Posts Tagged: "Kathi Vidal"

Vidal to Consider Revisions to Iancu’s Eligibility Guidance

In a Director’s Forum blog post published earlier today, United States Patent and Trademark Office (USPTO) Director Kathi Vidal recounted the Office’s efforts over the last several years to make U.S. patent eligibility standards clearer for applicants and said that the agency will be revisiting the 2019 subject matter eligibility guidance issued by the previous administration in an effort to bring further clarity to the examination process.

Send the USPTO Your Comments on Director Review, POP and PTAB Internal Review Processes

The U.S. Patent and Trademark Office (USPTO) yesterday announced and today published an official Request for Comments on the interim process for Director Review of Patent Trial and Appeal Board (PTAB) decisions, the Precedential Opinion Panel (POP) process and the interim process for PTAB decision circulation and internal PTAB review. USPTO Director Kathi Vidal released updated interim guidance on Director Review and PTAB decision circulation/internal review soon after taking office in April and has been accepting preliminary feedback via a dedicated email address, but the comments received in response to this request will officially  inform upcoming notice-and-comment rulemaking to formalize these processes, as well as any modifications to the interim processes prior to formalization. Comments are due by September 19, 2022.

Vidal Orders Amicus Briefs in PTAB OpenSky and Patent Quality Assurance Cases

The U.S. Patent and Trademark Office (USPTO) yesterday afternoon announced that USPTO Director Kathi Vidal will be accepting amicus briefs in the Director Review of both OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064 and Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229, both of which have been the subject of scrutiny by members of Congress and patent practitioners. Vidal also set the schedule for review, with the initial briefing and amicus briefs in both cases due by August 4, 2022, and responsive briefs due by August 18. The patents in question are the basis of a $2 billion judgment against Intel.

USPTO Will Ramp Up Identity Verification Rules for Trademark Filers Starting in August

Starting August 6, 2022, the U.S. Patent and Trademark Office (USPTO) will require all trademark filers to verify their identities in order to file electronic trademark forms. The move comes as an attempt to stop trademark scam entities and was announced in a blog post penned by USPTO Director Kathi Vidal and Commissioner for Trademarks David Gooder last week. According to the post, the identity verification process started as a voluntary option in January 2022 “to better serve our legitimate customers and help prevent bad actors from violating our USPTO Rules of Practice and website terms of use.” The Office has seen a sharp increase in fraudulent trademark filings over the last six years, as well as a rise in foreign scammers from China, Pakistan, and elsewhere outside the U.S.

Vidal Memo Clarifying PTAB Discretionary Denial Analysis Says Fintiv Does Not Apply to Parallel ITC Investigations

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal has issued a memorandum on the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” clarifying current Patent Trial and Appeal Board (PTAB) practice on discretionary denials of inter partes review (IPR) and post grant review (PGR) proceeding institutions. The memo and corresponding press release explain that the PTAB “will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.”

‘In Good Hands’: As Hirshfeld Reflects on His Long Career, Vidal Preps for USPTO’s Future

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal and outgoing Acting Deputy Director Drew Hirshfeld joined IPWatchdog’s CEO and Founder Gene Quinn today to discuss Hirshfeld’s nearly 30-year career with the Office, as well as Vidal’s philosophy as she embarks on her journey as the new Director. Vidal emphasized the importance of dialogue in shaping USPTO practices and processes but said she also will not wait around indefinitely on input over doing “what’s right for the country.” She said: “We will get feedback [but] that’s not going to stop us from acting.” Hirshfeld, who spoke with Quinn on his last day in office, joined the USPTO in 1994.

Webinar: A Conversation with the Director – Presented By IPWatchdog

United States Patent and Trademark Office (USPTO) Acting Deputy Under Secretary of Commerce for Intellectual Property and Acting Deputy Director, Drew Hirshfeld, will step down from a nearly 30-year career with the Office on June 21, 2022. That very same day, Drew Hirshfeld will join Gene Quinn, President & CEO of IPWatchdog, Inc., for a conversation to take a look back at…

Drug Patent Thicket Letter from U.S. Senators to Vidal Seeks Reforms on Continuation Patent Filings

On June 8, a letter signed by a bipartisan group of U.S. senators was sent to U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal voicing concerns over the anti-competitive impacts of so-called “patent thickets,” especially in the drug industry. The senators’ letter urged Director Vidal to address issues of large numbers of patents granted to cover various aspects of a single pharmaceutical treatment, “primarily made up of continuation patents.” The letter, signed by Senators Patrick Leahy (D-VT), John Cornyn (R-TX), Richard Blumenthal (D-CT), Susan Collins (R-ME), Amy Klobuchar (D-MN) and Mike Braun (R-IL), advances a few claims about continuation filings that don’t come from any clear source.

Vidal to Review Institution of Cases Against VLSI Under Interim Director Review Process

United States Patent and Trademark Office (USPTO) Director Kathi Vidal has intervened in two Patent Trial and Appeal Board (PTAB) cases that have caused much controversy in the patent world. Vidal yesterday granted Director Review in both OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064 and Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229, both of which have been the subject of scrutiny by members of Congress and patent practitioners, since the petitioners involved were incorporated after Intel was found to have infringed VLSI’s patents in district court and have no discernable business operations beyond challenging VLSI’s patent claims. The two entities’ petitions were also nearly identical to inter partes review (IPR) petitions previously filed by Intel that had been rejected by the USPTO.

