“We strongly believe that Drew has ample legal authority to issue [Director Review] decisions. We’ve looked at it very carefully and we’re very confident.” – PTAB Chief Judge Scott Boalick
During the Patent Public Advisory Committee (PPAC) quarterly meeting held today, participants provided an update on the Director Review process under the Supreme Court’s Arthrex v. Smith and Nephew ruling, among other announcements. Patent Trial and Appeal Board (PTAB) Senior Advisor and Judge Linda Horner noted that, since the ruling, 14 timely requests for Director Review have been received; 11 of those were for a batch of related inter partes reviews (IPRs). Drew Hirshfeld, Performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO), this week issued two decisions on the first two requests, denying both; the rest remain pending.
Horner said that the PTAB anticipates receiving more requests soon, with additional Arthrex remands soon expected from CAFC. A number of untimely requests have also been received—in those situations, either the case was still pending at the Federal Circuit and hasn’t yet been remanded, or the case had terminated years ago, so the requests were filed too late.
A Question of Authority
In questions from the audience, Hirshfeld was again asked how the Office can be confident that he, as an interim agency head, has the authority to oversee Director Review rehearings and issue decisions. But both PTAB Chief Judge Scott Boalick and Hirshfeld were adamant that they have done their homework. “We strongly believe that Drew has ample legal authority to issue those decisions,” Boalick said. “We’ve looked at it very carefully and we’re very confident.”
Hirshfeld added that, while the Office is “well aware of some people’s opinions in this regard…we’ve certainly done our due diligence.”
Trademarks Crash the PPAC Party
In a somewhat uncharacteristic announcement for a PPAC meeting, Hirshfeld also explained to attendees that the Department of Commerce yesterday filed for federal registration of the USPTO’s trademarks in an attempt to safeguard both patents and trademarks users from increasing fraud attempts.
According to a blog post by Commissioner for Trademarks David Gooder,“misleading solicitations and trademark filing scams are a growing problem.” They commonly take the form of solicitations for fees from illegitimate businesses and scammers posing as the USPTO and using the Office’s trademarks and logo, and thus far have been seen mostly on the trademark side. While the prospect of the Office examining and registering its own marks poses a potential conflict, both Gooder and Hirshfeld said it’s in the best interest of users to do so, and that the case would be subject to all the same procedures and rules as any other application.
“While some could ask why we didn’t federally register these marks years ago, we realized we require the additional legal protections afforded the owner of a federally registered trademark in light of the rapid increase in sophistication of those unlawfully passing themselves off as the USPTO,” wrote Gooder. “We firmly believe that it’s never too late to do the right thing.”
PPAC Asks Appropriators to Release User Fees
Barney Cassidy, the PPAC Finance Subcommittee Chair, told attendees that President Joe Biden has, for the first time since passage of the America Invents Act, this year appropriated a lower amount to the USPTO than it earned in user fees. The gap amounts to $64 million, which will be held in a separate account that can’t be accessed by the agency throughout the year. Cassidy said the Committee has written to the appropriators to request they reverse the decision, as it will affect operations. “The special quality of patents and trademarks is that they’re time based,” explained Cassidy. “One year you may have a spike of interest in vaccine patents related to mRNA, alternative energy or AI patents, which requires the Office to respond, for example, by giving more overtime to examiners expert in those areas. This takes away that flexibility.” To continue to meet those needs, the Office will have to ignore other urgent projects, such as upgrading the IT system, Cassidy added.
While the money will eventually end up back in the USPTO’s hands, the delay poses a problem, Cassidy said. However, PPAC Deputy Chief Financial Officer Sean Mildrew said that the Office’s financial position overall continues to be strong.
The PPAC Quarterly Meeting also included information on the PTAB’s new efforts to reach out to the inventor community; artificial intelligence policy updates; and patent pendency and quality initiatives.