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Return The United States Patent and Trademark Office is the organization within the United States government that examines and grants patents and trademarks. Established under the Department of Commerce on July 19, 1952[https://www.federalregister.gov/agencies/patent-and-trademark-office] by 35 U.S.C. §1[http://www.gpo.gov/fdsys/pkg/USCODE-2013-title35/html/USCODE-2013-title35-partI-chap1-sec1.htm], the USPTO fulfills the mandate in Article I, Section 8, Clause 8 of the United States Constitution "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."[https://www.constituteproject.org/constitution/United_States_of_America_1992]. Since 1790, the USPTO has issued more than 6.5 million patents[Patent Reform]http://www.uspto.gov/about-us/news-updates/uspto-web-database-now-includes-all-patents-dating-1790]. The agency's main offices reside in Alexandria, Virginia, with several satellite offices around the country.
'''H.R.9: Innovation Act (2015)''' [https://www.congress.gov/bill/114th-congress/house-bill/9 (Congress)]
The Innovation Act was introduced on February 5, 2015, by Representative Bob Goodlatte (R-VA). The bill was referred to the House Committee on the Judiciary and Subcommittee on the Courts, Intellectual Property, and the Internet, and was placed on the Union Calendar on July 29, 2015. Currently the bill has 27 cosponsors.
The Innovation Act was previously introduced in 2013, but the Senate did not respond with the introduction of a similar bill. In 2015, the House reintroduced the Innovation Act, and the Senate also introduced the similar PATENT Act. The full title of the bill is "To amend title 35, United States Code, and the Leahy-Smith America Invents Act to make improvements and technical corrections, and for other purposes."==History==
GovTrack predicts that the Innovation Act has a 36% chance of being enacted.==Organization==
The House Innovation Act and Senate Patent Act are very similar; both acts address abusive litigation through “increased transparency, more limited discovery, heightened pleading standards, and ‘loser pays’ fee shifting”. However, there has been a delay in the passing of the bills because of controversy surrounding the shifting of attorney fees. Fee shifting was originally suggested as a way to incentivize small firms and businesses that were being unfairly accused of patent infringement to bring the case to court, so that they would not have to pay their attorney fees. However, there have been arguments stating that fee shifting would actually increase the settlement rate of small businesses being accused of patent infringement, because they don’t want to take the risk of losing and paying for the winner’s attorneys’ fees, in addition to their own. [http://www.bna.com/debate-patent-reform-n17179934625/ (Bloomberg BNA)]===Administration===
==Summary==*'''Director and Under Secretary of Commerce for Intellectual Property''': Michelle K. Lee[http://www.uspto.gov/about-us/executive-biographies/michelle-k-lee]:Michelle Lee was nominated by President Barack Obama to serve as the Director of the USPTO on November 11, 2014[https://www.congress.gov/nomination/113th-congress/2103] and officially took the oath of office on March 12, 2015[http://dcinno.streetwise.co/2015/03/13/new-us-patent-chief-sworn-in-at-sxsw/]. She is the first female to hold the office.[http://www.uspto.gov/about-us/executive-biographies/michelle-k-lee]. Her first role within the USPTO was serving as the Director of the USPTO Silicon Valley regional office.[http://www.uspto.gov/about-us/news-updates/us-secretary-commerce-penny-pritzker-names-michelle-k-lee-next-deputy-director]. Prior to joining the USPTO, Lee served as the Deputy General Counsel for Google[https://www.commerce.gov/news/blog/2015/03/spotlight-commerce-michelle-k-lee-under-secretary-commerce-intellectual-property].*'''Deputy Director''': Russell Slifer*'''Chief of Staff''': (Vacant)*'''Commissioner for Patents''': Drew Hirshfeld*'''Commissioner for Trademarks''': Mary Boney Denison*'''Chief Policy Officer and Director for International Affairs''': Shira Perlmutter*'''Chief Administrative Officer''': Frederick Steckler*'''Chief Communication Officer''': (Vacant)*'''Chief Financial Officer''': Anthony P. Scardino*'''Chief Information Officer''': John Owens II*'''General Counsel''': Sarah Harris*'''Acting Deputy General Counsel for Intellectual Property Law and Solicitor''': Thomas Krause*'''Director of the Office of Equal Employment Opportunity and Diversity''': Bismark Myrick
===Presumption of attorney fees===
The act encourages judges to make a party pay attorney fees if the lawsuit or claim is deemed frivolous.
