Deputy Director Provides Keynote at PTO Day

By Donald Zuhn --

One day after the U.S. Senate confirmed her nomination as Director of the U.S. Patent and Trademark Office, Deputy Director Michelle Lee provided the luncheon address at the 25th Annual Conference on USPTO Law and Practice (PTO Day), an event co-sponsored by the Intellectual Property Owners Association (IPO) and USPTO.  For those who were unable to attend PTO Day, the Deputy Director's remarks have been made available on the USPTO website.

The Deputy Director's published remarks touch on a number of developments at the USPTO in the past year.  She begins by discussing the Office's new Enhanced Patent Quality Initiative, encouraging attendees to read the Office's Federal Register notice on the initiative (a summary of this notice can be found here).  The Deputy Director notes that the "new initiative is built around three core elements:  Excellence in prosecution services; excellence in customer service; and excellence in quality measurement."  With respect to the first element, she points out that the Office is seeking public input regarding three proposals:  (1) To provide a mechanism for an applicant to request USPTO's quality assurance team to review a particular application; (2) To require an enhanced automated pre-examination search that leverages the latest in search technologies; and (3) To enhance the clarity and completeness of the prosecution record.  Concerning the second proposal, the Deputy Director suggests that search results from the enhanced search could be given to the applicant to allow the applicant the opportunity to amend the claims before the examiner begins substantive examination.  As for the third proposal, the Deputy Director notes that the clarity and completeness of the prosecution record could be enhanced "by making claim construction explicit in the record; providing further details of the interview between applicant and examiner; or requiring a statement for the reasons for allowance."

The Deputy Director also reminds practitioners and applicants that the Office will be holding a two-day Patent Quality Summit on March 25-26, and closes the patent quality discussion by pointing out that a new senior executive position -- Deputy Commissioner for Patent Quality -- had been created at the USPTO, and that Ms. Valencia Martin-Wallace, an electrical engineer with more than 20 years experience in the office as an examiner, TC Director, and Assistant Deputy Commissioner for Patent Operations, has been appointed to the post.

The Deputy Director's remarks next focus on the Patent Trial and Appeal Board (PTAB).  She indicates that "[t]he PTAB has been quite busy meeting a greater-than-expected demand for the AIA authorized trials," noting that as of mid-February, the PTAB had received nearly 2,500 inter partes review filings and nearly 300 covered business method filings.  She declares that "[i]t's pretty clear why these proceedings have proven so popular," noting that they "provide a faster and more affordable means to challenge issued patents," and adding that:

The PTAB is issuing a claim construction (by way of our decision to institute) in a mere six months.  Compare that to the pace of the so-called Rocket Docket, the Eastern District of Virginia, where the parties will find the process taking about 12 months, or in other federal courts where the proceedings can drag on for three years or more.

The Deputy Director also announces that the Office will be issuing interim PTAB rules to provide "'quick fixes' based upon public feedback as well as suggestions from our own judges," to be followed by a second package of proposed rules to address "more challenging changes."

Briefly touching on the issue of patent reform, the Deputy Director declares that such reform is still necessary, but that "any legislative changes to our patent system need to take into account changes that have already occurred in the courts and administratively including at the USPTO."

Towards the end of her remarks, the Deputy Director discusses the Office's Open Data Initiative, noting that the USPTO "house[s] a treasure trove of data."  She explains that the Office is "moving forward on ways to better disclose and disseminate that data, as well as making better use of it ourselves."

The full text of the Deputy Director remarks from the PTO Day address can be found here.

Comments

[Dan Feigelson]

"any legislative changes to our patent system need to take into account changes that have already occurred in the courts and administratively including at the USPTO." Sounds similar to what David Kappos told Congress last year. Think they'll listen?