Patent Reform by Executive Action: Part One

The White House and the United States Patent and Trademark Office (USPTO) are working to implement modest, but important, changes to the U.S. patent system as Congress continues to work through a slew of broader reforms. The White House recently highlighted progress on five executive actions signed by President Obama in June 2013 and announced three new executive actions.

This blog post will detail how last year’s executive actions are being implemented. Our next post will cover the newly announced executive actions for 2014.

Patent ownership transparency: President Obama and the USPTO wish to curb the “abusive litigation tactics” of so-called “patent trolls.” To that end, the USPTO published a draft rule aimed to ensure that patent owners who are involved in proceedings before the USPTO maintain accurate and up-to-date ownership information on their patents. This draft rule should curb the efforts of patent owners engaging in litigation to hide their identities behind shell companies.

Clarity of claims: In response to concerns about overly-broad patent claims in some high-tech fields, the USPTO developed a training program for examiners and judges focused on evaluating patents’ functional claims. The USPTO will soon launch a pilot program through which patents will include glossaries that promote clearer language.

Empowering the public: Citing a rise in allegations of patent infringement directed at unsuspecting small businesses (including those using off-the-shelf products), the USPTO launched an online toolkit for those who may be accused of infringement. It includes Q&As about patent-demand letters and information about litigation and settlement.

Expanding outreach and focused study: The USPTO has increased its public outreach efforts in the last year. Patent system stakeholders – including inventors, trade and bar associations, researchers and advocates – now provide input on strategies to reduce abusive litigation and improve the quality of issued patents. It has also announced an expansion of its Edison Scholars Program. Under that program, academic experts conduct empirical research on behalf of the USPTO to improve patent policies.

Strengthening enforcement of exclusion orders: An exclusion order bans the importation of patent-infringing products to the United States, and U.S. Customs and Border Protection (CBP) enforces it. High-tech products are often modified slightly in an attempt to avoid the order, which presented unique challenges to CBP agents. The U.S. Intellectual Property Enforcement Coordinator is currently reviewing the standards and processes for enforcement and will issue a report recommending refinements.

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