The USPTO in 2018 and Beyond

Hope Shimabuku, Texas Regional Director State Bar of Texas – IP Section Council

September 14, 2018

USPTO Regional Offices Leadership

Damian PorcariMidwest

Regional OfficeDetroit, Michigan

Hope ShimabukuTexas

Regional OfficeDallas, Texas

John CabecaSilicon Valley

Regional OfficeSan Jose, California

Molly KocialskiRocky MountainRegional Office

Denver, Colorado

U.S. Patent and Trademark Office – Texas Regional OfficeFederal Annex Terminal Building, 207 S. Houston Street Dallas TX

Employees Hired:• 122 Patent Examiners• 18 Patent Trial and Appeal Board

(PTAB) judges• 25 Management/Staff

• Office Hours: 8:30-5 PM• Services

– Public Search Facility• Available from 9:00-4:30 PM

– Examiner Interview Room– Hearing Room– Public Meeting Space

Today @ TXROTC # of

ExaminersTC 1700 (Chemical & Materials) 8TC 2100 (Computer Architecture SW/Information Security) 15TC 2400 (Computer Networks/Multiplex/Cable/Cryptography/Security) 4TC 2600 (Communications) 3TC 2800 (Semiconductors/Electrical/Optical Systems & Components) 9TC 3600 (Transportation/Electronic Commerce/Construction/Ag/Licensing & Review)

21

TC 3700 (Mechanical Engineering/Manuf/Products) 12TC 4100 (Patent Training Academy) 21Veterans 24w/JD or LLB 17

1 | Opportunities at the USPTO

USAJOBS.gov

• Deputy Chief Administrative Trademark Judge | Open til 9/28/18

• Chief Administrative Patent Judge | Open til 10/4/18• Chief Information Officer | Open til 10/8/18

2 | IT System

Alternative Electronic Filing Procedures During Designed and Unplanned Outages• The USPTO experienced significant unplanned electronic

business system outages.• Docket No.: PTO-P-2018-0054 provides the procedure for

filing patent applications by alternative electronic means during a designated significant unplanned electronic business system outage and applies to patent applications filed on or after August 15, 2018 through and including August 23, 2018.

• These applications will be considered filed by the USPTO's electronic filing system and will not incur the fee required when not filed by the USPTO's electronic filing system.

• Procedure: Patent application must be filed by an alternative filing method

permitted by 37 CFR 1.6, such as by the Priority Mail Express® service of the U.S. Postal Service or hand delivery to the USPTOo If not, filing date of the application will be the date on which the application is

received at the USPTO headquarters in Alexandria, Virginia A copy of the application must be filed via EFS-Web (or Patent Center)

no later than: (1) One month from the date a filing receipt is first issued for the application, and be accompanied by a request for refund, if the non-electronic filing fee has been paid; or (2) the expiration of the period for reply to a notice requiring payment of the non-electronic filing fee.o Copy must be filed as a follow-on paper in the application, and not as a new

application.

Alternative Electronic Filing Procedures During Designed and Unplanned Outages

https://www.uspto.gov/patent/fees-payment-information/filing-patent-applications-electronically-during-designated

3 | Fee Updates

Fee Setting Background• Leahy-Smith America Invents Act (AIA) granted USPTO

authority to set patent and trademark fees• USPTO first exercised patent fee-setting authority in 2013

resulting in– Reduction of patent application backlog and decrease pendency– Allowed office to begin building patent operating reserve– Advance key policy considerations while taking into

consideration cost of individual services• Micro entity status – 75% fee reduction• Small entity – 50% fee reduction

Fee Setting Process• Public Hearing: Held on Sept 6• Biennial review of fees, costs and

revenues– Review began in 2015 went into effect on

January 16, 2018– This review sets the path for new fees to go

into effect in January 2021

Goals of currently proposed fees• Reducing the patent application backlog• Shortening patent pendency• Improving patent quality• Enhancing patent administrative appeal and

post-grant processes• Engaging effectively internationally• Improving our information technology (IT)

infrastructure.

Proposed Fee Structure ChangesThe USPTO proposes to set or adjust the fees contained in Table of Proposed Fee Adjustments. The more notable changes impact the following fee categories [See Appendix G for more information]:

• Non-DOCX Filing Surcharge• Maintenance Fee Surcharge – Late Payment within Six Months• Request for Expedited Examination of a Design Application Fee• Utility and Reissue Issue Fees• Utility and Reissue Maintenance Fees• Office of Enrollment and Discipline Fees• Pro Hac Vice Admission• PTAB: AIA Trial Fees• Patent Service Fees• Other Fees

Utility Patent Issue and Maintenance Fees

https://www.uspto.gov/sites/default/files/documents/20180906-PPACHearing-Patent_Fee_Proposal.pdf

4 | PTAB Updates

PTAB’s Guidance in Light of SAS• On April 24, 2018, the U.S. Supreme Court issued SAS

Institute Inc. v. Iancu, 2018 WL 1914661, (U.S. Apr. 24, 2018).

