©2020. Published in Landslide, Vol. 12, No. 4, March/April 2020, 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.
As the United States Patent and Trademark Office (USPTO) has just recently released its Performance and Accountability Report for FY 2019 (FY 2019 PAR),1 it has become clear that the USPTO is recognizing the need to maintain a culture of clarity and transparency in the intellectual property (IP) acquisition process. This article breaks down highlights from the USPTO’s FY 2019 PAR and demonstrates how these principles are being pursued by the USPTO to promote a culture of transparency and consistency in an increasingly global IP economy.
Designation of Precedential and Informative Decisions
As stated in the message from the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, Andrei Iancu, the year 2019 saw many examples of the Patent Trial and Appeal Board (PTAB) successfully continuing its efforts “to increase consistency, transparency, and certainty of its proceedings.”2
First, the USPTO conducted training for its administrative patent judges (APJs) to ensure compliance with the 2019 Revised Patent Subject Matter Eligibility Guidance.3 To demonstrate its application of the 2019 revised guidance, the USPTO also designated five decisions that analyzed claims under 35 U.S.C. § 101 as informative.4 In parallel, new processes were implemented to designate decisions as precedential and informative,5 and under these new processes, 16 decisions were designated as precedential and eight decisions as informative (which exceeds the total number of decisions designated as such from the previous three years combined).6 FY 2019 also saw the implementation of the Precedential Opinion Panel that issues precedential decisions on matters of importance, which includes the Director, Commissioner for Patents, and the Chief Administrative Patent Judge.7
Promoting Harmonization and Engagement with International Partners
In FY 2019, the USPTO continued to engage with the IP5 (which includes the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), the National Intellectual Property Administration of the People’s Republic of China (CNIPA), and the USPTO).8 According to the FY 2019 PAR, “[i]n FY 2019, the IP5 agreed to coordinate preparations for global technological transformations in artificial intelligence and other new and emerging technologies and engage in efforts in new areas related to the harmonization of examination practices.”9
Improved Efficiency and Cooperation in the Global Industrial Design System
Throughout FY 2019, the USPTO continued its efforts to improve the global industrial design system. This included promoting leadership at the World Intellectual Property Organization (WIPO) and at the ID5.10
At WIPO, discussions on new technological designs (including those for graphical user interfaces), icons for electronic displays, and designs for typefaces and type fonts were led by the USPTO.11 Collaborative work continued by the ID5 covered a range of projects, including grace period, partial designs, electronic priority document exchange, and designs in emerging technologies.12 As mentioned in the FY 2019 PAR, “[t]hese projects are designed to aid the United States and other rights holders in their efforts to obtain protection for their designs in multiple jurisdictions and to provide enhanced—and easily accessible—information about design protection.”13
Improved Efficiency and Cooperation in the Global Trademark System
Several strategic cooperative projects were also advanced through the TM5.14
TM5 ID List entails the ongoing development of a harmonized pick-list of descriptions of goods and services.15 Work on this project throughout FY 2019 has led to ongoing expansion of the number of entries in this list and their translations into multiple languages.
