By Jason Rantanen
Liveblogging the America Invents Act: One Year Later conference at the Indiana University Mauer School of Law. Warning and disclaimer: Quality may vary and these don't necessary reflect my opinions.
Keynote speaker – Director David Kappos
Director Kappos – Going to talk about what the USPTO is working on.
Satellite offices – USPTO has been around since around 1790; always had only one location. First satellite office: Detroit. That office now up and running, and first class of examiners is examining applications. Hired about 12 judges there. On time, below budget.
Opening up three more offices. Dallas-Fort Worth, Denver, Silicon Valley. Denver location has been chosen already; doing site surveys for the other two locations. Have vacancy notifications for hiring requests for judge out now; will be putting out hiring announcements for examiners soon. Love to hire law school graduates. In addition to hiring in Alexandria, there are going to be hiring opportunities in these areas. Great place to start your career; but also a good place for a long term career.
IP Critical to GDP and Jobs – conducted a recent study called "Industries in Focus" that reports on the importance of innovation/IP rights for the GDP. Also a recent study by BIO that reports on the enormous contribution of universities to GDP through Bayh-Dole.
AIA- AIA is a lot about balance between first inventors and follow-on competitors. On Sunday, the first major piece of the AIA goes into effect. Follow-on competitors are great – produce great products at great prices; produce innovations of their own. The AIA isn't about advantaging anyone; it's about balancing both sides.
Major tenets of AIA: enabling the patent system to work for everyone, in every industry.
Increase certainty of patent rights – includes backstop provisions, such as post-grant review;
Remove or prevent low quality patents- no way, consistent with any cost-effective business methodology, that you can do a perfect job. Also, courts have consistently not chosen the easy way out in terms of flexibility rather than hard, categorical rules. PTO promulgates a lot of guidelines – useful, but not perfect. This is why post-grant is so important – when the PTO gets it wrong in the first instance, there's a backstop.
Build a 21st century patent system – this leads to the world's first 21st century patent system. This is not the most-cautious approach. It's not a Swiss watch, it's innovation friendly.
More than halfway done with implementing provisions of the AIA. After Sunday, just the 18-month rules to go into effect.
Challenging fee-setting process is in progress. Started this process with the academy, with IP-law economists. They helped design a system that sets fees that are consistent with policy. It will take several iterations, but he's serious about listening to the academy on this issue.
2012 Fall Roadshow in progress this month. Lots of good feedback from these. Notes that new forms (not samples) that are to be used starting Monday are now available on the USPTO website.
Track One statistics – fast tracking of applications accompanied by a petition. Now almost a year out from creation. Average days to final disposition is 153.8 days. About 5,500 applications so far. Petition gets granted 96% of the time; 47 days to first office action. Of the 1716 final dispositions mailed, 867 allowances mailed. Not a fast way to get a rejection; a fast way to get a patent if you should be getting a patent. Also, examiners want to pick up Track One first, because (1) it shows the applicant is serious; (2) probably an important innovation; and (3) applicant will be willing to engage with the examiner to get the job done.
Unexamined patent application backlog – backlog is going down. New narrative is "optimal inventory" – want to come to the right level of backlog/inventory. What about unintentional consequences: when they changed a lot of the incentives, it sent backlog numbers in the right direction. However, the consequence was that doing this unintentionally sent a message to examiners to sit on RCE's; this is what they're working on now. Soon, the RCE backlog will go like the unexamined patent application backlog.
What is "inventory"? The about of applications available fluctuates, but there needs to be work available to everyone to work on every day. If the inventory gets too low, there are days when some people don't have enough work and others have too much. So now the PTO needs to make sure that the inventor doesn't crash through the optimal inventory level.
Forward looking pendency – now down in the 16 month range. Goal is 10 months; not that far off from that goal. Less than two years from now they'll be at the optimal level.
IP Awareness Assessment Tool – enables a non-lawyer to navigate a number of questions that adjusts the question to understand whether they might have possible issues in patent/trademark/trade secret areas. Idea is to help small businesses understand when and how they need legal advice, and to navigate IP-issues before talking to a lawyer.
The H-Word: Harmonization. Of forms of IP, patent laws are the laggard in terms of harmonization. Working with patent systems of other countries to continue moving towards harmonization, especially grace period. This is an area where further industry and academy support would be very welcome. Trading partners need to change their laws to adopt the grace period.
