to Begin Hiring in April for New Detroit Satellite Office

March 9, 2011 - An article in the Vancouver Sun reveals why the USPTO decided to locate its first satellite location in Detroit, Michigan: the Motor City's high number of unemployed engineers.

"In terms of locations, we looked at Detroit as a pretty rich environment," Peggy Focarino of the Patent Office said. "We're not concerned about having a lack of applicants. Some of them have law degrees or practical experience."

The USPTO is mainly looking for candidates with experience with intellectual property. The jobs have an average salary of about $70,000, and applicants must use the government's job site, USAJobs, to apply.

USPTO Launches Peer Review Pilot Program for FY2011

January 20, 2011 - The Peer Review Pilot Program will run through September 30, 2011. It is the result of a smaller-scale peer review program that the Patent Office used to gauge the value of allowing the public to assist in the identification of prior art during the patent examination process.

That initial program was limited in scope and size, but was apparently a success: "Members of the public, when collaborating in an organized online fashion, are capable of contributing to the location of prior art of value to examiners during the examination process," says the USPTO website.

This year's Pilot Program will include some modifications from its predecessor:

* The scope of the program has expanded from computer technologies and business methods to include patent applications in the fields of biotech, bioinformatics, telecom and speech recognition.
* The number of eligible subject matter classes has also increased.
* Peer review time allotted to search for prior art has been reduced to three months.
* The number of eligible patent applications that can participate has been increased from 400 to 1,000.
* The number of items submitted to the USPTO as prior art was reduced from ten to six.

The New York Law School's Center for Patent Innovations' "Peer to Patent" site will manage the Internet-based review process.

For more information about the Peer Review Pilot Program, see the notice in the Patent Office's Official Gazette.

U.S. Patent Office Joins Patent Offices of Europe and Japan in 28th Annual Trilateral Conference

A recent press release from the United States Patent and Trademark Office (USPTO) detailed the topics of discussion at the trilateral conference, which was held in Alexandria, Virginia earlier this month. Leaders of the USPTO, the Japan Patent Office (JPO) and the European Patent Office (EPO) - known as the Trilateral Offices - discussed the concept of "work sharing" as a means of improving efficiency and patent quality.

"Work sharing," or utilizing work already performed by another patent office with regard to the same invention, would allow all three offices to speed up processing of patent applications.

“We are pleased to have made significant advances this week in the area of work sharing among the Trilateral Offices,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “We are grateful to our partners at the EPO and the JPO for their commitment to increasing work sharing because it enables us to reduce patent pendency and enhance patent quality for patent applicants around the world.”

Other topics of discussion at the conference included enhancement of IT collaboration, cooperation on patent classification and information sharing.

Read the full news release on the USPTO website

U.S. Patent Office Extends "Green Technology" Program Through 2011

November 12, 2010 - In the October issue of our newsletter, Wealth of Ideas, the feature article ("What's New at the Patent Office?") discussed recent developments at the U.S. Patent and Trademark Office (USPTO) - including the Green Technology program.

On November 10, the USPTO announced in a press release that the Green Tech program had been successful enough that it will be extended an additional year, through December 31, 2011. The press release states that "since the pilot program began in December 2009, a total of 790 petitions have been granted to green technology patent applicants, and 94 patents have been issued."

The 790 applications that were accepted into the program are infinitesimal compared to the over 400,000 applications that are filed each year and the backlog of 700,000+ applications awaiting examination, but the speed at which the "Green Tech" patent applications are processed is impressive. According to the USPTO press release, "the average time between the approval of a green technology petition and the first action on an application is just 49 days" and in many cases, the patent has issued within a year - no small feat, considering the average pendency from first filing of a patent application to granting of a patent runs about 5-7 years.

“We’ve seen great results so far for those applications in the Green Technology Pilot Program, so we want to extend it for another year and open the program to additional green inventions,” Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos said in the press release. “By doing so, we hope to help stimulate investment in green technology, bring more green inventions to market, and create jobs.”

Patent Office Director David Kappos Proposes Major Changes to Patent Examination System

October 1, 2009 - David Kappos - whose full title is the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) - has worked with the USPTO's Joint Labor-Management Task Force to develop a series of proposals that would both reduce the amount of time it takes to complete a patent examination and improve morale among USPTO employees.

According to the Washington Post, the USPTO's staff of more than 6,300 patent examiners completed just under 450,000 patent applications in 2008. The high ratio of applications to examiners often means inventors are frustrated, having to wait more than three years until patents issue, and examiners suffer from overwork and low morale.

Kappos' proposal therefore includes changes (quoted from the USPTO's press release) designed to:
* Set the foundation for long-term pendency improvements.
* Increase customer satisfaction by incentivizing quality work at the beginning of the examination process.
* Encourage examiners to identify allowable subject matter earlier in the examination process.
* Rebalance incentives both internally and externally to decrease rework.
* Increase examiner morale and reduce attrition.

The changes will encourage examiners to put more effort into the examination process on the front end - which will, in turn, lead to a decrease in requests for continued examination (RCEs).

"These proposed changes will lead to earlier identification of patentable subject matter, which will benefit both the USPTO and applicants," said Deputy Commissioner for Patents Peggy Focarino. "Over the long term, we believe these changes will promote quality examination and set a foundation for pendency improvements."

The full text of the proposal is available on the USPTO website.