===Transparency The USPTO released its 2015-2018 People Plan, which outlines three pillars of ownership===focus for its workforce through the 2018 fiscal year.[http://www.uspto.gov/sites/default/files/documents/USPTO%202015%20-%202018%20People%20Plan.pdf] The Innovation Act requires plaintiffs Office intends to disclose use the owner three pillars of ''lead'', ''engage'', and ''enable'' for its strategic human capital planning, which is "the patent in question so the identity process by which an organization takes stock of how its people and people-management activities align with and support the real parties behind agency’s strategic goals." Some human capital planning recommendations include diversifying and developing its workforce, connecting its employees with the litigation is clear. This will ensure that patent trolls cannot hide behind a web core vision of shell companies to avoid accountability for bringing frivolous litigationthe USPTO, and maximizing its internal leadership capabilities.
===Discovery limits===The act would limit discovery At the end of FY 2015, the USPTO employed 12,667 individuals, which includes 9,161 patent examiners and 456 trademark examining attorneys.[http://www.uspto.gov/sites/default/files/documents/USPTOFY15PAR.pdf]. This number is up from 12,450 total federal employees in FY 2014[http://www.uspto.gov/about/stratplan/ar/USPTOFY2014PAR.pdf] and 11,773 employees in litigation until after a claim construction rulingFY 2013[http://www.uspto.gov/about/stratplan/ar/USPTOFY2013PAR. This provision pdf]. The USPTO is aimed at reducing the costs of litigationexpected to employ around 13,500 employees for FY 2016.[http://www.uspto.gov/sites/default/files/documents/fy16pbr.pdf]
==Analysis Notes (not organized yet)==
Before{| class="wikitable" border=0|+ align="center" size="14px"|'''USPTO Employment'''|-| scope="col" align="center" style="background: The court may conclude that the patent claim is not valid if it is shown that the claimed invention was disclosed in a prior patent or patents#f0f0f0;"|'''Fiscal Year'''| scope="col" align="center" style="background:#f0f0f0;"|'''Total Employees'''| scope="col" align="center" style="background:#f0f0f0;"|'''Patent Examiners'''| scope="col" align="center" style="background:#f0f0f0;"|'''Trademark Examining Attorneys'''|-| align="center" style="background:#f9f9f9;"| 2016 || align="center" style="background:#f9f9f9;"|~13, a book500 || align="center" style="background:#f9f9f9;"|??? || align="center" style="background:#f9f9f9;"|???|-| align="center" style="background:#f9f9f9;"| 2015 || align="center" style="background:#f9f9f9;"|12, a magazine667 || align="center" style="background:#f9f9f9;"|9, a newspaper161 || align="center" style="background:#f9f9f9;"|465|-| align="center" style="background:#f9f9f9;"| 2014 || align="center" style="background:#f9f9f9;"|12, a television show or movie450 || align="center" style="background:#f9f9f9;"|8, a webpage or other published work before the date of the claimed invention.611 || align="center" style="background:#f9f9f9;"|429|-| align="center" style="background:#f9f9f9;"| 2013 || align="center" style="background:#f9f9f9;"|11,173 || align="center" style="background:#f9f9f9;"|8,051 || align="center" style="background:#f9f9f9;"|409|-| align="center" style="background:#f9f9f9;"| 2012 || align="center" style="background:#f9f9f9;"|11,531 || align="center" style="background:#f9f9f9;"|7,935 || align="center" style="background:#f9f9f9;"|386|}
After: Innovation Act removes a provision that prohibits a patent from being deemed invalid based on novelty, prior art, or nonobvious subject matter solely because a defense is raised or established based on prior commercial use.===Regional Offices===