Social Enterprises: 2010-2011 – green tech pilot. Totally maxed out. This was the prototype for Track One. Now they're working on the pro bono program. A year into the program – have already issued patents, have inventors with products in the marketplace. Launching in other cities. By 2014, plan to have every region of US covered so that if you have a great idea, but not the resources to hire a patent attorney, you can get one through this system. "No Invention Left Behind." Looking to expand globally, with modifications.
Patents for Humanity – currently running. Lot of applications coming in; closes in mid-October. Involves patents that are being used for humanitarian purposes. http://patentsforhumanity.challenge.gov. Gives access to accelerated PTO processes, including appeals.
Education outreach – Put in place an education outreach to all kids in America. Want to get positive, age-appropriate information out to kids of all ages so that they view themselves as innovators, they respect their innovations, they respect the innovations of others.
Software patents – came to the PTO to try and help with this. Been working on making sure the agency doesn't issue patents that it shouldn't. Championed stronger disclosure requirements; 112 guidelines specifically directed to software; trained examiners on using these guidelines; rise in 112 rejections on software patents. This is a specific area where they're trying to improve patent quality.
Question – how do you sort the good examiners from bad examiners?
Answer: USPTO has a LOT of data. They track the data down to the individual examiner level. Allowance rates – too high/too low. Prosecution efficiency – have a new measure called compact prosecution that looks at whether the prosecution gets done. Quality – check when they grant and reject cases. Some of the best examiners are taken off the line and used as quality assurance supervisors. What they've been finding is that even as you improve throughput and quality, there will be pockets (art units, departments, examiners) who need some help. Data is also being given to the examiners on a monthly basis. Also focusing on art units that exhibit significant deviations to see if there's an issue. Seeing improvement.
Bob Armitage – Thanked Director Kappos for the America invents Act.
thank you for sharing this article. I think its good that America, decided to invest in this act as many people would benefit from this especially those who wants to protect their copyright. Please to those who will come across this post, spread it and make as many people know about this.
“he figures out the measure that puts you on the bottom”
They already know what measure puts me on the bottom. Measuring shitty work output as being more important than doing even a half decent job. Je sus, how do you not know this already?
But it is ok, I’m down with the sickness, now I’m gettin’ dem counts cause I just don’t care, like everyone else.
I’ll consier Kappos to have been an unequivocal success when he figures out the measure that puts you on the bottom and gathers up the procedure to provide a smooth exit for those at the bottom.
This is not a game to my clients who are building products and businesses based on the applications that I file for them.
Put in place an education outreach to all kids in America. Want to get positive, age-appropriate information out to kids of all ages so that they view themselves as innovators, they respect their innovations, they respect the innovations of others.
Hey, you kids, get off my patented lawn!!!!
/Grandpa Kappos off
“No Invention Left Behind.”
Oy.
I thought that we were past “quality = reject, reject, reject”
I thought we were way past “The examination of software patents is no less rigorous or thoughtful than the examination of patents in other areas.”
It’s nice to see that Kappos has gotten with the program, at least (pun intended).
“Been working on making sure the agency doesn’t issue patents that it shouldn’t. ”
Like, for instance, a patent on something that was authored? Hmmm, yeah, I’m not seeing you having helped much with that. Indeed, your underlings run rampant issuing, and advising other examiners to issue patents on things which are authored all the time.
“Data is also being given to the examiners on a monthly basis. ”
Wait what? Where’s my data? Why have I not been getting my monthly data? Do I need to pick it up from my spe? Perhaps it is sitting in my box in his office, I don’t check that thing very often.
If we’re allowed one RCE without penalty, then surely quality = reject, reject, allow.
“Prosecution efficiency – have a new measure called compact prosecution that looks at whether the prosecution gets done. ”
Obviously you wouldn’t want to give credit based on that or anything though, because that might land you good examiners who are doing a good job rather than a shtty job in your upper ranks.
“I thought that we were past “quality = reject, reject, reject””
No, Director Kappos just didn’t realize that quality equaled reject reject reject until he was here for awhile.
“Software patents – came to the PTO to try and help with this. Been working on making sure the agency doesn’t issue patents that it shouldn’t. Championed stronger disclosure requirements; 112 guidelines specifically directed to software; trained examiners on using these guidelines; rise in 112 rejections on software patents. This is a specific area where they’re trying to improve patent quality.”
I thought that we were past “quality = reject, reject, reject”
“Answer: USPTO has a LOT of data. They track the data down to the individual examiner level. Allowance rates – too high/too low.”
Shouldn’t you be more concerned with quality than the types of applications an examiner gets or how efficiently they arrive at patentable distinctions?
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