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Posts Tagged: "Drew Hirshfeld"

USPTO Moves Ahead with Changes to Patent Bar Registration

Following a Request for Comments in March 2021, the United States Patent and Trademark Office (USPTO) yesterday published a Federal Register Notice updating the General Requirements Bulletin (GRB) for admission to the registration exam to practice in patent cases before the Office. The Notice indicates that the USPTO considered all comments and based on the “overwhelming” support for the proposals is moving forward with implementing the changes. The Notice says the Office received 32 comments in response to the March request for comments.

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

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). Hirshfeld this week issued two decisions on the first two requests, denying both; the rest remain pending.

Hirshfeld Says He May Move Forward on Important Items If Biden Appointee Takes Too Long

IPWatchdog and LexisNexis held a “Conversation with the Commissioner of the USPTO” today, in which Drew Hirshfeld, the U.S. Patent and Trademark Office (USPTO) Commissioner for Patents, Performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director, explained that, while he would prefer to wait until a political appointee is heading the Office to move ahead on substantive reforms, he will consider moving forward on important initiatives if necessary. “I’m trying to run the agency as if I was in this permanently, knowing I’m not and I won’t be, because I think that’s the right thing to do for the system,” Hirshfeld said. “If we’re going long enough without a nominee then maybe I need to move forward on things.”

IPW Webinar: A Conversation with the Commissioner of the USPTO: A Look Inside Patent Processes at the USPTO (Free CLE Webinar)

Join us for a free CLE webinar where we will discuss the processes and policies driving the USPTO. Topics during this casual conversation with the Commissioner and Deputy Commissioners for Patents will include hot issues affecting the Office, how they ensure quality, patent examination policy, how they are using AI, and much more. We have assembled a stellar panel of…

PPAC Meeting: Filings Down Less Than Expected Overall, Office Calls on Congress to Release Previously Collected Fees

At the quarterly meeting of the Patent Public Advisory Committee (PPAC) on Thursday, Acting U.S. Patent and Trademark Office (USPTO) Director Drew Hirshfeld told attendees that patent filings are presently down 3.9% compared to the same time last year; the Office had projected filings would be down 3.7% for the year in the wake of the pandemic, but since filings have been coming in at a greater rate than expected in the last two months, the models now predict an overall 2% decrease for the year instead.

Boalick and Hirshfeld Highlight PTAB Stats, USPTO Training Efforts During Virtual LEAP Program

On Friday, March 26, the United States Patent and Trademark Office (USPTO) conducted virtual LEAP training. LEAP stands for Legal Experience and Advancement Program and is a series the USPTO is fostering in order to help inexperienced practitioners develop the skills and practical experience necessary to effectively advocate on behalf of clients. Previously, the USPTO had offered LEAP training with respect to contested cases challenging patents post grant. On this day, however, the training focused on ex parte appeals to the Board from an examiner, which Patent Trial and Appeal Board (PTAB) Chief Judge Scott Boalick characterized as “the bread-and-butter work” of the PTAB.

Tillis and Cotton Urge Hirshfeld to Adopt Pilot Program to Address ‘Inherently Vague and Subjective’ Eligibility Analyses

Senators Thom Tillis (R-NC) and Tom Cotton (R-AR) sent a letter on Monday to the acting Director of the United States Patent and Trademark Office (USPTO), Drew Hirshfeld, asking him to “initiate a pilot program directing examiners to apply a sequenced approach to patent examination,” rather than the traditional “compact approach.” This proposed pilot program would require a select group of examiners and applicants who elected to participate in the program “to engage in a full examination of the grounds of patentability and then, once that process is complete, a full examination of the grounds of eligibility.”

USPTO’s Drew Hirshfeld on Proposed Changes to Requirements for Patent Bar Registration: It ‘Just Makes Sense’

The United States Patent and Trademark Office (USPTO or Office) earlier today published a Request for Comments in the Federal Register asking for public input into proposed changes to the General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases Before the United States Patent and Trademark Office (GRB). The Office is considering changing the criteria applicable in ways that would streamline the process for both applicants and the Office of Enrollment and Discipline (OED), the office within the USPTO tasked with administering the Patent Bar Exam and implementing the rules pertaining to admission to practice before the Office.

Bipartisan Group of Senators Asks Hirshfeld to Gather Info on Eligibility Law by Next Year

Senators Thom Tillis (R-NC), Mazie Hirono (D-HI), Tom Cotton (R-AR) and Chris Coons (D-DE) sent a letter on Friday to the Acting Director of the United States Patent and Trademark Office (USPTO), Drew Hirshfeld, asking him to “publish a request for information on the current state of patent eligibility jurisprudence in the United States, evaluate the responses,” and provide the senators with a detailed summary of the findings in order to assist them as they consider appropriate legislative action.

