AIPLA Annual Meeting 2013

Peggy FocarinoCommissioner for PatentsUnited States Patent and Trademark Office

October 25, 2013

Welcome

• White House Executive Actions• Patent Operations Update• Patent Accelerated Initiatives Web Page• Patent Law Treaty• CPC Implementation• Q & A

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Executive Actions

Michelle LeeDirector of Silicon Valley Satellite OfficeUnited States Patent and Trademark OfficeOctober 25, 2013

White House Executive Actions

White House Executive Actions• Making “Real Party-in-Interest” the New

Default• Tightening Functional Claiming • Empowering Downstream Users• Expanding Dedicated Outreach and Study

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White House Executive Actions – The First Executive Action

• Making “Real Party-in-Interest” the New Default– USPTO began a rulemaking process– Rule to require patent applicants and

owners to regularly update ownership information, when involved in proceedings before the USPTO.

– Requires designation of “ultimate parent entity” in control of the patent application.

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White House Executive Actions – The Second Executive Action

• Tighten Functional Claiming – USPTO will provide new targeted training

to its examiners on scrutiny of functional claims.• http://www.uspto.gov/patents/law/exam/examguide.jsp

– USPTO to develop strategies to improve claim clarity, such as by use of glossaries in patent specifications to assist examiners in the software field.

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White House Executive Actions – The Third Executive Action

• Empowering Downstream Users– USPTO will publish new education and

outreach materials.– These will include an accessible, plain-

English website offering answers to common questions by those facing a claim of patent infringement.

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White House Executive Actions – The Fourth Executive Action

• Expanding Dedicated Outreach and Study– Expansion of Outreach Efforts will include six

months of high profile events throughout the U.S. to develop new ideas and consensus around updates to patent policies and laws.

– Expansion of the USPTO Edison Scholars Program will bring academic experts to the USPTO to develop – and make available to the public – more robust data and research on issues bearing on abusive litigation.

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Patent Operations Update

Andrew FaileDeputy Commissioner for Patent OperationsUnited States Patent and Trademark OfficeOctober 25, 2013

Total Serialized and RCE FilingsFY 2002 – FY 2013

484,085 as of August 8, 2013.

0

25,000

50,000

75,000

100,000

125,000

150,000

175,000

200,000

225,000

250,000

275,000

300,000

325,000

350,000

375,000

400,000

425,000

450,000

475,000

500,000

525,000

550,000

575,000

2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 2013 (actualfilings received)

Ap

plic

atio

ns

Fiscal Year

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Unexamined Patent Application Backlog FY 2009 – FY 2014 (through October 7)

End of Fiscal Year 2012 backlog was 608,283

End of Fiscal Year 2013 backlog was 584,998

550,000

570,000

590,000

610,000

630,000

650,000

670,000

690,000

710,000

730,000

750,000

770,000F

Y08

-Q4

FY

09

-Q1

FY

09

-Q2

FY

09

-Q3

FY

09

-Q4

FY

10

-Q1

FY

10

-Q2

FY

10

-Q3

FY

10

-Q4

FY

11

-Q1

FY

11

-Q2

FY

11

-Q3

FY

11

-Q4

FY

12

-Q1

FY

12

-Q2

FY

12

-Q3

FY

12

-Q4

FY

13

-Q1

FY

13

-Q2

FY

13

-Q3

FY

13

-Q4

10/0

7/1

3

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Office Time/Applicant Time – Total Pendency Vs. Track One Total Pendency(12-month Rolling Average through September)

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22.0

3.9

7.0

4.6

3.1

2.3

0.0

4.0

8.0

12.0

16.0

20.0

24.0

28.0

32.0

36.0

12-Mth Avg Thru September Track One 12-Mth Avg Thru September

Mon

ths

Time Awaiting First Action Prosecution Time With Applicant Prosecution Time With Office

In-p

roce

ss C

ompl

ianc

e Rat

e with

Inte

rvie

w

In-p

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ss C

ompl

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out In

terv

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Allowan

ce C

ompl

ianc

e Rat

e with

Inte

rvie

w

Allowan

ce C

ompl

ianc

e Rat

e with

out In

terv

iew

90%

91%

92%

93%

94%

95%

96%

97%

98%

99%

100%

95.1%

93.3%

97.4%

96.3%

% C

om

plia

nc

e R

ate

Influence of Interviews on Compliance Rate

• Based on random samples of over 28,000 Allowances and Final Rejections from FY 2008 – FY 2012

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WebEx & Public Interview Room

• WebEx – Web-based video conferencing tool that will allow examiners and stakeholders to share information and collaborate in real time when an “in-person” meeting is not possible.

• Public Interview Room - Private room on the USPTO campus to hold video conferences via WebEx with remote examiners.

• Established in Alexandria and Detroit.• Examiners will reserve the room.

