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Welcome to ECLC AIPLA & DirectorsSpring Videoconference
May 11th, 2016
ECLC AIPLA & Directors Teleconference
Today’s Agenda• Opening Remarks/Introductions – Tim Callahan• International Patent Cooperation Updates – Jessica Patterson• Enhancements to Interview Practice – Tim Callahan, Tariq Hafiz• EPQI Increased Clarity and Reasoning Training Effort – Greg
Vidovich • Stakeholder Training on Examination Practice and Procedures
(STEPP) – Edward (Ned) Landrum• Closing Remarks –Seema Rao
May 11th, 2016
Tim Callahan, Director, TC 2400Seema Rao, Director, 2100
Opening Remarks
May 11th, 2016
Tim Callahan, Director, 2400
Partnering in Patents XXII (2015)Focus Session Follow Up
May 11th, 2016
Jessica Patterson, Program Manager, Office of International Patent Cooperation (OIPC)
International Patent Cooperation Updates
OIPC Microsite:http://www.uspto.gov/patents-getting-started/international-patent-cooperation
Develop office processes to
assist in global work sharing
Increase efficiency of
applicant processes to
improve global work sharing
Resolve legal issues hindering
global work sharing
Provide IT solutions to
enhance global work sharing
Improving Global Work Sharing
Office of International Patent Cooperation
Improve the quality, efficiency and predictability of patent family prosecution, thereby improving the certainty of global patent rights.
International Cooperation− Cooperation among world IP offices
• Trilateral• IP5• Multilateral• Bilateral
− Cooperation with IP stakeholder groups• Global Dossier Task Force• AIPPI, FICPI, ABA, PPAC, others
The IP5
− First meeting held May 2007
− Members:
• European Patent Office (EPO)• Japan Patent Office (JPO)• Korean Intellectual Property Office (KIPO)• State Intellectual Property Office of the People’s Republic of China (SIPO)• United States Patent & Trademark Office (USPTO)
European Patent Office
Evolution of filings at the IP5 (2004-2014)
0200,000400,000600,000800,0001,000,0001,200,0001,400,0001,600,0001,800,0002,000,0002,200,0002,400,000
2004 2005 2006 2007 2008 2009 2010 2011 2012 2013 2014
EPOJPOKIPOSIPO
Global Dossier Task ForceMembers:
– IP5 Offices• United States Patent and Trademark Office (USPTO)• European Patent Office (EPO)• Japan Patent Office (JPO)• Korean Intellectual Property Office (KIPO)• State Intellectual Property Office of the People's Republic of China (SIPO)
– Industry IP5 Members• American Intellectual Property Law Association (AIPLA)• Intellectual Property Owners Association (IPO)• Japan Intellectual Property Association (JIPA)• Korea Intellectual Property Association (KINPA)• Patent Protection Association of China (PPAC)• BUSINESSEUROPE
– World Intellectual Property Organization (WIPO)
Global Dossier is a set of business services modernizing the global patent system and delivering benefits to all stakeholders
Global Dossier
Benefits of Global DossierImproved patent quality
Higher value patents
Increased ease of international filing
Increased procedural harmonization
Cost savings - exploit more IP!
