Author: D. Kappos

In early February I asked for reader ideas about how we might reengineer the MPEP, and I was pleased to see how many thoughtful suggestions you all made.  With this post I want to let you know that your ideas have been heard, and we are acting on them. 

Many people suggested that additional information be provided alongside the current content, including:

·         Examples of cases showing both sides of a rule

·         Examples of reasons to combine that are sufficient to support obviousness

·         Examples with case citations including active links to decisions

·         Guidelines for when requirements are satisfied

·         Definitions

People also suggested that we re-organize content to reduce redundancy, provide links from sections to other related sections, and provide better indexing and search tools.

In terms of wikis and online collaboration with the public, there was broad consensus that the USPTO should be the keeper of the official version of the text, but that it would be useful to have outside contributions to the content, in several different forms.  These included:

·     Encouraging readers to post comments about the current text, on a section-by-section basis, to point out errors, make clarifications, and add examples of interpretations and links to case law and other materials.

·     Posting preliminary content and then encouraging the community to comment on this new content before it becomes official.  This might include a wiki section for adding additional content.

·     Periodically summarizing and following up on the comments on each section, both to ensure those with merit are acted upon, and to keep the comments on each section from becoming too cluttered.

·     Providing a way for the community to discuss and debate topics such as how to interpret recent court decisions.

We are now fully engaged in converting the contents of the MPEP into a more modern set of tools and are looking at collaboration tools to support the suggestions we have received.  Watch this space for further developments. Thank you again for your input, and keep it coming!

It was just a spectacular time to be in Washington D.C. last week. The weather was as good as it gets and the cherry blossoms were in full flower. It all made for a perfect setting for the annual induction ceremony of the National Inventors Hall of Fame. I had the great pleasure of participating in the ceremony, which was held at the Department of Commerce auditorium. It was the first time the event had been held in Washington since 1988.

The USPTO co-founded the Hall of Fame in 1973 and has always supported its noble mission of paying homage to the innovative giants of our time. And what a class of inductees we had this year. Collectively, they have amassed 387 patents. Their innovations have saved millions of lives, improved the quality of life for countless others and transformed the way just about everyone on the planet communicates, navigates and entertains themselves.

They join the 421 inductees who are enshrined at the National Inventors Hall of Fame and Museum on the USPTO campus. If you haven’t had a chance to visit the Hall of Fame and Museum, I hope you will do so soon. There you will be able to grasp the immense contributions that these women and men have made to society. The technologies they have created are a road map through the progress of the modern world, a patent-by-patent history of the evolution of technology.

Shortly after becoming Director of the USPTO last August, I visited the Hall of Fame.  It was, even for someone like me who has spent my entire adult life working with inventors, an inspiring experience. But I took something even more important away from that visit–a renewed commitment to the cause of reforming and transforming the USPTO and creating a more modern patent system that better serves America’s innovative genius. I can think of no better way for all of us at the USPTO to honor and thank these amazing people than to pledge ourselves to achieving that goal.

As always I look forward to your comments and suggestions.

I thought I would let you know about a new streamlined procedure we have instituted for review of briefs filed in ex parte appeals in patent applications.  Under the new procedure, the Chief Judge of the Board of Patent Appeals and Interferences (BPAI) will have the sole responsibility for determining whether appeal briefs comply with the formality requirements governing the content of  these briefs.  This new procedure eliminates two layers of  review; previously the Patent Appeal Center and the examiner were required to review patent appeal briefs and evaluate their compliance with the formality requirements. 

The new streamlined process was instituted in response to suggestions made during the January 20, 2010 BPAI Roundtable  at which stakeholders suggested that we simplify the procedure for determining whether briefs comply with the rules.  We listened, and  have now instituted the new streamlined procedure that is also likely to reduce appeal pendency.  

Under the streamlined procedure, only the Chief Judge and his staff will conduct a compliance review of appeal briefs, and will do so at the time the appeal brief is filed.  If a brief is determined not to comply with the applicable regulations, the Chief Judge will promptly send the appellant a notice and provide a time period within which an appellant can file a corrected brief.  The Chief Judge will also have the sole responsibility for determining whether corrected briefs comply with the applicable regulations and addressing any inquiries and petitions regarding notices of noncompliant briefs.  Because this change affects only the internal process within the USPTO, applicants should continue to follow all procedures set forth in the regulations.