In FY 2019, the USPTO continued to help lead other TM5 projects, “including a project aimed at combatting fraudulent and misleading solicitations to trademark owners, a project to raise public awareness about counterfeit and infringing goods, and an effort to combat the problem of bad faith trademark filings, a practice through which bad actors seek to register trademarks that belong to others.”16
Engaging Other Governments to Improve Their IP Enforcement and Protection
For the benefit of U.S. stakeholders, the USPTO has also continued to develop and provide capacity-building programs to help improve IP systems in key countries and regions. As mentioned in the FY 2019 PAR, [t]he programs addressed a full range of IP protection and enforcement matters, including enforcement of IP rights at national borders, internet piracy, health and safety threats from counterfeit goods, trade secrets protection and enforcement, copyright policy, and patent and trademark examination.”17 Participants included judges, prosecutors, health officials, customs officers, patent and trademark examiners, and IP office administrators.18
Agreements with Intergovernmental Organizations
The FY 2019 PAR describes how the USPTO has also entered into a number of agreements with intergovernmental organizations. “One of these was a memorandum of understanding signed with INTERPOL’s Illicit Goods and Global Health Program in 2017. Under the arrangement, the USPTO and INTERPOL cooperate on training and capacity-building programs to promote effective IP enforcement internationally.”19 A July 2019 Central Asia regional program on trafficking in counterfeit goods was among the collaborations under the INTERPOL memorandum of understanding.20
Further, the report summarizes a related development wherein “the USPTO finalized an interagency agreement under the State Department’s Middle East Partnership to conduct IP enforcement programs in Morocco, Algeria, Tunisia, Jordan, Qatar, Bahrain, and Kuwait.”21
Through these programs, the USPTO trained over 9,500 participants in FY 2019, including nearly 3,000 foreign government officials representing more than 120 countries (a complete list of all countries represented at Global Intellectual Property Academy trainings in FY 2019 is available online at the USPTO Data Visualization Center).22
Digital Services and Big Data
Being among the largest IP offices in the world, the USPTO generates and distributes, both internally and externally, a vast amount of data each day. An enterprise data inventory at the USPTO includes patent, trademark, and policy-related data.23 The data are available to be used by independent inventors, startups to large corporations, law firms, strategic patent analytics companies, academia, government agencies, foreign IP offices (e.g., EPO, SIPO, KIPO, and JPO), and the public at large.24 There are two main goals of the Digital Services and Big Data (DSBD) data science team: (1) to “deliver and operate enterprise IT capabilities to improve office performance by using data science, machine learning, and artificial intelligence”; and (2) to “improve the discoverability, accessibility, and usability of the USPTO’s valuable public patent and trademark information.”25
Analytic Platforms and Machine Learning
Notable work under the DSBD header includes the Big Data Reservoir (BDR), which is a “unique analytic platform in production that contains data from multiple data sources, which allows data scientists to perform advanced analytics by using machine-learning and artificial intelligence.”26 The USPTO’s text-based data assets are continually added to the BDR.27 This text-based data includes derived textual information from patent applications, quality reviews, PTAB decisions, and subsequent office actions.28 Having all this additional textual information allows data scientists to “analyze the entire patent prosecution history—from initial filing all the way through post-grant—and provide actionable intelligence both internally and to the public.”29
In 2018, the “DSBD delivered the first release of the USPTO ‘big data’ infrastructure, supporting USPTO advanced analytics. This continues to mark the first use of machine-learning technology on distributed data storage in production at the USPTO.”30 Such work has also been “instrumental in supporting USPTO data-driven strategic goals related to optimizing both patent and trademark quality through analytical studies, as well as newly developed advanced analytical services.”31
In late 2018, the DSBD data science team developed a machine-learning service that leverages an ensemble of advanced analytical services. This included: figure searching, semantic searching, keyword/synonym extraction, and auto-classification of documents.32 As stated in the FY 2019 PAR, “[t]his new cognitive assistant platform enables rapid deployment of advanced analytical tools to augment PE2E [Patent End-to-End] and other next generation tools with machine-learning and artificial intelligence.”33
Greater Accessibility to USPTO Data
“Other notable work has focused on improving the USPTO’s application programming interfaces (APIs) to provide the public with better access to the USPTO’s data through the cloud-based open data portal.”34 Expansion of the USPTO’s API Catalog included: (1) providing bulk search and download capabilities of patent documents, (2) allowing users to search trademark images with a trademark image search feature, (3) adding PTAB decision notification, and (4) securing the underlying developer platform and user-experience enhancements.35
Artificial Intelligence and Enriched Citations
During FY 2019, the USPTO ran its “first production deployment of a public-facing product that uses artificial intelligence for data extraction to unlock a legacy data set called enriched citations.”36 Through the use of artificial intelligence techniques, “the USPTO was able to leapfrog its legacy systems to harmonize office action data to that of other international offices, from several years to a few months to delivery.37 Further, the use of these same techniques have led to the recent release to the public of some of the USPTO’s most sought-after data sets: office action data and PTAB data sets.38 The result has allowed the USPTO to provide the public with greater insight into the patent evaluation process, permitting users to quickly view information about prior art cited in specific patent application office actions.39