A Look Inside Patent Processes at the USPTO: Effects of the Pandemic and Upcoming Changes

On Thursday, July 30, U.S. Patent and Trademark Office (USPTO) Commissioner for Patents Drew Hirshfeld and other USPTO staff updated attendees of IPWatchdog and LexisNexis’ webinar, “A Conversation with the Commissioner: A Look Inside Patent Processes at the USPTO,” on issues such as staffing, reopening plans, and upcoming new processes for routing patent applications.

Drew Hirshfeld Appointed to Second Five-Year Term as USPTO Commissioner for Patents

This morning, the United States Patent and Trademark Office (USPTO) announced that Secretary of Commerce Wilbur Ross reappointed Commissioner for Patents Drew Hirshfeld for a second five-year term. Commissioner Hirshfeld’s original term was set to expire this month. Hirshfeld began his career with the USPTO in 1994 as a Patent Examiner, became a Supervisory Patent Examiner in 2001, and was promoted in 2008 to Group Director in Technology Center 2100 (Computer Architecture Software and Information Security).

Panelists Warn Senate IP Subcommittee Against Drastic Measures on Patent Quality

The Senate Judiciary Committee’s Subcommittee on Intellectual Property, headed by Senator Thom Tillis (R-NC), yesterday heard from five witnesses on ways to improve patent quality at the U.S. Patent and Trademark Office (USPTO). Suggestions ranged from fixing patent eligibility jurisprudence to strengthening efforts on international work sharing, increasing patent application fees, and allotting more time for the examination process. The majority of panelists warned against the dangers of using patent quality as a means to simply block broad swaths of patents that particular industries or entities don’t like, and emphasized that clarifying U.S. patent law would likely go a long way to curbing invalidation rates.

USPTO Leadership Sides With Patent Owner, Ruling Even Deficient Complaints Trigger Time-Bar

On August 23, the Patent Trial and Appeal Board’s (PTAB’s) Precedential Opinion Panel (POP) issued a decision granting patent owner 360Heros’ request for rehearing of an earlier PTAB decision to institute an inter partes review (IPR) requested by GoPro and also denied institution of that IPR under the one-year time-bar codified in 35 U.S.C. § 315(b). The PTAB agreed with 360Heros that the one-year time-bar began tolling from the filing date of a counterclaim alleging patent infringement that was dismissed by the district court for lack of standing. The POP panel included U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu, Commissioner for Patents Drew Hirshfeld and PTAB Chief Administrative Patent Judge Scott Boalick. The 360Heros decision may offer inventors an escape route from the PTAB death squad. For the first time since the America Invents Act became law, the shoe could be on the other foot.

USPTO Precedential Opinion Panel Delivers Lukewarm Attempt to Streamline PTAB Policy

In September 2018, the United States Patent and Trademark Office (USPTO) announced the substantial revision of Standard Operating Procedures (SOPs) for the paneling of matters before the Patent Trial and Appeal Board (PTAB) (SOP1) and precedential and informative decisions (SOP2), based upon feedback the Office received from stakeholders, courts, legislators, and six years of experience with America Invents Act (AIA) trial proceedings. Now, the USPTO’s Precedential Opinion Panel (POP)—which includes USPTO Director Andrei Iancu, Commissioner for Patents Drew Hirshfeld, and Acting Chief Administrative Patent Judge Scott Boalick—has issued its first ever decision, holding that a petitioner may be joined to a proceeding in which it is already a party; that the Board has discretion to allow joinder of new issues in an existing proceeding; and that the existence of a time bar under 35 U.S.C. § 315(b) is one of several factors to consider when exercising this discretion. Despite that guidance, the POP emphasized that such discretion should be used only in limited circumstances, “namely, where fairness requires it and to avoid undue prejudice to a party.” Because the instant request for joinder was filed as a result of Petitioner’s errors, the Board dismissed the IPR petition, noting that “there are no fairness or undue prejudice concerns implicated, and the Petition is otherwise time-barred under § 315(b).”

Are fewer continuations the sign of a healthy patent system?

Hirshfeld explained to me that he is well aware of all of the portfolio reasons why continuations are very important, but the Office does really want to minimize RCEs, which makes all the sense in the world. An RCE is not a new application, is essentially just payment for additional consideration by an examiner. RCEs, while sometimes necessary can and do become inefficient and attempts to streamline the prosecution process have long tried to make them unnecessary in whole or in part to the extent possible.