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Boundaries of a patent should not depend on which forum reviews

USPTO Director Andrei Iancu at the AIPLA annual meeting, October 15, 2018.

EDITORIAL NOTE: What follows is the keynote speech delivered by Andrei Iancu, Director of the U.S. Patent and Trademark Workplace, on the American Mental Property Regulation Affiliation (AIPLA) Annual Assembly in Washington, DC, on October 25, 2018. 

“For the sake of predictability and reliability, the boundaries of a patent should not depend on which forum happens to analyze it. People who want to invest in a patented technology, or who want to invent or design around one, should be able to determine, within reason, what that patent means. Objectively speaking, that meaning cannot, and should not, depend on the happenstance on which forum might review the patent, years after issuance.”

USPTO Director Andrei Iancu at the AIPLA annual meeting, October 15, 2018.

USPTO Director Andrei Iancu on the AIPLA annual assembly, October 15, 2018.

Thanks, Myra, for the introduction. And good afternoon everybody. I’m honored and delighted to be right here with all of you in the present day. The USPTO and AIPLA have had a fantastic, longstanding relationship, and I do know that our work collectively to strengthen and shield the American mental property system—so important to our nation’s continued financial success—will proceed for a very long time to return.

That is a new day for the USPTO and our Patent Trial and Appeals Board (PTAB). For we at the moment are growing stability, consistency and transparency, particularly in publish grant proceedings. And in doing so, we’re growing confidence in these essential proceedings.

Since Congress handed the America Invents Act (AIA) in 2011, we now have acquired greater than 9,000 petitions and issued over 2,000 remaining written selections. So, we now have broad expertise in understanding the true advantages and true challenges of these proceedings.

Opinions on how post-grant proceedings have been carried out up to now diverge extensively. Some vigorously dislike them, arguing that they’re unfair and tilt an excessive amount of in favor of the petitioner. Certainly, some want to see the system abolished solely. Others love the system, believing it’s one of the best software we have now to right errors, get rid of “bad patents,” and enhance patent high quality. The truth is, some want to see IPRs expanded to think about much more points.

Because the company in cost of administering these proceedings, it’s our obligation to rigorously weigh all these factors of view, and every little thing in-between, and to deliver stability to the present course of. It’s our obligation to take a look at validity challenges holistically, and decide the general greatest strategy for the patent system as a entire.

The USPTO has rigorously studied the previous 6 years of these proceedings; we’ve got mentioned the problems with our stakeholders, together with many of you on this room at this time; and we’ve listened to all who spoke up. And so now, in an effort to guarantee stability, consistency and transparency, so as to improve confidence within the proceedings, and as a way to make the patent system as a entire simpler, extra environment friendly and extra dependable, we took motion.

To that finish, we up to date the Trial Apply Information this previous August, revealed two new Normal Working Procedures for PTAB in September, and revealed a last rule on the declare development normal in October. And in simply a few days, we’ll formally publish a proposal for an up to date declare modification process in AIA trials.

All of which is what I imply once I say: It’s a new day on the PTAB!

To start out, our current replace to the Trial Follow Information was the primary because it was revealed in 2012. Within the replace, we outlined some non-exclusive elements relating to the establishment determination, together with issues relating to follow-on petitions, the general impact on the financial system, the integrity of the patent system, and the like; added sur-replies for the patent proprietor; offered new steerage on the right use of professional testimony, and procedures for oral hearings earlier than the Board; and established a pre-hearing convention, which might assist focus disputes and expedite decision of points.

Second, in an effort to additional enhance Board practices and transparency, we issued two revised Commonplace Working Procedures, or SOPs.

The primary SOP outlines the procedures the Board makes use of for assigning (or re-assigning) judges to instances. This SOP additionally clarifies that the PTAB will increase panels solely in very restricted circumstances, usually the place consistency amongst a number of associated instances is required. And even then, the enlargement have to be achieved with the approval of the Director and advance discover to the events.

The second SOP creates a Precedential Opinion Panel and governs precedential and informative selections of the Board. This panel will principally be convened to determine points of distinctive significance that may set forth binding company coverage. Members of this panel are by default the USPTO Director, the Commissioner for Patents, and the Chief Decide, though in some circumstances this authority may be delegated to a pre-defined listing of people for a specific case.

