Highlights of the May 2017 Patent Public Advisory Committee Meeting at the U.S. Patent Office
By Peter G. Thurlow
The U.S. Patent Office held its quarterly Patent Public Advisory Committee (PPAC) meeting at the U.S. Patent Office (USPTO or Office) on Thursday, May 4, 2017. The meeting was webcast and the link to view the meeting and related USPTO presentations are available on the USPTO website
. Peter Thurlow (Polsinelli Shareholder, New York) is a member of PPAC.
David Ruschke, Chief Judge PTAB, provided an update on PTAB matters. The Office received the largest number of total IPR filings on a quarterly basis in the first three months of 2017 (237 in January, 128 in February, and 183 in March). The institution rate on all PTAB trial filings (IPR, PGR, and CBM) is at 65%, down from a peak of 87% in fiscal year 2013. The new “waterfall” slide on slide 8 provides a helpful status of petitions in all the trial types filed from September 16, 2012 to March 31, 2017. For example, the slide shows that there have been a total of 6,700 petitions filed as of March 31, 2017; 823 settlements were reached prior to institution; petitions were instituted in 3,382 cases; 638 settlements were reached after institution; and of the 1,539 cases that went to a final written decision, 1,270 found all or some of the claims unpatentable. Mr. Ruschke also briefly discussed the PTAB procedural reform initiative recently announced by the Office. This initiative is in the early stages but it is going to focus on procedures relating to multiple petitions, motions to amend, claim construction, and decisions to institute, which are similar to the issues they reviewed as part of the substantive rule changes that went into effect on April 1, 2016. The PTAB is planning a PTAB Judicial Conference at the USPTO on Thursday, June 29, 2017, from 1 to 5 p.m. The conference will be free and the highlights will include an update the PTAB procedural reform initiative.
Nick Oettinger, Senior Counsel for Regulatory and Legislative Affairs, provided an update on the USPTO’s Working Group on Regulatory Reform. The group was formed in response to several executive orders signed by the President to reduce federal regulations and to reduce costs. The U.S. Department of Commerce has formed a Regulatory Reform Task Force and the USPTO participates as a member on the task force. The group has already begun reviewing the USPTO’s regulations in order to identify regulations that can be revised, improved, streamlined, or removed as appropriate. Although still in the early stages, the USPTO is encouraging feedback and provided an email address at RegulatoryReformGroup@uspto.gov
to encourage feedback. One of the ideas discussed during the PPAC meeting was eliminating or modifying the USPTO’s information disclosure statement (IDS) requirement as it was noted that a number of countries do not have an IDS requirement.
The USPTO provided an update on its patent quality program. In particular, the Office discussed its use of quality metrics to track its performance and the Office of Patent Quality Assurance’s use of a 32-page master review form to measure and collect data on the 10,000 reviews completed to date; 18,000 such reviews are targeted for fiscal year 2017. The USPTO also provided a patent operations update – RCE filings are down; serialized filings are up, which is a good sign. The backlog is 546,766 unexamined applications as of March 31, 2017. In addition, first action pendency and total pendency continue to trend downward at 16.1 months and 25.7 months, respectively. Design patent application filings continued an upward trend. The Track One expedited patent application review program continues to receive favorable feedback as the average time from filing the patent application to petition grant is 1.4 months, and 2.6 months from petition grant to first action.
Dominic Keating, Director, IP Attaché Program, Office of Policy and International Affairs, provided a helpful update on the USPTO’s IP Attaché Program (here
). IP Attachés serve at U.S. embassies, consulates and missions throughout the world to promote U.S. government IP policy internationally. The attachés are located in Belgium, India, Thailand, Brazil, Kuwait, Switzerland (one at WTO, one at the UN), China (one in Beijing, Guangzhou, and Shanghai), Mexico, Peru, Ukraine, and Russia. The USPTO’s website includes a contact list for all the IP attachés.
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