Day One Project: USPTO Proposals for the Biden Administration

Day One Project is not part of the BIDEN Transition, but the organization has put together a strong group of pro-BIDEN IP experts and relative insiders who have drafted and published a Transition Document for the United States Patent and Trademark Office.

The following are a few of the key proposals: 

  • Increase international collaboration during patent examination, including simultaneous examination with IP5 offices.
  • Reorganize our IP engagement with China IP Engagement with a more coherent and effective approach.
  • Review of the non-patentability-factors used by the PTO to deny IPR institution (such as PTO money, and parallel litigation).
  • Expand IPRs to allow for consideration if indefiniteness and also double patenting.
  • Move forward with comprehensive patent eligibility reform.
  • Anonymous examination (examiners don’t know identity / race / gender / national origin of the patent applicant).
  • Fix PTAB Constitutionality (once Supreme Court decides Arthrex).
  • Studying diversity and working to incentivizing minorities (especially African-Americans) to invent and file for patent protection.
  • $$$:
    • Raising patent filing fees to address decline in maintenance fee payments (portfolio pruning) and also to “dampen frivolous filings.”
    • Further increasing maintenance fees to encourage release of patents to the public where the patentee is not making a sufficient return-on-investment.
  • Trademark: Make the process seriously user friendly.
  • Give USPTO Substantive Rulemaking Authority
  • Establish the USPTO Bureau of Economics
  • Small-Claims Patent Court
  • Expand Patents for Humanity Program

Read more here.

90 thoughts on “Day One Project: USPTO Proposals for the Biden Administration

    1. 15.1

      Item 1), 5):

      5) PatentableSubjectMatterReform
      The Supreme Court has recently denied certiorari in a number of cases raising issues of patent subject matter under 35 U.S.C. §101, including some in which the Solicitor General recommended the Court grant cert. While there have been no shortage of legislative proposals in recent years to respond to the Court’s ​Alice ​/​Mayo test for identifying patentable inventions, a new Congress and a new President would have a fresh opportunity to address these issues. While USPTO itself lacks authority to change the law, the agency should engage on the issue; such work could include hosting roundtables and preparing a comprehensive report presenting different perspectives on

      §101reform. Theagencycouldprovideasignificantcontributiontothediscussionwith a comprehensive report for the Administration and Congress on standards for patentable subject matter in Europe, Japan, China, and Korea.

      Contributor: Stephen Yelderman and others

      (The odd copy being an artifact – I bet you can figure it out)

  1. 14

    That is not accurate history. Xerox was forced to license its patents to any desired competitor, even Japanese companies, by an FTC antitrust suit and its settlement. Before thermal ink jet was even competitive at the low end. Xerox was never a “cartel.” All xerographic, ink jet, and any other office printer or fax manufacturers have now been hit by a great reduction in document printing on paper with the mass move to electronic documents and electronic data storage.

  2. 13

    “Encouraging Cross-Agency Collaboration to Improve Prior Art References available to Patent Examiner Corps
    For instance, the PTO could work with the FDA on biopharma patents to better understand the prior art landscape. Other agencies, such as DOE and NASA, might have rich troves of prior art that would improve patent quality in relevant fields.”

    A great way to increase patent pendency is to add even more layers of bureaucracy to the process. Federal agencies are well known for working swiftly and efficiently together. /s

    Something that would be actually reasonable here is for other agencies of the government to open up their library subscriptions to the USPTO so that digital NPL can be accessed directly by the examiner’s rather than waiting on an intra-agency loan. This could be a reciprocal agreement where the PTO’s vast NPL digital holdings could be opened up to other agencies as well. The DoE, Library of Congress, NTIS, NSF, etc. could all benefit from a pooling of resources. Making this accessible without the need to actually “actively” collaborate and send requests would be key to making it useful and not a time sink.

  3. 12

    Raise patent filing and maintenance fees?

    Are you kidding me?

    Doing that would result in the further crushing of the ever-dimming hopes and dreams of untold numbers of current and future American inventors.

    Further enlarging the gap between those who have and those who have not.

    Shame on you all.

    Shame. On. You. All.

    1. 12.1

      Doing that would crush… the… dreams of untold numbers of current and future American inventors.

      One can only hope. As Flannery O’Connor remarked

      Everywhere I go I’m asked if I think the university stifles writers. My opinion is that they don’t stifle enough of them. There’s many a best-seller that could have been prevented by a good teacher.

      1. 12.1.1

        – clearly Greg does not ‘get’ just why the patent system is aimed for a “get as many to participate” mode.