This panel will allow prime company administration to deal with some of the thorniest points that come to us, and to instill consistency all through the company. It will assist be sure that the totally different teams inside the company converse, the place applicable, with one voice. We’re, in any case, one company.

This SOP additionally outlines the necessities for designating, or de-designating, a determination as precedential or informative – to deal with considerations about constant steerage for apply earlier than the PTAB. This new designation process should assist improve the quantity of precedential opinions issued by the PTAB.

Up to now, we now have averaged solely a handful of precedential opinions yearly, an quantity that appears far too low for the quantity and significance of the instances we see. By comparability, the TTAB, on the logos aspect, designates considerably extra precedential opinions, regardless of a a lot smaller docket. I’m not suggesting that the PTAB should essentially designate as many precedential selections because the TTAB, however, to extend consistency on the PTAB, one thing greater than the present mere handful appears so as. The designation course of outlined within the new SOP should assist in that regard.

Mixed, these two SOPs improve transparency, promote consistency, and—I consider—will improve confidence within the course of.

Third, on October 11, we revealed the ultimate rule for declare development in AIA proceedings earlier than the PTAB. The identical commonplace will now be utilized in AIA Trials earlier than the Board as in civil actions in district courts, and in proceedings on the Worldwide Commerce Fee (ITC). Moreover, any prior declare development choice in a civil motion or earlier than the ITC might be thought-about by the Board, so long as it’s launched into the report on a well timed foundation. The brand new declare development commonplace will apply to all petitions filed on or after November 13, 2018.

Wanting on the patent system holistically, that is a critically essential rule change.

For the sake of predictability and reliability, the boundaries of a patent should not depend on which forum occurs to research it. Individuals who need to spend money on a patented know-how, or who need to invent or design round one, should have the ability to decide, inside cause, what that patent means. Objectively talking, that which means can’t, and should not, depend on the happenstance on which forum may assessment the patent, years after issuance. The rule change, subsequently, will increase the predictability of our patent system.

Likewise, utilizing the identical declare development normal should enhance efficiencies for everybody concerned. Events can develop a single set of declare development arguments and may leverage the work already executed in district courtroom proceedings, or vice versa. Plus, one forum can think about the work beforehand finished by one other forum. The rule will subsequently additionally enhance consistency between proceedings.

In any case, some 85 % of patents contested on the PTAB are concerned in parallel litigation. It appears self-evident that the identical patent contested in several tribunals should have its which means – its boundaries – decided utilizing the identical normal.

Now, because it seems, the change from the Broadest Affordable Interpretation to the Phillips development has generated vital curiosity amongst our stakeholders. We now have acquired about 375 public feedback, and the rule change has been met with widespread help from business, teachers, people, and commerce organizations, together with the AIPLA.

A number of, nevertheless, are not happy with the change. Some of these teams have advised that this modification makes it simpler to protect what they name “low-quality patents.”

That’s curious, as a result of all we did was to say that we’ll use the identical commonplace at present utilized by district courts and the ITC, and that has been utilized in numerous courtroom proceedings for a few years up to now. Arguments that utilizing the exact same commonplace already utilized in federal courts preserves “low-quality patents” are, subsequently, unconvincing. In different phrases, no matter a “low-quality” patent means, it can’t be that it’s a patent that survives problem based mostly on a declare development normal utilized in district courtroom.

Put one other approach nonetheless: There isn’t a cause for the USPTO to be utilizing a declare development commonplace in IPR that eliminates patents that might in any other case survive problem in District Courts. Doing so is an instance of what I’ve known as an over-correction that dangers throwing out the child with the bathwater.

Our filters have to be appropriately set. Aligning AIA proceedings on the PTAB with the district courts and the ITC brings stability, predictability and consistency to the patent system as a entire.

Lastly, within the subsequent few days, we’ll formally publish a discover in search of feedback on a new declare modification course of for publish grant proceedings.

I consider that the present modification course of in AIA proceedings is not working as meant. As famous simply final yr by the Federal Circuit in its lead Aqua Merchandise determination: “Despite repeated recognition of the importance of the patent owner’s right to amend during IPR proceedings—by Congress, courts, and the PTO alike—patent owners largely have been prevented from amending claims in the context of IPRs.”