We expect this new procedure to reduce appeal pendency from the filing of a notice of appeal to the docketing of the appeal.  We expect a further reduction in pendency because the streamlined procedure will increase the consistency of the review, and thereby reduce the number of notices of noncompliant appeal brief and non-substantive returns from the BPAI that require appellants to file corrected appeal briefs. 

To further reduce the number of noncompliant appeal briefs, the Chief Judge has posted on the USPTO website the “Top Eight Reasons Appeal Briefs are Non-Compliant”—which applicants should read closely to avoid the common mistakes that result in defective briefs and delays.

Additional details about this new procedure are outlined in a March 30, 2010

I’d like to focus today on something in the works for Trademarks.   One of the goals I have for Trademarks is complete end-to-end electronic processing internally and externally. We’re calling our project Trademarks Next Generation, and I’m excited about providing a system that is faster, more practical, much more feature-rich, and reliable for both the public and our staff.

Virtualization and cloud computing are now industry standard in information technology solutions, and we want to take advantage of this technology in our aim to provide full end-to-end electronic processing for Trademarks. Harnessing this technology necessitates a redesign of our present system, giving us the opportunity to further functionality, flexibility and mobility for our users — Trademarks employees, trademark applicants, and trademark owners.

To give you an idea, we’d like to provide trademark applicants and trademark owners the ability to manage applications and registrations on-line, as well as an automated “watch” service to notify requestors of status changes in applications and registrations, just to name a few functions.  Because the purpose of this initiative is to provide functionality and capabilities for *you*, we hope you’ll join us in moving forward with the project by sending your ideas and suggestions to [email protected]  or by posting them here on my blog.

I look forward to your input on this important initiative. 

Today, in a precedential opinion that I was pleased to join as a panel member, the Board of Patent Appeals and Interferences clarified its standard of review of examiners’ rejections.  The opinion makes clear that “the Board reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue.”  This means that the Board does not give deference to positions taken by the examiner when considering an appellant’s argument specifically challenging the examiner’s findings.   

This decision clarifies the Board’s longstanding practice.  An appellant has always been required to identify, by way of argument to the Board, the alleged error in the examiner’s rejection.  And the law is clear that “the Board must necessarily weigh all of the evidence and argument” relative to any matter about which the appellant has alleged error. 

Secondly, the Frye opinion cautions, however, that “[i]f an appellant fails to present arguments on a particular issue – or, more broadly, on a particular rejection – the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection,” and such unasserted arguments may be deemed to have been waived.  This concept is hardly new to litigators or to the patent bar.  The well-established rule of “waiver” has long applied to Board proceedings.  

The well-respected principles of appellant advocacy reaffirmed in Frye are also essential to the effective functioning of a Board whose projected inventory of appeals for FY 2010 is 16,500 cases.  It would be unreasonable to expect the Board’s roughly 80 Administrative Patent Judges (APJs) to consider arguments that appellants could have raised but did not raise in the briefs.

In summary, preserving a complete de novo review on the one hand, while not diverting Board effort into issues not raised by the appellant on the other hand, preserves the right balance between thorough review and administrative efficiency.

I would like to thank our Board Judges, patent attorneys, paralegals and support staff for their hard work and for giving Deputy Director Barner and me the opportunity to sit on the Frye panel as statutory members of the Board.  I appreciate the great challenges that the judges face in tackling their inventory of appeals, and I look forward to participating in other cases that have the potential to provide greater clarity and guidance to the public and, ultimately, help our APJs do their job.

Now here’s some good news for patent holders, and especially for design patent holders.  Last week, the CAFC reversed an ITC decision holding that none of the interveners infringed U.S. Patent No. D517,789.  Crocs, Inc. v. International Trade Comm’n, __ F.3d __ (Fed. Cir. 2010)(Rader, J.).  The ‘789 design patent is for the familiar Crocs foam footwear.  