        Hint: it has to do with how innovation actually works.

    2. 12.2

      I am really curious about this issue.

      Would the patent bar and PTO “stakeholders” accept an offer to make the PTO funded by the government’s general fund, with fees genuinely disconnected from the PTO’s budget?

      My first thought is “of course!” But I am not certain, because there is substantial leverage against “more time for examination” when you can say “I’m paying too much already!”

    3. 12.3

      As our departing Director said well in his goodbye message:

      ” . . . innovation can be the great equalizer, where anyone with the willingness to work hard and take risks can have the opportunity to make something new and potentially change the world.”

      1. 12.3.1

        …which is exactly the type of equalizer that Efficient Infringers want to quash, as it is entirely within the Rational Actor frame of mind to want to compete on factors that better suit them – non-innovation factors such as size, existing funds, existing market share, and the like.

        This is well-known to those that have studied innovation.

    4. 12.4

      We would gladly trade a doubling or tripling of fees in exchange for a real patent in lieu of the fake ones they are presently granting.

  4. 11

    I’ll bet what happens is that some committee is formed and then Chien will try to stop anything from being done unless stronger Trade Secret law is agreed to.

    That is what Chien is going to do.

    1. 11.1

      That’s the problem isn’t it? If a person is corrupt and has a stake in the outcome beyond public good, then the system just doesn’t work. Maybe Chien is corrupt and maybe she isn’t. But she has certainly adopted a position that I think only a large monopoly would adopt as I have never met a person that doesn’t think that trade secrets are absolutely terrible for innovation and for the ability of people to move between companies.

      I don’t think she could defend her push for stronger trade secrets in a fair forum.

      1. 11.1.2

        Stronger than the Federal Trade Secrets Act? It’s pretty strong already. What are you thinking? Higher fines? An office of criminal referral?


          Chien was put into the Biden team and said she intended to strengthen Trade Secret Law.

          My guess is that she has some nasty stuff to put in there to update the FTSA.

          I am surprised that the techies haven’t figured out yet that Trade Secret law will make it harder for them to get new jobs and will suppress their wages.


                Speaking about lemmings….

                What meme are you trying to use with those dollar signs, and more to the point, who did you take that meme from?

                (note here that the question is NOT who created or ‘invented‘ a meme with dollar signs)

                Try not to be so train-wrecky, eh?


          I would beg to differ in that the FTSA is decidedly NOT ‘pretty strong,’ nor was it meant to be (provisions that indicate that it was not intended to supplant State laws is a pretty big indicator).

  5. 10

    Fix PTAB Constitutionality (once Supreme Court decides Arthrex).

    The best way to do this is to take the PTAB entirely out of the USPTO. Make it a specialized Art. III district court for all matters currently handled by the PTAB (IPRs, PGRs, derivations, interferences, & ex parte appeals). Make it a statutory requirement that judges on this specialized court must be bar admitted lawyers working in the USPTO for at least five of seven years immediately preceding the judge’s appointment to the court. There will need to be a specialized revision of the FRCP for use in this specialized court. The court can sit in the ED Va courthouse on the current USPTO campus.

    1. 10.2

      “Make it a statutory requirement that judges on this specialized court must be bar admitted lawyers working in the USPTO for at least five of seven years immediately preceding the judge’s appointment to the court.”

      Are there that many positions in the PTO which allow practicioners to dip into civil service for a few years? I doubt the patent bar would be happy about PTAB being stocked with PTO lifers.

      1. 10.2.2

        I doubt the patent bar would be happy about PTAB being stocked with PTO lifers.

        Is this different than present?


          I believe so, though I may have phrased it poorly.

          PTAB currently seems to mostly be made of experienced patent lawyers hired directly into the job. Those people would not be eligible under your rule, and I do not believe there is a lot of jobs at the PTO that an experienced prosecutor would both be eligible for and willing to do for five years to meet that requirement.

    2. 10.3

      “The best way to do this is to take the PTAB entirely out of the USPTO”

      I was surprised it was put in the PTO in the first place.

  6. 9

    Substantive rulemaking authority and fee-setting authority don’t mix. The mix becomes all the more toxic when you throw in sovereign immunity and a bonus-based compensation structure. Take the DOCX proposal as one prototypical example.

      1. 9.1.1

        Snowflake aka Toady aka Hall Monitor, did not your hero, after listening to what you had to say, conclude that you are an incredibly sloppy reader, writer, and thinker? We only remember the exact words because of their veracity.


          Lol – you remember the words, but not the context.