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Interview Webpage

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RCE Backlog FY 2010 – FY 2014 (through October 7)

End of Fiscal Year 2013 RCE backlog was 78,272

0

10,000

20,000

30,000

40,000

50,000

60,000

70,000

80,000

90,000

100,000

110,000

120,000

10/0

9

12/0

9

02/1

0

04/1

0

06/1

0

08/1

0

10/1

0

12/1

0

02/1

1

04/1

1

06/1

1

08/1

1

10/1

1

12/1

1

02/1

2

04/1

2

06/1

2

08/1

2

10/1

2

12/1

2

02/1

3

04/1

3

06/1

3

08/1

3

10/0

7/1

3

RC

E A

pplications A

waitin

g N

ext

Action

RCE Backlog

RCE Backlog

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RCE Outreach

• Over 1,100 comments and suggestions from all of the RCE Outreach sources including, IdeaScale®, comments from the FR notice, and the five Roundtables/Focus sessions were collected

• Several high-level themes emerged including:– Educational Outreach– IDS Considerations– Training – Prosecution Flexibility

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RCE Backlog Reduction

• Modifying the examiner’s docket to increase certainty for RCEs– Emphasizes movement of RCEs

particularly for employees having larger number of RCEs • Increase incentives for moving larger volumes

of RCEs in a quarter

• Continuing with QPIDS and AFCP 2.0

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Patent Application InitiativesWeb page

Remy YucelDirector of Central Reexamination UnitUnited States Patent and Trademark OfficeOctober 25, 2013

Patent Application InitiativesWeb page

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You can also get to the other program pages

by selecting a tile.

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Patent Law Treaty (PLT)and

Patent Law Treaties Implementation Act (PLTIA)

Drew HirshfeldDeputy Commissioner for Patent Examination PolicyUnited States Patent and Trademark OfficeOctober 25, 2013

Three Areas of Major Changes

• Application filing provisions

• Restoration of the right of priority to foreign applications and benefit of provisional applications

• Restoration of patent rights

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Application Filing Date

• The filing date of a provisional or nonprovisional application (other than for a design patent) is the date on which a specification, with or without claims, is received in the Office

• The filing date of an application for a design patent is the date on which the Office receives – the specification as prescribed by 35 U.S.C. 112

(which requires at least one claim), and– any required drawings

Reference Filing

• An application may be filed “by reference” to a previously filed application

• The reference must be in English and included in an ADS (or PLT Model Request Form)

• The reference must specify the previously filed application by application number, filing date, and the intellectual property authority or country in which the previously filed application was filed

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Reference Filing (cont’d)

• Applicant will be notified and given a time period to file:– a copy of the specification and drawings from

the previously filed application– an English language translation of the

previously filed application, and fee, if previously filed application is in a language other than English

– the late filing surcharge

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Reference Filing (cont’d)

• A certified copy of any previously filed application is also required– unless the previously filed application is a

US, PCT, or foreign priority application that satisfies 1.55(h)

• The certified copy is due within the later of: – four months from the filing date of the

application, or– sixteen months from the filing date of the

previously filed application33

Restoration of Priority

• The delay in filing the “subsequent” application within the priority period must have been unintentional

• The “subsequent” application must have been filed within two months of the expiration of the priority period

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Petition to Restore the Right of Priority

• A petition to restore the right of priority must include:– the priority or benefit claim– the “unintentional” petition fee– statement that the delay in filing the

subsequent application was unintentional

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Restoration of Patent Rights

• Elimination of the “unavoidable” delay standard as a basis for reviving an abandoned application, accepting a delayed patent owner response in reexamination, or accepting a delayed maintenance fee payment

• Elimination of the twenty-four month time period requirement for petitions to accept delayed maintenance fee payment

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Restoration of Patent Rights

• The “unintentional” fee ($1,700, $850 small entity) applies to petitions for:

– Revival of an abandoned application

– Delayed payment of the fee for issuing each patent

– Delayed response by patent owner in any reexamination proceeding

– Delayed maintenance fee payment

– Delayed submission of a priority or benefit claim

– Delayed filing of an application claiming priority to a foreign or provisional application

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PLTIA Applicability Date

• The application filing provisions apply only to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013

• The remaining provisions apply to– patents issued before, on, or after

December 18, 2013, and – patent applications pending on or filed after

December 18, 2013

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Cooperative Patent Classification (CPC)

Bruce KisliukDeputy Commissioner for Patent AdministrationUnited States Patent and Trademark OfficeOctober 25, 2013

CPC Milestones

• October 2010 - The EPO and the USPTO jointly agreed to develop a patent classification system on the basis of the European Classification system (ECLA) including best practices of the USPC.

• January 2013 - EPO and USPTO launched CPC.

• August 2013 - All CPC Definitions became available on the Internet (626 CPC Definitions amounting to around 50 000 pages).

• October 2013 – December 2014 – Training/transition for examiners.

• January 1, 2015 – USPTO fully implement CPC. All examiners will classify and search based on CPC.

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Benefits to USPTO … and beyond

• CPC is used by more than 25 000 examiners in more than 45 Patent Offices around the world – and the user community is growing …

• US, EPO, KR, CN collections classified into one classification system for search

• USPTO has one official detailed classification system for efficient search (more detailed than IPC)

• CPC based on IPC. USPTO on same footing as most of the world’s IPOs.

• USPTO has an up-to-date, dynamic classification system.

• Many users around the world using the same patent collection classified in a harmonized way for classification search.

• MAJOR milestone reached in the CPC implementation and contribution towards harmonization efforts. 41

CPC Resources

• CPC Products via www.cpcinfo.org

• Training e-learning modules by– the USPTO

(http://www.uspto.gov/patents/resources/classification/CPC_Training.jsp)

– the EPO European Patent Academy (https://e-courses.epo.org/course/view.php?id=167)

• Questions - cpc@uspto.gov

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Questions?

Panel• Peggy Focarino• Andrew Faile• Bruce Kisliuk• Drew Hirshfeld• Michelle Lee • Remy Yucel

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