'''Findings from Katznelson Study''' The USPTO currently holds four regional offices in addition to its headquarters in Alexandria, VA. In 2010, the office piloted its first regional office in Detroit, MI through the Nationwide Workforce Program.[http://poseidon01www.ssrnuspto.comgov/about-us/news-updates/delivery.php?ID=343101100066123115123030102069064070118044003044069029011021030023117116127093101102018016059122121033039091077119112065111125116011031037081086111123082086020094071083084027120105093116082106100121110075118106014075071122118023002022027125120031067&EXT=pdfuspto-open-first-ever-satellite-office-detroit]Historically, as a fraction of issued patents, reported litigation rates The Leahy-Smith America Invents Act provided for the USPTO to "establish 3 or more satellite offices in the first part of United States to carry out the 19th century exceeded that responsibilities of the last two decades by about a factor of fiveOffice."[http://www.uspto. Patent litigation intensities in recent years had not exceeded those experienced during the 20th centurygov/sites/default/files/aia_implementation/bills-112hr1249eh. Rather pdf] Subsequently, patent litigation surges are consistent with major shifts the USPTO decided to expand to all time zones through offices in technological developmentsDenver, CO, Silicon Valley, CA, which introduce novel terms and uncertainty in Dallas, TX.[http://www.uspto.gov/about-us/news-updates/us-commerce-department-open-four-regional-us-patent-offices-will-speed-patent claims and require infrimgement analysis of novel and less understood products.]
'''NPEs vs PAEs'''Regional offices were created with the purpose to[httpshttp://www.justicegpo.gov/sitesfdsys/defaultpkg/filesUSCODE-2013-title35/atrhtml/legacy/2012/12/10/290073USCODE-2013-title35-partI-chap1-sec1.pdfhtm]We need to make a distinction between NPEs and PAEs (otherwise known as patent trolls). These terms are often used interchangeably but universities and startups are included under the definition of a non-practicing entity. If you define a Practicing Assertion Entity (PAE) as a company that asserts patents on existing products as a business model, then you separate universities and startups from PAEs, inventor monetizers, and special purpose patent monetizers.:
“Typical patent infringement lawsuit begins with complaint filed by patent owner The Elijah J. McCoy United States Patent and Trademark Office[http://www.uspto.gov/about-us/uspto-locations/detroit-michigan], serves as the first regional office of the USPTO. Originally created under the National Workforce Program in a US district court. Complaint identified alleged infringers2012, and the US office provides services including but not limited to complete patent or patents alleged to be infringeddatabases, collaborative workstations, regularly scheduled workshops, and public tours.”*Usually includes a brief statement Christal Sheppard serves as the current director of the alleged infringing act*Doesn’t identify specific products or processes that are accused regional office.[http://www.uspto.gov/about-us/uspto-locations/detroit-mi/christal-sheppard] The regional office serves the states of infringement*Average time from filing a case to judgement is 33 monthsIllinois, Indiana, Iowa, Kentucky, Michigan, Minnesota, Missouri, or 2 years 9 monthsOhio and Wisconsin.
Some districts (northern district of CA=====Denver, Eastern district of TX) have local patent rules that require plaintiffs to identify the specific claims being asserted, and specify where each limitation of each asserted claim is found in each accused product. CO=====
A sizable majority of patent troll lawsuits (some say as high as 90%) involve patents on software
the problem to patents of low quality having “unclear property rights, overly broad claims, or both.” The problem is inherent in software because, unlike a mechanical device, it is intangible and difficult to clearly define.[https://www.bestlawyers.com/Article/patent-trolls-separating-myth-reality/539/]
Issues/cricism of The Rocky Mountain Regional Office, located in the innovation act Byron G. Rogers Federal Building in downtown Denver, has been open since June 30, 2014.[http://www.ipwatchdoguspto.comgov/2015about-us/05/20uspto-locations/studyrocky-shouldmountain-pauseregional-patentoffice-reform/id=57946/colorado]:*Apparent automatic fee-shifting in lawsuits*Heightened pleading standard*Discovery stay*Broad ‘customer stay’ provision could shield retailers/importers from infringement claims*Pierce corporate veil with “ownership transparency”The office serves the states of Idaho, Utah, Montana, Wyoming, Colorado, North Dakota, South Dakota, Nebraska, and Kansas.
