On the Record with Patent Commissioner Drew Hirshfeld

On July 30, 2015, Drew Hirshfeld was sworn in as the new Commissioner for Patents. Prior to taking the helm of patent operations as Commissioner for Patents, Hirshfeld served as Deputy Commissioner for Patent Examination Policy. Even before assuming the position of Deputy Commissioner, Hirshfeld was no stranger to senior management, having served 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.

I spoke with Hirshfeld on the record on August 10, 2015. What follows are some of the highlights of the interview. For more please see the complete transcript of our interview.


USPTO proposes new rules for PTAB administrative trials

Several weeks ago, the United States Patent and Trademark Office published proposed rule changes that will, if adopted, amend the rules for practice before the Patent Trial and Appeal Board (PTAB). The deadline to comment on the USPTO proposed rule changes will be 60 days after publication in the Federal Register, which should be Monday, October 19, 2015. Comments should be sent by electronic mail message over the Internet addressed to: trialrules2015@uspto.gov. Comments may also be submitted by mail addressed to: Mail Stop Patent Board, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of Lead Judge Susan Mitchell, Patent Trial Proposed Rules.

Claim Construction

In the initial request for comments, the Office asked the patent community, “Under what circumstances, if any, should the Board decline to construe a claim in an unexpired patent in accordance with its broadest reasonable construction in light of the specification of the patent in which it appears?”

Not surprisingly, by and large, the Office decided to stick with the broadest reasonable interpretation (“BRI”) approach, explaining that the United States Court of Appeals for the Federal Circuit recently determined that that the Office is authorized to employ the broadest reasonable interpretation approach when construing terms of an unexpired patent at issue in an inter partes review. The Office did, however, choose to adopt the Phillips standard for claim construction for claims of a patent that will expire prior to the issuance of a final decision.

Motions to Amend

One of the biggest issues many have had with current PTAB trial practice relates to the fact that the law says that the patent owner has a right to amend, but that well over 90% of the time, the PTAB denies patent owners the ability to amend. The Office asked for comments on the following topic: “What modifications, if any, should be made to the Board’s practice regarding motions to amend?”

In declining to make substantive changes to amendment practice, the Office explained that  MasterImage 3D, Inc. v. RealD, Inc. Case IPR2015-00040 clarifies that a patent owner must argue for the patentability of the proposed substitute claims over the prior art of record, including any art provided in light of a patent owner’s duty of candor, and any other prior art or arguments supplied by the petitioner, in conjunction with the requirement that the proposed substitute claims be narrower than the claims that are being replaced. Further, the decision also stands for the proposition that the burden of production shifts to the petitioner once the patent owner has made its prima facie case for patentability of the amendment, although the ultimate burden of persuasion remains with the patent owner.

Other Issues

Other issues addressed in the proposed rules include: (1) amending the rules to allow the patent owner to file new testimonial evidence with its preliminary response; (2) the Office declining to adopt a mandatory rule regarding additional discovery of secondary considerations; (3) permitting a patent owner to raise a challenge regarding a real party-in-interest or privity at any time during a trial proceeding; (4) declining a proposal that would allow a petitioner’s reply as of right in the pre-institution phase of an AIA review; (5) denying to provide for small entity and micro-entity filing fee reduction for reviews under AIA; and (6) Rule 11-type certification for all papers filed with the Board with a provision for sanctions for noncompliance.

PTO Hopes New Patent Application Alert Service Will Increase Third-Party Submissions

The United States Patent and Trademark Office (USPTO) recently announced a new service called the Patent Application Alert Service (PAAS). The PAAS is a result of a partnership between the USPTO and Reed Tech, a LexisNexis company. Substantively, the PAAS is a system that provides customized email alerts to the public for free when a patent application is published. Users of the system create an account and then save one or more searches.

“The purpose of the tool is to find out about the latest happenings, it is not about being able to search going back, it is about what is current,” explained Dave Abbott, Vice President for Government Solutions at Reed Tech. “There was never an intent for the Office to compete with the commercial providers.”

According to the USPTO, the Patent Application Alert Service enables individuals to stay up-to-date with potentially relevant pre-grant publications of patent applications at the USPTO. Through customizable alerts, individuals who sign up and create a search will be notified when a patent application is published by the USPTO, together with a concise description of the asserted relevance of each document reported.


Drew Hirshfeld Appointed New Commissioner for Patents

Yesterday, the U.S. Patent and Trademark Office (USPTO) announced that Drew Hirshfeld has been appointed as the new Commissioner for Patents. Hirshfeld, who was previously the Deputy Commissioner for Patent Examination Policy, takes over as the result of the retirement of Margaret “Peggy” Focarino. Focarino’s last day at the Office was June 30, 2015. After Focarino’s retirement and prior to Hirshfeld being sworn in, Deputy Commissioner for Patent Operations Andrew Faile was Acting Commissioner for Patents.

“Drew Hirshfeld brings a wealth of experience to his new post as the U.S. Patent and Trademark Office’s Commissioner for Patents,” Secretary of Commerce Penny Pritzker said. “As Deputy Commissioner and in his previous position as USPTO Chief of Staff, Drew has been a valuable resource for the U.S. Department of Commerce and our ‘Open for Business Agenda.’ In his new role, I know he will continue to serve the American people and our nation’s great innovators.”


Chrome to Discontinue Java; Will Impact EFS-Web and Private PAIR

In April 2015, Google Chrome removed the default ability to use the Java plug-in for browser version 42. This impacts a practitioner’s ability to access EFS-Web and Private PAIR because Java is required for your authentication into these systems. Currently, Chrome has a temporary workaround that allows users to continue to use a Java plug-in to continue to log into EFS-Web and Private PAIR. This temporary workaround will not last for long, so the United States Patent and Trademark Office (USPTO) has recently advised practitioners that they need to come up with a Plan B if they use Chrome to access EFS-Web and Private PAIR.

According to Google, this temporary workaround will only work through September 2015, when Google Chrome plans to completely end their support for Java plug-ins with their newest browser, Chrome versions 45 and above. Therefore, Chrome users who will be using version 45 and above will no longer be able to use the temporary workaround and thus will not be able to log into EFS-Web or Private PAIR after that date.

Oracle is recommending the use of alternative browsers such as Firefox, Internet Explorer, and Safari. For additional information regarding Java and Chrome please visit: How do I use Java with the Google Chrome browser?

Although Firefox, Internet Explorer, and Safari browsers should continue to work with EFS-Web and Private PAIR, the USPTO says that there is always a possibility that these providers may decide to discontinue support of Java plug-ins as well. Thus, the USPTO is closely monitoring announcements on upcoming releases of new browsers for any changes. The USPTO has said they will keep the IP Community informed of any news related to this issue. Furthermore, the USPTO says they are investigating whether there are possible strategies to mitigate the impact on practitioners. The Office is also working on a longer-term plan to improve the overall authentication process without compromising privacy and security.