Patent Commissioner Drew Hirshfeld on Patent Quality and Patent Eligibility

By Gene Quinn
September 16, 2015

Drew Hirshfeld, Commissioner for Patents

Drew Hirshfeld, Commissioner for Patents

On August 10, 2015, I had the opportunity to interview Drew Hirshfeld, the new Commissioner for Patents at the United States Patent and Trademark Office. During part 1 of our interview we discussed Hirshfeld’s path from new patent examiner to Commissioner, as well as the Patent Quality Initiative. We pick up our conversation with the Patent Quality Initiative below, and we also discuss patent eligibility guidance from the Patent Office.

Without further ado, here is part 2 of my 3 part interview with Commissioner for Patents Drew Hirshfeld.

QUINN: Can you give us a little bit of a preview of what you think might likely be a part of the quality initiative? Are you prepared to go public with that yet or—

HIRSHFELD: No. I think I can’t go public with specifics because we’re still working on the specifics.

QUINN: Right. I understand.

HIRSHFELD: But I can tell you first and foremost in my mind are issues like clarity of the record. And again that’s nothing new and I know I keep getting back there. But I will tell you that when I first became deputy commissioner with Andy Faile and Bruce Kisliuk, we were the three deputies, we sat in this office and had a conversation about if we could accomplish one thing what would we want it to be. And we thought “more clear office actions.” And I’m not trying to say our examiners have done a poor job. Our examiners have done a great job. They’ve done exactly what we’ve asked them to do. We’re trying to look at it as thinking a little bit out of the box; what more could we put in an office action. So, to that note we have taken some steps, and I definitely would like to continue expanding on that.

QUINN: Now I think the last time that we talked on the record, which was briefly back in December or January timeframe, we talked about the hypotheticals for abstract ideas. At that time you said you were going to continue to work on additional hypotheticals. Where does that whole project stand? I ask because it doesn’t seem like we’ve had a whole lot of data points coming from the courts of late.

HIRSHFELD: Right. We have made the concerted effort to come out with hypothetical claims that help further the discussion on what is an abstract idea and what is not. So back in January, we came out with the first set, and that’s probably what you’re referring to and just recently, we came out with another set of hypotheticals. We currently have a 90 day comment period to comment on this recent set of examples. They’re a combination of hypotheticals and a couple real cases, but what we’re trying to do with the hypotheticals is address those areas that the courts haven’t directly hit head on, they haven’t maybe discussed a certain technology.

[Interview-2]

QUINN: So how should attorneys be using those? I mean are these supposed to be binding on the examiners or persuasive? I know you were talking about pigeonholes here, and by its very nature innovation is new and it shouldn’t really fit into a pigeonhole, but they’ve got to be illustrative on some level, right?

HIRSHFELD: Well, they are and I think there are really two ways people should be using the examples that we put out. The first is to comment on them. We have a comment period – let us know what you think of them. I’ve gotten very good verbal feedback from people about the latest set of examples and even the previous set of examples, but people should be telling us this is good or bad, this is what we like, this is what we don’t like, maybe hear some other examples, right? I can tell you one of the examples that we used was a hypothetical that somebody had sent in to us from the previous comment period suggesting we use it. We thought it was a very good example. The other way that they could be used is citing to an examiner, right? If you have a situation in a particular case where you feel your particular situation is similar to the situation of one of those examples, by all means you could be pointing those out and highlighting to the examiner why you have a similar situation and why your claim should be treated the same way. And I’ve actually had people tell me– I’ve done a lot of speaking on 101 over the last couple years– had a lot of people tell me they’ve gotten very positive results from that.

QUINN: OK. The first set of hypotheticals was really the first time that during this whole episode the Patent Office came out and said “here’s an example of something that could be patented.” And it’s not to say you guys were to blame for that, but the courts have not really liked this whole area very much at all lately. So I think it is helpful to see examples of patent eligible matter, but it is and still remains a little frustrating. Maybe you can comment on it, maybe you can’t. In the software area there are so many different possible ways that you can claim the innovation and I don’t think we really still have a good idea about which ones are the right ones to use long term.

