AIPLA Annual Meeting 2013 Peggy Focarino Commissioner for Patents United 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 2

Executive Actions Michelle Lee Director of Silicon Valley Satellite Office United States Patent and Trademark Office October 25, 2013

White House Executive Actions Making “Real Party-in-Interest” the New Default Tightening Functional Claiming Empowering Downstream Users Expanding Dedicated Outreach and Study 4

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. 5

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. –USPTO to develop strategies to improve claim clarity, such as by use of glossaries in patent specifications to assist examiners in the software field. 6

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. 7

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. 8

Patent Operations Update Andrew Faile Deputy Commissioner for Patent Operations United States Patent and Trademark Office October 25, 2013

Total Serialized and RCE Filings FY 2002 – FY ,085 as of August 8,

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 11

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

Influence of Interviews on Compliance Rate Based on random samples of over 28,000 Allowances and Final Rejections from FY 2008 – FY

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. 14

Interview Webpage 15

RCE Backlog FY 2010 – FY 2014 (through October 7) End of Fiscal Year 2013 RCE backlog was 78,272 16

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 17

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

Patent Application Initiatives Web page Remy Yucel Director of Central Reexamination Unit United States Patent and Trademark Office October 25, 2013

Patent Application Initiatives Web page 20

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You can also get to the other program pages by selecting a tile. 27

Patent Law Treaty (PLT) and Patent Law Treaties Implementation Act (PLTIA) Drew Hirshfeld Deputy Commissioner for Patent Examination Policy United States Patent and Trademark Office October 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 29

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 30

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 31

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 32

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 application 33

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 34

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 35

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 36

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 37

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,

Cooperative Patent Classification (CPC) Bruce Kisliuk Deputy Commissioner for Patent Administration United States Patent and Trademark Office October 25, 2013

CPC Milestones October 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 EPO and USPTO launched CPC. August All CPC Definitions became available on the Internet (626 CPC Definitions amounting to around 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. 40

Benefits to USPTO … and beyond CPC is used by more than 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 Training e-learning modules by –the USPTO ( –the EPO European Patent Academy ( Questions - 42

Questions? Panel Peggy Focarino Andrew Faile Bruce Kisliuk Drew Hirshfeld Michelle Lee Remy Yucel 43