          The context was a situation in which I took Mr. Boundy to the woodshed, showing him that he was absolutely incorrect in his view that the Doctrine of Void for Vagueness was only a doctrine for criminal law.

          He was extremely bu tt sore about that, and then tried (and
          to engage in a medium that he is just not used to: blogging. He has a great legal mind, and when he applies that in a forum that he is used to, he is usually pretty awesome.

          But when he is NOT correct — and ceremoniously and absolutely shown to be NOT correct, he had a meltdown.

          Instead of glomming onto something that was negative about me, you instead should seek to understand such things.

          You clearly have all the bandwidth in the world in the days of your retirement to focus on me (and only me), so you might want to put your games aside and seek to understand.

          It would be a far better use of that small remaining time that you have on this sphere.

          By the way, it is not very clever of you to seek out old past threads and insert your snide comments in the base ‘hope’ of having some last word. I have the active threads set up on a crawl, and pinpointing your feeble attempts is pretty much automatic.

          And this only confirms your ill-intent.

          Cyber stalking is a real thing. Your obsess10n should be a warning sign to you.


          The number of your March 1 post in reply to a comment by me on January 19, in a thread conversation otherwise absent of your participation, is very much a type of TELL.

          Guess what it tells about you.


          So why are you telling all that made-up stuff to us and not to Mr. Boundy, Snowflake (aka Hall Monitor)?


            False presumptions galore — your tells abound.

            You assume that I have not told Boundy (your false presumption of made up stuff).

            I did tel Boundy — although not “made up stuff” — and in no uncertain terms. That’s one reason why he is so bu tt sore.

                1. Of course we know what cite means. Look it up in your Wikipedia and get back to us.

                2. Snowflake (aka Hall Monitor) says:

                  “I did tel Boundy — although not “made up stuff” — and in no uncertain terms. That’s one reason why he is so bu tt sore.”

                  So when you learn what “cite” means in the US legal system, although you will never get into a bona fide US law school, [a cite is not always to law but is often to the record for facts]. [what a maroon] … you can give us the cite. To the record. Not what we call decisional law, just to be clear. A cite to the written record.

  7. 8

    I challenge RandomGuy to learn to present more concise arguments.

    I think you will find that if you limit yourself to just two paragraphs that you will be forced to think through your arguments and it will make it easier to interact with other people on the blog.

    1. 8.2

      [I]f you limit yourself to just two paragraphs that you will be forced to think through your arguments…

      Sound advice for all of us (especially myself).

    2. 8.3

      I don’t disagree, but I find unreasonably terse comments to be a far more significant problem here. Excessive explanation is far preferable to “nyah, you’re wrong.”

  8. 7

    “Give USPTO Substantive Rulemaking Authority
    Establish the USPTO Bureau of Economics
    Small-Claims Patent Court”

    1. wut for (see aaa’s post below)
    2. wut even is that
    3. meh maybe.

    1. 7.1

      “3. meh maybe”

      Seems like one of the most likely suggestions to happen.

      Presumably it’d be like the CASE act’s copyright small claims court, which is optional for the IP owner. No one would actually use the court, so no one would bother spending political capital opposing the court.

  9. 6

    “Studying diversity and working to incentivizing minorities (especially African-Americans) to invent and file for patent protection.”

    I appreciate the overall feeling behind this, but we seem to have enough inventors, or would be inventors, btching that inventing is, overall a losing game outside the giant corporate paradigm that I’m not really sure that this is well thought out if your intention is not to further oppress (which I cannot be sure that this is not a backwards attempt to do by a progressively minded person since D’s ID is well known in lefty circles to protect whiteness). That is, literally picking up some overtime at mcyd’s is literally often a better use of one’s time. I made the same recommendation to my own white male IDing uncle regarding some of his “invention” pursuits, or invention related pursuits, and he is a literal fairly good engineer and has the white priv and on top of that is borderline what people would outright call wealthy. Not saying it can’t be great for some few few people, but it’s a real gamble from what I understand. Way more of a gamble than picking up some overtime and buying some tesla stock/bitcoin when they’re low for example, which is fairly ez. I’m not sure that promoting gambling or activities that are super gambles helps people get out of oppression, or substantially improves population incomes etc., in fact, I’m hearing that it is a backwards incentivizing thing overall on a population level of any given pop.

    That being said, obviously participation overall in STEM fields is obv a thing to promote on a pop level. And getting the evil white patent firms to hire more african american individuals for high paying patent attorney jobs is likewise obv a thing to promote.

