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

AuthorDamian Porcari
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.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
The USPTO’'s Efforts
to Promote a
Culture of Clarity,
Consistency, and
Transparency in a
Global IP Economy
By Damian Porcari
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
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
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

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