Monthly Archives: December 2014

Guidance on Subject Matter Eligibility Issued

Guest blog by USPTO Commissioner for Patents Peggy Focarino

Following the valuable feedback that we received from the public through written comments and multiple public meetings over the last several months, we are issuing new examination guidance on subject matter eligibility under § 101 in view of the U.S. Supreme Court’s recent decisions in Alice Corp., Myriad, and Mayo. You can find the guidance in a Federal Register notice officially published on December 16, 2014, entitled “2014 Interim Guidance on Patent Subject Matter Eligibility.” Claim examples have been developed to illustrate the analysis set forth in the guidance. A set of examples relating to nature-based products are posted on the USPTO website and a set of examples relating to abstract ideas will be released shortly. This guidance is the latest but not necessarily the last iteration of our ongoing implementation of these Supreme Court decisions.

I want to address two aspects about the 2014 Interim Eligibility Guidance in particular. First, the guidance explains the USPTO’s interpretation of subject matter eligibility requirements in view of the Alice Corp., Myriad, and Mayo Supreme Court decisions and  sets forth an integrated approach for patent examiners in making determinations regarding subject matter eligibility. This guidance incorporates principles emphasized in Alice Corp. and provides more details than our initial examination instructions issued immediately after the Alice Corp. decision. 

Second, the guidance reflects a significant change from the examination guidance previously issued in response to Myriad and Mayo. The changes were triggered by the feedback we solicited and received from the public, as well as refinements necessitated by the Alice Corp. decision.

More specifically, you may recall that earlier this year we released preliminary examination guidance on evaluating eligibility of claims reciting laws of nature, natural phenomena, and natural products in the wake of Myriad and Mayo. Following that release, the Supreme Court issued the Alice Corp. decision and as per usual, we issued preliminary instructions on eligibility determinations of claims directed to abstract ideas. We sought public feedback on both sets of guidance, through written comments as well as a number of public events. We were pleased to receive numerous comments on both sets of guidance from a diverse group of stakeholders, including legal organizations, industry organizations, law firms, corporate entities, universities, and individuals. We carefully considered input from the public and our own patent examiners in addressing possible revisions both to our guidance stemming from Myriad and Mayo as well as Alice Corp. That led us to make changes to our analysis of subject matter eligibility under § 101, now set forth in the 2014 Interim Eligibility Guidance. We crafted this guidance to be a more straightforward eligibility analysis, one that promotes examination efficiency and consistency while conforming with the principles in the Supreme Court decisions.

We will continue to solicit stakeholder feedback as we further refine our examination guidance. The Federal Register notice outlining our new guidance announces a 90-day written comment period, and we encourage the public to submit comments. In addition, we plan to host a public outreach forum on the 2014 Interim Eligibility Guidance in mid-January, where you will have the opportunity to provide input in person or via the web. Stay tuned for more details, which will be posted on our website.

Through regular public engagement in this process, we welcome and will consider all viewpoints as we continue to refine our examination procedures for claims for subject matter eligibility.

Source: USPTO

USPTO Releases its FY 2014 Performance and Accountability Report (PAR)

Guest Blog by Tony Scardino, Chief Financial Officer

I’m pleased to announce the USPTO has published its Performance and Accountability Report (PAR) for fiscal year (FY) 2014. The PAR serves as the USPTO’s annual report, similar to what private sector companies prepare for their shareholders. Each year the USPTO publishes this report to update the public on our performance and financial health.

Our PAR charts the agency’s progress toward meeting goals outlined in our new 2014-2018 USPTO Strategic Plan: optimizing patent quality and timeliness; optimizing trademark quality and timeliness; and providing domestic and global leadership to improve intellectual property policy, protection, and enforcement worldwide. These goals govern the quality and quantity of our service to intellectual property owners and USPTO stakeholders. In addition, the PAR provides information on the USPTO’s progress toward a broader management goal: achieving organizational excellence.

Here at the USPTO, we take pride in producing a PAR that meets the highest standards of quality and accountability. The PAR contains a wealth of data and historical information of interest to our stakeholders, including data on patent and trademark examining activities, application filings, and agency staffing levels. This information is conveniently presented in the Workload Tables section at the end of the PAR.

On the issue of financial performance, FY 2014 marks the 22nd consecutive year that the USPTO’s financial statements received an unmodified audit opinion. Our clean audit opinion gives the public independent assurance that the information presented in the agency’s financial statements is fairly presented and follows generally accepted accounting principles. In addition, the auditors reported no material weaknesses in the USPTO’s internal controls, and no instances of non-compliance with laws and regulations affecting the financial statements.

