aipla annual meeting 2013 peggy focarino commissioner for patents united states patent and trademark...
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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
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-Q3
FY
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-Q4
FY
12
-Q1
FY
12
-Q2
FY
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-Q3
FY
12
-Q4
FY
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-Q1
FY
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-Q2
FY
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-Q3
FY
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-Q4
10/0
7/1
3
Ap
pli
ca
tio
ns A
wa
itin
g F
irs
t A
cti
on
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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
roce
ss C
ompl
ianc
e Rat
e with
out In
terv
iew
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 - [email protected]
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Questions?
Panel• Peggy Focarino• Andrew Faile• Bruce Kisliuk• Drew Hirshfeld• Michelle Lee • Remy Yucel
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