Indirect infringement:*Someone who has contributed to the infringement of a patent is liable*Can only arise when the indirect infringer has some knowledge and intent regarding the patent and infringement*ex. someone who actively induces infringement of patent by encouraging=====Silicon Valley, aiding, or causing another person to infringe a patent. Inducer must be aware of patent and intend for their actions to result in third party infringing that patent*Contributory infringement: seller provides part of component that itself does not infringe on a patent, but has a particular use as a part of some other machine that is covered by a patentCA=====
'''Section 3''' ===Budget===
TL;DR If you believe your patent has been infringed on, you must write in your initial complaint letter VERY SPECIFIC information regarding exactly which parts of your patents have been violated and by what model/device. ===[[2015 Patent Data]]===
====Fees and Other Expenses==== "Requires courts to award prevailing parties reasonable fees and other expenses incurred in connection with such actions, unlessClassification Numbers can be found [http:(1) the position and conduct of the nonprevailing party was reasonably justified in law and fact; or(2) special circumstances, such as severe economic hardship to a named inventor, make an award unjust//www.Directs courts, upon a motion of a party, to require another party to certify whether it will be able to pay any award of such fees and expensesuspto.gov/web/patents/classification/selectnumwithtitle. Allows the court, if a nonprevailing party is unable to pay such a fee, to make a joined party liable for the unsatisfied portionhtm here].
Subjects a party claiming a patent in a civil action who subsequently unilaterally seeks dismissal of the action without consent of the other party, and who extends to such other party a covenant not to sue for infringement, to a motion for attorneyUSPTO's fees as if it were a nonprevailing partynew visual database, unlessPatentsView, can be found [http:(1) the party asserting such claim would have been entitled, at the time that such covenant was extended, to dismiss voluntarily the action without a court order; or(2) the interests of justice require otherwise//www.patentsview.org/web/ here].
Removes a provision that prohibits a patent from being deemed invalid based Google's helpful article on novelty, prior art, or nonobvious subject matter solely because a defense is raised or established based on prior commercial use."downloading USPTO PAIR (Patent Application Information Retrieval) data can be found [https://www.govtrackgoogle.uscom/congressgooglebooks/bills/114/hr9/summaryuspto-patents-pair.html#AvailableApplications here].
TL;DR Encourages courts to make the losers pay for the winner’s court fees/associated fees===Patent Types===
====Joinder of Interested Parties====[http://www.uspto.gov/web/offices/ac/ido/oeip/taf/h_counts.htm]
*If the prevailing party is the side defending against an allegation of infringement, and the nonprevailing party can’t pay the award of fees and expenses, then the prevailing party can signal a motion to have a joinder of interested parties, if they show that the nonprevailing party has no substantial interest in the subject matter**Substantial interest is defined as interest if the party invented the subject matter or commercially practices, made substantial preparations directed particularly to commercially practicing, or is engaged in R&D in the subject matter====Utility Patent====
====Discovery Stay==== Utility patents protect a "Establishes procedures to stay discovery pending a preliminary motionmachine, subject to exceptions for: (1) motions to sever, drop a party, dismissarticle of manufacture, or transfer; (2) actions in which a patentee is granted a preliminary injunction to prevent competitive harm; (3) consent composition of the parties; matter, or (4) certain drug any new and biological product applications.useful improvement thereof"[httpshttp://www.govtrackuspto.usgov/congress/bills/114/hr9learning-and-resources/summaryglossary]
Created page with "The United States Patent and Trademark Office is the organization within the United States government that examines and grants patents and trademarks. Established under the De..."
