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USPTO Update

Stay informed about the latest updates and initiatives from the United States Patent and Trademark Office (USPTO), including subject matter eligibility guidance, training programs, interview practices, and access to relevant prior art.

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USPTO Update

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

  2. Patents Updates

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

  4. Ongoing Efforts

  5. Pendency • First Action Pendency • Total Action Pendency

  6. FY18 Targets and Current Performance

  7. Subject Matter Eligibility • Eligibility Guidance in MPEP • Memoranda

  8. 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

  9. 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)

  10. Recent Guidance Memoranda • Memo on Finjanand Core Wireless • Emphasizes that software-related inventions focused on improving computer technology are not directed to an abstract ideaand 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 • VandaMemo • Clarifies how to evaluate certain method of treatment claims in Step 2A

  11. 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 • https://www.uspto.gov/patent/office-patent-training

  12. 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

  13. 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 “ ”

  14. 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.

  15. 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

  16. 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

  17. 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

  18. CSP Goals • Increase Quality • 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

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

  20. IP5 Cooperation Efforts

  21. 2018 IP5 Deputy Heads and Heads of Office Meetings

  22. 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

  23. Schedule of Meetings

  24. IP5 Heads Meeting Summary

  25. 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

  26. 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

  27. 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

  28. 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

  29. 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

  30. IP5 Industry Engagement

  31. 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

  32. 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

  33. Questions?

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