Judge Rader, writing for the court, drove home the point that minor differences between a patented design and an accused article’s design cannot prevent a finding of infringement.  The court again cautioned trial courts about excessive reliance on detailed verbal description of design claims, and referenced the Manual of Patent Examining Procedure for the proposition that “the illustration in the drawing views is its own best description.”  The court pointed out that the verbal claim construction had focused on particular features of the claimed design, and hence had led the Commission away from considering the claimed design as a whole.  The court then reiterated that in applying the ordinary observer test for infringement recently clarified in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008), the emphasis must be on the design as a whole.  By performing side-by-side comparisons of the drawings of the ‘789 patent design and the accused products, the court concluded that “an ordinary observer, familiar with the prior art designs, would be deceived into believing the accused products are the same as the patented design.”  This decision raises the value of innovation protected by patents and shows that the Federal Circuit is behind IP owners who put their confidence in our patent system.

Design patent protection is increasingly viewed as strategically important for innovators small and large because it is an efficient and cost effective way to give an owner the right to prevent others from making, using, or selling a product that so resembles the patented product.  In the last five years, the USPTO processed more than 25,000 design patent applications per year.   

In a win-win for innovators, the Crocs court also reversed the Commission’s ruling of invalidity of a related utility Patent No. 6,993,858 and clarified the obviousness standard.  It found that the ‘858 patent would not have been obvious because it is not simply a combination of elements found in the prior art, which would actually teach away from the use of foam straps.  Citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the court further stated that even if the ‘858 patent were a combination of known elements, “it yields more than predictable results.”

What are your thoughts on this decision and the direction of design patent law?

It is probably safe to say this week did not turn out like anyone had originally planned.  In my case, a solid slate of meetings each day either turned into conference calls or were postponed in view of people being unable to reach the office.  And as someone who has lived in cold New England for most of the last decade, I can vouch that this week has been "the real thing" in terms of rough sledding, if you’ll excuse the metaphor. 

But while it would have been understandable for folks at our agency to be mostly idled by the unprecedented weather conditions, I have been really impressed both with the high level of productivity generally, and with the creativity our team has demonstrated in carrying forward despite the weather.  This is where we see the benefits of an adaptive workforce, and teleworking, really shine. 

As one example, the Trademarks team has leveraged its Trademark Work at Home program to maintain fully 86% of normal workday production this week.  Frankly, holding productivity that high in the face of not only a total office shutdown, but a near-total societal shutdown, is amazing — better than would be expected even in the private sector. 

Another great example comes out of the Patents team, where a group of examiners self-organized to conduct a "Snowstorm Quality Enhancement Meeting (or QEM)."  They used teleconferencing from a combination of phones and laptops, established an attendance list to ensure everyone on the call was known and able to actively participate, and proceeded through the attendance list examiner-by-examiner to discuss issues and resolve them in real time.  The result was a robust discussion producing truly helpful solutions, and a genuine exchange.  Participants commented that the Snowstorm QEM may actually have been *more* efficient and thorough than some in-person QEMs.

Agency-wide, more than 3,000 employees logged on to our Virtual Private Network (VPN), in addition to the thousands of others who logged in through our Webmail client or Blackberrys.  This is remarkable considering how many in the area have had several days without electricity and/or Internet access.

And I must also mention the steadfast work of the administrative team in the Office of the Under Secretary, which I’m sure like many other administrative teams around the Agency, transitioned seamlessly to work from home this week– moving meetings over to conference calls, scheduling new calls in real time, and keeping us working efficiently from wherever we have all been stuck.  This week has reminded me of one of my management lemmas: our administrative support teams provide the platform for everything we do, and we’d get very little done without their support.

It is really encouraging as a leader and manager to learn about teams of folks getting together to find a way to get things done, despite all the impediments we have dealt with this week.  How was your office impacted by this week’s weather?  Were you able to telework like so many of our employees did?  I look forward to hearing your stories.

Ever since I started at the Agency (in fact, even before I started), examiners and practitioners from all over the country have been saying, "You need a major rewrite of the MPEP.  And while you’re rewriting it, please consider using 21st century authoring and contributing techniques such as those that have enabled collaborative communities to author other important documents using the Internet."

Well I’ve been mulling over the question of how to improve the MPEP.  For starters, I agree that it takes too long to update the MPEP.  And like other antiquated IT-based processes at the USPTO that have received public attention recently, it might not surprise you to learn that the authoring and source file environment we use to maintain and change the MPEP is an embarrassment. 

So we have yet another IT project to undertake.  But the good news is that this one is not extremely complex — good commercial authoring environments for large monolithic documents having multiple contributors are readily available.

