Profiles in IP Law: An Interview with Margaret A. (Peggy) Focarino, Commissioner for Patents, United States Patent and Trademark Office

Steven P. Caltrider

©2014. Published in Landslide, Vol. 6, No. 3, January/February 2014, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Margaret A. (Peggy) Focarino was appointed Commissioner for Patents for the U.S. Patent and Trademark Office in January 2012.

In her role as Commissioner, Ms. Focarino manages and leads the Patent Organization as the chief operating officer. She is responsible for the management and direction of all aspects of this organization that affect the administration of patent operations, examination policy, resources and planning, and budget administration. She previously served as Deputy Commissioner for Patents, providing administrative oversight to nine Patent Technology Centers and coordinating the activities of patent application examinations and reissues of patents.

Ms. Focarino began her career at the USPTO in 1977 as a patent examiner and was promoted to the senior executive service in 1997. She received the Department of Commerce Silver Medal for Leadership in 2010 for leading a joint union and management task force that developed and implemented the first significant changes to the patent examiner work credit system in more than 30 years.

In May 2013, the Partnership for Public Service named Ms. Focarino a finalist for the Service to America Medal in the category of Management Excellence, and in 2012 she was named one of Managing Intellectual Property’s Most Influential People in the World of Intellectual Property. She was the 2010 recipient of American University’s School of Public Affairs Roger W. Jones Award for Executive Leadership.

Ms. Focarino received her undergraduate degree in physics from the State University of New York, and a Certificate in Advanced Public Management from Syracuse University’s Maxwell School of Citizenship and Public Affairs.

You began your current role as Commissioner shortly after the signing of the America Invents Act (AIA). How did that historic activity help shape your priorities?

The passage of the America Invents Act has certainly had an impact on operations at the U.S. Patent and Trademark Office (USPTO or Office). Focus has shifted to ensure the implementation of the AIA provisions before the strict statutory deadlines specified by Congress. Not only has the Office developed and continues to develop the infrastructure to manage the different aspects of the new statute, but we have also provided extensive examiner training to educate the examining corps on the various changes to examination procedure. While attention may have shifted to the enactment of the AIA, we have not lost sight of the Office’s continuing goals of reducing pendency and improving patent quality, and despite an increase in application filings this year, both the unexamined patent application backlog and the average first Office action pendency have been reduced.

It is now roughly two years after the signing of the America Invents Act. What has had the biggest impact on the USPTO employees you manage? What are your reflections up to this point on the AIA? Were there any unexpected hurdles?

Without a doubt, the AIA section that will have the biggest impact on the examining corps is the first inventor to file provision. We published examination guidelines for first inventor to file in the Federal Register on February 14, and we are now in the process of corps-wide comprehensive examiner training. Many of the other provisions of the AIA have had a much greater impact on the public than on the examining corps. For example, while many applicants are now using prioritized examination to receive their patentability determination within a year, the processing is transparent to the examiners such that these applications appear on the examiner’s docket at the proper time for examination.

One of the challenges in implementing the AIA has been sorting all of its requirements into operational processes and responsibilities so that our examiners have all the necessary information at their fingertips, while still allowing them to stay focused on examining applications. The fact that the AIA provisions became effective in three phases, rather than all at once, has been helpful in allowing us to focus on implementing one phase while planning ahead for the next phase.

The first inventor to file provision became effective March 16, 2013, when the United States harmonized with the world and become a first inventor to file country. What are the operational implications of this particular AIA change?

The first inventor to file provision does not apply to applications filed before March 16, 2013, so the USPTO will have, for the foreseeable future, two examination systems, one under the AIA first inventor to file provisions and one under the pre-AIA first to invent provisions. We are training examiners on the first inventor to file provisions in three phases so they will be able to examine applications under the AIA provision when they appear on the examiners’ dockets. The training uses an iterative approach to help examiners learn the first inventor to file statutory framework, which is much different from the first to invent statutory framework. The first phase of training was completed in March, the second in August, and the third phase will be completed during the next fiscal year. The USPTO will also update the Manual of Patent Examining Procedure to incorporate the changes from the new law as well as maintain the examination procedure from the old law. Furthermore, a number of IT systems and examination tools are being modified to accommodate both patent law systems. For example, the Office’s Patent Application Locating and Monitoring System now has an indicator to designate whether an application is being treated under AIA or pre-AIA law. This indicator also appears in the public and private Patent Application Information Retrieval systems, which respectively provide users web-based access to public and unpublished patent information.

For some, the Green Tech fast-track program was very successful. Why was the program cancelled?

The Green Tech Pilot was unquestionably successful. However, it was limited in scope. With the passage of the AIA, a new program for prioritized examination was launched. This program, called Track One, provides prioritization not only for applicants in the green tech sector but for any patent application.