Global Dossier Services
− Current Services• Public Access: provides access to a user-friendly online interface, which will make it
easier for patent applicants to quickly and easily view, monitor, and manage intellectual property (IP) protection around the world by providing access to the dossiers of related applications filed at participating offices
• International Patent Family: providers examiner access to work done by examiners on related applications at other offices
− Upcoming Future Services• Document Sharing Functionality: sharing documents between office, such as prior
art exchanges and supporting documents. Viewed as a first step towards cross-filing
• WIPO CASE Linkage: provides examiners and the public with access to additional participating offices outside of the IP5
Global Dossier Usage
− Global Dossier Public Access• Approximately 20,000 accesses per day
− Global Dossier International Patent Family (Examiner Access)• Approximately 3,000 accesses per day
IP5 Priorities for Global Dossier− USPTO – “Proof-of-Concept for Inter-Office Exchange”
• Sharing documents between offices including for example, prior art exchanges, bib data updates, and supporting documents. Viewed as a first step towards cross-filing
− EPO – “Alerting” • Automated mechanism whereby each office alerts all the other offices, applicants, and representatives of
changes in status to an application
− JPO – “XML” • Enabling each office, and possibly applicants and representatives, to download all application-related data
from applications pending in other offices in XML format
− KIPO – “Applicant Name Standardization”• An automated mechanism that will assign a single, unique name to entities with applications pending in
multiple office, including in instances where those entities may have used multiple names, or variations of a single name. to identify themselves
− SIPO -- “Legal Status” • A mechanism to allow users to view the legal status of an application in another office
Stakeholder Input on Global Dossier− IdeaScale - http://uspto-globaldossier.ideascale.com/
• IdeaScale is one of the ways that OIPC will be gathering stakeholder input and feedback on Global Dossier. − Vote and comment on the various ideas − Provide additional suggestions for services and features that would
improve the ability to monitor and manage related cases around the world
− Focus Sessions• Conducted to gather input and feedback on services
− Contact the Global Dossier Team• [email protected]
Global Dossier Access
Direct access link:http://globaldossier.uspto.gov
Global Dossier Contacts
E-mail: [email protected]
Don LevinDirector, International Patent Business Solutions
Nelson YangPatent Business Analyst, International Patent Business Solutions
Jessica PattersonProgram Manager, Office of International Patent Cooperation
Access to Relevant Prior Art
Background
• USPTO is studying how to increase examination efficiency and patent quality through providing examiners with access to relevant prior art and supplemental information at the earliest point in examinations.
• Additionally, exploring whether or not automatically importing relevant prior art into the US application file at the earliest point in examination would improve prosecution efficiency and quality and reduce the burden of duty of disclosure for applicants.
Current Issues: Examiner Perspective
• Examiners
– Awareness/availability: how do examiners know that relevant prior art is available and how do they access it
– Efficiently obtained: how does the relevant prior art get to the examiner in a manner and time that will increase search and examination efficiency and quality
– Value Recognition – what supplemental information is available to assist the examiner in determining the relevance of prior art
Current Issues: Applicant Perspective
• Applicants
– Acquiring Information: how do applicants efficiently obtaining the information necessary to meet their duty of disclosure and assist the examiner in making a proper patentability decision
– Efficiently obtained: how do applicants avoid cumbersome, costly, and time consuming efforts to monitor prosecution in related or counterpart applications or external sources so as to obtain relevant prior art
– Compliant presentation: how do applicants efficiently submit relevant prior art to the examiner in a time and manner such that it complies with relevant regulations
Anticipated Benefits
• Increase in patent quality
• Efficiency of examination is increased
• Examiner access to relevant prior art and supplemental information in a conveniently searchable manner
• Decreased applicant expense of submitting prior art documents and information disclosure statements
• Reduced burden for applicant compliance with duty to disclose information material to patentability
Timeline
• Stage 1: Three track parallel information gathering– Track 1 – IT & Data Source Gathering– Track 2 – Application Studies Data Gathering– Track 3 – Data gathering from internal and external stakeholders
• Stage 2: Information Review
• Stage 2.5: Business Solution Development
• Stage 3: IT Development and Implementation
Prior Art Access Contacts
E-mail: [email protected]
Michael NeasDeputy Director, International Patent Legal Administration
Jessica PattersonProgram Manager, Office of International Patent Cooperation
May 11th, 2016Tim Callahan, Director, 2400Tariq Hafiz, Director, 2600
Enhancements to Interview Practice
Interview Practice Microsite:http://www.uspto.gov/interviewpractice
Leading in Quality Excellence – Every Interaction Counts
Automated Interview Requestshttp://www.uspto.gov/patent/laws-and-regulations/interview-practice#step1
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AIR Form
• New web-based tool that permits Applicants to schedule an interview with an examiner
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Verbal Authorization for Video Conferencing Change to Internet Usage Policy to Permit Oral Authorization for Video Conferencing Tools
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• Policy has been updated to make it easier for Applicants to authorize the use of video conferencing tools to conduct examiner interviews.
• MPEP § 502.03 now allows a verbal request to authorize a WebEx interview, instead of submitting a written request.
• The verbal authorization is limited to the video conference interview and does not extend to other communications regarding the application.
TC Interview Specialists
• Subject matter expert on interview practice and policy in each Technology Center
• To assist Examiners and Applicants in facilitating effective interviews
• The list of TC Specialists can be found here:http://www.uspto.gov/patent/laws-and-regulations/interview-practice/interview-specialist
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Public Interview Rooms
• Video conference rooms on each USPTO campus
• Designated for Applicants to use to connect and collaborate with examiners that are working remotely or at a different USPTO campus
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Public Interview Rooms, cont.