Certainly, declare amendments have been comparatively uncommon – filed in lower than 10 % of AIA trials – and sometimes granted. Of the already small quantity of instances the place the Board determined a movement to amend, the Board granted or granted partially solely 10 % of such motions. Some have instructed that events have merely stopped even making an attempt to amend the claims as a result of they see the trouble as largely futile.

However the AIA statute particularly supplies for declare amendments in IPRs, so so as to absolutely implement the intent of the AIA, we should discover a method to make this modification course of possible and significant. In different phrases, it is very important be sure that publish grant proceedings are not all-or-nothing. It’s not within the curiosity of the patent system as a entire to invalidate a patent completely if it truly describes patentable material, and appropriately-scoped claims might be drafted.

Subsequently, the modification course of should permit the patent proprietor a significant alternative to draft narrower claims. And to ensure that the chance to amend to be really significant, the patent proprietor wants enter from the petitioner and the Board, in order that appropriately-scoped claims might be drafted in mild of the prior artwork and arguments introduced.

The AIA statute itself requires a quantity of issues with respect to say amendments. For instance: First, 35 U.S.C 316(d) requires that patent house owners should have a chance to amend their claims in the course of the continuing itself. In truth, 35 U.S.C 318(a) requires the ultimate written choice to deal with each the unique and the amended claims. Thus, amendments have to be out there inside the AIA trial itself.

Second, 35 U.S.C. 316(a)(11) states that AIA trials usually should conclude inside 12 months from establishment. Subsequently, the modification procedures should usually match inside the allotted 12 month window. Third, these are inter partes proceedings. Thus, the Petitioner should have a significant alternative to take part.

And so, based mostly on in depth evaluation and session with a wide range of stakeholders, we now have developed a detailed answer that meets all of these necessities.

To realize these objectives, we suggest a new modification course of that may contain a movement filed by the patent proprietor quickly after establishment, an opposition by the petitioner, a preliminary non-binding choice by the Board, and the chance for the patent proprietor to revise the amended claims in mild of this preliminary choice.

Particularly: the patent proprietor may have a window of six weeks following an establishment determination to file a movement to amend, in the event that they so want. The petitioner will then have six weeks to oppose.

After receiving each events’ papers, one month after the opposition is due the Board will present a preliminary non-binding determination on the proposed amended claims, comparable in idea to the establishment determination for the unique claims. This preliminary determination would offer invaluable perception to each events relating to the deserves of the movement to amend.

Then, the patent proprietor could have one additional alternative to revise the amended claims, and the petitioner could have a corresponding alternative to oppose the revision. In the long run, the Board will contemplate each the unique claims and any amended claims on the listening to and within the last written determination.

Having the Board present this additional suggestions to the events earlier within the case should result in extra narrowly-tailored and targeted declare amendments, and potential earlier decision of the problems. As I stated, we’ll search public feedback earlier than finalizing the brand new process. We need to be sure that the ultimate modification process takes under consideration all of your views.

And so, with the newly up to date trial apply information, the brand new normal working procedures, the declare development normal newly aligned with federal courts, and a strong new modification course of, it’s certainly a new day on the PTAB!

I firmly consider that this mix brings extra stability to the proceedings, and higher aligns them with the unique intent of the AIA laws.

And talking of laws, a temporary legislative replace: Congress lately handed the Research of Underrepresented Courses Chasing Engineering and Science Success (SUCCESS) Act, and it’s anticipated to be signed by President Trump quickly. Importantly, this act extends the USPTO’s fee-setting authority to 2026, and can also be aimed toward selling innovation by ladies, minorities and veterans.

Increasing the innovation ecosphere broadly—each demographically and geographically—is a key precedence of ours, and we welcome the chance to review what could be completed to extend participation from these critically essential teams. The world right now could be very aggressive in relation to innovation and entrepreneurship. Throughout america, and throughout our inhabitants, we’d like all arms on deck!

We additionally want all palms on deck in relation to analyzing trademark purposes on the USPTO. It’s because the expansion of trademark registration purposes continues to rise dramatically. It grew eight % in fiscal yr 2018, which ended simply a few weeks in the past. And this was on prime of an unprecedented 12 % progress fee in fiscal yr 2017. Regardless of the huge progress, the Trademark Workplace has met all of its pendency and high quality objectives for greater than a decade straight. However not with out straining our personnel and assets. So we’re at present hiring extra trademark analyzing attorneys, and integrating them into our operations and tradition.

