Today, David J. Kappos,the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office announced that he would be leaving the agency around the end of January 2013. Kappos thanked the agency’s employees and expressed that it has been an immense privilege to lead the USPTO over the last three and a half years.  During much of this time he was involved with advocating for and implementing the America Invents Act, a law that  represents the most significant change to the U.S. patent system since 1952.  We wish him all the best in his future endeavors.

In a move designed to help independent inventors, the United States Patent and Trademark Office (USPTO) is proposing to amend the rules of practice in patent cases to implement the micro entity provision of the America Invents Act (AIA). If an applicant qualifies as a micro entity, then the applicant is eligible to pay reduced patent fees once the USPTO exercises its fee setting authority under the AIA. The fee setting provision in the AIA sets the micro entity discount at 75% of the fees set or adjusted for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents.

More specifically, the Office is proposing changes to the rules of practice to set out the procedures for an applicant to claim micro entity status and to pay patent fees as a micro entity. The USPTO likewise is proposing changes to the rules of practice to set procedures for an applicant to notify the Office of the loss of micro entity status and to correct payments of patent fees erroneously paid in the micro entity amount. The USPTO published these proposed changes to rules in the Federal Register on May 30, 2012.

To establish micro entity status under the proposed rules, the applicant will have to certify that the applicant:

• Has not been named as an inventor on more than four previously filed patent applications, other than applications filed in another country, provisional applications under 35 U.S.C. 111(b), or international applications for which the basic national fee under 35 U.S.C. 41(a) was not paid (an applicant is not considered to be named on a previously filed application for purposes of the proposed rules if the applicant has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of the applicant’s previous employment);
• Did not, in the calendar year preceding the calendar year in which the applicable fee is being paid, have a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986 (26 U.S.C. 61(a)), exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census; and
• Has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.

Publication in the Federal Register of the proposed rules to implement the micro entity provision of the AIA begins a sixty-day public comment period. During this time, the public may provide written input about the proposed rules. Further information about the proposed rules to implement micro entity provision may be found in the Federal Register Notice available here.

The United States Patent and Trademark Office (USPTO) will host its second Clean Technology Partnership Meeting on Tuesday, June 12, 2012, from 1:00 pm to 4:00 pm.  The meeting will be held in the South Auditorium, Madison Building, Concourse Level, located at 600 Dulany Street, in Alexandria, Virginia. The purpose of the meeting is to bring clean technology stakeholders together to share ideas, experiences and insights and provide a forum for discussion on how the USPTO can improve and expand on its clean technology programs.

Clean technology includes products and services that improve operational performance, productivity or efficiency while reducing costs, inputs, energy consumption, waste or pollution. Alternative energy sources, water and gas purification and soil remediation, as well as other technologies centered on increasing energy efficiency and non-toxic production incorporate clean technology.

Leading industry experts will provide an overview of the clean technology landscape by addressing the importance of regional accelerators and giving an update on clean tech patents.

Due to space limitations, please RSVP by e-mail to jill.warden@uspto.gov or by telephone to Jill Warden at (571) 272-1267 to confirm your attendance. If it becomes necessary to restrict the number of attendees, the USPTO will do so on a first come-first served basis.

More good news from the United States Patent and Trademark Office (USPTO).  The USPTO will implement a pilot program, Quick Path IDS (QPIDS), for considering Information Disclosure Statements (IDS) filed in allowed cases that have not yet issued.  The QPIDS pilot program will run from May 16, 2012 to September 30, 2012.  The purpose of the pilot is to eliminate, or at least reduce, the need for filing a Request for Continued Examination (RCE) after allowance in order to have an IDS considered. Examiners will be authorized non-production time to consider IDSs for these applications, both before and after payment of the issue fee.

There will be two paths for this pilot, depending on when the IDS is filed relative to the payment of an issue fee:

IDS filed prior to or on the same day as payment of the Issue Fee

This portion of the QPIDS Pilot Program is available for utility, plant, reissue, and design applications.  If an IDS is filed in a utility, plant, or reissue application prior to or on the same day as the payment of the issue fee, the examiner will be authorized three hours of nonproduction time to review the IDS.  For design applications, one hour of non‐production time is authorized for review of the IDS.  The processing and handling of the IDS will be unchanged from current practice, unless the examiner determines that the IDS necessitates reopening of prosecution. If the examiner determines that the IDS necessitates reopening of prosecution, the examiner will complete a PTO‐2300 (Notification Of Reopening Of Prosecution Due To Consideration Of An Information Disclosure Statement Filed After Mailing Of A Notice Of Allowance) to notify the applicant of the need to reopen prosecution. The examiner will post the form to the Technology Center (TC) Director for signature. Posting of the form to the TC Director will stop the examiner’s docket management clock, and notify the Office of Publications of the withdrawal. In that case, the disposal count will not be withdrawn from the examiner. The application will be withdrawn from issue and placed on the examiner’s Amendments tab. When the application is subsequently acted on, the examiner will be credited with additional appropriate credit as with any other amended application (0.25 counts for a final rejection and 0.50 counts for a disposal, or 0.75 counts for the disposal if no final rejection is done).