===Heightened pleading requirementsEmployment===The Innovation Act requires patent owners to show how each limitation of each asserted claim in each asserted patent is found within each alleged infringement.
*(1) increase outreach activities to better connect patent filers and innovators with the Office;
*(2) enhance patent examiner retention;
*(3) improve recruitment of patent examiners;
*(4) decrease the number of patent applications waiting for examination; and
*(5) improve the quality of patent examination.
===Current Patent System [http://knobbe.com/pdf/2010-December-The-US-Patent-Litigation-Process.pdf]==Alexandria, VA===== American Intellectual Property Law Association reported in 2009 that the median cost of a patent infringement suit was 650,000 if less than 1 mil was at risk; 2.5 million if 1 mil to 25 mil at risk; 5.5 million if more than 25 mil at risk.*More than 95% of patent cases resolved before trial
In 2006, the USPTO offices were consolidated in a new campus encompassing ten buildings all connected by underground walkways.[http://www.buildings.com/article-details/articleid/3374/title/uspto-makes-its-mark-with-consolidation.aspx] The location includes 70,000-square-foot mission-critical data center and the National Inventors Hall of Fame and Museum, which re-opened on May 21, 2014.[http://www.uspto.gov/about-us/uspto-locations/alexandria-va/national-inventors-hall-fame-and-museum]
=====Detroit, MI=====
===Detailed Summary of the Bill==Dallas, TX=====
==Patent Database==Pleading Requirements====The party alleging patent infringement must include in the initial complaint (unless the information is not reasonably accessible to such party):*Identification of each patent allegedly infringed*All claims (heart of the patent, defines the limits of exactly what the patent does) necessary to produce the identification of each process, machine, manufacture, or composition of matter (accused instrumentalities) that infringe the patent*The name, model number, description of each AI*How each limitation of each claim is met by the AI*For indiret infringement, the acts of the infringer that are inducing a direct infringement*Authority of the party to assert each patent
===Demand Letters=Design Patent====“The bill precludes a plaintiff from relying on pre-suit demand letters to establish willful infringement if the letters do not specify the asserted patent, the accused product, the plaintiff’s ultimate parent entity, and the grounds for the alleged infringement” [http://www.mofo.com/~/media/Files/ClientAlert/2015/05/150507ProposedPatentReformLegislation.pdf]
Design patents protect a "new, original, and ornamental design for an article of manufacture"[http://www.uspto.gov/learning-and-resources/glossary] ===Venue=Plant Patent====Amends Plant patents protect a "distinct and new variety of plant that can be asexually reproduced"[http://www.uspto.gov/learning-and-resources/glossary] ==Funding== The USPTO receives its operating funds through application fees, officially designated as "offsetting collections" to be placed in the federal judicial code Patent and Trademark Office Appropriations Account. However, the office must publish annal reports to Congress on its expected level of revenue and expenditure. From there, Congress appropriates a certain level of funding that the USPTO may keep form its fee collection in order to run the office. Essentially, the USPTO must request permission to restrict keep and use the venues money it receives from the application fees. No additional appropriation through Congress is usually approved. The net appropriation for the past three years has been $0. The Leahy-Smith America Invents Act (AIA) created a reserve fund for the USPTO, where patent actions may all excess fees are to be brought deposited. Further, the AIA granted the USPTO authority "to judicial districts whereset or adjust by rule any fee established or charged by the Office". This provision increased the office's flexibility on fee setting and helped pave the way for a new class of fees for "micro entities."[http://www.uspto.gov/custom-page/inventors-eye-advice] For FY 2016, the defendant has office requested $3.2 billion of allowed expenditure from its principal place fee collections, which with funds from other income and the Operating reserve balance, is expected to fund the necessary operating budget of $3.5 billion.