This leaves the question of the substantive process we use to substantially update and improve the MPEP.  Do we keep the process within the USPTO, perhaps adding a wiki for use in receiving IP community input as new versions come out?

Or do we open the MPEP development process up to real-time IP community input, so that each successive version is "community created" as much as possible?

And what if any new features do we include in the new MPEP? More examples?  Greater integration of guidelines?  Links to related USPTO online examiner education materials?

I’d really appreciate your thinking and recommendations.  The objective is to create a new MPEP that will enable practitioners and examiners to find information quickly, get accurate and complete guidance, and ensure that all patent applications comply with the laws and regulations governing the patent system.

I look forward to reading your suggestions.

For the entire Patent corps, I just wanted to let you know about the outpouring of "Thanks" I am hearing from practitioners and inventors all over the country.  Everywhere I go, and everywhere the other senior leaders of the Office go, we are hearing from applicants that they truly appreciate that examiners are reaching out to them, offering to help, engaging in a cooperative search for allowable subject matter, and most importantly getting down to business — the business of finding the core issues with patent applications and resolving them.  Of course, this chorus of thanks goes to the examining corps.  So thanks – it’s working — you are doing the right thing — and the world is noticing!

By the way, I’m also hearing (sometimes the second sentence after the big "Thanks") that when examiners and applicants get on the phone, or get together for interviews, we are suggesting narrowing amendments and combinations of dependent subject matter into independent claims, such that the patented claims would be narrower than the ones originally presented by the applicant.  And to that I reply: "Please thank the examiner; she/he is doing precisely what they should be doing!"  Our mission is to advance the best interests of the innovation system, which means granting appropriate patents so that innovators can build businesses and create jobs — but granting only what meets the statutory requirements, and no more.

I encourage our patent examiners to continue reaching out, and continue conducting interviews at any point in the examination process where an interview makes sense, whether it’s before the first action, after the final action, or after an RCE is filed.

Keep up the good work!

My thanks to everyone for their thoughtful comments on my recent SPE – PAP/Award Task Force Blog. The responses touched a number of important themes that I would like to address. First, I want to point out that the SPE PAP – Award Task Force is part of a larger, overarching effort to revamp the performance plans of all managers including Technology Center Directors, Deputy Commissioners, and Commissioners. Their performance plans will be revised to reflect a leadership culture of increased employee development responsibility, cooperation, collaboration, transparency and responsiveness that we are working to establish at the USPTO.

I agree with the perspective of a number of posts that training for supervisors – both new managers as well as experienced managers – is a critical investment for the USPTO.  It is true that many individuals join the ranks of management with little or no direct management experience and on –the- job training is essential. It is also true that formal management training can provide needed insights and perspectives that would otherwise take years to acquire. This is one reason we are moving ahead with a Leadership Development Program that will strengthen the management skill set we develop in all our managers.

The importance of employee retention was also noted.  I couldn’t agree more. Our employees are by far the most important asset of our Agency — they literally make the USPTO work. We invest a large amount of time and effort in the training of our examiners to provide them the knowledge and skills needed for a successful career. We want our solid performers to stay, contribute, and add value at the USPTO. So it is important to me that all managers work with employees to assist them in developing their careers to the greatest extent possible. We have added the critical element of Coaching/Mentoring to the SPE PAP to reflect the important role supervisors play in our employees’ career development. The SPE who is adept at the roles of coach and mentor can make all the difference in an examiner’s choice to make the USPTO a full-career employer.

There were several suggestions that some component of SPE performance include examiners’ input. Others mentioned peer input as a useful information source for SPE development. I think both of these suggestions have merit. I will ask the SPE Task Force to explore these concepts and develop assessment tools that offer examiners and peers the opportunity for constructive feedback.
The SPE PAP – Award Task Force is reviewing feedback from external stakeholders, POPA, and my Blog. If you have any other suggestions, please submit them soon; the FY 2010 SPE PAP will be finalized in early February.
Thank you.

Our first-line managers play a critical role in the achievement of USPTO goals.  In fact, my management experience has taught me that first-line managers have *far* more impact on the employees they manage than anyone else in the enterprise – more ability to develop employee skills and careers, more ability to produce outcomes that are successful for both employee and the enterprise. Their day-to-day work as coaches, guides, trainers, and mentors for employees is essential to creating a supportive, effective workplace. I personally want to express my appreciation to our first-line managers — the ranks of the Supervisory Patent Examiners (SPEs) — for their exceptional work in furthering the aims of the USPTO and for the support I know they will provide as we confront our many challenges in the future.

