Transcript PPAC Slides May 2013.Key International Issues.05152013

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Conversation with the
EPO and the USPTO
Mr. Mark Powell, Deputy Commissioner
Office of International Patent Cooperation
United States Patent & Trademark Office
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Discussion Topics
– Collaborative Efforts with the EPO
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Bilateral/Trilateral/IP5
Establishment of OIPC
Common Patent Classification (CPC)
Reducing Barriers to Information Sharing
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Global Dossier
Patent Prosecution Highway (PPH)
Common Citation Document (CCD)
Hague Agreement
– Global Prosecution & the USPTO
– USPTO Office Updates
• Quality Initiatives
• Case Law
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Collaborative Efforts with
the EPO
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International Cooperation
− Cooperation among world IP offices
• Multilateral
• Trilateral (US, JP, EP est. 1983)
• IP5 (+CN, KR est. 2007)
• Bilateral
− Cooperation with world IP industry groups
• Global Dossier Task Force
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Office of International Patent
Cooperation (OIPC)
Improve the quality, efficiency and predictability of patent family
prosecution, thereby improving the certainty of global patent rights.
Improving Global
Work Sharing
Develop office
processes to
assist in global
work sharing
Increase
efficiency of
applicant
processes to
improve global
work sharing
Resolve legal
issues
hindering
global
work sharing
Provide IT
solutions to
enhance
global
work sharing
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Cooperative Patent Classification
• The Cooperative Patent Classification (CPC) is
a new classification system developed by the
USPTO and EPO
• CPC launched on January 1, 2013
• CPC will lead to more efficient and
comprehensive searches
• USPTO fully implemented CPC in January
2015
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Other Cooperative Efforts with
EPO
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Electronic Priority Document Exchange
IP5 Patent Prosecution Highway
Prior Collaboration Pilots
Common Understanding in other for a
Compliance with EPC 141-electronic means
Amendment to Rule 14
Common Citation Document System
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Global Prosecution and the
USPTO
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Global Dossier
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Global Dossier
Global Dossier is a proposed set of business services aimed at modernizing the
global patent system and delivering benefits to all stakeholders
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Global Dossier Benefits
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Provides a single, secure point of access for the
management of dossier and examination information
Enables and encourages streamlining of office procedures
among different IP offices
Increases efficiency and predictability of global patent
family prosecution
Cost savings for patent applicants – will allow for more IP to
be protected
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Global Dossier Services
Services will be delivered incrementally
− Dossier Access – will allow users to access all available
information about applications and patents in the
participating offices
• In Spring 2015, USPTO examiners received access to the
dossier information of the related IP5 applications
• In November 2015, the USPTO-hosted User Interface for
Global Dossier will be released to the public
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Potential Advantages
− To Applicants
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Monitor portfolio
More uniformity in patent coverage
Reduce litigation risk of inconsistent arguments
Reduce ID5 burdens
Reduce costs
− To Examiners
• Facilitated work sharing
• Improve quality
• Increased uniformity and potential harmonization
− To Third Parties
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Facilitate searching
Reduce litigation costs
Ease due diligence opinions
Reduce translation burdens
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USPTO Global Dossier User
Interface
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Stakeholder Input on
Global Dossier
− IdeaScale - http://uspto-globaldossier.ideascale.com/
• IdeaScale is one of the ways that OIPC will be gathering
stakeholder input and feedback on Global Dossier.
− Vote and comment on the various ideas
− Provide additional suggestions for services and features
that would improve the ability to monitor and manage
related cases around the world
− Focus Sessions
• Being planned to gather input and feedback on services
− Contact the Global Dossier Team
• [email protected]
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Common Citation Document
(CCD)
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Common Citation Document
− CCD application provides single point access to up-to-date
citation data relating to the patent applications of 31 different
patent offices.
− It consolidates the prior art cited by all participating
offices for the family members of a patent application,
thus enabling the search results for the same invention
produced by several offices to be visualized on a single page.