Proposed Rule:

Changes to Claim Construction Standard for PTAB Interpretation

• Comment Deadline: July 9, 2018• Still in the process of being reviewed

PTAB Trial Practice Guide (TPG) August 2018 Update• TPG August 2018 Update includes the following guidance:

– the use of expert testimony;– consideration of various non-exclusive factors in the determination of whether to institute a

trial;– providing for sur-replies to principal briefs as a matter of right;– the distinction between motions to exclude and motions to strike, and the proper use of

each;– procedures for oral hearing before the Board, including the use of live testimony, sur-

rebuttal, and default time for the hearing; and– providing for a pre-hearing conference and potential early resolution of issues.

• Text of the original August 2012 TPG and August 2018 Update are available at the USPTO website.

– https://www.uspto.gov/sites/default/files/ip/boards/bpai/trial_practice_guide_74_fr_48756_081412.pdf

– https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practice_Guide.pdf

Study on AIA Proceedings• Expanded Panels

https://www.uspto.gov/sites/default/files/documents/chat_with_the_chief_march_2018.pdf

Motions to Amend Study1) the number of motions to amend that had been

filed in AIA trials, both as a cumulative total and by fiscal year

2) subsequent developments of each motion to amend3) the number of motions to amend requesting to

substitute claims that were granted, granted-in-part and denied-in-part, and denied

4) the reasons the Board provided for denying entry of substitute claims

Graph II: Subsequent Developments of Motions to Amend (FY13 to FY18: 10/1/2012-3/31/2018)

Graph III: Disposition of Motions to Amend (FY13 to FY18: 10/1/2012-3/31/2018)

Reasons for Denying Entry of Substitute Claims (FY13 to FY18: 10/1/2012-3/31/2018

*

*All but one of the cases in which multiple statutory reasons were provided for denying entry of substitute claims included §§ 102, 103 and/or 112 as a reason for denial.

5| Patent Operations

Berkheimer Memorandum

• Clarification for inquiry into whether a claim limitation represents:– well-understood– routine, – conventional activities (or elements) ….to a skilled artisan in the relevant field

6 | Trademark Updates

Mandatory Electronic Filing

• As of midyear FY18, ~99% of TM applications are filed electronically but ~88% are processed electronically from beginning to end

• New rule will make use of TEAS mandatory for all trademark filings

• Notice of proposed rulemaking published May 30, 2018• Implementation likely early 2019

U.S. Counsel Requirement• Proposed rule being drafted to require foreign trademark applicants

and registrants to be represented by a U.S. licensed attorney to file a trademark with the USPTO

• New requirement will:– ensure the USPTO can effectively use available mechanisms to

enforce foreign applicant compliance with statutory and regulatory requirements;

– provide confidence to foreign applicants and the public that registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims; and

– aid USPTO efforts to improve accuracy of the U.S. Trademark Register.

• Notice of proposed rulemaking planned for fall 2018

2018 USPTO Anti-Counterfeiting Video Contest• July 27-October 27, 2018• Submit a 30-60 second video to help

raise awareness about the negative effects of counterfeits.

• Winning entries will be used as a part of the public awareness compaign, and winners will be invited to an award ceremony at the USPTO headquarters.

• Visit the USPTO Trademarks website for more info about the contest.

Upcoming USPTO TXRO Outreach Events

9/21 15th Annual Symposium on Emerging Intellectual Properties Issues: Disruptive Ideas and Emerging Technology - Dallas, TX

9/24 National Docketing Association Annual Conference - New Orleans, LA10/2 China IP Road Show: What Louisiana rights holders need to know –

New Orleans, LA10/3 SMU Dedman School of Law Emerging Leader Board Fall Meeting – Dallas, TX10/4 China IP Road Show: What Texas rights holders need to know - Austin, TX10/6 STEM Gals Robotics Competition – Allen, TX10/17 Eastern District of Texas Bench Bar Conference - Plano, TX

NOTE: USPTO Director Andrei Iancu keynoting 10/18 @ AT&T Cowboy Stadium10/30 20th Annual U.S. Department of Health and Human Services

SBIR/STTR Conference – Dallas, TX1/15-1/17 STEPP Program @ Texas Regional Office – Dallas, TX

Learn about future events by visiting the USPTO Texas Regional Office (TXRO) webpage.