      1. 6.1.1

        D ID’s as white. According to leftist theory white identifying people protect “whiteness as a social construct” through their actions. And I personally think they are correct in that theory although I see it less as a super secrit plan to oppress other people rather than just what happens in real life.

        Here, in this instance, if I had to take a leftist perspective, I would say that the mechanism by which D and other white people would be protecting whiteness would be as follows. Patents are just a small gubmit part of “capitalism” as a whole, which either itself directly, or at least as a part of the overall “capitalism”, oppresses oppressed groups. Still further, individual/small org patents are likely, on the individual/small entity level likely just a huge time/money gamble (obvious exceptions apply), as opposed to a long term medium to large wealth generation opportunity, at a pop level. In which case the protection of whiteness is obvious as D et al. would just be encouraging failure for the overall population they are targeting as a whole, though some in that pop will win bigish. But let us presume the best for that last, and presume that it is a long term medium to large term wealth generation opportunity. Thus, the attempt to, in the best of circumstances, get minorities (or specifically african americans) to be patenting more (paying for that I should note) is that the white people that overall massively benefit from capitalism in its current form are just trying to get minorities to have more buy-in to and further legitimize the system of modern capitalism, that massively benefits white people, and will continue to do so. And thus whiteness as a social construct, and its power will be furthered/protected in backwards fashion from D’s no doubt well meaning program. Obviously, from the leftist perspective, the system that props up whiteness, modern capitalism, must be hugely reformed and or done away with outright in order to free the oppressed groups.

        And the other obvious leftist angle, as I’ve shared before, is that the whites in gubmit (or associated academia branch of gubmit like D), and big business just want minorities to invent more so that they can buy up the ownership and profit therefrom using their already established market mechanisms downstream. Again, just magnifying white people’s power/money/ownership and protecting the power of whiteness as a social construct by the enrichment of white identifying people.

        All of that is actually for srs from a leftist perspective. Yes, it’s somewhat funny perhaps, but leftist doctrine is that easy to use. And, I would say, in this instance, actually shows in its application to the situation, some potential pitfalls of this course of action.

        But, who knows, maybe I’m the oppressor and it’s all just me concern trolling? That also is a leftist perspective. I welcome actual leftists to give their honest feedback to my raised concerns over this proposal. If I won’t recommend this course to my own uncle, who I’m pretty sure I wish well to, I’m not sure why I’d recommend it to specifically african american people as a supposed hopeful way forward out of the oppression of white people. In a capitalist system I would recommend Graham Stephan and Dave Ramsey before I would recommend this recommendation/course 100000x over.


              It is only apparent to those willing to see it.

              It is amazingly not apparent if you have bought into the Liberal Left agenda and no longer care to apply critical thinking.

  10. 5

    “Anonymous examination (examiners don’t know identity / race / gender / national origin of the patent applicant).”

    A nice example of this thinking being half-baked. Examiners wouldn’t be able to search specifically for applicant’s NPL. And how does the application get reviewed for double patenting?

    1. 5.2

      “Anonymous examination (examiners don’t know identity / race / gender / national origin of the patent applicant).”

      One of the most re ta rd ed suggestion ever I agree. Gotta do applicant/assignee/inventor searches in addition to the above.

    2. 5.3

      The fact that it was included makes me question the entire proposal. Blind examination is completely out of touch with how things work with respect to odp and npl


          True, though the document identifies those who are willing to put their name to a suggestion, and that anonymity suggestion is one of only two suggestions that get four names. So I think it’s fair to say it received relatively wide support amongst the authors.


            So I think it’s fair to say it received relatively wide support amongst the authors.

            Absolutely not.

            Your logic is in error.

            4 of 17 is not “wide spread.”

      1. 5.3.2

        In their defense, the actual document does recognize some issues with this policy. Still an embarrassingly bad suggestion.

    3. 5.4

      Yes, and the proposal for “Raising patent filing fees to .. dampen frivolous filings.” is attacking that problem in the wrong place and would disadvantage the U.S. in defensive filings relative to other countries. It is examination fees that should be increased.

    4. 5.5

      Under AIA § 102(b)(1)(A), an inventor has one year from the time he or she discloses an invention within which to file a patent application.

      How will the examiner know which NPL falls under the one year exemption? In anonymous examination applicants would either have to disclose who they are to the examiner to prevent their NPL being used against them or they would have to give up the one year exemption.

      This is one of the most basic aspects of patent filing and this proposal manages to not even consider it. Makes you wonder if these “experts” are really that knowledgeable in the subject or if they are just pretending to be and have everyone tricked.

