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Intellectual Property SectionSeminar:Inner Workings of the USPTOMollybeth "Molly" Kocialski,Regional Director,Rocky Mountain U.S. Patent and Trademark OfficeWednesday, October 16, 2018Embassy Suites Hotel – La Vista Conference Center
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10/15/2018Top Things You Should KnowMolly KocialskiRegional DirectorOctober 17, 201812,588EmployeesPatentsTrademarks647,388 PatentApplications Filed594,107 TrademarkApplications347,642 PatentsIssued242,709 Certificatesof Registration8,147Patent Examiners549 Trademark ExaminingAttorneys388 Patent Trial andAppeal Board71 Trademark Trial andAppeal Board Judges1
10/15/2018USPTO Regional Offices LeadershipHope ShimabukuTexasRegional OfficeDallas, TexasJohn CabecaSilicon ValleyRegional OfficeSan Jose, CaliforniaMolly KocialskiRocky MountainRegional OfficeDenver, ColoradoDamian PorcariMidwestRegional OfficeDetroit, Michigan1 IT Systems2
10/15/2018Timeline of Authentication changesNowNowNovember 2018December 2018Create accountMigrateSponsorRetire PKIWe will release amigration tool to allowcurrent PKI certificateholders to link theirUSPTO.gov accounts totheir PKI certificates.Registered practitioners can sponsor theirsupport staff to workon their behalf bygiving them accessvia sponsorship tool.Transition from currentPKI certificates to newauthentication methodmust be complete.All PKI certificateholders and supportstaff should createUSPTO.gov accountsnow, and set them upfor two‐stepauthentication.2 Patents3
10/15/2018Berkheimer MemorandumClarification for inquiry into whether a claimlimitation represents:– well-understood– routine– conventional activities (or elements) to a skilled artisan in the relevant uments/memo-berkheimer-20180419.PDFVanda MemorandumClarification for method of treatment claims: Claims that practically apply naturalrelationships should be eligible under Step 2A Not necessary for claims that practically applynatural relationships to include non-routine orunconventional steps to be documents/memo-vanda-20180607.PDFProposed 101 categories Synthesize 3 categories of “abstract ideas”:– mathematical concepts– certain methods of organizing human interactions– mental processes Permit claims that include otherwise excludedmatter as long as that matter is integratedinto a practical application4
10/15/2018Notice of Proposed Comment &Collections Matters Related to First Inventor To File– November 5, 2018 Patent Review and Derivation Proceedings– November 5, 2018 Patents for Humanity Program– November 5, 2018 International Work Sharing– November 27, 20183 PTAB5
10/15/2018PTAB Guidance in Light of SAS Institute PTAB will institute as to all claims or none– Retroactivity note: panel may issue a supplementalorder to institute on all petition challengesSAS Institute Inc. v. Iancu, 2018 WL 1914661, (U.S. Apr. 24, 2018)Study on AIA Proceedingsby Chief Ruschke and Lead Judge AnkenbrandTrial Practice Guide (TPG) Update August 2018 Use of expert testimonyConsideration of non-exclusive factors in the determination of trialinstitutionProviding for sur-replies to principal briefs as a matter of rightProper use for and distinction between motions to exclude andmotions to strikeProcedures for oral hearing before the Board, including the use oflive testimony sur-rebuttal, and default time for the hearingProviding for a pre-hearing conference and potential earlyresolution of issues6
10/15/2018Phillips claim construction– A significant majority of comments supported theproposed change USPTO received 374 comments– If made of record, PTAB will take into consideration anyprior claim construction determination that has beenmade in a civil action, or a proceeding before theInternational Trade Commission (ITC) final Rule: Phillips construction for all – IPR, PGR and CBM; no retroactivity – this construction will be used for all casesfiled on or after November 13, 2018.Precedential decisions Precedential Opinion Panel generally will be used whenaddressing– constitutional questions– important issues regarding statutes, rules, and regulations– important issues regarding binding or precedential case law Any party to a proceeding may recommend this designation. A five-member Executive Judges Committee determines bymajority vote. USPTO Director has final authority over such designations.4 Trademarks7
10/15/2018Mandatory Electronic Filing As of midyear FY18, 99% of TM applications arefiled electronically, but 88% are processedelectronically from beginning to end New rule will make use of TEAS mandatory Notice of proposed rulemaking published May30, 2018 Implementation likely early 2019U.S. Counsel Requirement Proposed rule being drafted to require foreign trademark applicants andregistrants to be represented by a U.S. licensed attorney to file atrademark with the USPTO New requirement will:– ensure the USPTO can effectively use available mechanisms to enforce foreignapplicant compliance with statutory and regulatory requirements;– provide confidence to foreign applicants and the public that registrations thatissue to foreign applicants are not subject to invalidation for reasons such asimproper signatures and use claims; and– aid USPTO efforts to improve accuracy of the U.S. Trademark Register.– Notice of proposed rulemaking planned for fall 2018New Application Filings8