Streamlining the Examination Process
Recognizing that a good portion of an examiner’s time is spent on searching, with an eye toward applying the rules and laws to determine whether an application presents a patentable claim or set of claims, the USPTO has also set out to continue efforts to streamline the examination process. As further stated by USPTO Director Andre Iancu, “[i]dentifying the best prior art promotes compact prosecution and is necessary to issuing patents with appropriate claim scope that can better withstand challenges.”40 Efficiencies in both the patent and trademark realm are of utmost importance.41
Finding the Best Prior Art
In the patent examination process, among the USPTO’s priorities is to increase examiners’ ability to find the best prior art during examination.42 Efforts include providing resources to assist with prior art searches, such as making available experts to help with search strategies based on technology and classification, as well as assistance with available search tools. There is also an effort underway to determine how IT, such as artificial intelligence, can be leveraged to assist with locating and retrieving relevant prior art for examiners.43 New processes to help with this initiative were tested via pilot programs to help with enhancing the prior art searches. These pilot programs included “collaborative search pilots among not only USPTO examiners, but also among USPTO examiners and examiners from foreign offices.”44 The USPTO also recently concluded a pilot program “to help examiners identify applications that would benefit from a pre-search interview, so that easily resolved issues, such as claim construction, can be addressed prior to performing an initial prior art search.”45
Post Grant Outcomes Pilot Program
One pilot program aimed at promoting consistency in patentability determinations is the Post Grant Outcomes pilot program. The goal is to provide the most useful post-grant information from various sources, such as America Invents Act (AIA) trial proceedings before the PTAB. The idea is that consistency of patentability determinations in related pending patent applications can be improved by “notifying examiners when they have an application related to an AIA trial proceeding, streamlining access to the contents of the AIA trial proceedings, and determining and disseminating best practices for evaluating those proceedings.”46 During FY 2019, “a feature was added to the examination toolkit to facilitate and assist an examiner to readily access documents directly related to a pending application.”47 Since its launch, “over 2,062 cases have been identified as a part of this program. Post Grant Outcomes serves to assist examiners in their examination process by not only making access to prior art easier, but also by fostering improved patent quality.”48
Legal Challenges in FY 2019
It is important to note that during FY 2019 the USPTO saw its share of legal challenges, which were also resolved.
One legal challenge was “with respect to the AIA and its regulations implementing the statute, including challenges to the appointment of PTAB APJs, under the Appointments Clause of the U.S. Constitution.”49 During this litigation, litigants “challenged the constitutionality of the AIA on the basis that PTAB APJs exercise the authority of ‘principal officers,’ even though they have only been appointed as ‘inferior officers.’”50 On October 31, 2019, the U.S. Court of Appeals for the Federal Circuit held that “the appointment of the APJs by the Secretary of Commerce, as currently set forth in Title 35, violates the Appointments Clause, because the statute as currently constructed makes the APJs principal officers.”51 However, “the Court also concluded that severing the portion of the Patent Act, restricting removal of APJs, is sufficient to render the APJs inferior officers and remedy the constitutional appointment problem.”52
In addition, the FY 2019 PAR summarized that “[o]ver the past decade, the Supreme Court and the Federal Circuit have issued several important decisions that have sharply changed the standards for patent eligibility under 35 U.S.C. § 101.”53 As acknowledged by the report, “[a]lthough Section 101 defines the categories of subject matter that are patent eligible (i.e., ‘any new and useful process, machine, manufacture, or composition of matter’), the courts have exempted certain categories of subject matter from patent-eligibility (e.g., abstract ideas, laws of nature, and natural phenomena).”54 Due to the confusion that ensued, in January 2019 the USPTO issued new guidance aimed at clarifying the analyses at the USPTO with respect to § 101.55 However, since the courts are not bound by USPTO guidance, the Supreme Court may now take another look at this area of law. In 2019, a call was issued for the views of the Solicitor General in two cases. “The USPTO’s Solicitor’s Office is currently working with the Office of the Solicitor General to formulate the government’s position in HP Inc. v. Berkheimer and Hikma v. Vanda. Berkheimer concerns whether the question of patent eligibility is a purely legal inquiry or whether it involves underlying factual issues. Hikma concerns whether a method for treating a patient with a drug is patent eligible.”56
Stay Tuned Throughout 2020
From the above summary of highlights from the FY 2019 PAR, it is clear that the USPTO is involved in a number of initiatives on the legal and procedural fronts, and in many initiatives on a global scale. Throughout FY 2020, we in the USPTO encourage the public to follow updates as we continue these endeavors to promote consistency, clarity, and transparency in the IP examination processes.