HIRSHFELD: Right. And I think if you look back, and I believe this goes back from initial KSR International Co. v. Teleflex Inc. (KSR) training many, many years ago when we really tried to come out with examples that balance both rejected and patentable claims. And so we tried to show both sides, and I think with 101 we certainly have been in a situation recently where most of the examples coming out of the courts are rejection of certain claims. We don’t have the flip side of what is eligible. So we definitely have gone out of our way to try to say “here is what we think is eligible” so that somebody looking at the big picture can see here is the ineligible side and here is the eligible side, and how to navigate through that. We definitely are trying to get the whole picture to people.

QUINN: So now with the KSR guidance, I think that was in 2010 and that was three years after KSR was decided. The Patent Office goes through those 30 cases or thereabouts explaining the teaching lessons. Do you sense that that will be something over the next year or two or three we’ll see relative to the Myriad and Mayo areas and also in the Alice and Bilski area?

HIRSHFELD: I’m not sure what you’re asking.

QUINN: Oh, like the Patent Office did in that Federal Register notice, I think it was in 2010 and it was like 30 some cases since KSR and how the Federal Circuit had ruled and what the teaching points are for each of the cases. All of those have been placed into the Manual of Patent Examining Procedure (MPEP) now. So I guess what I’m asking is, do you foresee doing something like that for Myriad, Mayo, and then also for Alice and Bilski?

HIRSHFELD: I absolutely do see something like that. This last update document, which we just came out with on subject matter eligibility, did address abstract ideas as part of it, but there was much more to it. We actually discussed at that point how do you merge this with the prior guidance because it was not superseding that guidance, it was working in concert with it. And so I do see that eventually we will be at the point of having an MPEP section where everything is in one place, all the information is in one place for people to review. At this point since we’re still in an initial stage with seeing the case law develop and having comment periods, we thought it was best to come out with a way for people to give us comments without actually going right in and changing the MPEP. Let’s see what people say, see where this evolves, and we’ll eventually get the MPEP up to date to be consistent with our latest thoughts.

QUINN: And do you guys keep an eye also on the district court litigation that’s going on, too? Because it seems to me that there’s a handful of district court cases presently that over the next few years, once they get up to the Federal Circuit, which I assume will happen regardless of what the outcomes are, we are going to see some much more strong technology disclosures in this software area. At that point we should get a much better feel.

HIRSHFELD: Right. So in terms of what we tell our examiners to follow we really stick to the Federal Circuit and Supreme Court case law. However, we do at a management level keep an eye on a lot of district court cases because like you said they might be cases that permeate up through the court system and become Federal Circuit cases. Additionally, there might be good examples in there that we feel we can use or they might lead us to a hypothetical that we can use for training. So we definitely look at those for helping us either plan for future cases that are in the courts, or for example that could be used for examiner training, but we don’t use the district court cases themselves for examiners.

QUINN: Right. And that makes sense because they’re not really binding on anybody other than in that one judicial location and sometimes even then there may be judges in the same court that have different opinions. But it does strike me that probably over the next few years we are going to have to be getting more guidance of a meaningful nature because these cases are not going away.

[JV-1]

HIRSHFELD: Right. And in the update document you’ll see that there’s a section on further information about identifying an abstract idea. We had gotten some feedback from people about some of the characterizations we used, like certain methods of organizing human activity. So something like that we tried to further explain. In the big picture this is evolving, and as we get feedback from the public, and as the court system has more cases go through, we’ll continue to update as needed.

QUINN: I’d love to ask you what the definition of an abstract idea is but I won’t do that because that would be unfair since the Supreme Court is refusing to define it and I think my own personal view is there’s probably only nine people in the entire world that have any idea what it really means and they’re all located in Washington, D.C. But I won’t force you to say that. So now just from a mechanical structure when you take this job you get a contract, a long-term contract, right? So you’re here for the foreseeable future?

HIRSHFELD: Correct. Five years.

QUINN: OK, five years.

HIRSHFELD: Five years is what my contract is, yes.

QUINN: And during that time have you given any thought as to where the Office is now and where you would like to see it one way or another in terms of size, in terms of functioning, in terms of whatever the case may be five years from now when you’re either going to be up for renewal or you are going to be onto a very lucrative private sector career?