To reflect the importance of the SPE role, I established a taskforce with representatives from each of the Technology Centers to totally revamp the performance appraisal plan (PAP) and award program for SPEs.  The SPE PAP-Award Taskforce has crafted a performance appraisal plan that reflects key priorities of the Patents organization: enhanced examination quality, reduced application pendency and improved stakeholder responsiveness.  In addition, the new SPE PAP provides increased recognition of key SPE activities in developing their employees while also recognizing the importance of contributions to Tech Center and corps-wide initiatives. 

 The new FY10 SPE PAP reflects the varying roles and responsibilities of SPEs, and gives rating officials the opportunity to provide a fair, accurate assessment of SPE activities and efforts. A SPE Award program, consonant with the new PAP, is also being created by the Taskforce to reward the achievement of challenging goals and objectives.

The new SPE PAP includes the following elements:

•           A revamped Quality (25%) element reflecting the Patent Corps focus on addressing the individual developmental needs of examiners, for example by reviewing work at all stages of prosecution.

•           A new Pendency Reduction (25%) element aligning with Patent priorities and focusing on pendency reduction by combining activities related to both workflow and productivity.

•           A new Stakeholder Responsiveness (20%) element recognizing the importance of SPE accountability to both external and internal constituencies, including responsiveness to external calls/inquiries and availability/accessibility to Art Unit examiners.

•           A new Coaching/Mentoring (15%) element recognizing efforts of SPEs in performing core management of their Art Unit in meeting Office goals and providing for acknowledgement of the unique training and mentoring contributions of SPEs in Art Units with varying examiner experience levels.

•           A revised Leadership (15%) element providing recognition for SPE creativity and innovation in actions taken in the Art Unit as well as Tech Center and Corps wide projects/initiatives.

A similar review of performance appraisal plans and awards will be conducted for other Patent managers, including Training Quality Assurance Specialists (TQAS), Special Program Examiners (SPREs), and Trainer positions.

The work of the SPE PAP Award Taskforce marks an important positive step in ensuring our SPEs receive clear direction that are clearly in line with the goals of the USPTO.  

But, as always, I am interested in feedback, and the task force is interested in feedback from both our internal and external stakeholders.  Please take advantage of this opportunity and send your input to the SPE PAP-Award Task force mailbox ([email protected]), or to me directly here on the Director’s Forum blog.

Switching gears this week to the “T” in USPTO, one issue trademark practitioners will be dealing with soon is the filing of affidavits for a registered extension of protection under the Madrid Protocol. The first affidavit will come due between February 1, 2010, and February 1, 2011.  Absent a legislative change to treat these affidavits the same as those for other trademark registrations (more on this below), owners and practitioners will need to take extra special care to adjust their docketing procedures and systems and verify all filing deadlines in these Madrid Protocol cases.

As trademark practitioners know, the requirement of submission of affidavits of use in commerce or excusable nonuse is needed to maintain all trademark registrations and to help clear the register of inactive marks. The requirements for these affidavits, however, differ for registered extensions of protection filed under the Madrid Protocol.

The current statutory scheme neither affords them the same “grace periods” for late filing, nor does it provide the ability to correct deficiencies after the due date for registered extensions of protection under the Madrid Protocol. For all other U.S. trademark registrations, the statute provides a six-month grace period and the ability to correct deficiencies.  For registered extensions of protection, however, the statute provides no grace period for the first affidavit, and a shorter three-month grace period for subsequent affidavits.

The USPTO is well-aware of the challenges facing trademark owners and practitioners in adjustments to docketing procedures and systems, as well as costly adjustments to the USPTO workflow and systems if this disparity is not amended. The USPTO supports legislative changes to rectify these discrepancies and treat registered extensions of protection consistently with other U.S. trademark registrations.

While looking forward to legislative changes, practitioners and trademark owners need to start thinking now about how to effectively manage the registered extensions of protection, and how to avoid inadvertent cancellation while the legislation remains pending. A good starting point would be reviewing registration portfolios and flagging registered extensions of protection issued in 2005. I also strongly encourage filers to confirm the accuracy of all filing deadlines for registered extensions of protection, and to file as early as possible during the statutory period. An early filing minimizes the impact of oversights and errors that may occur in last-minute filings.

