State of the USPTO. USPTO Texas Regional Office Dallas, Texas Hope Shimabuku, Director April 19, 2018

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2 State of the USPTO USPTO Texas Regional Office Dallas, Texas Hope Shimabuku, Director April 19, 2018

3 IP and the U.S. Economy 27.9M IP Intensive Jobs (2014) 38.2% IP Intensive Industries share of Total US GDP (2014) $6.6 trillion Value Add of IP-intensive Industries (2014) $1,312/week (46% higher) Avg. weekly wages for workers in IP-intensive industries $115.2 billion Revenue specific to the licensing of IP rights totaled (2012) 28 Industries Deriving revenues from licensing Source: Department of Commerce Intellectual Property and the U.S. Economy: 2016 Update. September (January 3, 2018).

4 IP and the Texas Economy 5M+ IP Related Jobs (2015) $21.7B Annual R&D investment (2015) $750B Sales related to IP (2014) $14,407/year (29.7%) Higher wages for Direct IP workers ($62,892) v. Non-IP workers ($48,485) (2015) $240.9B IP Manufacturing Exports (2015) $82,373 (81%) Higher Value Add Per Direct IP Worker ($190,561) v. Private Sector Worker ($105,188)

5 The USPTO in FY17 12,588 Employees Patents Trademarks 8,147 Patent Examiners 549 Trademark Examining Attorneys 647,388 Patent Applications Filed 594,107 Trademark Applications USPTO Headquarters in Alexandria, VA 388 Patent Trial and Appeal Board Team 71 Trademark Trial and Appeal Board Team 347,243 Patents Issued 242,709 Certificates of Registration

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8 U.S. Patent and Trademark Office Texas Regional Office Federal Annex Terminal Building, 207 S. Houston Street Dallas TX Employees Hired: 101 Patent Examiners 18 Patent Trial and Appeal Board (PTAB) judges 25 Management/Staff Office Hours: 8:30-5 PM Services Public Search Facility Available from 9:00-4:30 PM Examiner Interview Room Hearing Room Public Meeting Space

9 USPTO Regional Offices Leadership Hope Shimabuku Texas Regional Office Dallas, Texas John Cabeca Silicon Valley Regional Office San Jose, California Molly Kocialski Rocky Mountain Regional Office Denver, Colorado [Vacant] Midwest Regional Office Detroit, Michigan

10 USPTO Leadership Andrei Iancu Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office Anthony Scardino Acting Deputy Under Secretary of Commerce for Intellectual Property and Acting Deputy Director of the USPTO

11 TXRO Patent & Trademark Data State Patent Applications Patents Granted Trademark Applications Trademark Registrations FY16 FY17 FY16 FY17 FY16 FY17 FY16 FY17 Alabama 1062 N/A ,241 2,291 1,089 1,053 Arkansas 726 N/A ,490 1, Louisiana 949 N/A ,188 2,227 1,166 1,004 Mississippi 390 N/A New Mexico 1029 N/A ,040 1, Oklahoma 1165 N/A ,955 1, Tennessee 2541 N/A 1,207 1,287 5,646 5,803 2,651 2,778 Texas 22,004 N/A 10,650 11,351 26,107 28,009 11,814 12,169 TOTAL 29,866 N/A 14,526 15,439 41,551 43,959 19,239 19,384

12 Patent Growth Over Time Granted Patents Years

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14 New patent cover design Only the second new design in a century Designed to convey the document s significance to American innovation Created in-house by USPTO staff

15 Innovation Ecosystem K-12 Congressional Offices Legal USPTO Universities Independent Inventor Entrepreneur Corporations

16 1 Recent Updates

17 Patent Agent Privilege Clarifies privilege for communications between clients and their patent attorneys/agents For inter partes review, post-grant review, covered business method patents, and derivation proceedings

18 Trademark Pilot Pilot requiring additional proof of use in commerce for Section 8 & 71 Affidavits made permanent Purpose: to promote the accuracy and integrity of the trademark register Effective February 17, 2017

19 Regulatory Reform Efforts Seeking ways to revise, improve, streamline or remove existing USPTO regulation. Departmental Regulatory Reform Task Force and USPTO Working Group Trademark proposal to remove interference rules (Oct. 2017) Patent proposal to remove redundant rules (Jan. 2018) Next steps

20 Removal of Trademark Interferences Proposed rule achieves the objective of making the USPTO regulations more effective and streamlined Eliminated because they are outdated, unnecessary, or ineffective Petition to USPTO Director allowed

21 Revised Fee Schedule Sets or increases certain patent fees Small and micro entity discounts remain Maintenance fees unchanged Effective Date: January 16, 2018 Patents Fee Current Large Entity Fee Rate Final Rule Large Entity Fee Rate Percent Change FY 2015 Unit Cost Utility Filing Fee $280 $300 7% $277 Utility Search Fee $600 $660 10% $1,773 Utility Examination Fee $720 $760 6% $2,205 Utility Issue Fee $960 $1,000 4% $314 Total $2,560 $2,720 6% $4,569

