As Hirshfeld Reflects on His Long Career, Vidal Preps for USPTO’s Future
“With respect to controversial topics like Director Review of PTAB decisions and the Fintiv factors, for instance, ‘there is an answer that I think is the right answer for the country,’ Vidal said. While that doesn’t mean the Office won’t get feedback or continue to solicit feedback after announcing changes, ‘it’s important we do those things sooner rather than later.’”
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 and over the next almost three decades served as an examiner; a Supervisory Patent Examiner; Group Director of Technology Center 2100, overseeing Computer Networking and Database workgroups; Deputy Commissioner for Patent Examination Policy; Chief of Staff for USPTO Director David Kappos; Commissioner for Patents from 2015 – 2021; and, most recently, he was “Performing the Functions and Duties of Under Secretary of Commerce for Intellectual Property and Director of the USPTO” prior to Vidal’s Senate confirmation.
He reflected on the fact that today’s interview was especially fitting since his first interview upon nomination as Commissioner for Patents was with Quinn. In terms of future plans, he said that he would be working with a law firm as of this coming Monday but could not say where. There will be a formal announcement soon. A new Commissioner for Patents has not yet been named, as Vidal said they want to be sure they find the right person and are focused on fairness in hiring.
While neither Hirshfeld nor Vidal could comment on specific cases, they did address a number of key issues with which the Office is presently dealing.
On Input from Congress and Stakeholders
Quinn asked Vidal whether the uptick in letters the Office has been receiving lately from congress is helpful or a hindrance. He was referring in particular to the most recent letter that was circulated last week in which a group of senators asked Vidal to address problems with continuation patent practices that they argue are in part responsible for anti-competitive “patent thickets.” Quinn further noted that Sherry Knowles of Knowles Intellectual Property Strategies subsequently pointed out on IPWatchdog that the USPTO remains under a permanent injunction regarding substantive rulemaking relating to continuation practice that would overlap with the Final Rules it issued in 2007, which Knowles and an independent inventor sued the Office over. Quinn wondered whether the senators are aware of this and how Vidal can respond when the Office has no authority to do what’s being asked. While she couldn’t comment on the specifics, Vidal said that, generally speaking, “I don’t see the letters as a hindrance at all. I like that congress and stakeholders are engaged; they’re important issues and it reflects the value of IP to our society. I see that as positive, and I like all dialogue.”
However, the Office is often already working on the issues raised in such letters, as is the case with continuations practices, Vidal said. While certain processes are codified by statute and cannot be changed, there may still be things the Office could be doing better and, in the case of continuations, “that is something we’re independently looking at,” Vidal said, specifically on topics such as whether emanded claims are supported by the specification and obviousness-type double patenting.
Hirshfeld added that the fact an article had already run on IPWatchdog and that there is a dialogue about the letter demonstrates an evolution in the IP world. “This conversation and the fact that you had an article on it shows why the dialogue is helpful. If you look back in the not-so distant-past, we didn’t have that dialogue.” Hirshfeld credited former USPTO Director David Kappos for this change, as he emphasized the importance of public engagement and input. “We’ve had a line of directors who have really focused on getting public input and feedback – that sets a whole culture and tone for the agency…and that culture stays with the Office from director to director. Personally, I feel like in recent years that’s worked very well for fostering public engagement.”
In response to Quinn’s question on what her philosophy is for those who may not know her well yet, Vidal emphasized that stakeholder engagement would be, and already has been, a key focus for her. She said that the first thing she did as Director was to get feedback and read through the extensive number of comments on the Fintiv/ discretionary denials issue as well as to read all of the related decisions involved. However, she said she does not see her role as being focused strictly on balancing interests as much as on taking action to do what’s best for the country and innovation. With respect to controversial topics like Director Review of Patent Trial and Appeal Board (PTAB) decisions and the Fintiv factors, for instance, “there is an answer that I think is the right answer for the country,” Vidal said. While that doesn’t mean the Office won’t get feedback or continue to solicit feedback after announcing changes, “it’s important we do those things sooner rather than later,” she added.
How Will Director Review Work?
