Highlights From Director Michelle K. Lee Fireside Chat at AIPLA Annual Conference

AIPLA FIRESIDE CHAT HIGHLIGHTS

The American Intellectual Property Law Association (AIPLA) held its annual 2015 conference October 20-24 in Washington D.C. On Thursday, October 22, Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office sat down with AIPLA Executive Director Lisa Jorgenson for a fireside chat where the two discussed progress on various agency goals, objectives, and initiatives including the Enhanced Patent Quality Initiative, Women in STEM, and the importance of international efforts surrounding patent harmonization and international efforts around the Lisbon agreement. Excerpts from the fireside chat are below:

PATENT QUALITY

Critically important that the USPTO issue patents that are both correct—meaning that they are issued in compliance with Title 35—AND clear.
We have historically focused on correctness, and have made great strides here.
- E.g., our team issues guidance on major case law developments to the entire corps within a number of days.
- But now, the evolving patent landscape is driving us to focus on clarity in new ways. It’s always been true that:
  1. patent owners needed to know with certainty the boundaries of their rights.
  2. potential users of patented technologies needed to be able to make informed decisions, such as when to license, design around and/or settle or fight in litigation, and
But, as we all know, there has been an increase in entities whose only business is the purchase and assertion of patent rights. Sometimes these entities seem to even prefer patents with broad and vague claims, to assert the patent beyond what was truly contemplated by the original applicant and examiner.
These developments underscore the need to make sure that we are issuing patents that are correct and clear.
And we asked for your help on how we could do this—and we got it! We received over 1200 written comments and extensive feedback during our first-ever Quality Summit and roadshows. I’d also like to note that we received invaluable input from many dedicated members of our examining corp.
Based upon your input, we have begun over a dozen initiatives. Given the limited amount of time we have, I’d now like to highlight just a couple of our key initial programs to enhance both the correctness and clarity of the patents we issue.
We are Improving the clarity of the record through a pilot program and targeted training, and
Transforming our review data capture process to unify and centralize our numerous quality reviews—as I’ll explain more in a minute, this will dramatically improve our analytical capacity and the ability to improve consistency,

On Clarity of the Record:

We are preparing to launch a Clarity of the Record Pilot.
In this Pilot, examiners will adopt clarity of the record best practices such as
Placing definition of key terms on the record;
Providing a detailed explanation of the claim scope on the record, including claim constructions; and/or
Providing more detailed reasons for allowance –explaining how the amendment or argument overcame the rejection and/or prior art cited.
When this Pilot concludes, USPTO will evaluate the impact of these actions on clarity of the record and may require some—or even all—of these as part of our routine examination practices.

On Targeted Training for our examiners,

We are seeking to (1) emphasize the benefits and importance of making the record clear, and (2) explain best practices for achieving greater clarity of the record including by providing targeted and additional training on
1. Functional claim language, how to interpret it, and augmenting our earlier 112(f) training where clarity of the record was emphasized
2. indefiniteness under 112(b) and how our examiners should provide explanations in the record of why a claim is unclear
3. The requirements of an enabling disclosure under 112(a)
And, we’re looking at data accumulating from our PTAB rulings to identify trends that we can feed back to the examination corps
In addition, we are also looking at ways to identify trends from our PTAB rulings to provide feedback to our examination corps.

On Ensuring Patent Quality:

