The USPTO in 2018 and - National Docketing ... Patent application must be filed by an alternative...

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  • 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 Porcari Midwest

    Regional Office Detroit, Michigan

    Hope Shimabuku Texas

    Regional Office Dallas, Texas

    John Cabeca Silicon Valley

    Regional Office San Jose, California

    Molly Kocialski Rocky Mountain Regional Office

    Denver, Colorado

  • U.S. Patent and Trademark Office – Texas Regional Office Federal 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 @ TXRO TC # of

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


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

  • 1 | Opportunities at the USPTO


    • 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 USPTO o 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


    Alternative Electronic Filing Procedures During Designed and Unplanned Outages

  • 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)


  • Proposed Fee Structure Changes The 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 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.

    – 1412.pdf


  • Study on AIA Proceedings • Expanded Panels ef_march_2018.pdf

  • Motions to Amend Study 1) 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 amend 3) 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 registr