      1. 5.5.1

        I should like to point out that it appears that ‘these experts’ should be constrained to the points that actually list their names.

        The one that you are discussing lists:
        Margo A. Bagley
        Justin Hughes
        Colleen Chien
        Stephen Yelderman

        Only the one that I put in bold rings a bell.

  11. 4

    What scares me about these Biden people is the attitude that the government is there to run things and fix major problems. Just set up a basic fair system and get out of the way.

    1. 4.1

      “Just set up a basic fair system and get out of the way.”

      Sounds good, but that was hardly the attitude of the prior administration.

      Given a choice between “government is there to run things and fix major problems” and “government is there to enrich me and score points for my team”, I prefer the former.

      1. 4.1.1

        I will take option 3. “Just set up a basic fair system and get out of the way.”

        I do not disagree that you accurately characterized much of what Trump did.

    2. 4.2

      Just set up a basic fair system and get out of the way.

      Definitely agree. If a nation finds that it needs to be constantly adjusting patent operations every few years, that is a sure sign that its system was not well designed in the first instance.

      1. 4.2.1

        You can’t do this with real property because it will cause problems with fixed-interests in the land. It is much easier with patent law because every 20 years we have complete turnover of the resources being claimed.


          That does not address the underlying point of Greg’s post I don’t think D. His point is, fundamentally, with any gubmit system you set up, if you’ve got to tinker with it substantially every 20 years you almost surely screwed up the implementation in the first place back 20 years back. And he’s correct about that.


          Sure, it would be even worse if we were constantly tinkering with the real property system. That observation does not mean that it is especially good to be forever tinkering with the intellectual property system.


            … especially when the tinkering reveals that we did not learn the lessons of history (a la Act of 1952).

    3. 4.3

      “What scares me about these Biden people is the attitude that the government is there to run things and fix major problems.”

      “I’m from the gubmit and I’m here to help”

      Saint Ronald “the savior” Reagan circa 1980’s

      link to

      1. 4.3.1

        Ronald Reagan was a wise man (not even getting anywhere close to ‘savior’)- said literally no one on the Left.


    1. 3.2

      Definitely agree. The CAFC is the entity to which the Congress has traditionally committed the custody and implementation of Title 35. Historically, the CAFC has done a pretty good job of it (although it has gone somewhat off kilter in recent years from regular and unnecessary interruptions by the SCOTUS). If it ain’t broke, don’t fix it. Leave the CAFC in charge of substantive implementation (with some additional shielding from SCOTUS interference) and leave the PTO with the same rule making authority it has always had (no more, no less).

      1. 3.2.1

        Greg is close here, but underestimates the level of firehosing of the simians in the cage.

        Do more than “shield a little more” from the Supremes (how would ‘a little more’ be done anyway?). Congress needs to wield their Constitutional power of jurisdiction stri pping of the non-original jurisdiction of patent cases from the Supreme Court AND reset the CAFC to remove the trained simians.

  12. 2

    My impression of the “List of Participants” is that it includes many names of USPTO insiders and university professors who have consulted widely internationally. To me, it looks like a high quality List. The likelihood that their proposals would generate adverse unintended consequences for innovation in the USA strikes me as correspondingly smaller than anon might like to fantasize about.

    1. 2.1

      sadly no, MaxDrei, as you would quickly realize if you got past the stage of merely looking at a name, and looked at the details (hint: AAA JJ’s post touches on one of those details).

      please engage beyond the name.

      1. 2.1.1


        My impression from the list is its a bunch of people that represent large monopolies in the USA and not innovation.

  13. 1

    Those who do not understand history are bound to repeat it — MANY of the planks here will end up HURTING innovation, not helping it.

    Looking at the make-up of this organization, I do notice a variety of individuals, and have to wonder how much each contributes (or controls) any end product.

    1. 1.1

      Since the line of big tech is the ‘patents stifle innovation’ and patents are ‘thickets’ impeding progress ergo having weak and fewer patents is ‘good for innovation’ and a strengthening of the system. Ergo, the proposed reforms. Did I get my doublethink correct?

      1. 1.1.1

        Nicely done, Mr. Orwell.

        Having to innovate around someone else’s innovation is such a Mother.

        (notwithstanding the phrase, “Necessity is the Mother of invention” — FAR too many people unblinkingly buy into the trope of “blocking is bad”)


          Harken back to the days when tech complained about the Xerox monopoly on copier patents – we need to break up the cartel of Xerox, they testified to Congress! First the thermal and then the laser printer is invented and Xerox in the ash heap. Never mind congress, guess we figured it out after all.

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