− Over 21 Million citing publications listing over 175 Million
Patent and Non-Patent documents
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CCD Participating Offices
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ARIPO
Austria
Australia
Belgium
Bulgaria
Switzerland
China
Cyprus
Czechoslovakia
Germany
Denmark
Eurasian
European Patent Office
Spain
Finland
France
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Great Britain
Greece
Italy
Japan
Korea
Luxembourg
Malaysia
Netherlands
Norway
Russia
Singapore
Turkey
Taiwan
United States of America
WIPO
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CCD Data Among IP5+ Offices
Office
Citation Data
Data Availability
EPO
• Both patent and non-patent
• All possible procedures
• Citing publications from
1978 - present
JPO
• Both patent and non-patent
• Covers all search, examination,
opposition and appeal procedures
• Does not include applicant citations
• Citing publications from
1965 - present
KIPO
• Covers search and examination
• Both patent and non-patent
• Citing publications from
2006
SIPO
• Covers Search only
• Both patent and non-patent
• Citing publications from
June 2010
USPTO
• Both patent and non-patent
• Only applicant and search citations
• Made available at time of grant
• Search citation publications
from 1947 – present
WIPO / PCT
• Both patent and non-patent
• Only applicant and search citations
• Made available when application is
published
• Search reports from 1978 –
present
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CCD Capabilities
− Provides family member search capabilities
• Family timelines
− Shows cited patent references in either one or two viewers to
compare references
− Shows classification and fields searched; Expands CPC
classification codes and names
− Shows bibliographic data of cited references or family
members
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Using CCD
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CCD – Navigating the Patent Records
Selecting an entry in the CCD Viewer on the left frame, provides an option to view the
document’s Also Published As entries in the right frame. Select the desired document
from the drop-down menu, -Select publication-, for viewing in the Inspector Pane.
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CCD – Double Inspector View
The Double Inspector also allows side-by-side comparison of two different documents;
to compare different documents, select the first document from the CCD Viewer, select
Double inspector, right click on the second documents; select Show in inspector 2.
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CCD - Timeline
The Timeline graphically displays the timespan for a collection of patent documents. Two
options exist from the drop-down menu; Single application mode or Compare mode.
Displayed is the Single application mode; the selected item is in the bold blue color.
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CCD – Classification Codes
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CPC codes are
listed for each
document
Click on an entry
to see the class
schedule and
definitions
Click on Show
representative
clippings to
displays figure 1
of patents
assigned that CPC
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CCD and the User Community
− Applicants can identify and address references that have
been cited in related international applications at other IP
offices and which may affect the patentability of their US
application
− Increased public awareness of the benefits of CCD would
certainly lead to a more efficient and predictable
international patent family prosecution.
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CCD Access
The link to the CCD website:
http://www.epo.org/searching/free/citation.html
Direct access link:
http://ccd.fiveipoffices.org/CCD-2.0.4/
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Patent Prosecution Highway
(PPH)
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Patent Prosecution Highway
What is PPH?
– A system of work sharing that improves examination
efficiency by reducing duplication of effort among
patent offices
– Enables an applicant who has received a
determination of allowable claims in an application
from one office (National Stage or PCT) to obtain fast
track processing of corresponding claims in
application pending in other offices
– Originally proposed by the JPO!
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Principles of Global PPH
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Applications in both offices share the same earliest date
The Office of Earlier Examination (OEE) found at least one
claim to be allowable
All claims presented for examination must correspond to
one or more of the claims found allowable
The Office of Later Examination (OLE) has not begun
substantive Examination
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Benefits of PPH
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Accelerated Examination – guaranteed benefit
Increased Grant Rate – inherent benefit
Reduces Cost – inherent benefit
Reduces Pendency and legal uncertainty
Increases applicant patent strategy options
• Can file continuations
− Always consider PPH!
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PPH Participants with the
USPTO
Global PPH Principles
Japan
United States
Korea
United
Kingdom
Canada
Australia
Denmark
Finland
Russia
Spain
Sweden
Portugal
Israel
Nordic
Norway
Iceland
Singapore
Austria
Hungary
Bilateral Agreements
Columbia
Philippines
Czech Republic
Germany
Mexico*
Nicaragua
Taiwan
Romania*
Poland*
* - Bilateral agreements under global principles
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Hague Agreement
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Hague Agreement
− The United States deposited its instrument of ratification to
the Geneva Act of the Hague Agreement Concerning the
International Registration of Industrial Designs with the World
Intellectual Property Organization (WIPO) in Geneva,
Switzerland on February 13, 2015
− The treaty went into effect for the United States on May 13,
2015
− A single filing constitutes a filing in up to 64 contracting
parties
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How does the Hague Agreement
Impact Stakeholders?
