National Association of Patent Practitioners 20th Annual Meeting and Conference

Drew HirshfeldCommissioner for Patents, USPTO

July 28, 2016

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Enhanced Patent Quality Initiative

Qual·i·ty (n): A quality patent is one that

is correctly issued in compliance with all the

requirements of Title 35 as well as the

relevant case law at the time of issuance.

Qual·i·ty

Quality outreach efforts/public engagements

• Monthly quality web chats

• Quality fair

• Quality symposium

• Federal Register Notices

• Roadshows

• Speeches/presentations

Enhanced Patent Quality Initiative (EPQI)Leading in Quality Excellence: “Every Interaction Counts”

Three aspects of quality to focus on:

• Excellence in work products and services at every stage of the patent process

• Excellence in measuring patent quality, including appropriate quality metrics

• Excellence in customer service6

Data Analysis

Pillar 1• Topic Submission for Case

StudiesPillar 2• Clarity and Correctness Data

Capture (Master Review Form, or MRF)

• Quality Metrics

Examiner Resources, Tools & Training

Pillar 1• Automated Pre-Examination

Search Pilot• STIC Awareness Campaign • Clarity of the Record Training • Post-Grant Outcomes Pillar 3• Interview Specialist

Changes to Process/Product

Pillar 1• Clarity of the Record PilotPillar 3• Post-Prosecution Pilot (P3)• Reevaluate QPIDS• Design Patent Publication

Quality

Evolving Programs - Focusing on three areas:

Data Analysis Examiner Resources, Tools & Training

Changes to Process/Product

Evolving Programs

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Training

Training

35 USC 101• 2014 Interim Guidance on Patent Subject Matter

Eligibility

• Analyzing Nature-Based Products

• Abstract Idea Workshop

• July 2015 Update to Interim Guidance

• May 2016 Update to Interim Guidance

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• Examining Functional Claim Limitations: Focus on Computer/Software-related Claims

• Broadest Reasonable Interpretation (BRI) and the Plain Meaning of Claim Terms

• 35 USC 112(f)– BRI and Definiteness of 112(f) Limitations

– Evaluating 112(f) Limitations in Software-Related Claims for Definiteness under 112(b)

– Identifying Limitations that Invoke 112(f)– Making the Record Clear

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Training

Claim Interpretation

Training35 USC 112(a)• Focus on Electrical/Mechanical and Computer/Software-

related Claims - Written Description- Enablement

Training Improving Clarity and Reasoning in Office Actions Training

• Ensuring that Claims are Definite under 35 USC 112(b)• Reasons for Allowance

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Resources• General page for examination guidance and training materials

http://www.uspto.gov/patents/law/exam/examguide.jsp• Specific page for the December 2014 Interim Eligibility

Guidancehttp://www.uspto.gov/patents/law/exam/interim_guidance_subject_matter_eligibility.jsp– Includes the Guidance documents, additional claim examples,

training, relevant case law, public comments– All updates are posted to this page

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Global Dossier

Global Dossier is a set of business services modernizing the global patent system and delivering benefits to all stakeholders

Global Dossier

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Global Dossier Services• Current Services

– Public Access• Online access to the dossiers of related applications filed at participating offices

• Easier to view, monitor, and manage IP protection around the world

– International Patent Family• Provide examiner access to work done on related applications at other offices

• Upcoming Future Services– Document Sharing Functionality

• Share documents between offices (prior art, supporting documents, etc.)

– WIPO CASE Linkage• Provide access to additional participating offices outside of the IP5

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Questions