IDS filed after payment of the Issue Fee

This portion of the QPIDS Pilot Program is available only for utility and reissue applications. Design applications are not eligible because 37 CFR 1.114 is not applicable to design applications. Plant applications are not eligible because ePetitions may not be filed in plant applications.  Under this pilot program, an IDS filed after the payment of the issue fee must be filed with the necessary statement under 37 CFR 1.97(e) and fee, a provisional RCE, authorization to charge the RCE fee, and a grantable e‐petition and fee to withdraw the application from issue pursuant to 37 CFR 1.313(c).  The examiner will be authorized three hours of non-production time to consider the IDS. The processing and handling of the IDS will be unchanged from current practice, unless the examiner determines that the IDS necessitates reopening of prosecution. If the examiner determines that the IDS necessitates reopening of prosecution, the examiner will complete a PTO‐2300 form to notify applicant that the RCE will be processed. After reopening of prosecution, the application will be placed on the examiner’s Continuing New tab. As with current practice, no credit will be withdrawn due to the filing of the RCE and the examiner will receive production credit as appropriate for work on the RCE.  If processing of the provisional RCE is unnecessary, the examiner will mail a Corrected Notice of Allowability and the RCE fee will be refunded to applicant. If any amendments (e.g. under 37 CFR 1.312) are filed with the provisional RCE, the RCE will be automatically processed and placed on the examiner’s Continuing New tab.

Again, this is a welcome development from the USPTO. Applicants are seldom thrilled to file an RCE to get an IDS considered when a new reference comes to light after receiving a Notice of Allowance. This initiative serves to promote the disclosure of references that may be material to the patentability of an applicant’s claims and helps to promote strong patents.

At a White House announcement event on April 11, 2012, the U.S. Commerce Department released a comprehensive report, entitled “Intellectual Property and the U.S. Economy: Industries in Focus,” which finds that intellectual property (IP)-intensive industries support at least 40 million jobs and contribute more than $5 trillion dollars to, or 34.8 percent of, U.S. gross domestic product (GDP).

“This first-of-its-kind report shows that IP-intensive industries have a direct and significant impact on our nation’s economy and the creation of American jobs,” said Commerce Secretary John Bryson. “When Americans know that their ideas will be protected, they have greater incentive to pursue advances and technologies that help keep us competitive, and our businesses have the confidence they need to hire more workers. That is why this Administration’s efforts to protect intellectual property, and modernize the patent and trademark system are so crucial to a 21st century economy that is built to last.”

While IP is used in virtually every segment of the U.S. economy, the report identifies the 75 industries that use patent, copyright, or trademark protections most extensively. These “IP-intensive industries” are the source – directly or indirectly – of 40 million jobs. That’s more than a quarter of all the jobs in this country. Some of the most IP-intensive industries include: Computer and peripheral equipment, audio and video equipment manufacturing, newspaper and book publishers, Pharmaceutical and medicines, Semiconductor and other electronic components, and the Medical equipment space.

“Strong intellectual property protections encourage our businesses to pursue the next great idea, which is vital to maintaining America’s competitive edge and driving our overall prosperity,” said Deputy Commerce Secretary Rebecca Blank. “The report released today shows that wages for jobs in IP-intensive industries are higher than average and continue to increase, meaning that these jobs aren’t just important for businesses and entrepreneurs – they are important for working families. The IP protections we put in place today are helping support economic security for America’s middle class now and in the years to come.”

The report’s findings include:

• IP-intensive industries contributed $5.06 trillion to the U.S. economy or 34.8 percent of GDP in 2010.

• 40 million jobs, or 27.7 percent of all jobs, were directly or indirectly attributable to the most IP-intensive industries in 2010.

• Between 2010 and 2011, the economic recovery led to a 1.6 percent increase in direct employment in IP-intensive industries, faster than the 1.0 percent growth in non-IP-intensive industries.

• Merchandise exports of IP-intensive industries totaled $775 billion in 2010, accounting for 60.7 percent of total U.S. merchandise exports.

