Embed Size (px)
Citation preview
Celebrating the Fifth
Anniversary of the America
Invents Act: Successes, Failures,
and Room for More Growth Janet Gongola, Senior Advisor
Office of the Under Secretary and Director
Direct dial: 571-272-8734
Overview
• Patent Quality
• AIA Trial Proceedings
• Big & Open Data
2
Enhanced Patent Quality
Initiative
3
Patent Application Inventory (Data from FY 2011 through July 25, 2016)
4
First Action Pendency and Total Pendency (Data from FY 2011 through June 2016)
5
Enhanced Patent Quality Initiative
• What is a high quality patent?
• What changes will practitioners see?
6
4 Categories of Enhanced Patent Quality
• Search Enhancements
• Prosecution Enhancements
• Post-Examination Enhancements
• Evaluation of Examination
7
Search Enhancements
• Global Dossier
• Prior Art Roundtable
8
Global Dossier: Office Action Access
9
Global Dossier: Document Filtering
10
Prior Art Roundtable
• Two topics: – Obtaining prior art from Global Dossier for foreign counterpart
applications and from U.S. dockets for parent/child applications; and
– Printing prior art on issued patents
• September 28, 2016 at USPTO in Alexandria, VA
• Comments due by October 28, 2016 to [email protected]
11
Prosecution Enhancements
• Post Prosecution Pilot—started on July 11,
2016
• Petitions Timeline
• Cancer Moonshot—started June 29, 2016
12
Post Prosecution Pilot (Data as of August 29, 2016)
13
Petitions Timeline http://www.uspto.gov/patents-application-process/petitions/timeline/patents-petitions-
timeline#step1
14
Petitions Timeline Example
15
Cancer Moonshot (aka Patents for Patients) • Free, fast track examination for patent applications related to cancer
treatment
• Available to any applicant including early stage bio-tech companies, universities, large pharmaceutical companies, and entities with a products in FDA approved clinical trials
• Also available if applications is already on file with the USPTO
• Started in June 29, 2016 and will run for 1 year
• Goal is to complete examination within 1 year of application filing
16
Post Examination Enhancements
• Post Grant Outcomes Pilot—closed on
August 15, 2016
• Design Patent Publication Improvements
17
Post Grant Outcomes Pilot
18
Post Grant Outcome: Survey
• In the Office Action of the child case, did the examiner refer
to any of the references cited in the AIA trial petition of the
parent?
19
Post Grant Outcome: Survey
• If the examiner did not use any references cited in the AIA
trial petition, why not?
20
Post Grant Outcome: Survey
• How did the examiner apply the AIA trial reference(s) in the
child application?
21
Post Grant Outcome: Survey
• Did the examiner consider any other documents submitted
with the petition, e.g., expert declaration(s)?
22
Design Patent Printing
23
Evaluation of Examination
• Topic Submission for Study
• Revised review process for examiner’s
work product
24
Case Study Topics
• 35 U.S.C. 101
– Deviation of 35 U.S.C. §101 rejections from official guidance and
correctness/completeness of rejections and e analysis
– Consistency of the application of 35 U.S.C. §101 across art units/technology centers
– Practice of compact prosecution when 35 U.S.C. §101 rejections are made
• Correctness and clarity of motivation statements in 35 U.S.C. §103 rejections
• 35 U.S.C. 112
– Enforcement of 35 U.S.C. §112(a) written description in continuing applications
– Consistent treatment of claims under 35 U.S.C. §112(f)
25
Master Review Form http://www.uspto.gov/sites/default/files/documents/MRF%20-
%20IQS%20Version%2020160226%20-%20Final.pdf
26
Master Review Form Example
27
AIA Trial Proceedings
28
29
30
31
32
33
34
Cuozzo v. Lee
• PTAB may construe claims in an issued
patent according to their broadest
reasonable interpretation
• PTAB’s decision whether to institute an IPR
proceeding is judicially unreviewable
35
36
37
38
39
New Final Rules
• Published on April 1, 2016; effective on
May 2, 2016
• Major rule changes:
– Patent owner preliminary response
– Claim construction for expired patents
40
Big & Open Data
41
PatentsView https://www.commerce.gov/media/photo/patentsview-screenshotjpg
42
Assignment Database http://assignment.uspto.gov/
43
Open Data Portal https://developer.uspto.gov/
44
Example: U.S. v. Foreign Filings
45
Questions?
Janet Gongola, Senior Advisor
Office of the Under Secretary and Director
Direct dial: 571-272-8734
