The USPTO's Efforts to Promote a Culture of Clarity, Consistency, and Transparency in a Global IP Economy

• Author: Damian Porcari
• Pages: 32-35

Published in Landslide® magazine, Volume 12, Number 4, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 by the American Bar Association. Reproduced with permission. All rights reserved.

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The USPTO’'s Efforts

to Promote a

Culture of Clarity,

Consistency, and

Transparency in a

Global IP Economy

By Damian Porcari

A

s the United States Patent and Trademark Ofce

(USPTO) has just recently released its Performance

and Accountability Report for FY 2019 (FY 2019

PAR),1 it has become clear that the USPTO is rec-

ognizing the need to maintain a culture of clarity

and transparency in the intellectual property (IP)

acquisition process. This article breaks down highlights

from the USPTO’s FY 2019 PAR and demonstrates how

these principles are being pursued by the USPTO to pro-

mote a culture of transparency and consistency in an

increasingly global IP economy.

Designation of Precedential and Informative

Decisions

As stated in the message from the Under Secre-

tary of Commerce for Intellectual Property and

Director of the USPTO, Andrei Iancu, the year 2019

saw many examples of the Patent Trial and Appeal

Board (PTAB) successfully continuing its efforts “to

increase consistency, transparency, and certainty of its

proceedings.”2

First, the USPTO conducted training for its administra-

tive patent judges (APJs) to ensure compliance with the 2019

Revised Patent Subject Matter Eligibility Guidance.3 To dem-

onstrate its application of the 2019 revised guidance, the

USPTO also designated ve decisions that analyzed claims

under 35 U.S.C. § 101 as informative.4 In parallel, new

processes were implemented to designate decisions as prec-

edential and informative,5 and under these new processes, 16

decisions were designated as precedential and eight decisions

as informative (which exceeds the total number of decisions

designated as such from the previous three years combined).6

FY 2019 also saw the implementation of the Precedential

Opinion Panel that issues precedential decisions on matters

of importance, which includes the Director, Commissioner

for Patents, and the Chief Administrative Patent Judge.7

Promoting Harmonization and Engagement with

International Partners

In FY 2019, the USPTO continued to engage with the IP5

(which includes the European Patent Ofce (EPO), the

Japan Patent Ofce (JPO), the Korean Intellectual Property

Ofce (KIPO), the National Intellectual Property Adminis-

tration of the People’s Republic of China (CNIPA), and the

USPTO).8 According to the FY 2019 PAR, “[i]n FY 2019,

the IP5 agreed to coordinate preparations for global techno-

logical transformations in articial intelligence and other new

and emerging technologies and engage in efforts in new areas

related to the harmonization of examination practices.”9

Improved Efciency and Cooperation in the Global

Industrial Design System

Throughout FY 2019, the USPTO continued its efforts to

improve the global industrial design system. This included

Damian Porcari is the director of the Elijah J. McCoy Midwest Regional United States Patent and Trademark Ofce in Detroit, Michigan.

He carries out the strategic direction of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO and leads

the Midwest regional ofce in Detroit. He can be reached at damian.porcari@uspto.gov.