1. See generally U.S. Patent & Trademark Office, FY 2019 Performance and Accountability Report (2019) [hereinafter FY 2019 PAR], https://www.uspto.gov/sites/default/files/documents/USPTOFY19PAR.pdf.
2. Id. at 3.
4. The five themes involved were: “(I) evaluating whether a claim recites a judicial exception; (II) the groupings of abstract ideas enumerated in the 2019 [Revised Patent Subject Matter Eligibility Guidance (PEG)]; (III) evaluating whether a judicial exception is integrated into a practical application; (IV) the prima facie case and the role of evidence with respect to eligibility rejections; and (V) the application of the 2019 PEG in the patent examining corps.” U.S. Patent & Trademark Office, October 2019 Update: Subject Matter Eligibility (Oct. 2019), https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf.
5. FY 2019 PAR, supra note 1, at 3.
6. See Precedential and Informative Decisions, U.S. Pat. & Trademark Off., https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/precedential-informative-decisions (last modified Feb. 14, 2020).
7. FY 2019 PAR, supra note 1, at 3.
8. “The five IP offices (IP5) is the name given to a forum of the five largest intellectual property offices in the world that was set up to improve the efficiency of the examination process for patents worldwide.” About IP5 Co-operation, fiveIPoffices, https://www.fiveipoffices.org/about (last visited Feb. 14, 2020).
9. FY 2019 PAR, supra note 1, at 78.
10. Id. The ID5 is the Industrial Design 5 Forum and consists of representatives from the world’s five largest trademark offices: the USPTO, the JPO, the KIPO, the European Union’s Office for Harmonization in the Internal Market (OHIM), and the State Intellectual Property Office of the People’s Republic of China (SIPO). See Press Release, U.S. Patent & Trademark Office, USPTO Hosts Inaugural Industrial Design 5 Forum (Dec. 7, 2015), https://www.uspto.gov/about-us/news-updates/uspto-hosts-inaugural-industrial-design-5-forum.
11. FY 2019 PAR, supra note 1, at 78.
14. The TM5 is composed of the same five world’s largest trademark offices: the USPTO, the JPO, the KIPO, the OHIM, and the SIPO. See Press Release, U.S. Patent & Trademark Office, supra note 10.
15. FY 2019 PAR, supra note 1, at 78.
20. Id. at 78–79.
21. Id. at 79.
23. Id. at 94.
31. Id. at 94–95.
32. Id. at 95.
40. Id. at 2 (emphasis added).
41. See, e.g., id. at 60 (“The USPTO’s Trademarks operations are guided by the strategic goal to optimize trademark quality and timeliness.”).
42. Id. at 2.
43. Id. at 54.
49. Id. at 20.
51. Id. (citing Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140, slip op. at 2 (Fed. Cir. Oct. 31, 2019)).