Michelle Lee outlines USPTO priorities at AIPLA Annual Meeting

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Michelle Lee outlines USPTO priorities at AIPLA Annual Meeting

Lee_Michelle_AIPLA15

USPTO Director Michelle Lee outlined her priorities during the Opening Plenary Session yesterday, in an interview with AIPLA Executive Director Lisa Jorgenson



Lee_Michelle_AIPLA15
Michelle Lee

These included timely issuance of high-quality patents, ensuring Patent Trial and Appeal Board proceedings are fair, high quality and on time, and “integrating with our core mission” the USPTO’s regional offices in Dallas, Denver, Detroit and Silicon Valley. “We’ve embarked on an unprecedented quest for [patent] quality during my time as Director of the USPTO, and we will continue to do so,” said Lee.

The USPTO is transforming its review data capture process to improve analytical capability and consistency. “We are looking at ways to really revamp the review process,” she said.

Everyone from examiners to applicants to supervisors will be working off the same criteria and will be able to see and understand these criteria, which Lee said will lead to increased transparency and uniformity. “Moreover everybody who conducts the review will have their results recorded electronically,” Lee explained. “The net result is we are going to hold a lot more data about how we are doing as an agency. Our estimate is we will have between three to five times the number of data points that we currently have.”

She said the USPTO will use “big data” analytic techniques to learn from that data, and to provide fine-tuned feedback at a technology center level and examiner level, as opposed to the agency-wide training now. “So we will be much more strategic and much more targeted,” said Lee.

Regarding PTAB changes, Lee said recent efforts include: allowing patent owners to include new testimonial evidence with their opposition to a petition for institution; having a new certification requirement that will be a more robust means with which to police misconduct; clarifying when the PTAB will switch to using a district court claim construction if a patent is about to expire; and a proposal for a pilot program that would consider changing staffing of PTAB trials to make them more efficient.

Lee also took the chance to vent her frustration with the expansion of the scope of geographical indications earlier this year under the Geneva Act of the Lisbon Agreement. “At WIPO, in spite of the fact only one sixth of WIPO members agreed to it, it passed, and that was unfortunate,” said Lee. She said the USPTO has a twofold strategy of challenging the legitimacy of the Lisbon Agreement and developing an alternative that is more consistent with US law.

“We achieved two positive outcomes,” reported Lee. The first is the Lisbon Union is now on a path to financial independence, so US companies’ PCT fees will not help fund it. “Secondly, working with other countries we were able to get the WIPO Standing Committee on Trademarks to work on an alternative to the Lisbon Agreement that is more in line with US thinking on geographical indications,” said Lee.



more from across site and ros bottom lb

More from across our site

Sapna Palla, who joins the firm from A&O Shearman, said she was impressed by its work with major life sciences businesses
The court’s decision will have brands and their advisers ‘desperately reviewing’ portfolios and filing strategies, sources predict
Simona Lavagnini discusses the Greek classics, Rudyard Kipling's 'If', and how she dreams of beautiful words
Herbert Smith Freehills and Kramer Levin’s merger won’t be the last transatlantic tie-up if recent history is anything to go by
Betty Chen reveals litigation opportunities and provides an update on plans to double the firm's headcount in San Francisco
David Parrish expects AI to be among the major talking points for a newly formed committee aimed at protecting the interests of London-based IP practitioners, firms, and their clients
The court, which revealed that the parties had settled their dispute, also upheld findings of infringement
Wu Xiaoping of Wanhuida Intellectual Property says the methodology often applied in assessing inventiveness in pharmaceutical patent litigation cases is set to be used in re-examination and invalidation proceedings after the CNIPA makes an invalidation decision a quasi-precedent
Exclusive data and in-house analysis show that law firms should work smarter, not harder, to ensure their communication has greater impact on clients
The tie-up, which will create a firm with a combined revenue of around $2bn, will add around 10 US-based partners to Herbert Smith Freehills’s IP offering
Gift this article