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Alexandria
• Must be reserved by Examiner at least two business days prior to interview.
• Video conference room examples:
Dallas
One-On-One Training
• Applicants interested in more detailed WebEx training may request a one-on-one WebEx training session with an interview specialist.
• Email your request to [email protected] with some possible dates and times.
• Please give at least one week notice.
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Interview Practice Website
• Visit our website to find out more about:– USPTO Air form– Video Conferencing– TC Interview Specialist– Policy and Guidance– Training and FAQs
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http://www.uspto.gov/interviewpractice
QUESTIONS?Examiner Interview Practice
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Leading in Quality Excellence – Every Interaction Counts
May 11th, 2016
Greg Vidovich, Director, 3600
EPQI Increased Clarity and Reasoning Training Effort
Training Materials:http://www.uspto.gov/patent/laws-and-regulations/examination-policy/examination-guidance-and-training-materials
Initial Focus: Functional Language Invoking 35 U.S.C. 112(f)
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35 U.S.C. 112(f): Identifying Limitations that Invoke § 112(f)• Recognizing § 112(f) limitations that do not use classic “means for”
phrasing• Interpreting “generic placeholders” that serve as substitutes for
means (e.g., unit, mechanism)
35 U.S.C. 112(f): Making the Record Clear• Clarifying the record to place remarks in the file regarding when
§ 112(f) is, or is not, invoked• Establishing presumptions based on use of “means”• Providing explanatory remarks when presumptions are rebutted
Initial Focus: Functional Language Invoking 35 U.S.C. 112(f) (con’t)
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35 U.S.C. 112(f): Broadest Reasonable Interpretation & Definiteness of § 112(f) Limitations
• How to interpret § 112(f) limitations under the broadest reasonable interpretation (BRI) standard
• Evaluating equivalents• Determining whether a § 112(f) limitation is definite under §
112(b)
35 U.S.C. 112(f): Evaluating § 112(f) Limitations in Software-Related Claims for Definiteness under 35 U.S.C. 112(b)
• Determining whether a sufficient algorithm is provided to support a software function
Reinforcing Claim Interpretation
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Broadest Reasonable Interpretation (BRI) and the Plain Meaning of Claim Terms
• Using plain meaning unless the application uses a special definition or disclaims scope
• Explaining claim interpretation on the record
Examining Functional Claim Limitations: Focus on Computer/Software-related Claims
• Detailed guidance on addressing issues unique to functional claim language when § 112(f) is not invoked
• Clarifying the record by fully addressing functional claim language
Turning to Written Description and Enablement
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Examining Claims for Compliance with 35 U.S.C. 112(a): Part I Written Description • Focus on Electrical/Mechanical and Computer/Software-related Claims• Making the prosecution record clear regarding the adequacy of the application disclosure
Examining Claims for Compliance with 35 U.S.C. 112(a): Part II – Enablement• Focus on Electrical/Mechanical and Computer/Software-related Claims• Determining whether the specification enables the full scope of claims with functional
language
35 U.S.C. 112(a): Written Description Workshop• Used as a companion to the 35 U.S.C. 112(a) Written Description and Enablement training
modules• Reinforced the principles of the training
Utilizing 35 U.S.C. 112(b) to Clarify the Record
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§ 112(b): Enhancing Clarity By Ensuring That Claims Are Definite Under 35 U.S.C. 112(b)
• Understand how enforcing the § 112(b) definiteness requirement enhances patent quality and clarity
• Identify the critical roles of examiners and applicants in enhancing clarity of the claims and the prosecution record
• Recognize the importance of explaining the grounds of rejection when the boundaries of the claim are unclear to provide a thorough written record
Focusing on Clarity in Subject Matter Eligibility Analysis
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2014 Interim Guidance on Patent Subject Matter Eligibility
• Focus on 2014 Interim Guidance on Patent Subject Matter Eligibility issued December 16, 2014
Abstract Idea Example Workshops I & II• Focus on identifying abstract ideas, evaluating additional
elements, how to write a proper rejection, and identifying statutory subject matter
Highlighting Reasons for Allowance as a Tool for Clarity
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Enhancing Clarity By Ensuring Clear Reasoning of Allowance Under C.F.R. 1.104(e) and MPEP 1302.14
• Improve the quality and reliability of issued patents by providing a complete file history