The USPTO appears to be branding itself as a world leader in the area of patent harmonization in order to bring international clarity and consistency in laws and procedures. Other than the AIA, which brought the United States into alignment with the rest of the world via first inventor to file, the USPTO has taken an active role toward harmonization with the Trilateral Offices, including Europe and Japan. Please speak to the recently finalized Trilateral Declaration. What do you see as the challenges in propagating harmonized processes like the Common Citation Document and the Global Dossier beyond a few countries?

We have had harmonization discussions in the Trilateral with the European and Japanese patent offices for several years, among many other endeavors. Indeed, the enactment of the AIA has enabled the discussions to be restarted, and they are going apace. A few months prior to the AIA enactment, the Trilateral Offices joined with those of France, Germany, Denmark, and the United Kingdom—this is known as the Tegernsee Group—for a renewed look at the issues, which came into focus upon the signing of the AIA legislation by the president. The yearly memoranda of understanding among both the Trilateral Offices and the IP5 (the Trilateral Offices plus the offices of China and Korea) include mandates for work on both substantive and procedural harmonization at various levels.

Speaking of procedural harmonization, the Global Dossier Initiative, proposed by the USPTO and quickly adopted as the vision forward in the IP5, is aimed to simplify and modernize the international filing and prosecution system as a whole, provide a cohesive outcome to the many current international IT efforts, and most importantly, create new, stakeholder-based services. In fact, the entire life cycle of this effort includes intense user interaction. Projects such as the Common Citation Document are included under the Global Dossier umbrella.

While the Global Dossier Initiative began in the IP5, WIPO is also a full partner in the effort. The future joining of its Centralized Access to Search and Examination program, which now includes the U.K., Canadian, and Australian offices with the IP5 One-Portal Dossier system, could establish the first phase of wide connectivity, and will enable any number of offices to participate. There are other systems under development that could ultimately become part of a Global Dossier environment. The ultimate aim is to achieve a truly global system, inclusive of all offices and stakeholders.

What do you consider to be the next steps for the USPTO regarding harmonization?

With the adoption of the AIA, the United States has been granted the tools it needs to implement an optimal 21st century harmonized patent system—one that international negotiations have anticipated for the last 25 years. Congress has enabled the USPTO to not only act, but to lead, in realizing a vision of an IP world in which national and regional patent systems are coordinated to create an optimal environment for technological innovation and diffusion. If we’re going to strengthen America’s ability to grow and a business’s ability to build here—and sell everywhere—then we’re going to need to continue advancing toward a true 21st century intellectual property system. Here, a main effort involves working with our international stakeholders—because harmonization has to come from them—on establishment of best practices. We are also currently working to implement the Patent Law Treaty and the Hague Agreement on Designs, both recently ratified by the United States.

The USPTO is setting records for allowing cases. Won’t the continued trend of allowing more patents contribute to a perception of low quality examination? How does the Office focus on examination quality while balancing the various quality perceptions and concerns of examiners, supervisors, applicants, the courts, and other users of the patent system?

The USPTO encourages a proactive approach for examiners to reach out to applicants through interview practice during examination to help further prosecution or shorten pendency. While this sometimes leads to an indication of allowable subject matter, USPTO data shows that the quality in applications with interviews is in fact higher than applications without interviews.

In fiscal year 2011, the Office implemented its Patent Quality Composite, which provides a balanced measure of patent examination quality. This Quality Composite takes into account multiple reviews of examiners’ work products as well as internal and external perceptions of improvement in examination quality. In fact, since the inception of this Quality Composite, we have seen significant improvements in just about all of the metrics designed to represent patent examination quality.

These improvements in examination quality have occurred over the same period that allowance rates have increased. Therefore, we do not believe that allowing more patents is leading to a perception of low-quality examination. In fact, our most recent external quality survey of users indicated that external perceptions of examination quality have never been higher. These perceptions have tracked with our internal metrics that show examination quality of both rejections and allowances have improved in recent years.

What do you expect going forward?

I expect our top priority will continue to be to promote innovation through timely prosecuted, high quality patents and trademarks. To that end, Acting Director Teresa Rea has been very involved in fostering an inclusive environment between our external and internal stakeholders. The result is that we are and will continue to meet our challenges head on and with much transparency.

Is there anything else you would like to add?

As we continue to engage the United States and the global innovation community on various issues, we are reminded, time and again, that economic growth, job creation, and success for businesses of all shapes and sizes is highly dependent on the effectiveness of IP protection and the efficiency of the USPTO. I want to take this opportunity to thank the IP stakeholder community for their continued support of the USPTO. It is clear that policies supporting a higher quality IP system are making a difference in our nation’s economic recovery. The Department of Commerce’s recent report, Intellectual Property and the U.S. Economy: Industries in Focus, shows that America’s core strength lies in our ability to experiment, innovate, and create. Sensible government policies that encourage and stimulate that spirit of innovation can demonstrably contribute to job creation and economic well-being. The end result is 40 million jobs in IP intensive industries, representing 35 percent of U.S. GDP.

Steven P. Caltrider serves as vice president, deputy general patent counsel at Eli Lilly and Company.