PPAC Announcements: Hirshfeld Doubles Down on Director Review Authority; Commerce Department to File for Registration of USPTO Trademarks; Committee Requests Release of $64 Million in User Fees

By Eileen McDermott
August 5, 2021

“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 CassidyBarney 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.

 

The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 9 Comments comments. Join the discussion.

  1. Anon August 5, 2021 5:08 pm

    Does that “due diligence” in view of the aware “some people’s opinions” actually provide counter points to the legal positions of those “some people’s opinions”…?

    Or is it like the conclusory assertions of an examiner who is winging it and waiving their hands?

    At this point, all we have is an assertion by the office that they feel that they have the authority — is there anything in writing?

    As people may — and should — recall, the same Office held at least the same level of confidence in past situations, such as the Claims and Continuations power grab. See Tafas.

  2. Josh Malone August 5, 2021 7:35 pm

    Why is the USPTO so intent on defending and marketing their patent invalidation program? Are we living in a Lewis Carroll novel?

  3. Paul Morinville August 6, 2021 2:36 am

    A lawless government forfeits their right to govern.

  4. Anon-noyed August 6, 2021 2:13 pm

    That’s why we have elections, Paul.

  5. Anon August 6, 2021 3:38 pm

    Anon-noyed,

    I wonder if you see the irony in that Hirschfeld is taking such actions — completely outside the effects of ANY such elections.

  6. Paul Morinville August 6, 2021 3:45 pm

    Anon-noyed, You are saying that it is OK for government officials to act lawlessly because there will be an election in the future. That is a non-sequitur. One has no relation to the other. Breaking the law is not an election, nor is an election breaking the law (except is some cases).

    You are excusing lawlessness and the resulting corruption of a state agency.

  7. Pro Say August 7, 2021 12:59 pm

    “I am not a crook!”
    — Nixon

    “If you like your insurance, you can keep it!”
    — Obama

    “I did not have s.e.x. with that woman!”
    — Clinton

    “I have the authority!”
    — Hirshfeld

  8. Anon August 7, 2021 1:10 pm

    Pro Say,

    How did you miss:

    As of now, I am in control here in the White House.

    Alexander Haig

  9. Anon August 7, 2021 9:09 pm

    This is amazing — given the ferocity of spending in the trillions:

    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.

    Who is pulling the strings?

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