• Facilitate the public’s evaluation of a patent’s scope and strength, as well as simplification of any potential patent litigation related thereto
• Remind examiners that reasons for allowance should be provided in an application when the examiner believes that the record as a whole does not make clear his/her reasons for allowing a claim or claims
Improving Clarity and Reasoning (ICR) Training: Impacts
• After training, examiners are surveyed on the following:– Class format– Course materials and/or examples– Length of the training
• Over 80% of those taking the survey agree that the format, materials, and length of the training was appropriate for their learning and retention
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Upcoming Training Topics
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35 U.S.C. 101: Subject Matter Eligibility Workshop III: Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant’s Response to a Subject Matter Eligibility Rejection
• Designed to assist examiners in applying the 2014 Interim Guidance on Patent Subject Matter Eligibility (Interim Eligibility Guidance) and the July 2015 Update: Subject Matter Eligibility
• Focus on responding to applicant argument
35 U.S.C. 112(b): Interpreting Functional Language and Evaluating Claim Boundaries - Workshop
• Examples from each discipline• Focus on writing a complete explanation when the metes and bounds of certain
language is unclear • Tips on making suggestions for resolving issues of unclear boundaries
Improving Clarity and Reasoning (ICR) Training Resources
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• Examination Guidance and Training Materialshttp://www.uspto.gov/patent/laws-and-regulations/examination-policy/examination-guidance-and-training-materials
• White House Executive Actions: Executive Action 2: Clarity in Patent Claimshttp://www.uspto.gov/patent/initiatives/uspto-led-executive-actions-high-tech-patent-issues
• Software Partnershiphttp://www.uspto.gov/patent/initiatives/software-partnership
STIC Awareness Program
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Scientific and Technical Information Center (STIC): Examiner Resources
• Electronic Information Centers (EICs)– Search Strategy Experts (SSEs)– Non-Patent literature searchers and document delivery– Copies of foreign patents, translations– DNA/protein sequence searching systems
• Non-Patent Literature (NPL) website• AskSTIC Group Chat • STIC 15-minute demos, CBTs
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Technical and Technical Training
• Patent Examiner Technical Training Program (PETTP)
• Site Experience Education (SEE) Program
• Non-duty Technical Training
• Stakeholder Training on Examination Practice and Procedure (STEPP)
Improving Clarity and Reasoning in Office Actions (ICR) Training
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May 11th, 2016
Edward (Ned) Landrum, STEPP Program Manager
Stakeholder Training on Examination Practice and Procedures (STEPP)
STEPP Microsite:http://www.uspto.gov/patent/initiatives/stakeholder-training-examination-practice-and-procedure-stepp
What is STEPP?
A new offering from the Office of Patent Training designed to complement Pillar 3 (Excellence in Customer Service) of the Enhanced Patent Quality Initiative (EPQI) by offering training to external stakeholders on examination practice and procedure
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Why Participate?
• Material is derived from training delivered to USPTO employees
• Delivered by USPTO trainers
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The 3-Day Course: July 12th-14th
• Day 1: Reading and Understanding an Application– Claim interpretation and 112
• Day 2: Planning a Search and Applying Prior Art– Searching, identifying, and mapping prior art to claims
• Day 3: Writing an Office Action and Post-Examination Processes– Writing an office action, the Patent Trial and Appeal Board, and
the Central Reexam Unit (CRU)
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PETTP and SEE
• PETTP – Patent Examiner Technical Training Program - provides technology experts the opportunity to deliver relevant technical training and expertise to patent examiners– If you are interested in volunteering please contact
[email protected]• The SEE – Site Experience Education - Program provides patent
examiners opportunities to visit organizations and learn about state of the art technology developments– USPTO is currently seeking organizations to participate in the SEE program
– If you are interested in volunteering please contact [email protected]
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Additional Information
• STEPP:– STEPP Website– Email: [email protected]
• PETTP:– PETTP Website
• SEE:– SEE Website
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Thank you for attending ECLC AIPLA & Director’s Spring Video Conference
May 11th, 2016
Partnering in Patents XXIII (2016)Wednesday, October 26th, 2016.