10/15/2018U.S. Filings by Applicants from ChinaSpecimens Problem:– Fake/mock specimens are increasing & becoming moresophisticated– Applicants pasting marks on products/services of othersto show use in commerce Solution:– TM Specimen Protest mailbox established TMSpecimenProtest@uspto.gov– USPTO doing best to refuse the fraudulent specimensProof of Use Audit Program Launched November 1, 2017 2,504 first actions have been as of August 18, 2018 Allows cancellation of audited registrations withunsubstantiated use claims or removal unsupported goodsand services from others Registration may be audited if you meet both requirements:1.2.Filed a Section 8 or 71 declaration of use; andIncludes at least one class with four or more goods or servicesor at least two classes with two or more goods or services in atleast two classes9
10/15/2018Invention Promotion ScamAwareness USPTO provides forum for publication ofcomplaints against and responses theretoinvention promoters or promotion firms– Complaints cannot be confidential Does not investigate complaints or participatein legal proceedings, but may refer to FTCPatent Service Provider Scams Recent Example Misrepresentations made to induce existing customersto continue paying for useless services Customers were:– Intimidated– Threatened with legal action– Compelled to retract negative reviews Emails sent to WPM customers with links to Cooper’sblog featuring intimidating posts Source: FTC v. World Patent Marketing, Inc. (2017)10
10/15/2018ROADSHOWSVisit https://www.stopfakes.gov/Roadshows5 Revised Fee ScheduleUtility Patent Issue and Maintenance Fees11
10/15/20186 Enhancing ExaminerStakeholder ExperiencesIn-Person STEPP TrainingTitleDatesAudienceAgent/Attorney3-Day CourseJanuary 15-17, 2019Agents and Dallas, TXAttorneysLocationInventor3-Day CourseFebruary 5-7, 2019InventorsAgent/Attorney3-Day CourseMarch 5-7, 2019Agents and Denver, COAttorneysRegistrationNovember 5 toDecember 2, 2018Alexandria, VA October 22 toNovember 25,2018December 17, 2018to January 13, 2019Virtual Instructor Led Training (VILT)TitleDatesAudienceCombined 102/103 Workshop Training December 4, 2018 AllRegistrationOctober 22 –November 18, 2018Legal Analysis and Writing WorkshopFebruary 12,2019Agents andAttorneysDecember 17, 2018– January 27, 2019Preparing an Effective Examiner'sAnswerApril 2, 2019AllFebruary 11 – March17, 201935 USC 101 - TBDJune 4, 2019AllApril 22 – May 19,2019Unity of Invention - TBDAugust 6, 2019AllJune 24 – July 21,201912
10/15/2018Examiner & Stakeholder EducationPrograms Site Experience Education, Patent examiner technicaltraining program, Technology fairs, and CustomerPartnership Meetings Provides examiners with training from innovators,scientists, engineers, and experts working in examinedtechnology areas Open to companies and academic institutions incontinental U.S. Contributes to improvement of examination qualityPATENT APPLICATION INITIATIVES7 Enhanced Stakeholder Services& Programs13
10/15/2018Diversion Pilot Program Provides patent and trademark practitioners chance to avoidformal discipline for misconduct by specific rectifying measures Available for “minor misconduct” Exceptions–––––misappropriation of fundssubstantial prejudice to a client or other personsame nature as other disciplined misconduct within the last five yearsinvolved dishonesty, deceit, fraud or misrepresentation by practitionerconstituted a “serious crime” defined in 37 C.F.R. § 11.18 Making IP Fun!14
10/15/2018https://www.uspto.gov/kids/#CreepyIP9 Reducing the Backlog15
10/15/20182017 Performance & Accountability Report Patents backlog decreased by 11,000applications RCE inventory decreased by 5,000applications Patent Average First Action Pendency at 16.3months Patent Average Total Pendency at 24.2 months10 InternationalChina IP Roadshow Brings together policy makers on China IPissues from the U.S. government, academia,and practitioners—including local businesses& experts How to enforce IP in China & the U.S.,managing China IP portfolio, & resources Boise – December 14, p-policy/china-ip-road-shows16
10/15/2018Madrid System Programs Overview of the Madrid systemFiling an international applicationDesignated Contracting PartyBest PracticesRecent changes to the USPTO website/toolsIP Attaché Program Promotes and explains U.S. IP policies overseas Advises U.S. officials on foreign government IPsystems Brussels, Geneva (2), Kyiv, Moscow, Kuwait, NewDelhi, Beijing, Guangzhou, Shanghai, Bangkok,Rio de Janeiro, Mexico City, and Lima11 10 Millionth Patent!17
10/15/2018Thank o@usptowww.uspto.gov/denver18
current PKI certificate holders to link their USPTO.gov accounts to their PKI certificates. Registeredpractition ers can sponsor their support staff to work on their behalf by giving them access via sponsorship tool. Transition from current PKI ce