22 2 Enhancing Examiner- Stakeholder Experiences

23 Stakeholder Training on Examination Practice and Procedure (STEPP) 3-day training on practice and procedure for practitioners Provide external stakeholders with a better understanding of examiner decisions Aid in compact prosecution by disclosing how examiners are taught to use the MPEP

24 In-Person STEPP Training Title Dates Audience Location Registration Agent/Attorney 3-Day Course July 17-19, 2018 Agents and Attorneys San Jose, CA May 7 June 3, 2018 Inventor 3-Day Course August 14-16, 2018 Inventors Alexandria, VA April 30 June 18, 2018 Agent/Attorney 3-Day Course September 11-13, 2018 Agents and Attorneys Alexandria, VA July 2 July 29, 2018

25 Virtual Instructor Led Training (VILT) Title Dates Audience Registration Claim Interpretation Preambles COMPLETED Claim Interpretation - Product By Process COMPLETED Functional Language Workshop - Claim Interpretation and Definiteness Under 35 U.S.C. 112(b) - Computerized Color Editing COMPLETED Claim Interpretation - Functional Language including Means Plus Function Inherency, 35 U.S.C. 102/103 Rejections, and Official Notice February 13, 2018 All January 8 February 4, 2018 April 3, 2018 All March 5 March 25, 2018 April 17, 2018 Agents and Attorneys March 5 April 8, 2018 June 12, 2018 All April 30 May 28, 2018 August 7, 2018 All July 2 July 29, 2018

26 Site Experience Education, Patent Examiner Technical Training Program & Technology Fairs Provides examiners with technical training from innovators, scientists, engineers, and experts working in examined technology areas Open to companies and academic institutions located within the continental United States Speakers contribute to improvement of examination quality

27 3 U.S. Resources for Subject Matter Eligibility

28 MPEP Revision on Interim Eligibility Guidance The MPEP recently updated to incorporate the 2014 Interim Eligibility Guidance (IEG) and its updates This updated MPEP replaces (and supersedes) the IEG and prior updates (through August 2017) Because rejections are based on the law, this changes do not affect pending eligibility rejections or create new grounds of rejection July 2015 Update May 2016 Memo 2014 IEG May 2016 Instructions Nov Memo Updated MPEP Chapter 2100 July 2016 Memo

29 Subject Matter Flowchart Subject Matter Test for Products and Processes: Sets forth the only analysis for examination of subject matter eligibility under 35 U.S.C. 101

30 Quick Reference Sheet (QRS) QRS groups abstract ideas to help examiners identify pertinent cases and find related information in the MPEP Many cases on the QRS are explained in further detail in the MPEP

31 Claims That Are Eligible In Step 2A (Pathway B: Not Directed To An Exception) Case Law

32 Claims That Are Eligible In Step 2B (Pathway C: Inventive Concept) Case Law

33 Case Law Chart Case law chart provides additional information so examiners can look at the patent(s) and claim(s) at issue in the case QRS & Chart are updated periodically (check 101 website)

34 Examples For Use With MPEP Six sets of examples were issued, to explain how to apply the eligibility analysis to various fact patterns Cover technologies including biotechnology, pharmaceuticals, business methods, computerrelated inventions, and software Include eligible and ineligible claims, in accordance with case law and based on hypothetical fact patterns

35 Examiner Training General Eligibility Analysis Overview of Analysis Step 1 Refresher Workshop III (Formulating Rejections & Evaluating Responses) Abstract Ideas Abstract Idea Workshop I Abstract Idea Workshop II Exploring SME: Abstract Ideas CBT Life Sciences Nature-Based Product Training Life Sciences Workshop

36 4 Patent Updates

37 Patents Workforce (as of Feb. 2018) 9,919 total employees 8,165 total Patent Examiners Of which 183 are Design Examiners 37

38 FY17 Targets, Results and FY18 Targets Patent Pendency FY17 Targets FY17 Results FY18 Targets First Action Pendency Total Pendency Patent Term Adjustment (PTA) Timeframes 14/4/4/4/36 FY17 Targets FY17 Results FY18 Targets 14 months to First Action N/A 44% 47%

39 YTD FY 2018 Filing Trends Serialized filings are up 5.4% Planned 0.8% growth RCE filings are down 11.4% Total Utility, Plant, & Reissue filings are up 0.1% Design filings are up 10.6% Provisional filings are up 0.3%

40 40 Unexamined Patent Application Inventory FY 2011 FY 2018 Q1 760, , ,000 ApplicationsAwaiting First Action 640, , , , , , , ,235 Unexamined Applications as of January 10, , ,000 FY11-Q1 FY11-Q2 FY11-Q3 FY11-Q4 FY12-Q1 FY12-Q2 FY12-Q3 FY12-Q4 FY13-Q1 FY13-Q2 FY13-Q3 FY13-Q4 FY14-Q1 FY14-Q2 FY14-Q3 FY14-Q4 FY15-Q1 FY15-Q2 FY15-Q3 FY15-Q4 FY16-Q1 FY16-Q2 FY16-Q3 FY16-Q4 FY17-Q1 FY17-Q2 FY17-Q3 FY17-Q4 FY18-Q1 Quarter