HIRSHFELD: I do give that a lot of thought, and not to sound like a broken record, but I get right back to the quality. Whether it’s the quality initiative or the continued improvement of quality, I think it’s all really one and the same, but I would like to, when my tenure is up as commissioner, be able to say I had a positive effect on the quality of issued patents. And in order to improve the quality of issued patents we certainly need to improve the quality of the examination process. And again, I’m being careful not to say that our examiners aren’t doing a really great job – our examiners have done exactly what we’ve asked them to. I think we’re at a time where we are questioning whether we should be asking more. Is there something different we should be asking? Those are the questions we’re figuring out now.

QUINN: And I don’t want to imply by any of these questions about quality that I think the quality is low, either.

HIRSHFELD: No.

QUINN: Because to be quite honest, when I first started writing I used to look for what people might call stupid patents. I have long since given up because it used to be a case that with very minimal effort you could find something that would make you scratch your head. But over the last eight to 10 years that is just not the case. Now I’m not saying that there have been no bad patents issued over that timeframe, but quality has continued to get better all the time. That’s why I’m interested in knowing what more could it be. Do you see the glossary program as being the answer? I know some have been pushing that and saying that could be helpful.

HIRSHFELD: I think it certainly can be helpful and we’re analyzing the results from the glossary pilot. And examiners have been making determinations of say any of the statues forever, right? One thing that really can move the ball toward a higher quality patent is again the clarity of the record, and the amount of information that’s in there so that third parties can really tell what the patent was about. So quality has, as you’ve identified before, many ways to look at it. But when I leave this position, whenever that time is, certainly if I can have a more clear record, more full explanations on the record, I think the system would be in a better place and that is one of my goals. You also asked me about the size of the Office, and I don’t have a vision for the size of the office. To me that’s a result of all the factors, you know, the filing state, etc., and how many applications we have. So my focus is really on quality more than anything else.

QUINN: Yes. Do you think having all the regional offices has helped your recruitment and retention of quality examiners?

HIRSHFELD: Oh, I absolutely think they have. They’ve helped in numerous ways. They’ve certainly helped attract and retain examiners, but they’ve absolutely also helped the Patent Trial and Appeal Board (PTAB), and finding judges, and it’s been an immense help with the outreach and the back and forth with the communities.

QUINN: Yes. And with respect to the whole quality initiative, I think the examiner training is an important part and getting quality recruits is obviously just essential, but I wonder whether if there are any lessons to be learned by the Track One prioritized examination as well. I ask because it seems to me that that allowance rate is higher, which you would probably expect given that people are putting their foot on the accelerator to get patents more quickly. they have probably gone through a lot more scrutiny prior to filing. I wonder whether that type of process is maybe a model for the future in some ways.

HIRSHFELD: Well, I think first of all we are looking at those results and that’s hard to determine from Track One what exactly is leading to its success. I do think they are a self-selected case from the public as you just identified, where people are paying more money, they’re picking those cases that they really feel are most important for quick prosecution, so there’s a motivation on the applicant’s part, too. I would also say from the Office’s standpoint, cases can be moved most expeditiously when there are interviews and discussions, and it gets right back to getting on the same page between the examiner and the applicant – puts us all in a better position.

QUINN: I guess one of the things I’ve thought about a lot of times is that having prosecution over a much more condensed period than your typical prosecution has to facilitate not only getting on the same page but staying on the same page. So it’s not like you file an application and you wait 18 months to maybe 30 months or more for first office action, and then you file a response and then you might wait another six months, 12 months or longer in some cases to get a follow up. So if you did it over weeks rather than quarters everybody would stay on the same page.

HIRSHFELD: Definitely a possibility. Obviously if everything’s a priority it becomes challenging. I forget what the saying is, but if “everything’s a priority, nothing’s a priority,” right?

QUINN: Right.

HIRSHFELD: And so it’s balancing how to have a quicker back and forth method for all of the cases.

