2. USPTO Update Maria T. Holtmann Director of International Programs
Office of International Patent Cooperation

3. Patents Updates

4. USPTO at a Glance 8,227 Patent Examiners (as of August 31)
New Serialized filings are up 2.0% (as of September 10)

5. Ongoing Efforts

6. Pendency
First Action Pendency
Total Action Pendency

7. FY18 Targets and Current Performance

8. Subject Matter Eligibility
Eligibility Guidance in MPEP
Memoranda

9. Subject Matter Eligibility Guidance
The MPEP has been updated to incorporate the 2014 Interim Eligibility Guidance (IEG) and its updates
Consolidates existing guidance documents
Expands discussion of recent case law identifying claims as eligible, e.g., Enfish, Rapid Lit. Mgmt., and McRO
Supplemented by memoranda on cases and changes in procedure

10. Flowchart
Sets forth the only analysis for examination of subject matter eligibility under 35 U.S.C. 101
MPEP includes updated flowchart that:
Adds labels for each step
Indicates three pathways to eligibility (including streamlined analysis)

11. Recent Guidance Memoranda
Memo on Finjan and Core Wireless
Emphasizes that software-related inventions focused on improving computer technology are not directed to an abstract idea and are eligible at Step 2A
Memo on Changes in Step 2B
Clarifies how to determine whether an additional element represents well-understood, routine, conventional activity
Vanda Memo
Clarifies how to evaluate certain method of treatment claims in Step 2A

12. Training
Stakeholder Training on Examination Practice and Procedure (STEPP)
Planned Examiner Legal Training:
35 U.S.C. §101 Subject Matter Eligibility
35 U.S.C. §103 Writing a Clear Obviousness Rejection
Legal Analysis and Writing
Responding to Arguments and Persuasive Writing
Double Patenting
Monthly Examiner Patent Quality Chats
Examiner Legal Training Material is Publicly Available Online

13. Interview Practice
Simplified interview request with online USPTO Automated Interview Request (AIR) form
28,000+ USPTO AIR form submissions in 2018
8% of all interviews
Advance Patent Prosecution Through Video Conferencing

14. Search “ ” Access to Relevant Prior Art
Expanded Collaborative Search Pilot (CSP) Program
Artificial Intelligence?
Process changes?
At times, there is a gap between the prior art found during initial examination and the prior art found during litigation. There are many reasons for this, but the main culprits are the ever-accelerating publication and accessibility explosions. These are issues that face every patent office around the world. Indeed, we are ahead of most others on this front. But if we could further narrow this gap in prior art between examination and litigation, then the accuracy of the patent grant – and therefore, its reliability – would increase.
--Director Iancu describes vision for agency at U.S. Chamber of Commerce, April 11, 2018 “ ”

15. Access to Relevant Prior Art
Leveraging electronic resources to retrieve information (e.g., prior art, search reports, etc.) from relevant sources (e.g., related U.S. applications, counterpart foreign and PCT applications).
Automatically import information into the file wrapper of a U.S. patent application under examination at the earliest point.
Potentially reduce applicant’s burden under the duty of disclosure.

16. Access to Relevant Prior Art: Phase 1
Automatically imports references from immediate U.S. parent applications into pending U.S. applications
New automated tool for examiners developed to provide a master reference list and enhanced searching and filtering functionality
Initial implementation will be a targeted release and will not be a corps-wide release
Details and scope of the implementation will be announced later this fall
Subsequent phases of the project will focus on importing from additional sources, such as counterpart foreign and PCT applications

18. International Work Sharing
International Work Sharing brings multiple-office examination efforts together
Benefits
Multiple examiners searching similar invention
Best prior art from different sources/search expertise
Changes to outcome
Greater consistency between offices
Greater certainty of outcome

19. Collaborative Search Pilot (CSP) Program
Offices and Applicants want:
Faster and less expensive examination of patent applications
More certainty as to intellectual property rights granted
More consistent results across Offices
USPTO is collaborating with other IP Offices in the coordination and sharing of search results

