WASHINGTON – Today, U.S. Secretary of Commerce Penny Pritzker appointed Mary Boney Denison to be the new Commissioner for Trademarks at the United States Patent and Trademark Office (USPTO) effective January 1, 2015.
“Mary Denison has done a stellar job serving the American people as the U.S. Patent and Trademark Office’s Deputy Commissioner for Trademarks,” Pritzker said. “I know from experience that trademarks play a vital role in all forms of commerce, and Mary’s experience both at the USPTO and in the private sector will be of tremendous service to our nation’s economic growth. I look forward to working with her in her new capacity as Commissioner.”
Since June 2011, Denison has served as the Deputy Commissioner for Trademark Operations, where she has been responsible for USPTO trademark application, legal examination and registration processes. She has led outreach to the trademark legal community, small businesses and applicants without legal counsel. Denison is also an active participant in meetings with the world’s largest trademark offices, promoting projects aimed at harmonization of trademark practices and procedures. While at the USPTO she has initiated several projects to enhance and expand internal and external communications as well as employee career development.
Section 10(c) of the Leahy-Smith America Invents Act (‘‘AIA’’) authorized the Director of the United States Patent and Trademark Office (USPTO) to consult with the Trademark Public Advisory Committee (‘‘TPAC’’) on the advisability of reducing trademark fees and, following the required consultation, to reduce such fees if it was determined to be appropriate.
The USPTO and TPAC did, in fact, determine that it would be advisable to reduce trademark filing fees for: (1) Trademark, certification mark, collective membership mark, and collective trademark applications for registration on both the Principal or Supplemental Register that are filed using the Trademark Electronic Application System (‘‘TEAS’’), if applicants authorize email communication and file specified documents electronically throughout the application process; (2) TEAS Plus applications for registration; and (3) TEAS applications for renewal of a registration.
Yesterday, as authorized by the AIA, the USPTO published the final rule in the Federal Register that will work to reduce certain trademark fees. According to the USPTO, the fee reductions will both reduce total trademark fee collections and promote efficiency for the USPTO and customers. Clearly, the emphasis is on encouraging use of USPTO electronic systems, which is light-years ahead on the Trademark side of the Office compared with the patent side of the Office.
Michelle Lee, Dec. 10, 2014, at Senate confirmation hearing.
It has been brought to my attention that I inaccurately characterized USPTO Deputy Director Michelle Lee’s position on patent reform. I write today to correct the record.
At her confirmation hearing on December 10, 2014, I wrotethat Lee’s position on patent reform seemed to shift throughout the hearing, pointing to what seemed to be contradictory answers to the questions of different Senators. In truth, I missed the full answer to the second question Lee received, focused on the first part of her answer, and unintentionally winded up quoting her out of context.
Near the beginning of the hearing Lee explained to Senator Charles Grassley (R-IA) “there can and should be further legislation” to address patent trolls.
Later on during the hearing, Senator Dick Durbin (D-IL) explained that he was very skeptical about additional patent reform, reading a letter sent to him that morning from the Innovation Alliance, BIO, PhRMA, MDMA and 6 university associations, and explaining that he is continually told by constituents that Congress should go slow and proceed with extreme caution on patent reform. Durbin then, reading from the letter, said: “Taken together, these judicial and administrative developments, and the plunge in the patent litigation rate, have fundamentally changed the landscape under which patent legislation should be considered.” Durbin then turned to Lee and asked: “Do you agree?”
Every once in a while you stumble across a situation where what is fair seems obvious. At those moments we are all too frequently reminded that we do not have a fairness system, but rather we have a justice system. Which is one way to say that I think the Federal Circuit made a terribly poor decision; one that flies in the face of common sense, and frankly common decency. If the legal system cannot fix a mistake like this before the mistake has even been made public then the system is broken.