I look forward to working together with trademark owners and practitioners to address these important issues.

Yesterday I participated in a press conference with U.S. Commerce Secretary Gary Locke and Secretary of Energy Steven Chu to unveil an exciting new initiative that will drive innovation in the green technology sector, increase U.S. competitiveness in green technology, and create green jobs.   The USPTO initiative, which launches today as the world looks to the United Nations Climate Change Conference in Copenhagen, Denmark, is a pilot program designed to reduce the average processing time of green technology patent applications.    

Through this program, applications already on file in certain green technology areas will be eligible to be accorded special status and examined on an accelerated basis.  To be eligible, applicants must file a no-cost petition for special status and indicate how the invention materially contributes to environmental quality, the discovery or development of renewable energy resources, more efficient utilization and conservation of energy resources, or greenhouse gas emission reduction.  The pilot will be open to the first 3,000 applications for which a proper petition is filed.  If successful, the program may be expanded down the road.  

You can read more about the program in this press release and in my remarks from the press conference, as well as press accounts of the announcement including NYTimes.com and WSJ.com.

We will monitor the program carefully and will share updates with you along the way.  And, of course, we welcome your comments and feedback.

I recently gave a speech at the George Washington University School of Law about the USPTO’s important role in facilitating the development of IP law.  In the wake of decisions such as KSR and Bose, and with the Bilski Supreme Court decision on the horizon, the IP community certainly could use more clarity in several areas of law. 

Here’s an example.  The KSR decision expanded the means by which examiners can reject on obviousness grounds.  At the same time, it did not provide clear guidance on what constitutes a person of ordinary skill in a particular art area.   

Moreover, obviousness inquiries are beginning to shift toward a weighing of the types of evidence applicants can rely on to establish non-obviousness such as unexpected results and secondary consideration evidence.  

The process has become more costly, time-consuming, and there is still plenty of room for increased clarity and greater predictability. 

The IP community needs guidance on obviousness.  But that’s not all. The applicant community and examiners also need clarification in areas of written description and enablement, means plus function claiming and late claiming — to name a few.  

The USPTO has the opportunity to help facilitate the development of the law through the Board of Patent Appeals and Interferences and the Trademark Trial and Appeal Board.  We intend to identify test cases and promptly decide those cases so that the community can get clarity earlier.  And of course our reviewing court, the Federal Circuit, plays a pivotal role in shaping the law by reviewing those Board decisions that applicants choose to appeal.

The USPTO is going to make sure the Board issues decisions that will set good precedent and that can, in conjunction with Federal Circuit decisions, set the proper balance and provide answers on the challenging legal questions that face the IP community. 

I hope to hear your thoughts and suggestions on this topic.

As you all know, the Supreme Court’s April 2007 decision in KSR v. Teleflex was a landmark case in the law of obviousness.  Although the  KSR Court reaffirmed the well-known Graham v. John Deere inquiries as the appropriate framework for evaluating claims under 35 U.S.C. 103, the Court’s emphasis on a flexible approach clearly calls for new thinking about obviousness by patent examiners and practitioners alike.   

For its part, the Office’s first step toward addressing the implications of the KSR decision was to publish examination guidelines – available at http://www.uspto.gov/web/offices/com/sol/notices/72fr57526.pdf – for its personnel to follow when determining obviousness.  In accordance with the Supreme Court’s instructions regarding flexibility, the guidelines recognized that an examiner’s approach to obviousness had been broadened beyond the strict teaching-suggestion-motivation test.  At the same time, they also stressed that in order to arrive at a proper conclusion of obviousness, examiners still needed to couple sound reasoning with particular findings of fact. 

It has now been just over two years since the publication of the guidelines, and I think it’s understandable that practitioners have been asking the Office for additional guidance.  We have heard the public’s concerns about the manner in which the Office is applying the KSR decision.  Some have suggested that the Office is determining obviousness in a way that stifles innovation by refusing patents for truly inventive subject matter.  They’ve asked us to provide examples of non-obvious claims in view of KSR.  Such examples would serve as a complement to the examples of obvious claims already in the guidelines.  