While the PAR is a record of our achievements, it is also an honest discussion of the challenges we face as an agency moving forward in FY 2015. Among our challenges and opportunities, we will be managing the transition to an inventory maintenance patent processing operation as we come closer to our pendency and inventory targets in the future; promoting trademark application processing efficiency with fee reductions; securing sustainable funding in an era of increased budgetary pressures; and providing information technology (IT) support for a nationwide workforce with a “24/7/365” operational capability.

The PAR is a faithful snapshot of the USPTO’s FY 2014 performance. I hope you find value in this document, and that it allows you to glean greater insights into the agency’s activities and achievements.

Source: USPTO

Update on USPTO Satellite Offices

Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee

In an era where our stakeholders’ businesses are rapidly evolving and the intellectual property (IP) landscape is constantly adapting to new and emergent technologies, it’s important to ensure the USPTO can engage effectively with communities, industries, and innovators. That’s why we’ve expanded our footprint across the country, offering services at the doorsteps of entrepreneurs, and addressing challenges particular industries are facing. Our satellite offices play a crucial role in these efforts, assisting inventors, entrepreneurs, and small businesses in their respective regions, while supporting our core mission of fostering American innovation and competitiveness.

We are moving forward in standing up these regional hubs for innovation and look forward to opening our Texas Regional Office in fall 2015, which will be located in the Terminal Annex Federal Building in downtown Dallas. We recently posted a job announcement for a Regional Director, responsible for general oversight of the office as the most senior ranking official representing the USPTO. We’re looking for the best and brightest candidates to assist businesses throughout the state with the challenges of navigating an IP system, and work with Texas’s burgeoning technology sectors such as the clean tech, semiconductor, and biosciences industries. The application deadline for the Regional Director position is January 10, 2015, and we anticipate appointing the Regional Director prior to the office’s opening in the fall.

On June 30, 2014, we held a memorable opening ceremony for the Rocky Mountain Regional Office located in the Byron G. Rogers Federal Building in Denver, Colorado, attended by a number of government officials and regional stakeholders. The Denver office serves as a one-stop shop for the Rocky Mountain region’s entrepreneurs to get cutting-edge ideas to the marketplace faster, grow their businesses, and enable them to create new, high-skilled jobs. Under the leadership of Regional Director Russ Slifer, the Denver office has already welcomed its third class of patent examiners, putting it well on the path to hire a full staff of 100 by summer 2015. Additional outreach activities have included press interviews, an AIA First-Inventor-to-File Roadshow stop, and a patent examiner hiring event.

Excitement is building as the West Coast Regional Office, operating out of Menlo Park, California since 2012, remains on track to open in spring 2015 in its permanent location in San Jose City Hall. The office continues to expand through training programs, workshops, and partnerships with local innovators, while Regional Director John Cabeca has been reaching out to stakeholders in the unique innovation ecosystems of California, Washington, and Oregon. The office is actively engaging with the entrepreneurial community while tailoring programs and events to the region’s unique industries, such as the USPTO’s first Cybersecurity Industry Partnership meeting on November 14, 2014.

Meanwhile, the Elijah J. McCoy satellite office in Detroit, which opened in one of our nation’s historic innovation hubs in July 2012 as our first satellite office, is thriving. On November 18, the State Bar of Michigan’s Intellectual Property Law Association and Pro Bono Initiative kicked off the Michigan Patent Pro Bono Program, a critical milestone in the expansion of the USPTO Pro Bono Program. Saturday Seminar sessions provide training to independent inventors and small businesses on the importance of IP protection, and the Patent Trial and Appeal Board (PTAB) is making headway reducing the inventory of trial and appeal cases in a new space that includes a hearing room.  Also, the PTAB twice visited Detroit this year to host educational forums about the AIA trials. We anticipate announcing the name of our new Regional Director of the Detroit office in the coming weeks.

In September, we submitted to Congress our report on satellite offices highlighting our significant outreach activities that have touched major stakeholders and have actively raised awareness of IP in all the satellite locations. Finally, we are currently accepting applications until December 29, 2014 for administrative patent judges in Alexandria, Dallas, Denver, and Silicon Valley, and Detroit.

USPTO satellite offices are critical to accomplishing our goal to support technological innovation and creativity, and I’d like to recognize the support of regional stakeholders, local and federal government officials, and the hard-working USPTO personnel in each location. The upcoming year promises to be an exciting one for our satellite offices as we’ll be cutting the ribbon on the permanent space for our final two. I will continue to keep you informed about the grand openings and other new developments. We look forward to bringing you even better and more convenient services to your local innovation communities.

Source: USPTO