I am excited to say that we are taking a big step forward by modifying (1) our process for reviewing patent quality, and (2) the volume of data we’ll be gathering.
In essence we are transforming our (1) patent review process and (2) data capture process, with the net benefit being greater transparency and consistency across the entire patent corps.
Let me provide some background….
We’ve historically had many different types of quality reviews.
For example, there are the reviews that supervisors do of more junior examiners.
And there are the random quality assurance reviews.
The things that a supervisor looked for in a review might be different from that which the quality specialist was reviewing for.
There were different levels of documentation results from none at all to some recordation, but that which was recorded usually differed.
Also, historically, the Quality Assurance team (due to manpower constraints) was not able to record enough data to draw statistically significant conclusions on a Technology Center by TC basis or an Art Unit by AU basis, only on an Agency-wide basis.
Now, for the first time, we are working to unify the review process (across the Agency) and systematically record more data points.
With the new review process in place, anytime a review is conducted by anyone within the Agency (whether supervisor or quality assurance specialist), it will be based on the same criteria.
Moreover, anytime a review is completed, it will get recorded electronically so that we can analyze the data.
It means we have a lot more data points, and all reviewers are looking for and measuring the same things.
As we roll out this new review process, the amount of data we collect will significantly increase – anywhere from 3x to 5x.
This will allow us to use big data analytic techniques to identify trends—at the technology center, art unit and even examiner levels—based upon statistically significant data.
This will have MAJOR impact on our ability to train and address problems effectively and precisely, and to ensure consistency across the entire examination corps.
To add further, this new review process will give us better data—and insight—into not just whether the law was applied correctly, but whether the record is clear and/or whether a rejection was omitted.
For an obviousness rejection, e.g., the review process will not simply ask whether a proper obviousness rejection was made, but
- Whether those statements are clear.
- Whether there are statements in the record explaining the rejection, and
- Whether the elements identified in the prior art were mapped on to the claims,
All of this data will be recorded electronically and reviewed in the aggregate using big data techniques to identify trends and areas for improvement on the TC, AU or examiner level.
So we are very excited about this initiative, as it will lead to increased transparency and consistency, since everyone—from examiners to applicants to supervisors—will be able to see and work toward achieving these same goals.
I hope this gives you a sense of some of the programs we have under way.
We have many other programs underway in the EPQI which I won’t have time to go into, but you can learn more about by tuning into our monthly patent quality webinars and visiting our patent quality web page.
We look forward to hearing your input on the current initiatives and any other ideas you may have on how we can improve (1) the quality of the prosecution services we deliver, (2) customer service, and (3) how we measure patent quality.
My job as leader of the USPTO is to provide stewardship and guidance to the Agency.
And, I am convinced, and stakeholders have told us, that focusing on enhancing patent quality is the right thing to do and that these are the right things to focus on (enhancing the accuracy and consistency of the examination and the clarity of the record)
Stakeholders have also told us that they want more objective data measuring the results of our efforts.
We’ve embarked on an unprecedented quest for quality during my time as Director of the USPTO, and we will continue to do so.
The goals I have laid out for the USPTO on quality are nothing short of a culture change, and may take some time to accomplish.
I’ve also said many times that addressing quality is not a one-and-done matter.
As I know from my experience in the corporate world, any company that produces a truly top-quality product has focused on quality for years, if not decades.
And that is what the Agency is committed to do.
To help ensure the permanency of these changes, I have set up a whole department focused on quality led by Deputy Commissioner for Patent Quality, Valencia Martin-Wallace.
When my tenure as Director ends, I know that our dedicated patent examiners,
Commissioner for Patents and Deputy Commissioners for Patent Quality will continue to take action for years – indeed, decades – to come.
The USPTO is committed to this important initiative in the short- and long-run.

PTAB CHANGES

I think the USPTO has done an admirable job implement the PTAB AIA trials according to Congressional mandate.
I recognize that improvements could be made.
That’s why one of the first things I did when I took leadership of the Agency was to engage the public on how to improve and refine these proceedings.
We went on an 8 city listening tour, quick fixes, proposed rule package
Some highlights of these changes include:
- Allowing patent owners to include new testimonial evidence with their opposition to petition to institute.
- Having a new Rule 11 type certification requirement that will give more robust ability to police misconduct.
- Clarifying claim construction standard will be district court CC instead of the BRI when patent about to expire.
- Proposed Pilot Program that considers changing staffing of PTAB trials to make them more efficient while maintaining fairness and quality.
We look forward to your comments on these proposals.
Per stakeholder’s request, we extended the time to provide comments by 1 month, so comments are now due on Nov. 18, 2015.

WOMEN IN STEM

Thanks to President Obama, I have the privilege of serving as the first woman U/S and Dir. of the USPTO in our country’s 225+ year history.
As such, I feel a heightened duty and responsibility to encourage more girls and women to enter and stay a STEM profession.
It’s the right thing to do for our economy and our society.
Our nation’s future economic growth depends on technology and innovation. And some of the highest growth and highest paying jobs will come from these fields.
At the USPTO we have an initiative called “All in STEM” where we celebrate the many talented women in the USPTO workforce. We work to recruit more, retain more and move them through the ranks as opportunities permit.
At the highest level, the mission of the USPTO is to promote American innovation through IP (in my mind, across all geographic regions in the US and across all demographics) For more details, see www.uspto.gov/allinstem.

INTERNATIONAL EFFORTS AND THE LISBON AGREEMENT

I just returned from the WIPO GA’s in Geneva where the team and I engaged extensively on the issue of geographical indicators.
To address this unfortunate situation, we developed a 2-pronged strategy:
- To call into question the legitimacy and attractiveness of the Lisbon Agreement, and
- to ensure the development and promotion of alternative approaches to the protection of GIs that are consistent with US law.
We were successful last week in advancing proposals at the WIPO General Assemblies
- That will put the Lisbon Union down a path of financial self-sufficiency so that our stakeholders PCT and Madrid fees, ex.., will not be subsidizing a system we did not help create and will not join, and
- enabling discussions to move forward on a potential competing approach to protection of GI’s.