− Language: English, French or Spanish
− File
• Directly with WIPO electronically or in paper
• Indirectly through the USPTO
− Up to 100 different Designs (same Locarno Class)
− Single set of formal requirements apply
− Single set of fees can be paid to WIPO
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USPTO Office Updates
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Office of Quality Management
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Office of Quality Management
Mission: To optimize the quality of Patent products, processes and services to
build a culture of process improvement and overall quality for the Patents
organization.
Functions:
• Provide support and services to improve quality throughout Patents
organization
• Train continuous improvement at all levels
• Prioritize improvement initiatives in alignment with the organization’s
strategic goals
• Monitor improved processes and facilitate the replication of best practices
• Identify and facilitate cross-organizational improvement initiatives
• Identify trends (positive and negative) to improve or replicate processes
• Coordinate strategic steering committee to identify and prioritize
opportunities for improvement
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Office of Quality Management
•Office of Process
Improvement
• Process Audits &
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•Office of Patent Training
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Recommendations/Proposed
Improvements
Provide Coordinated Analysis and
Monitoring
Advise on Process Improvement
Analyze Trends
Define Standards/Metrics
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•Office of Process
Improvement (OPI)
•Office of Patent Quality
Assurance (OPQA)
•Office of Patent Quality Assurance
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Quality Review
ISO Compliance
Analyze Trends
Define Standards/Metrics
Feedback
•Office of
Patent Training (OPT)
•Office of
Ombudsman/
Stakeholder
Outreach
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Provide Training Assistance
Provide enhanced Practices/Procedure
Recommend Corrective Action &
Preventive Action as needed
Review and Analysis Practice/Procedure
to enhance their quality
Analyze Trends
Define Standards/Metrics
Advance Legal and Technical Training
•Office of Ombudsman and
Stakeholder Outreach
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Incident Management
Complaint Handling
Internal/External feedback
Trend Analysis
Define Standards/Metrics
Feedback
External Partnering/Engagement
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Enhanced Patent Quality
Initiative
•Work
Product
•Measuring
Patent
Quality
•Customer
Service
•Pillars of Enhanced Patent Quality
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Internal Steps to Improve Patent Quality
Current Internal Initiatives
Quality Assurance Specialist Details
GS-14 Trainer Program Expansion
Search Analysis Program
Peer Interaction Meetings
Review Quality Assurance Specialist Assistance in
Technology Center
– Interview Specialists/Facilitators
– Conduct Quality Awareness Campaign and Training
• 35 USC § 112(f)
• 35 USC § 101
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External Steps to Improve Patent
Quality
Current External Initiatives
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Quality Webinar Series
Ombudsman Hours by Time Zone
Patent Quality Roadshows (Fall 2015)
Federal Register Public Comments Analysis
Patent Quality Summit Comments Analysis
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Patent Quality Summit
Emerging Themes
• Providing a clear record throughout prosecution
• Differentiating between the measures of the
patent process and the patent product
• The usefulness (necessity) of face-to-face
interviews
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Patent Quality Summit
• Federal Register Notice Comment Period
– Deadline extended to May 20, 2015
• Comments and suggestions will be consolidated
into database for consideration while planning
future actions with regard to quality initiative
• Complete summit video available for viewing online
• Visit USPTO’s Enhanced Patent Quality Initiative at
http://www.uspto.gov/patent/initiatives/enhanced-patent-qualityinitiative
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Case Law
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Recent Supreme Court Activity
Regarding Judicial Exceptions
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35 U.S.C. § 101 - Judicial Exceptions
• Supreme Court has long held that § 101
excludes certain subject matter from
patent eligibility:
– Abstract Ideas
– Laws of Nature/Natural Principles
– Natural Phenomena (including Products of
Nature/Natural Products)
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Eligibility Guidance
• The USPTO has issued updated examination
guidance after each Supreme Court decision
• Most recently, 2014 Interim Guidance on
Patent Subject Matter Eligibility (Dec. 16,
2014)
– Incorporates principles from the body of legal
precedent, in particular Alice Corp., Myriad and
Mayo
– Addresses areas highlighted by public feedback
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Additional 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 Guidance
http://www.uspto.gov/patents/law/exam/interim_guidance_subject_matter_eligibility.jsp
• Includes the Guidance document, additional claim examples and
relevant case law
• All updates will be posted to this page
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Thank You!
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