Hirshfeld Announces Timeline for Departure from USPTO

United States Patent and Trademark Office (USPTO) Acting Deputy Under Secretary of Commerce for Intellectual Property and Acting Deputy Director Drew Hirshfeld will step down from a nearly 30-year career with the Office on June 21, the USPTO announced today. Hirshfeld became Commissioner for Patents with the USPTO in 2015. He was appointed to a second five-year term in that role in July 2020. Before that, he served as Deputy Commissioner for Patent Examination Policy, and for two years as the USPTO Chief of Staff for David Kappos. He also served as a Supervisory Patent Examiner, as well as a Group Director of Technology Center 2100, overseeing Computer Networking and Database workgroups. Hirshfeld first joined the agency in 1994 as a patent examiner.

One Inventor’s Story and Hopes for Kathi Vidal

On Wednesday, May 25, United States Patent and Trademark Office (USPTO) Director Kathi Vidal and a panel of academics from Silicon Valley participated in a 90-minute, live Q&A webinar regarding the state of the USPTO. I attended virtually. I am a five-time world jump rope champion and the only jump roper to design and patent a jump rope handle technology. I was granted my two patents (US 7,789,809 B2 and US 8,136.208 B2) in 2010/2012. I started my jump rope manufacturing business, JumpNrope, in 2010 here in Louisville, Colorado. I am proud to also say that I source all my jump rope parts and pieces from U.S. vendors. We make all our jump ropes by hand in Colorado. My technology not only changed the sport of jump rope by offering a precision speed jump rope handle, but it also changed the fitness industry. To date, hundreds of companies have infringed on my patent, including Rogue Fitness, the largest fitness distributor for CrossFit and Strongman. As detailed in my case, I believe that Rogue has willfully infringed on my patent since 2012 by selling tens of millions of dollars’ worth of infringing jump ropes per year.

Vidal Tells Tillis and Hirono She’s Working to Curb IPR Abuse

Following a late April request by Senators Thom Tillis (R-NC) and Mazie Hirono (D-HI)  to then newly-confirmed United States Patent and Trademark Office (USPTO) Director Kathi Vidal asking her to respond to a number of questions surrounding abuse of the inter partes review (IPR) system, Vidal last week sent a letter explaining she is working on the problem. The senators’ April letter had expressed concern over Patent Trial and Appeal Board (PTAB) decisions to institute inter partes review (IPR) proceedings in OpenSky Industries, LLC v. VLSI Technology LLC and Patent Quality Assurance, LLC v. VLSI Technology LLC. “The facts and circumstances around these proceedings suggest petitioners OpenSky Industries, LLC (OpenSky) and Patent Quality Assurance, LLC (PQA) brought the proceedings to manipulate the U.S. Patent and Trademark Office (USPTO) for their own financial gain,” explained the letter.

Interim USPTO Process Moves the Needle on Transparency – But Predictability May Suffer Without Further Guidance

In a blog post on May 24, just over a month after being sworn in, Director Kathi Vidal stated that one of her priorities is to “accelerate change and communications by adopting interim processes and procedures while [the USPTO] work[s] to finalize.”  A mere two days later, the U.S. Patent and Trademark Office (USPTO) issued one such interim process for Patent Trial and Appeal Board (PTAB) decision circulation and internal PTAB review. In addition to speed, this interim process is consistent with Director Vidal’s emphasis on transparency by ensuring that the parties to a proceeding and the public know the identity of the decision-makers. Nevertheless, as discussed further in this article, Director Vidal and PTAB Executive Management must be proactive in identifying areas for further publicly-issued guidance. Otherwise, consistency in PTAB decision-making is likely to suffer.

Tax, Metaverse, and Sustainability in Focus at INTA Annual Meeting—Plus Speeches by Tang and Vidal

An understanding of tax issues is increasingly important for trademark practitioners—and a new report by the International Trademark Association (INTA) focusing on the European Union, Switzerland and the United Kingdom aims to help them achieve that. The “Report on the Taxation of Trademarks and Complementary Rights in Europe” was unveiled at the 144th INTA Annual Meeting Live+, which was held in Washington, D.C. and online from April 30 to May 3. There were more than 6,700 registrants from 130 countries.

Weaponization of the PTAB Presents First Challenge for Vidal

On April 27, Senator Mazie Hirono (D-HI) and Senator Thom Tillis (R-NC), both members of the Senate Judiciary Subcommittee on Intellectual Property, wrote to Kathi Vidal, the newly confirmed Director of the United States Patent and Trademark Office (USPTO), to inquire as to why the Patent Trial and Appeal Board (PTAB) is allowing itself to become weaponized. “We write to express our concern about the Patent Trial and Appeal Board’s (PTAB’s) recent decisions to institute inter partes reviews (IPRs) in OpenSky Industries, LLC v. VLSI Technology LLC and Patent Quality Assurance, LLC v. VLSI Technology LLC,” wrote Hirono and Tillis, who would go on to point out that the “facts and circumstances” suggest that the challengers “brought the proceedings to manipulate the [USPTO] for their own financial gain.”