Now that a body of case law has been decided in light of the KSR decision, we are able to undertake that task.  Office personnel are presently reviewing court decisions with an eye toward identifying factual scenarios to illustrate the developing law of obviousness.  The obvious-to-try rationale is one that seems to be garnering quite a bit of interest, and has already been addressed in several such court decisions.  We also recognize that this task will be on-going, as the Federal Circuit – and perhaps the Supreme Court – continues to weigh in on the question of obviousness. 

KSR has unquestionably refocused the obviousness inquiry by reinvigorating the fundamental questions of Graham.  Because the Supreme Court clarified that teaching-suggestion-motivation was not the sole test of obviousness, the Graham analysis is not to be carried out in a rigid manner.  As a result, some claims that may have been found to be non-obvious before KSR will now correctly be found to be obvious. 

Inventors and practitioners will need to take these developments into account when preparing and prosecuting applications.  For example, it may be necessary to review a broader cross-section of prior art than was previously necessary, or to consider filing evidence of unexpected results earlier rather than later in the course of prosecution.  By being proactive, practitioners will expedite prosecution and avoid unnecessary fees and RCE filings.   

I am committed to providing appropriate and ongoing education for examiners and managers to ensure that the Office is applying KSR and other relevant obviousness decisions as faithfully and clearly as possible.  To that end, I would like to continue to hear your concerns about applying the law and developing appropriate additional guidance.  I look forward to hearing from you as we continue to work together to understand the contours and boundaries of the Supreme Court’s KSR decision. 

Today the USPTO is hosting a roundtable on international work sharing.  This forum will bring together distinguished panelists from interested stakeholder groups to have an open discussion on the issues and implications around work sharing. Work sharing is an important tool for speeding the processing of applications filed in multiple jurisdictions by enabling patent offices to avail themselves of work done by another patent office.
 
Of course, work sharing does not substitute for decisions on patentability—which are and will continue to be made solely by USPTO examiners as to applications pending in the USPTO.  But work sharing is a powerful tool, like other tools, enabling our employees to extract value from the efforts of other similarly skilled examiners in other patent offices, including prior art found in the course of searching, and office actions applying patentability criteria that are in many cases very similar across patent systems.

The amount of repetitious work involved in examining patent filings first filed in other patent offices represents a significant impact on the USPTO’s workload and the workload of other offices, and contributes to our backlog and long pendency periods.  Thus, I see work sharing as one of our most important tools to speed patent examination and enhance quality. We’re eager for today’s discussion and look forward to hearing the insights and perspectives of the participants. 

Just last week, I attended the Trilateral Conference and Industry Trilateral meetings in Kyoto, Japan, where the USPTO, the EPO, and the JPO entered into a series of bilateral agreements to expand the existing Patent Prosecution Highway (PPH) work share program.  These new PPH agreements between the Trilateral Offices will enable us to use international search reports, written opinions, and international preliminary examination reports developed within the framework of the international Patent Cooperation Treaty (PCT), in examining patent applications filed at the USPTO.

 These new agreements greatly expand the potential of the PPH program.  By permitting a Trilateral Office to draw upon the positive examination result from the PCT work product of another Trilateral Office, the PPH will now be available to a larger number of applicants.  This will make it possible to obtain patent protection in multiple countries more quickly and easily, and less expensively.

 In addition, the Trilateral Offices are developing new information systems and a new generation of information products and services.  For example, we are undertaking efforts to move toward use of a more efficient means of processing data through use of an Extensible Markup Language (XML) data format, and to develop tools to encourage XML filing by applicants.

These are some of our work sharing initiatives both at home through the multilateral fora.  By further expanding our work sharing efforts the USPTO will be better-positioned  to meet the needs of the constantly evolving global intellectual property landscape.

 Please stay tuned as we advance in embracing work sharing, and please do send along your comments.

My first few months at the USPTO have been exciting and inspiring, and I feel privileged to be leading the USPTO at this critical time for the IP community, and the country as a whole. When I was sworn in 90 days ago, I came in with a clear mandate from Commerce Secretary Locke to fix our broken patent system and reduce the backlog that has hamstrung innovation and hindered job creation and economic growth. We have ambitious goals and, with your help, I feel confident that we can achieve them.   