41 First Action Pendency and Total Pendency FY 2011 FY 2018 Q Total Pendency: 24.2 months Months First Action Pendency: 15.7 months FY11-Q4 FY12-Q1 FY12-Q2 FY12-Q3 FY12-Q4 FY13-Q1 FY13-Q2 FY13-Q3 FY13-Q4 FY14-Q1 FY14-Q2 FY14-Q3 FY14-Q4 FY15-Q1 FY15-Q2 FY15-Q3 FY15-Q4 FY16-Q1 FY16-Q2 FY16-Q3 FY16-Q4 FY17-Q1 FY17-Q2 FY17-Q3 FY17-Q4 FY18 Q1 Year/Quarter First Action Pendency Total Pendency

42 Utility Serialized and RCE Filings FY10-18 Q1 700, , ,000 Applications 400, , , , Q1 Fiscal Year Serialized Filings RCE Filings

43 PTAB Appeal Results Overall affirmance rate of 58% for FY18 Additional 11% affirmed-in-part - Affirmance rates vary by Technology Center

44 FY18 Appeal Results by Tech Center 90% 80% 70% 60% 50% 40% 30% 20% 10% % AFFIRMED FY18 Q1 BY TECH CENTER 0% Total

45 5 Trial Statistics IPR, PGR, CBM Patent Trial and Appeal Board December 2017

46 Petitions by Trial Type (All Time: 9/16/12 to 12/31/17) Trial types include Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM).

47 Petitions Filed by Technology in FY18 (FY18 to date: 10/1/17 to 12/31/17)

48 Petitions Filed by Month (December 2017 and Previous 12 Months: 12/1/16 to 12/31/17)

49 Preliminary Response Filing Rates Pre- and Post-Rule To Allow New Testimonial Evidence (NTE) (All Time: 9/16/12 to 12/31/17) The rule to allow new testimonial evidence was effective May 2, 2016.

50 Institution Rates (FY13 to FY18: 10/1/12 to 12/31/17) Institution rate for each fiscal year is calculated by dividing petitions instituted by decisions on institution (i.e., petitions instituted plus petitions denied). The outcomes of decisions on institution responsive to requests for rehearing are excluded.

51 Institution Rates by Technology (All Time: 9/16/12 to 12/31/17) Institution rate for each technology is calculated by dividing petitions instituted by decisions on institution (i.e., petitions instituted plus petitions denied). The outcomes of decisions on institution responsive to requests for rehearing are excluded.

52 Status of Petitions (All Time: 9/16/12 to 12/31/17) These figures reflect the latest status of each petition. The outcomes of decisions on institution responsive to requests for rehearing are incorporated. Once joined to a base case, a petition remains in the Joined category regardless of subsequent outcomes.

53 6 Resources

54 PATENT APPLICATION INITIATIVES

55 Pro Bono Assistance Program Twenty regional non-profit programs across all fifty states Regional programs act as a matchmaker Contact your local regional program to volunteer today!

56 Pro Se Assistance Program Three percent of all applications Pro Se Art Unit expanding Resources for client education 56

57 Need Trademark Help? USPTO Online Tutorials Cover numerous topics Available on USPTO website at

58 Additional Resources Patent and Trademark Law School Clinic Programs Patent and Trademark Resource Centers

59 Texas Law School Clinics (link sends ) (link sends )

60 IP Attaché Program Promotes and explains U.S. IP policies overseas Advises U.S. officials on foreign government IP systems Beijing, (Guangzhou), Shanghai, New Delhi, Bangkok, Rio, Mexico City, Lima, Brussels, Geneva, (Moscow), Kuwait

61 Upcoming Events for TXRO April 19 (Houston, TX), Small Business Association & University of Houston-Victoria Presents: Using the Patent and Trademark Process April 19 (Jackson, MS), SBIR Road Tour April 19 (Houston, TX), World IP Thurgood Marshall School of Law April 20 (Houston, TX), #FIRSTLIKEAGIRL 2018 Women in Stem Panel & Workshop April 20 (Houston, TX), FIRST Championship IP Workshop: Lenses of Invention with the United States Patent and Trademark Office April 20 (Dallas, TX), World IP Day: A Celebration of Earth Day and World IP Day with DISD April 20 (Baton Rouge, LA), SBIR Road Tour April 20 (Dallas, TX), World IP Day with DISD April (Dallas, TX), EARTHx April 23 (Dallas, TX), World IP Day: Screening of Bombshell: The Hedy Lamarr Story April 25 (Dallas, TX), Design Day Program Watch Party April 25 (Bentonville, AR), World IP Day - Patents + Pints April 27 (Austin, TX), World IP Day Lunch Austin

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