USPTO Update from John Cabeca, Silicon Valley Director

By Gene Quinn
September 14, 2017

John Cabeca

Earlier today John Cabeca, Director of the Silicon Valley branch of the United States Patent and Trademark Office, delivered the Keynote Speech at the 2017 Annual Meeting of the Association of Intellectual Property Firms (AIPF) in San Francisco, California. What follows are several of the more interesting points I heard Cabeca make during his 30 minute presentation.

“Typically it takes 3 months plus or minus a month, depending upon what Congress has on their schedule, but we look forward to having Mr. Iancu on board,” said Cabeca, when addressing the most common question he gets of late – when can we expect the new Director to be confirmed and in place.

Cabeca’s assessment on the Iancu timeframe is in keeping with everything I’ve been hearing. President Trump nominated Andrei Iancu to be the next Director of the USPTO on August 25, 2017. Perhaps Iancu will manage to find himself a part of some late year nominee deal in the Senate, perhaps he is held over for confirmation until early 2018.

Working with Congress to get the temporary fee setting authority extended is another priority for the Office Cabeca said. Current fee setting authority is scheduled to end September 2018. The Office having fee setting authority has allowed the Office to have a reserve fund and given the Office the ability to have the funds necessary to do the work of the Office, according to Cabeca.

In July the Office released a report that “did a very nice job of summarizing patent eligibility,” Cabeca said. The Office is continuing to monitor the case law and continuing to train examiners. The Office has also implemented a continuous public comment period, which allows for ongoing input from the community.

“While waiting for a permanent agency head, we are taking advantage of the time to do what we can internally,” Cabeca explained. One area the Office is reviewing is in the area of Examiner Time Analysis. The Office hasn’t changed the classification of applications (i.e., complex versus simple) in a substantive way since 1980, although there were some tweaks made in 2009. Unfortunately, in some fields of invention what was once considered complex is now simple, and what was once simple may now be complex. Cabeca gave an example of a trash can, which once upon a time would be considered very simple, but today it might have various electronics associated, lights, lifts, batteries, making it more complicated than a simple receptacle. Cabeca explained that the Office is reviewing this classification of applications, and what time should be given to examiners, but the Office anticipates that a top to bottom reassessment will take the Office up to two years to complete.

Public interview rooms in Silicon Valley has enhanced capability that replicates in person experience through high resolution 3D cameras, which provide the same type of experience as sliding a piece of paper across the desk. Cabeca encouraged everyone to take advantage of the room, and offered to give attorneys a demonstration of the technology.

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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Discuss this

There are currently 5 Comments comments. Join the discussion.

  1. Robert Grantham September 15, 2017 11:17 am

    If the Office truly is thinking a top to bottom reassessment, then when are they going to talk about searching or alternatively how are they gong to increase the likely-hood that the examiner will actually have the best prior art in front of them before a patent is issued. When are they going to use concluded IPR’s to assess how prior art is found and what their assumptions are about how the current framework of an examiner being a searcher too is working. etc, etc etc

  2. Eric Berend September 18, 2017 1:57 am

    What about the economic motivation for the USPTO to fall in line with certain firms ‘firehosing’ patent applications filed by employees or agents who have been specifically instructed NOT to look at the prior art, and then diverting some of those fees received to fund the PTAB Inter Partes Reviews that then invalidate ALL patents at an astonishingly high rate? Not just the “weak” or ‘firehosed’ kind; which would reflect the legislative intent expressed in conferences in the Congress before passage of the AIA? One hundred twenty five IPR petitions against just one patent: is this truly what Congress had in mind, in “reforming” patent law?

  3. Robert September 18, 2017 11:19 am

    Prior at should be the responsibility of both sides not just the PTO during the application stage. NOT looking at prior art ought not be a filing strategy but it is. “Firehosing” is reflective of a problem and part of the reason the PTO and the patent system needs a prior art/searching policy where right now there is only silence.

  4. Anon September 19, 2017 2:43 pm

    Robert,

    Are you aware of the Tafas case?

    Prior art is an examination function – NOT an inventor’s function. There are ALREADY requirements that inventors are to supply what prior art that they may be aware of, so it appears that you want something more -something already discussed and DENIED as not belonging to the Quid Pro Quo.

    I suggest that you review what happened in the Tafas debacle and readjust your views as to whose duty the examination portion of finding and providing prior art belongs to – and why.

  5. Robert September 20, 2017 9:20 am

    Anon,

    I am aware of Tafas and I see nothing in there about searching or prior art. Tafas addressed the PTO’s attempt to put limits on continuations and claims. An “examination support document” was required under the proposed rules in regards to the number of claims. So Tafas stopped the PTO from putting limitations on claim practice; it says nothing about searching.

    There in no policy, no rule, no regulation directed to searching. Tying prior art to the threat of inequitable conduct is a driver behind the lack of searching by the private sector.

    IPR’s expose, and until it is proven otherwise, substandard searching by both the PTO and applicants in every single case. Finding prior at has become a complicated task due to the ever increasing volume and location of it.

    There is more than one problem with the way searching and prior art is currently handled. The model where the examiner both examines on the merits and searches is obsolete. Examining on the merits, the public sector counterpart to prosecution, and finding prior art whether public sector or private sector, are separate jobs with different skill sets and different objectives.

    Why is it that only the patent office is responsible for prior art? Why is it that a single examiner is expected to be both skilled in patent law and an expert patent searcher? Because that is the way it was in 1836. The way things are currently done is based on a 200 year old model.

    The milieu has changed and policy needs to change to reflect that. Do you really think that 8k examiners can proficiently search 500k applications a year? Do all 500k need a proficient search, I don’t think so. The current system produces patents on substandard inadequate research, which again is exposed by IPR’s.

    Returning to the theme of this thread, if the Office is truly doing a top to bottom assessment then they will study searching. They have not shown an interest in looking at the subject through IPR’s. The data is there for them to look at.

    The system is not going to improve until the subject of finding prior art is addressed, which means it needs to be talked about, which it isn’t.

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