QUINN: I appreciate you saying that because you can’t prioritize everything. But then on the other hand I think why couldn’t you really prioritize everything? It would take a shift of the way things operate, rather than picking something up, spending a discreet amount of time on it, and then pushing it off to the next phase, whatever that next phase may be. Whether it’s a first response or an after final type of proceeding but you did more all at one point or maybe all of it all at one point when you’re dealing with a primary who has decision making authority, rather than bits and pieces over a longer period of time. Because after you’ve got a system like that up and running then it wouldn’t be any pushing aside those that are “not a priority.”

HIRSHFELD: Right. You’re entirely, you know, entirely correct. I’m hoping you submitted these comments, Gene, to our quality comments. You don’t need to answer that.

QUINN: No. I’d like to see the same thing that what I’ve actually asked everybody who’s been in your position this question. As a registered patent attorney and as a blogger I walk a certain line. Do I submit these things or do I just write about them and hopefully you all read them or people see them and they point them out to you? I’m happy to submit them, but I also don’t want to overstep bounds. To some extent I’m figuring this stuff out as I go along, I mean there’s no real preexisting business plan to do this really.

HIRSHFELD: No, I was just joking with you about the submission. Although again, the more we get the better we are.

QUINN: But you do read IPWatchdog, right?

HIRSHFELD: I do. I absolutely do. We are looking at all facets of prosecution tosee how to be more efficient. One of the areas we’re looking at is after final practice, and this did come out in the quality summit, and we’re continuing to figure how we can be most efficient. After final seems to be one of those areas where people feel it’s too time consuming and not as productive as it potentially could be.

QUINN: Right, right. There’s probably a lot of things that you could do there. And I think you’ve already started to try and do some of those with the pilot program relating to after final Information Disclosure Statement (IDS) practice.

HIRSHFELD: Absolutely.

QUINN: That was one thing that you just kicked in recently over the last couple years.

HIRSHFELD: Yes. And it’s no different from the big picture of what we’ve been talking about. I’m going to look back in five years at my time as commissioner, and hopefully it’s extended at that point. But whenever I’m done, I’d like to really look back and say there was continuous improvement, and that’s something we should all be asking ourselves. Everyone should be asking, “how can I do my job better, how can I be more efficient?” After final is one of those areas. We’ve got some pilots that are working well and we’re asking ourselves how can we do even better than that, and we’ll continue to do that for everything.

QUINN: So should we be expecting some of these pilots to become final soon or what stage are we at in this process? I ask because some of these pilots have been going on for a while.

HIRSHFELD: They have. And I think my answer there is stay tuned, we need to work our way through that and see.

CLICK HERE to CONTINUE READING… In the final segment of my interview with Commissioner Hirshfeld we go beyond patents and policy and get to know him personally. We talk about his family, being a Dad, maintaining a proper family/work balance, and he answers the familiar “fun” questions about sports, movies and famous fictional inventors. 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Gene Quinn

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 3 Comments comments.

  1. Old Examiner September 16, 2015 5:15 pm

    Gene,

    As far as patent quality is concerned, I believe my comments which you highlighted some years ago still hold true –
    http://www.ipwatchdog.com/2009/04/17/an-old-patent-examiner-explains-poor-patent-quality/id=2651/

    It is still my belief that a quality patent starts with finding the best art. Examiners can’t master their art while having to search subclasses with thousands of references. They also need to be trained by primary examiners or supervisors who have an in-depth knowledge of their art area. Too frequently, this isn’t the case anymore. Also, programs like COPA, where cases are shipped to examiners who have no knowledge of the art simply to expedite examination, aren’t a good idea. If the best art is in the case from the beginning, the prosecution will be expedited and the record will be clear.

  2. Curious September 17, 2015 1:38 pm

    It is still my belief that a quality patent starts with finding the best art.
    I agree 100%. Bad prior art = bad rejections.

  3. Night Writer September 21, 2015 8:55 pm

    >>finding the best art.

    I absolutely agree. I wonder if IPRs would be effective if the best art was already applied to the patent application. I don’t think so. Most patent attorneys will make sure that the claims are patentable over the cited art. So, it is a way of off loading a lot of the work to the applicant if the examiner can just find the best prior art.