US Patent and Trademark Office 2014-2018 strategic plan: any comment?

Getting back on track after the government shutdown, the United States Patent and Trademark Office (USPTO) is now looking forward to defining its strategy for the next four years. The agency is also asking you to give your opinion on this plan.

The USPTO has been facing many challenges over the past years including the implementation of the American Invent Act, the departure of David Kappos, and a funding structure debate. It is therefore important to know in what domains the Office intends to aim its efforts.

On October 17, the American IP office announced that the draft strategic plan for fiscal years 2014-2018 had been posted for public review and comment.  Any third party can download the draft and comment by following this link.

USPTO is stoked to get
comments on its plans.

The release states that:

"the draft plan sets out the USPTO’s mission-focused strategic goals: to optimize patent quality and timeliness; to optimize trademark quality and timeliness; and to provide global and domestic leadership to improve intellectual property (IP) policy, protection, and enforcement worldwide."

This is no surprise if you consider that most IP practitioners have for many years been urging the Office to reduce its backlog and improve the quality of the patents delivered. Whether an improvement in quality and timing would solve all issues (including patent trolls) remains a different question.

The Office identified seven goals to work on in order to enhance its activity:

1. Working with stakeholders to refine long-term pendency goals that will meet the needs of both the office and the IP community.

2. Increasing efficiencies and examination capacity to align with optimal pendency goals, such as hiring/retaining a nationwide workforce. [Perhaps the Office could provide with the origin of funding for hiring new examiners?]

3. Increasing international cooperation and work sharing, such as implementing Cooperative Patent Classification (CPC) and the Global Dossier. [That is indeed one of the great achievements of the previous year. But there is still some more implementation to do].

4. Continuing to enhance patent quality by evaluating and refining the measurement of quality data, and maximizing its usage to improve the quality of patent and trademark examination.
5. Ensuring optimal IT service delivery to both employees and stakeholders, for example, by stabilizing legacy systems.
4. Continuing and enhancing stakeholder and public outreach to promote the availability of educational resources for applicants and other users; e.g., the patent pro bono program and partnerships.
   
   
5. Maintaining the Patent Trial and Appeal Board’s (PTAB) ability to provide timely and high quality decisions by defining optimal pendencies for PTAB proceedings, and ensuring consistency in PTAB decisions. [The PTAB seems to be working fine so far, mostly because it has not been used extensively yet (around one case per day) but the incoming post grant reviews proceedings could give it some though time].

The draft can be downloaded here. It is a 42 pages document with a lot of details . One interesting point is the external factors identified by the USPTO. These factors points are likely to have an impact on USPTO performance. These are:

1. Growth of IP Worldwide: Demand for IP rights, both here and abroad, has increased significantly over the past several years. Applications filed overseas can and do have an effect on USPTO workload. [It is a bit of a paradox to consider that what you are aiming for (development and growth of IP) is an eternal factor that could have an impact on your activity].  

2. Economic Volatility: The health and strength of the domestic and global markets influence demand for IP rights, and have a direct impact on USPTO operations.  

3. Continuation of Patent Reform: The USPTO completed its implementation of all new statutory provisions of the Leahy-Smith America Invents Act -- successfully and on time. This Act, signed into law in September 2011, contains many fundamental changes to patent laws and USPTO practices, such as moving the United States to a “first-inventor-to-file” system from a “first-to-invent” system. These significant changes required USPTO to issue many new regulations that became effective in September 2012 and March 2013. In terms of White House Legislative Priorities and Executive Actions, the Obama Administration recognized that patent reform “went about halfway to where we need to go” and has announced seven legislative priorities and five executive actions designed to reduce abusive patent litigation tactics and to ensure the highest-quality patents in the US system.  

4. Court Decisions can affect USPTO practices and procedures. For example, the Supreme Court decision in Association for Molecular Pathology v Myriad Genetics, Inc. [on which see earlier Katposts here and here] was a case challenging the validity of gene patents in the United States that required a quick change in direction to USPTO examination practice.  

5. International Discussions benefit American innovators and could lead to operational efficiencies, such as patent harmonization, work-sharing and patent classification.  

6. Counterfeiting, Piracy, and Failure to Respect IP Rights continue to be significant issues, particularly in fast-growing economies such as China and India. A major challenge facing the USPTO and the U.S. IP system is the illegal accessibility to copyrighted works through the internet. [How come counterfeiting would be likely to harm the USPTO's volume of work?] 

7. Growing IP Backlash: Achieving consensus among countries advocating effective IP protection is critical for counteracting countries less supportive of efforts to enhance IP standards. While these factors are outside the direct control of the USPTO, it is engaged with the five major IP offices in forecasting workload, has established operating reserves that could mitigate the impact of economic volatility, and is engaged in patent reform, pending court decisions and international discussions.

Merpel asks: does this plan differ from the previous one? Not really. The previous strategic plan for 2010-2015 was a bit longer and had different colours. Besides that, the goals remain the same and the way to achieve it also stands among the same principles. However, looking at the balanced scorecard in the 2014 plan, the number of examiners to be hired is not mentioned, while in the previous plan the office claimed to hire 2000 examiners in 2011 and 2012. This guest Kat wonders if it demonstrates some uncertainty in the future resources of the office.

To anyone that agree/disagree with the plan and its insights, written comments should be sent by email to strategicplan@uspto.gov by November 25, 2013. 

Comments may also be submitted by mail addressed to: The USPTO Strategic Plan Coordinator, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Bonita Royall.

You also have a chance to speak directly to the USPTO: A public forum on the USPTO 2014-2018 Strategic Plan will be held on November 5, 2013, from 10:00 a.m. to 11:00 a.m. ET in the USPTO’s Madison Auditorium located at 600 Dulany Street in Alexandria, Va. in Madison Auditorium. The final plan should be posted on-line in February 2014.

To convince you to comment, there is even a video presented by Teresa Stanek Rea, Deputy Under-Secretary of Commerce for Intellectual Property and Deputy Director for the USPTO.