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Intellectual Property Section Seminar:
Inner Workings of the USPTO
Mollybeth "Molly" Kocialski, Regional Director,
Rocky Mountain U.S. Patent and Trademark Office
Wednesday, October 16, 2018
Embassy Suites Hotel – La Vista Conference Center
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Top Things You Should Know
Molly KocialskiRegional Director October 17, 2018
12,588 Employees
8,147Patent Examiners
549 Trademark Examining Attorneys
388 Patent Trial and Appeal Board
71 Trademark Trial and Appeal Board Judges
Patents
647,388 Patent Applications Filed
347,642 Patents Issued
Trademarks
594,107 Trademark Applications
242,709 Certificates of Registration
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USPTO Regional Offices Leadership
Damian PorcariMidwest
Regional OfficeDetroit, Michigan
Hope ShimabukuTexas
Regional OfficeDallas, Texas
John CabecaSilicon Valley
Regional OfficeSan Jose, California
Molly KocialskiRocky MountainRegional Office
Denver, Colorado
1| IT Systems
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Timeline of Authentication changes
Now Now November 2018 December 2018
Create account Migrate Sponsor Retire PKI
All PKI certificate holders and support staff should createUSPTO.gov accounts now, and set them up for two‐step authentication.
We will release a migration tool to allow current PKI certificate holders to link their USPTO.gov accounts to their PKI certificates.
Registered practitioners can sponsor their support staff to work on their behalf by giving them access via sponsorship tool.
Transition from current PKI certificates to new authentication method must be complete.
2| Patents
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Berkheimer MemorandumClarification for inquiry into whether a claim limitation represents:
– well-understood– routine – conventional activities (or elements)
…to a skilled artisan in the relevant field
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-20180419.PDF
Vanda MemorandumClarification for method of treatment claims:• Claims that practically apply natural
relationships should be eligible under Step 2A• Not necessary for claims that practically apply
natural relationships to include non-routine or unconventional steps to be eligible
https://www.uspto.gov/sites/default/files/documents/memo-vanda-20180607.PDF
Proposed 101 categories• Synthesize 3 categories of “abstract ideas”:
– mathematical concepts– certain methods of organizing human interactions– mental processes
• Permit claims that include otherwise excluded matter as long as that matter is integrated into a practical application
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Notice of Proposed Comment & Collections• Matters Related to First Inventor To File
– November 5, 2018• Patent Review and Derivation Proceedings
– November 5, 2018• Patents for Humanity Program
– November 5, 2018 • International Work Sharing
– November 27, 2018
3| PTAB
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PTAB Guidance in Light of SAS Institute• PTAB will institute as to all claims or none
– Retroactivity note: panel may issue a supplemental order to institute on all petition challenges
SAS Institute Inc. v. Iancu, 2018 WL 1914661, (U.S. Apr. 24, 2018)
Study on AIA Proceedings by Chief Ruschke and Lead Judge Ankenbrand
Trial Practice Guide (TPG) Update August 2018
• Use of expert testimony• Consideration of non-exclusive factors in the determination of trial
institution• Providing for sur-replies to principal briefs as a matter of right• Proper use for and distinction between motions to exclude and
motions to strike• Procedures for oral hearing before the Board, including the use of
live testimony sur-rebuttal, and default time for the hearing• Providing for a pre-hearing conference and potential early
resolution of issues
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Phillips claim construction– A significant majority of comments supported the
proposed change• USPTO received 374 comments
– If made of record, PTAB will take into consideration any prior claim construction determination that has been made in a civil action, or a proceeding before the International Trade Commission (ITC)• final Rule: Phillips construction for all – IPR, PGR and CBM; • no retroactivity – this construction will be used for all cases
filed on or after November 13, 2018.
Precedential decisions• Precedential Opinion Panel generally will be used when
addressing– constitutional questions– important issues regarding statutes, rules, and regulations– important issues regarding binding or precedential case law
• Any party to a proceeding may recommend this designation.• A five-member Executive Judges Committee determines by
majority vote.• USPTO Director has final authority over such designations.
4| Trademarks
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Mandatory Electronic Filing• As of midyear FY18, ~99% of TM applications are
filed electronically, but ~88% are processed electronically from beginning to end
• New rule will make use of TEAS mandatory• Notice of proposed rulemaking published May
30, 2018• Implementation likely early 2019
U.S. Counsel Requirement• Proposed rule being drafted to require foreign trademark applicants and
registrants to be represented by a U.S. licensed attorney to file a trademark with the USPTO
• New requirement will:– ensure the USPTO can effectively use available mechanisms to enforce foreign
applicant compliance with statutory and regulatory requirements; – provide confidence to foreign applicants and the public that registrations that
issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims; and
– aid USPTO efforts to improve accuracy of the U.S. Trademark Register.