I want to take this opportunity to salute the hard work and dedication of the USPTO’s highly capable staff.  As I’ve commented at various events the last several months, the USPTO team is every bit as smart, intense, thoughtful, passionate, and hard-working as any I have ever worked with in the private sector.  And I want to thank the IP community for its valued input and support these past few months.  In order to foster as active and open a dialogue as possible with our stakeholders, we are launching the Director’s Forum public blog. I hope this will be a useful vehicle for sharing ideas and concerns on a regular basis.   

This past week, I had a chance to participate in the 14th Annual Independent Inventors Conference here at the USPTO campus in Alexandria. This conference, which brought together almost 200 members of the independent inventor community from around the country, was an opportunity to rededicate ourselves to serving the independent inventor community in the ways we already do and to finding new ways to be of service. It was also an opportunity to reflect on what we have accomplished thus far, and to elaborate on some of our priorities from the standpoint of the independent inventor community.

Thousands of independent inventors and small businesses do critical R&D every day and produce innovative goods and services that benefit the public in so many critical areas. Surgeons invent new tools to save lives right there in the operating room, young people find new ways to write software in a school computer lab, and independent inventors create solar chargers – and a short while later that solar charger has created 900 good jobs here in America.   Innovation generated by the independent inventor community will play an even more central role in the future of the American economy.  To make sure that happens, we must provide you with the incentives and protections of an effective, modern patent system – and we must have a functioning patent system that unlocks funding for start-ups and small businesses.

How can we best accomplish that?   We have already moved swiftly to implement much needed reforms in the patent examiner count system and have provided incentives that will improve the examination process and reduce pendency. We have rescinded the claims and continuations rules that would have penalized the innovation community. And we have just adopted an application exchange pilot program that is specifically designed for small entities. This program will allow independent inventors and qualifying entities to receive special status for one application in exchange for withdrawing another application that may no longer be needed. Since last year we have noticed a significant upturn in cases being abandoned after the first office action, without reply to the first office action. With this in mind, the program enables applicants to focus USPTO resources on what is important, rather than having examiners review applications that are no longer important to their owners. This allows our users to help us prioritize our workload and will help clear the backlog.  It is a win-win, and we will be actively looking for other such opportunities.   

In order to fully serve the needs of everyone in the innovation community, however, Congress must pass patent reform legislation.  The legislation being drafted in Congress will ensure that the USPTO gets the funding it desperately needs to operate efficiently and to protect the intellectual property rights of all innovators. And it will give the USPTO the fee-setting authority it needs to do business.
 
I know that many independent inventors, like most segments of the IP community, have concerns about some of the provisions in the bill, and I had the opportunity to address some of these concerns at last week’s conference. The legislation is the product of a series of compromises in the eyes of virtually every segment of the IP community.  But it is also a vast improvement over what we have now – and there is a strong consensus that the status quo is simply unsustainable.  It is therefore gratifying to have had such an open, vigorous and fact-based discussion on areas of particular concern to this community – namely, the proposed revisions in the post-grant review process and in the priority filing system.

As I said last week, we’re working with Congress to ensure a fair and balanced approach to post-grant review.  But it needs to be cost-effective and fast, and the bar has to be set high enough to protect against abuse and serial challenges.  Non-meritorious requests should be summarily denied.  And challenges should be quick and cost-effective, and ideally produce a virtually bullet-proof patent at the end of the process.  
 
With regard to the patent-priority system, the bill’s proposal to move to a first inventor to file system really represents only a minimal change to the process we use now.  The new system would not create a situation where someone could steal an idea and win a race to the patent office.  That person would not be an inventor and would not be eligible for a patent in the first place.  Keep in mind that there are stiff penalties in place to protect against that.  So the real issue involves the case of simultaneous non-collaborative invention that is currently resolved through the interference system.

The truth is that only .01 percent of all patent applications could be affected by a change to first inventor to file. The interference system is already biased in favor of the first inventor to file and 70 percent of the extremely small number of cases that get into the interference process are decided in favor of the first inventor to file.  For more on these and other issues, I would encourage you to read the text of the speech I gave at the Conference on our Web site.  

In closing, I want to hear from you. All of us at the USPTO know that we benefit immensely from your input.  We are here to serve all segments of the IP community better. And I am committed to doing what is good for every stakeholder group and every segment of the IP community. That is my pledge to all of you.
 
Thanks for reading, and I hope you’ll stay tuned.