The case I am referring to is the recent decision from the United States Court of Appeals for the Federal Circuit in Japanese Foundation for Cancer Research v. Lee, which is the epitome of reaching the right legal decision instead of doing what is fair and just. A paralegal made a mistake, instructed the U.S. representatives to file a terminal disclaimer abandoning a patent, the paperwork was signed and filed by the attorney of record, and then immediately the error was identified. In fact, the mistake was identified and attempts made to mitigate the mistake even prior to the filing ever appearing in the PAIR system operated by the United States Patent and Trademark Office. Yet, at the end of the day, even though there was no question that the chain of events was caused by a paralegal misunderstanding what she was asked to do, the patent still winds up effectively nullified.
In June of 2014, the Supreme Court held, in Alice Corporation Pty. Ltd. v. CLS Bank International (“Alice Corp.”), that claims directed to a technique for mitigating settlement risk failed to comply with the patentable-subject-matter requirement of 35 U.S.C. 101 (“101”). Alice Corp. involved four patents that had been assigned to business-method art units (characterizing business-method art units as 3621-29, 3681-89, 3691-95 and those in former technology center 2700). The Court found that the claims at issue were directed to an abstract idea and did not sufficiently transform the idea to become a patentable invention.
One question is whether Alice Corp., in essence, strips patent prospects from business-method inventions. Another question is whether the analysis in Alice Corp. will invalidate patents in other areas under 101. The author thus examined all cases citing and/or including Alice Corp. and identified outcomes of analyses of compliance with 101. Further, the patents at issue were segregated based on the technology center to which the corresponding patent application had been assigned and/or whether it was assigned to a business-method art unit.
This summer, the United State Patent and Trademark Office (PTO) responded t0 Alice Corp. by issuing Preliminary Examination Instructions in view of the case, and impact on examination of business-method patent applications was essentially immediate. Using LexisNexis Patent Advisor, data was collected for a January time period (January 13-27, 2014) and July time period (July 13-27, 2014) that identified, for each Office Action issued during the time period, whether the Action included a 101 rejection and the corresponding art unit.
Earlier today the United States Patent and Trademark Office released its much anticipated 2014 Interim Guidance on Patent Subject Matter Eligibility, which the in the industry has largely been dubbed USPTO 101 guidance. The guidance, which was signed on December 10, 2014, by USPTO Deputy Director Michelle Lee, will officially publish in the Federal Register on December 16, 2014. This eligibility guidance will become effective immediately upon publication in the Federal Register.
The USPTO explains in the Notice that this guidance is “for use by USPTO personnel in determining subject matter eligibility under 35 U.S.C. 101 in view of recent decisions by the U. S. Supreme Court.” This latest interim guidance supplements the guidance given by the office in June 2014 relative to the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. __, 134 S. Ct. 2347 (2014). This guidance supersedes the March 4, 2014, eligibility guidance for claims involving laws of nature, natural phenomena and natural products, which was issued relative to the Supreme Court’s decisions in Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. __, 132 S. Ct. 1289 (2012) and Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. __, 133 S. Ct. 2107 (2013).
The USPTO guidance, which in large part is reminiscent of the KSR Guidelines put out by the Office in 2010, goes through cases one by one. The USPTO explains the facts, provides representative claims and then explains the holding in each case so that patent examiners can understand the teaching point of the case and how to apply the holding to similar situations moving forward. Perhaps most notable, at least on the first review, is that the USPTO incorporated the recent Federal Circuit decision in DDR Holdings, where the Federal Circuit (per Judge Chen) found that the software patent claims at issue in the case were patent eligible.
Shedding further light on this program is critical to the credibility of the patent process. This article is primarily focused on the experience that my company, Gofigure, L.L.C., and its patent counsel have had with SAWS (rather than concerns and opinions that we have about this policy based on that experience).
My experience with SAWS is not a one-time circumstance, but is a body of difficult-to-obtain information that developed over a nearly five year period (and, for all we know, is likely still developing). The USPTO believes that the public has no reason to know about this internal program, which is likely why its existence is unknown to most within the patent community.
Earlier today at a confirmation hearing held by the Senate Judiciary Committee Senator Charles Grassley (R-IA) stated that the nominees for USPTO Director (Michelle Lee) and Intellectual Property Enforcement Coordinator (Daniel Marti) would not be confirmed during this Congress. Grassley also explained that with new members of the Committee it would only be fair to give those new members an opportunity to ask questions of the nominees. Senator Patrick Leahy (D-VT) inquired whether Grassley would allow the nominations to move early in January, to which Grassley responded that he thought that was a reasonable request.