“Every job in some way, produces, supplies, consumes, or relies on innovation, creativity, and commercial distinctiveness,” said Under Secretary of Commerce for Intellectual Property and USPTO Director David Kappos. “America needs to continue investing in a high quality and appropriately balanced intellectual property system that will promote innovative, open, and competitive markets while helping to ensure that the U.S. private sector remains America’s innovation engine.”

The report is a joint product of the U.S. Commerce Department’s Economics and Statistics Administration (ESA) and the U.S. Patent and Trademark Office (USPTO). Secretary Bryson was joined by Deputy Secretary Rebecca Blank, Under Secretary for Intellectual Property and USPTO Director David Kappos, U.S. Chamber of Commerce President and CEO Tom Donohue, and American Federation of Labor-Congress of Industrial Organizations (AFL-CIO) President Richard Trumka at the White House event to unveil the report.

According to the announcement, the Department of Commerce and USPTO are unleashing new innovations and new industries by advancing a robust framework of intellectual property protections for a global economy. The USPTO has already implemented eight provisions of the recently passed America Invents Act, which are enhancing the speed and quality of patent processing, connecting businesses with the tools they need to develop their technologies, and speeding up patent applications. Since President Obama took office, the backlog has been reduced by nearly 15%, from about 750,000 to just under 641,000 today. That reduction has come despite the acceleration of American ingenuity, and patent filings in the U.S. grew 5% in FY 2011. By re-engineering the IP system from the ground up, the USPTO is creating a 21st century innovation architecture that’s built to last and will help America remain a global leader going forward.

Patents, trademarks, and copyrights are the principal means for establishing ownership rights to inventions and ideas, and provide a legal foundation by which intangible ideas and creations generate tangible benefits to businesses and employees. IP protection affects commerce throughout the economy, including by: providing incentives to invent and create; protecting innovators from unauthorized copying; facilitating vertical specialization in technology markets; creating a platform for financial investments in innovation; supporting startup liquidity and growth through mergers, acquisitions, and IPOs; making licensing-based technology business models possible; and, enabling a more efficient market for technology transfer and trading in technology and ideas.

The full report can be found online here.

On April 5, 2012, the United States Patent and Trademark Office (USPTO) and Hungarian Intellectual Property Office (HIPO) signed a Memorandum of Understanding making permanent the Patent Prosecution Highway (PPH) program between the two offices and setting forth the common desire to implement further developments of the PPH program during a high level event in Budapest honoring Hungarian inventors and innovative companies.

“This Memorandum of Understanding marks a significant milestone of achievement in patent cooperation between our two offices,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO, David Kappos. “It will promote high quality patents and expedite processing of applications in both offices by avoiding duplicative work and provide greater costs savings to applicants which will help to spur greater innovation and generate greater economic growth and job creation in both countries.”

“While the PPH pilot program between the USPTO and the HIPO has been operational since 2010, today we will make our cooperation in this field permanent by signing the Memorandum of Understanding,” said President of the Hungarian Intellectual Property Office, Dr. Miklós Bendzsel. “I believe that the possibility to accelerate the patent granting process will serve the innovative community of both markets and move us closer to our goal of a thriving twenty-first century patent system.”

Under the Patent Prosecution Highway (PPH), an applicant receiving a ruling from the Office of First Filing (OFF) that at least one claim in an application filed in the OFF is patentable may request that the Office of Second Filing (OSF) fast track the examination of corresponding claims in corresponding applications filed in the OSF. PPH will leverage fast-track examination procedures already available in the OSF to allow applicants in the OSF to obtain corresponding patents faster and more efficiently.

Pilot program will add limited time for further consideration of after-final responses in patent application prosecution

The United States Patent and Trademark Office (USPTO), as part of its on-going efforts towards compact prosecution and increased collaboration between examiners and stakeholders, announced on April 2, 2012 the start of the After Final Consideration Pilot (AFCP).

“Compact prosecution is one of our top goals,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO, David Kappos. “The AFCP pilot will allow some additional flexibility for applicants and examiners to work together in after final situations to move applications toward allowance.”

AFCP authorizes a limited amount of non-production time for examiners to consider responses filed after a final rejection.  USPTO seeks to determine if authorizing this time will increase the number of applications that are allowed at that point in prosecution and reduce the number of Requests for Continued Examination (RCEs).

For utility, plant and reissue applications, the limited amount of time is three hours; for design applications, one hour. Examiners will be encouraged to use their professional judgment to decide whether a response can be fully considered, including any additional search required, within the time limit in order to determine whether the application is in condition for allowance.  The detailed guidelines provided to examiners can be found here:  After Final Guidelines.

Per the guidelines, examples of situations where, after a full and complete review, a response after final rejection should be entered include:

1. The amendment places the application in condition for allowance by canceling claims or complying with formal requirement(s) in response to objection(s) made in the final office action.