20. CSP Goals Increase Quality Increase Consistency Increase Certainty
Multiple examiners searching an invention may increase search quality by sharing results
Reduce Pendency
Collaborating with others or providing a better starting point can reduce time devoted to examination
Increase Consistency
Examiners using same art often come to similar conclusions
Increase Certainty
Applicants can have more confidence in resulting work product

21. The Expanded CSP Process – A Parallel Search
Target: 4 months from grant
Target: 2 months from exchange

22. IP5 Cooperation Efforts

23. 2018 IP5 Deputy Heads and Heads of Office Meetings

24. 2018 IP5 Deputy Heads and Heads of Office Meetings
IP5 Deputy Heads of Office Meeting
April 10–11, 2018
Hosted by the USPTO at the USPTO Headquarters office in Alexandria, Virginia
IP5 Deputy Heads, Heads and Heads/Industry meetings
June 12–14, 2018
Hosted by the USPTO in New Orleans, Louisiana

25. Schedule of Meetings

26. IP5 Heads Meeting Summary

27. IP5 Heads with IP5 Industry Meeting
At the discussion on the outcome of the 7th IP5 Heads with IP5 Industry Meeting, the IP5 Heads of Office agreed:
To continue ongoing work related to streamlining and collaboration with a view to enhancing quality
That the impact of artificial intelligence (AI) on the patent system should be a main strategic priority going forward, and the subject of common reflection
To mandate the IP5 Program Management Group (PMG) to continue discussing the strategic topic guidelines

28. Project Evaluation
The IP5 Heads of Office adopted the findings of the yearlong project evaluation
The IP5 Heads of Office recommended that the IP5 offices monitor and assess the need for further refining and/or reorganizing the IP5 working groups over the next year

29. Standard Essential Patents (SEPs)
JPO gave an update on its essentiality check service, noting it had not received any requests to date
EPO gave a presentation on the issue of transparency with respect to SEPs
The IP5 Heads of Office agreed to put the topic of SEPs on the agenda for next year’s IP5 Heads of Office meeting

30. Endorsement of Progress and Next Steps
Classification Initiatives
The IP5 Heads of Office supported the efforts undertaken by the WG1 to increase its efficiency and to save resources by piloting the replacement of a physical meeting by a virtual one for its next session in October 2018
Global Dossier
IP5 Heads endorsed the “Next stage of five priorities” and finalized scope documents
PCT CS&E Pilot Program
IP5 Heads endorsed the launch of the operational phase of the third PCT Collaborative Search and Examination Pilot Program in July 2018

31. Patent Harmonization Experts Panel Progress
Unity of Invention
IP5 Offices are considering improvements in non-unity reasoning and reaching a common way of raising non-unity objections
Citation of Prior Art
The IP5 Heads of Office reviewed the analysis report of the IP5 offices’ matrix survey. Leading offices will propose possible prototypes of the workflow model and the IT system model requirements at the PHEP meeting in November 2018
Written Description/Sufficiency of Disclosure
IP5 Heads of Office approved and agreed to publish the final report on hypothetical case studies 1-3 in the field of chemistry. JPO will draft a final report on hypothetical case studies 4-6 and the IP5 Offices will finalize the report at the PHEP meeting in November 2018
The IP5 Offices are conducting additional hypothetical cases studies 7-8 on the enablement requirement and are working to finalize the hypothetical cases
Future work of the PHEP
IP5 Industry provided potential topics to the IP5 Offices for consideration
IP5 Offices potential topics for consideration at the next PHEP meeting in the November 2018

32. IP5 Industry Engagement

33. Global Dossier Task Force (GDTF)
Ensures developments in Global Dossier are focused on the needs of user community
Held when there is need for Industry input/feedback

34. Industry Consultation Group (ICG)
Goal is to ensure current and future IP5 activities have a strong focus on users' needs and are analyzed with all stakeholders in a thorough and balanced way.
Complements the Global Dossier Task Force
Held when there is need for Industry input/feedback
Scheduled at a time that minimizes resource burdens on both the Offices and Industry

35. Questions?