[http://www.uspto.gov/sites/default/files/documents/fy16pbr.pdf] ===Reserve Fund=== Section 22 of business or the America Invents Act (AIA) created a Patent and Trademark Fee Reserve Fund, where excess fees collected by the USPTO are to be deposited.[http://www.uspto.gov/patent/laws-and-regulations/america-invents-act-aia/fees-and-budgetary-issues] The reserve fund is incorporatedmeant to reduce uncertainty in financial stability for the office, has committed an act especially during government shutdown. The reserve should be able to sustain the operations of the USPTO for three months of infringement its patent operations and has a regular and established physical facility that gives rise four-to-six months of its trademark operations. The office projects the reserve fund to hold $1.9 billion through FY 2019, which will allow the act of infringementoffice "to propose reducing trademark fees in FY 2015."[http://www.uspto.gov/blog/director/entry/an_update_on_sustainable_funding] However, or has agreed or consented the USPTO must still petition Congress annually for permission to be sued spend the money deposited in the instant action; an inventor named on reserve fund. ===Proposed Legislation=== *'''[[Innovation Protection Act]]''' *'''[[Patent Fee Integrity Act]]''' ==Fee Diversion== The USPTO's funding process through congressional appropriations left the patent conducted research or development; or Office subject to "fee diversions," a party has a regular process of taking excess funds accumulated by the USPTO but not requested in the annual budget and established physical facility appropriating them to the general Treasury fund. All fees collected by the USPTO must be credited to the Patent and Trademark Office Appropriations Account, from which the USPTO may take money that has managed significant research been appropriated by Congress and development see all excess funds appropriated elsewhere. This practice of fee diversion helped other sectors of the federal government cover additional expenses without exceeding appropriation limits. The USPTO reacted to this practice by closely estimating expected revenue and matching this estimate with its annual appropriations proposal for Congress. The Omnibus Budget Reconciliation Act (OBRA) of 1990[http://www.gpo.gov/fdsys/pkg/STATUTE-104/pdf/STATUTE-104-Pg1388.pdf] established the USPTO as a fully fee funded organization. The passage of this act, designed to cut the budget deficit, meant that Congress would not appropriate additional sources of funding for the invention claimed in USPTO. Instead, the office would have to remain afloat through only the fees it collects through processing patentand trademark applications. During the eight years of OBRA, has manufactured an estimated $234 million in fee payments were collected by the USPTO in excess of the budget authority for the office.[https://www.fas.org/sgp/crs/misc/RS20906.pdf] The excess funds were not placed in a tangible product alleged reserve fund, and instead were appropriated to embody that invention, non-USPTO related activities. A Congressional Research Service report has estimated $1.009 billion diverted or has implemented made unavailable to the USPTO from FY1990 to FY2011.[https://www.fas.org/sgp/crs/misc/RS20906.pdf] The Leahy-Smith Act America Invents Act created a manufacturing process for USPTO reserve fund to hold excess fees collected in a tangible good in which given fiscal year. Although the process is alleged reserve fund balance may only be appropriated to embody USPTO activities, the inventiondirector of the USPTO must still petition Congress to use these funds in its annual budget request. ==Criticism== ==Contact Information== ===Office Locations=== *'''Alexandria, VA''': :USPTO Madison Building:600 Dulany Street:Alexandria , VA 22314 *'''Detroit, MI''': :Midwest Regional Office - USPTO:300 River Place South:Suite 2900:Detroit, MI 48207 *'''Denver, CO''': :Rocky Mountain Regional Office (USPTO):1961 Stout Street:Denver, CO 80294 *'''Silicon Valley, CA''': :Silicon Valley USPTO:26 S. Fourth Street:San Jose, CA 95113 *'''Dallas, TX''': :Texas Regional Office (USPTO):207 South Houston St.:Dallas, TX 75202 ===Online Locations=== *[http://www.uspto.gov/ Website]*[https://www.govtrackfacebook.uscom/congressuspto.gov Facebook]*[https://twitter.com/uspto Twitter]*[https:/bills/114www.youtube.com/hr9user/summaryUSPTOvideo YouTube]