2. The amendment places the application in condition for allowance by rewriting objected-to claims in independent form.

3. The amendment places the application in condition for allowance by incorporating limitations from objected-to claims into independent claims, if the new claim can be determined to be allowable with only a limited amount of further consideration or search.

4. The amendment can be determined to place the application in condition for allowance with only a limited amount of further search or consideration, even if new claims are added without cancelling a corresponding number of finally rejected claims.

5. The amendment can be determined to place the application in condition for allowance by adding new limitation(s) which require only a limited amount of further consideration or search.

6. The response comprises a perfected 37 CFR 1.131 or 37 CFR 1.132 affidavit or declaration (i.e. a new declaration which corrects formal defects noted in a prior affidavit or declaration) which can be determined to place the application in condition for allowance with only a limited amount of further search or consideration.

If examiners buy into this program, it will be very welcome by applicants, especially in view of the USPTO’s proposal to nearly double the cost of RCEs.

On March 15, 2012, the United States Patent and Trademark Office (USPTO) and the Association of University Technology Managers (AUTM) announced the launch of the USPTO/AUTM Patent Examiners Training Initiative, a joint program designed to improve the strength and quality of U.S. patents through specialized training between patent examiners, innovators and scientists.  The program aims to foster relationships between patent examiners and innovators/scientists.

“This announcement represents an important step in partnering with the petri dish of creativity and research:  the American university,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO, David Kappos. “We’re working hard to cultivate the work done there and get it to the world through the power of the U.S. patent.”

“We’re pleased to partner with the USPTO on this initiative,” says AUTM President Robin Rasor, CLP, RTTP. “For the USPTO, it will help to improve the strength and quality of patents and add support for a stronger patent system, and for universities, our discoveries and inventions will be better protected, which will lead to further scientific research and ultimately advance technology transfer and commercialization efforts.”

Through the USPTO/AUTM Patent Examiners Training Initiative, AUTM members working in university technology transfer offices will identify key faculty members to participate in specialized training programs for patent examiners. The initiative will enhance USPTO’s Patent Examiner Technical Training Program (PETTP) by providing patent examiners with additional training opportunities from scientists and experts across various technology sectors.

The Association of University Technology Managers (AUTM) is a nonprofit organization with an international membership of more than 3,000 technology managers and business executives. AUTM members — managers of intellectual property, one of the most active growth sectors of the global economy — come from more than 300 universities, research institutions and teaching hospitals as well as numerous businesses and government organizations. To learn more about AUTM visit www.autm.net.

The United States Patent and Trademark Office (USPTO) is looking to partner with colleges and universities, entrepreneurship clubs, and similar groups to present informational lectures on trademarks.  The lectures will be conducted by a USPTO attorney in a location designated by the sponsoring organization.  The target audiences are non-trademark attorneys, the small business community, the entrepreneurial community, and students.

The program starts by discussing the difference between trademarks, copyrights, and patents, as well as domain names and business name registrations.   It then explains, once it is established that trademark protection is appropriate, the importance of selecting a strong mark, that is, one that is both federally registrable and legally protectable.   It highlights factors important when choosing a mark, such as the possibility of a likelihood of confusion, and explains the importance of doing a complete search and whether an attorney should be used.   It identifies other potential grounds for the USPTO to refuse registration.  Finally, it establishes what may happen if another trademark owner believes it has stronger rights in a mark and issues a “cease-and-desist” letter.  It concludes with information on how to find an attorney and the distinction between what the USPTO does in the federal registration process and what a private attorney could do, and how to avoid “scams” perpetrated by companies that request fees for services not required by the USPTO.

If you would like the USPTO to speak to your group on trademarks or for more information about the program, please contact Mr. Craig Morris, Managing Attorney for Trademark Outreach, at craig.morris@uspto.gov or 571-272-9692.

The United States Patent and Trademark Office (USPTO) will be hosting a Career Open House for veterans and transitioning servicemembers on March 2, 2012 from 9:00 AM to noon at the USPTO’s campus in Alexandria, VA.  Recent efforts at the USPTO have focused on recruiting patent examiners.  As such, the USPTO is actively seeking veterans and transitioning servicemembers who hold degrees in the fields of engineering and science in a variety of disciplines.  The USPTO is also seeking candidates who have experience with intellectual property law. Specific job openings at the USPTO can be found at www.usptocareers.gov.

Attendance is limited and registration is required.  RSVP to HireVets@uspto.gov.

The Career Open House announcement is copied below. Kudos to the USPTO for reaching out to this group of talented and dedicated people.