– Notice of proposed rulemaking planned for fall 2018
New Application Filings
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U.S. Filings by Applicants from China
Specimens • Problem:
– Fake/mock specimens are increasing & becoming more sophisticated
– Applicants pasting marks on products/services of others to show use in commerce
• Solution:– TM Specimen Protest mailbox established
• [email protected]– USPTO doing best to refuse the fraudulent specimens
Proof of Use Audit Program• Launched November 1, 2017• 2,504 first actions have been as of August 18, 2018• Allows cancellation of audited registrations with
unsubstantiated use claims or removal unsupported goods and services from others
• Registration may be audited if you meet both requirements:1. Filed a Section 8 or 71 declaration of use; and2. Includes at least one class with four or more goods or services
or at least two classes with two or more goods or services in at least two classes
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Invention Promotion Scam Awareness• USPTO provides forum for publication of
complaints against and responses thereto invention promoters or promotion firms– Complaints cannot be confidential
• Does not investigate complaints or participate in legal proceedings, but may refer to FTC
Patent Service Provider Scams | Recent Example• Misrepresentations made to induce existing customers
to continue paying for useless services• Customers were:
– Intimidated– Threatened with legal action– Compelled to retract negative reviews
• Emails sent to WPM customers with links to Cooper’s blog featuring intimidating posts
• Source: FTC v. World Patent Marketing, Inc. (2017)
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Visit https://www.stopfakes.gov/Roadshows
ROADSHOWS
5 | Revised Fee Schedule
Utility Patent Issue and Maintenance Fees
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6| Enhancing Examiner-Stakeholder Experiences
In-Person STEPP TrainingTitle Dates Audience Location Registration
Agent/Attorney 3-Day Course
January 15-17, 2019 Agents and Attorneys
Dallas, TX November 5 to December 2, 2018
Inventor 3-Day Course
February 5-7, 2019 Inventors Alexandria, VA October 22 to November 25,2018
Agent/Attorney 3-Day Course
March 5-7, 2019 Agents and Attorneys
Denver, CO December 17, 2018 to January 13, 2019
Virtual Instructor Led Training (VILT)Title Dates Audience RegistrationCombined 102/103 Workshop Training December 4, 2018 All October 22 –
November 18, 2018Legal Analysis and Writing Workshop February 12,
2019Agents and Attorneys
December 17, 2018 – January 27, 2019
Preparing an Effective Examiner's Answer
April 2, 2019 All February 11 – March 17, 2019
35 USC 101 - TBD June 4, 2019 All April 22 – May 19, 2019
Unity of Invention - TBD August 6, 2019 All June 24 – July 21, 2019
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Examiner & Stakeholder Education Programs • Site Experience Education, Patent examiner technical
training program, Technology fairs, and Customer Partnership Meetings
• Provides examiners with training from innovators, scientists, engineers, and experts working in examined technology areas
• Open to companies and academic institutions in continental U.S.
• Contributes to improvement of examination quality
7| Enhanced Stakeholder Services & Programs
PATE
NT A
PPLIC
ATIO
N IN
ITIA
TIVE
S
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Diversion Pilot Program• Provides patent and trademark practitioners chance to avoid
formal discipline for misconduct by specific rectifying measures• Available for “minor misconduct”• Exceptions
– misappropriation of funds– substantial prejudice to a client or other person– same nature as other disciplined misconduct within the last five years– involved dishonesty, deceit, fraud or misrepresentation by practitioner– constituted a “serious crime” defined in 37 C.F.R. § 11.1
8 | Making IP Fun!
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https://www.uspto.gov/kids/
#CreepyIP
9 | Reducing the Backlog
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2017 Performance & Accountability Report
• Patents backlog decreased by ~11,000 applications
• RCE inventory decreased by ~5,000 applications
• Patent Average First Action Pendency at 16.3 months
• Patent Average Total Pendency at 24.2 months
10 | International
China IP Roadshow• Brings together policy makers on China IP
issues from the U.S. government, academia, and practitioners—including local businesses & experts
• How to enforce IP in China & the U.S., managing China IP portfolio, & resources
• Boise – December 14, 2018
https://www.uspto.gov/learning-and-resources/ip-policy/china-ip-road-shows
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Madrid System Programs• Overview of the Madrid system• Filing an international application • Designated Contracting Party • Best Practices• Recent changes to the USPTO website/tools
IP Attaché Program• Promotes and explains U.S. IP policies overseas• Advises U.S. officials on foreign government IP
systems• Brussels, Geneva (2), Kyiv, Moscow, Kuwait, New
Delhi, Beijing, Guangzhou, Shanghai, Bangkok, Rio de Janeiro, Mexico City, and Lima
11 | 10 Millionth Patent!