Commenting on what the Director Review process will look like going forward and how it fits into the overall picture of inter partes review (IPR), Vidal said there are three main categories of cases that warrant Director Review: 1) when there is clear error, 2) if there’s a new issue of first impression that needs to be resolved and 3) when there’s a need to clarify guidance and how the Office is interpreting the law. Hirshfeld said there was a lot of questioning around what the standard would be for Director Review at the time he helped to create draft guidance, and it was intentionally kept broad to allow for review across all of these categories. He also noted that “there is a team supporting us and they do quite frankly an excellent job of flagging issues.”
In terms of what is actually being reviewed during Director Review, Vidal said it is focused on the issues that have been raised and that is not a complete de novo review. “It helps when parties focus the review on particular issues,” Vidal said, adding that she just spent the entire three-day weekend on Director Review.
“Once you do narrow the issue, especially if it’s an issue of first impression, it’s important to go back to the legislative history and is an extremely involved process…. I liken it to when I was clerking at the Federal Circuit.”
Reforming the PTAB
Quinn noted that a bill was recently introduced to modernize the PTAB process, and asked Vidal and Hirshfeld for any comment on it, particularly with respect to the Code of Judicial Conduct it would require PTAB judges to follow, which would be the same as United States judges. While Vidal noted that the PTAB does have a code of ethics that is set by the Department of Commerce, she did not take any stance on whether it’s sufficient or what the bill proposes. Speaking generally to reforms at the PTAB, however, Vidal said she will not tolerate any “abuse of process” and that “there’s also a very gray area of activities and conduct that are not furthering the goals of the USPTO and don’t further the intent behind the America Invents Act that are maybe not abuse but need to be looked at.” She said public input on which types of conduct should be addressed would be helpful and that they would be looking at practices at both the institution stage and throughout the whole IPR process. “I don’t come to this with some thought that there’s any one type of actor that engages in these behaviors,” Vidal said. “If we can pre-identify what behaviors will not be accepted that’s even better.”
Examination and Filing Improvements
Vidal and Hirshfeld also touched on a number of ways to improve examination and filing, including considering a program to defer examination/ suspend prosecution in some cases. While Quinn said he’d heard from a head of IP at a Fortune 500 company that this would be helpful to them, Vidal said that, in her listening tours around the country recently, she had heard from small and medium enterprises and individual inventors that they want this option as well. “Especially for people who don’t have the funds, it’s hard to stick to the normal track,” Vidal commented. She added that she is exploring the option of introducing a slower Track 3, and Quinn said this would be particularly helpful if there was the option of jumping off of Track 3 to get to Track 1 at some point if an applicant chose to. Vidal said the Office would be getting comment on this.
Hirshfeld also mentioned that the Office is considering ways for artificial intelligence to help streamline patent searches so that the application is in optimal form for examination prior to submitting and also said the transition to DOCX filing will still be happening, despite delays. Under Hirshfeld’s leadership in November 2021, the Office announced that it would undertake enhanced testing of its information technology systems as more users file in DOCX format, and that it wants to give applicants more time to adjust to filing patent applications in DOCX. In order to alleviate concerns that were raised by users about rendering problems that could result in applicants losing their filing dates due to incorrect information being filed, the Office has allowed applicants to file in both DOCX and PDF formats so that they would feel confident they have a backup of their original filing in the PDF. While the intention was to phase this practice out over time, as users became more confident in the DOCX system, Vidal said it remains to be seen whether PDFs will continue to be allowed as a backup. “I’m not sure we have an answer on that yet [but DOCX] is something we are moving forward with,” she said. “It’s a very powerful tool, and there are capabilities we’ve not rolled out yet.”
Good Hands
Quinn noted that Vidal took notes on another administrative question raised by an audience member, concerning problems with express mail on the west coast, and said this was a good sign:
“It’s not to say she’s going to wave a magic wand and fix that, but there have been directors during my career who would have sat there and stared at the camera and done nothing. I think this bodes well. Once Drew got up on the tenth floor and in some decisional capacity, I said ‘the patent system is in good hands, just trust me.’ And people who know you well, Director, tell me the patent system is going to be remaining in good hands.”