As Senator Grassley moved into his questions he asked both Daniel Marti and Michelle Lee whether patent trolls are a problem and whether they would work with the Senate, if confirmed, on new legislation to address any problems. Lee said that she does think there is a continuing problem with abusive patent litigation, further saying “there can and should be further legislation” to address patent trolls. Shortly after this answer was given, Senator Mazie Hirono (D-HI) during her question and answer period pointed out that “one person’s patent troll is another person trying to protect his or her patent.”
The issue of patent reform and patent trolls would go on to dominate the confirmation hearing. At one point during his questioning of Lee, Senator Dick Durbin (D-IL) explained that patent reform has been a real eye opener for him. While working on the America Invents Act (AIA) he explained that he in good faith tried to take the considerations of his constituents into consideration, offering amendments to address their concerns. Then after he voted for the bill he was inundated with calls and e-mails about why he voted for that “bad bill.” Durbin explained that he has since become determined to be far more proactive because this is such an important issue. He has been holding meetings and talking to constituents and everyone is telling him that it is premature to engage in additional patent reform and the Congress should slow down.
On Wednesday, December 10, 2014, at 10:00am, the Senate Judiciary Committee will hold a confirmation hearing for Michelle Lee, who President Obama has nominated to become Director of the United States Patent and Trademark Office. Lee was named Deputy Director of the USPTO on December 11, 2013, replacing Terry Rea, who resigned that position after being passed over by the Obama Administration for the position of Director.
Upon taking over at Deputy Director Lee performed the functions and duties of the USPTO Director, a position that was and is currently vacant. The last Director of the USPTO was David Kappos. Kappos left the agency in January 2013. Therefore, it has been nearly two years since the USPTO has had a Director, which has often been criticizedas being an excessively long time not to have an agency head.
This will be the first time that Lee has had a confirmation hearing. The timing suggests that the Obama Administration and Senator Reid think that they can get Lee confirmed prior to the end of this Congressional session, which may well be the case. Assuming that this hearing will be more than just a show, there are a number of difficult questions that should be asked of Lee. Below are 12 questions that need to be asked, and a list of others that could and probably should be asked as well.
At the roundtable, topics for discussion will include: (1) how the USPTO can utilize crowdsourcing tools to obtain relevant prior art in order to enhance the quality of examination and issued patents; and (2) ways the USPTO can leverage existing private sector solutions for the electronic receipt and hosting of crowdsourced materials as a means to provide prior art to examiners further to the USPTO’s request for information (RFI). See Crowdsourced Non-Patent Literature Hosting (Solicitation Number: PTOHMB201501). In addition, feedback received responsive to the USPTO’s March 19, 2014 crowdsourcing notice and April 10, 2014 crowdsourcing roundtable will be discussed.
This weekend, the Smithsonian National Air and Space Museum, in collaboration with the United States Patent and Trademark Office, hosted an Innovation Festival. The Festival, which is part of a five-year collaboration between the Smithsonian and USPTO to develop programs and exhibitions showcasing American ingenuity and innovation. This year’s Festival celebrated the spirit of innovation with displays, talks, performances, and craft projects for children and adults while highlighting the accomplishments of several American inventors.
Image by Mark Avino, National Air and Space Museum, Smithsonian Institution.
The Smithsonian’s National Air and Space Museum will host an Innovation Festival Nov. 1 and 2, a collaboration between the Smithsonian and the U.S. Patent and Trademark Office. The festival will highlight accomplishments of American inventors and the spirit of innovation. It will feature displays, talks, performances and craft projects for children and adults.
This event is part of a five-year collaboration between the Smithsonian and USPTO to develop programs and exhibitions showcasing American innovation; USPTO will provide annual funding for public programs and exhibitions. Upcoming joint efforts will include a major new intellectual property exhibition at the National Museum of American History and an innovation family festival at the Smithsonian American Art Museum in spring 2015.