The American Invents Act (AIA) authorized the USPTO to make various structural changes. These changes included the establishment of satellite offices, a new administrative tribunal, an ombudsman program and a pro-bono program. The AIA authorized the USPTO to conduct 11 studies and initiatives, which will be discussed in more detail below.
Structural Changes to the USPTO
One of the most significant changes to the structure of the USPTO was the authorization of the creation of satellite offices. Historically, the USPTO was located in proximity to the District of Columbia. Prior to the passage of the AIA, however, the USPTO initiated a pilot program to explore possible satellite locations for its offices.
The first satellite office was opened in Detroit, Mich., in 2012. The office was named after Elijah J. McCoy, an inventor born to a family of fugitive slaves who held 57 patents. In that same year, the USPTO announced that it had selected three additional sites for satellite offices in Denver, Dallas and Silicon Valley. The sites were selected from a group of 53 candidate metropolitan areas throughout the U.S. The USPTO established a campus collaboration program with Cornell University concurrently with selecting the three new satellite offices.
Another major change to the structure of the USPTO that was brought about by the AIA was the creation and the expansion of the Patent Trial and Appeal Board (PTAB). Prior to passage of the AIA, an administrative tribunal called the Board of Patent Appeals and Interferences (BAPI) decided all administrative appeals and interferences in patent cases. The BAPI was renamed because interferences were being phased out with the switch to the first-inventor-to-file system.
The name change was not mere window dressing, however, because the newly created administrative proceedings – post-grant review, inter-partes review and covered business-method review – were more like actual trials, since participants had the ability to obtain limited discovery. The USPTO also began expanding the number of judges that sat on the PTAB. As of November 2013, the PTAB had 177 members.
Two other changes were made to the USPTO through the AIA. First, the USPTO was authorized to create an ombudsman program to improve communications between inventors and patent examiners. Second, the USPTO created a pro-bono program to help match inventors with attorneys willing to provide services on a pro-bono basis. These programs were developed, primarily, to help small businesses and underfinanced independent inventors.
Studies and Initiatives
The AIA directed the USPTO to establish methods for studying the diversity of patent applicants, including those applicants who are minorities, women or veterans. In response to this directive, the USPTO shared its publicly available application data with the U.S. Census Bureau’s Center for Economic Studies (CES) to see whether it was possible to match the identity of individual inventors with certain information that was obtained by the CES. The CES was able to match just under 65% of the U.S.-resident inventors provided by the USPTO.
The AIA directed the USPTO to study how to help small businesses obtain international patent protection. The USPTO conducted the study with the help of the U.S. Small Business Administration (SBA). The USPTO and the SBA concluded that small businesses would benefit from obtaining foreign patent protection, but they were unable to conclude whether a grant program or a loan program would be helpful.
The AIA directed the USPTO to study patent litigation and assess the factors that affect patent infringement to help improve patent quality. The study concluded that patent litigation was driven by patents with unclear patent rights, the potential for large monetary awards and recognition by companies that patents can be valuable assets.
The AIA directed the USPTO to perform studies on prior-user rights, genetic testing, the effect of the switch to a first-inventor-to-file system on small business, misconduct before the USPTO, the establishment of satellite offices, virtual marking and the implementation of the AIA itself.