We’re additionally working on shifting to obligatory digital submitting for all trademark purposes, a transfer which the TTAB efficiently initiated virtually two years in the past. Though 99.9 % of preliminary trademark filings are digital, solely 88 % of purposes keep digital by way of the entire prosecution. Paper filings value the USPTO additional money and time, and can also result in optical character recognition errors because of the scanning course of. And so, we purpose to make the complete course of absolutely digital.

Individually, the Trademark Workplace additionally launched a multi-year nationwide anti-counterfeiting marketing campaign to scale back the demand for counterfeit items. To kick off this marketing campaign, there’s an anti-counterfeiting video contest, which I urge you all to enter. The deadline is November 16 and you may even win as much as $2500!

And eventually, on to probably the most thrilling information of the day!

Simply final night time, we launched a newly re-designed homepage for our web site. The brand new homepage modernizes our look, highlights our major priorities, and makes it simpler to navigate to the locations you most-often use.

And that is just the start. We’ll additional refine the house web page itself, and also will proceed to enhance the remaining of the web site.  And for all that future work, I need to ask you for assist. We’d like suggestions from frequent guests such as you. If you wish to be a tester and assist us enhance the web site, please cease by our sales space within the exhibit corridor and enroll.

And now, let me share with you a temporary demo of the brand new web page. Our new homepage consists of a number of new options particularly requested by our stakeholders. For instance, we created a “Find it Fast” function, which lets you discover the 25 most-used areas of our website in only one click on. Please word that the business-end of the web site, together with the pages you’d entry for search or filings, stay unchanged for now.

And particularly for unbiased inventors, junior attorneys, or anybody new to IP, we created a “New to IP” part linking to primary instructional assets.

We’ve additionally added fast hyperlinks on the aspect the place you possibly can simply entry the newest USPTO information, public occasions, and you may even discover my previous remarks right here! As we speak’s remarks should seem there by the top of at present.

And on the backside of the house web page, you will discover options reminiscent of our management weblog postings, fascinating movies and numerous IP-related featured occasions. The video there now, for instance, on IP attachés, options AIPLA’s personal Lisa Jorgenson!

As well as, we additionally made the interface higher for cellular units. You will notice comparable pull-down menus for shortly discovering crucial features. And additionally, you will see a selection of different options as you scroll.

And eventually, my favourite half is our new function story, proper on the prime of the house web page. That is the place every month we’ll function fascinating IP-related tales, resembling an entrepreneur, inventor, or journey of innovation. This function will present a chance for the PTO to spotlight – amongst different issues – the brilliance of inventors, the thrill of innovation, and the unimaginable advantages they carry to the world.

This month, for instance, we function Steve Katsaros, entrepreneur and inventor of a photo voltaic lightbulb, which supplies a low-cost, protected alternative to kerosene lamps. His start-up, Nokero, one of our Patents for Humanity winners, might assist over 1.2 billion individuals dwelling with out electrical energy in creating nations to actually see the sunshine.

Nokero’s mission, embodied of their identify—NoKero, which stands for “no kerosene” — is to get rid of the use of kerosene lamps, which emit noxious fumes and trigger numerous fires, and exchange them with clear power from the solar. The lamp is charged by solar energy in the course of the day, enabling its use by night time.

Mr. Katsaros shared a poignant message that he acquired from a younger boy in Kenya named Joseph who stated, “somebody purchased a couple of solar lights for me and my siblings…I’m the first one in university because I could study for hours every night when I couldn’t before.”

Innovations like that, and inventors like Steve Katsaros, are altering the world day-after-day. Simply as they’ve executed because the founding of our nation.

Steve Katsaros stated he filed a patent inside three days of conceiving his first product. As a patent agent himself, he knew the significance of defending his mental property. And so do all of you.

We should have fun the inventors, the innovations, and the entrepreneurs that make all this attainable. Let’s shine a mild on the individuals who put our nation at the vanguard of international innovation, and the world-class IP system that made all of it potential.

That is the dialogue we should have. This function on our web site is however a half of our effort on the USPTO to take action.

It’s a new day certainly! Thanks.