Vidal Tells IP Press USPTO Has Been Listening and Learning in Year One—But Now It’s Time for Action

Director Kathy Vidal attended Wednesday’s virtual press conference while she was out.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal held a virtual conversation with the Intellectual Property (IP) press on Wednesday to coincide with the Director’s one-year anniversary blog post published today. “If last year was about listening, this year is about making it happen,” Vidal said.

Vidal said the work she did in her first year in the office was to provide clarity and sometimes learn from “unintended consequences,” but this year it was more about feedback provided through various requests for comment. said it would be about implementation based on listening sessions and other initiatives undertaken by the office. “Now we have more knowledge to shape the actual policy,” says Vidal.

Today’s blog post was the result of nearly 100 external stakeholder meetings, internal small group listening sessions with over 1,500 USPTO employees, over 130 fireside chats, and 5,000 comments received in response to Requests for Comments (RFCs). proud of

Graphic from the USPTO Director’s Blog

Criticism of RFCs

Despite the many achievements detailed in her blog post, not everyone is impressed with Vidal’s efforts. For example, the RFC on Robust and Trustworthy Patents has been criticized by her IP luminaries such as former USPTO Director David Kappos. Kappos said in his February that the Council for Promotion of Innovation (C4IP), on which he serves on the board, is “plagued by the leading nature of the overall question,” and many of the questions posed are the failures of past attempts. said to suggest Make changes in areas such as claims and continuity practices. “The PTO needs to be prudent in its requests and the questions and comments it makes, or it could destabilize the patent system and the willingness of applicants to use it,” he said. Kappos told his IPWatchdog in February.

Vidal yesterday said he never considers it “final” and will open for public comment indefinitely on all RFCs and proposed rulemaking the Office is working on. One of her participants on her conference call asked her about the Patent Trial Board (PTAB) “Error Correction Board.” Vidal said she may have worded it wrong when she used the term “error correction” because she assumes there was an error, but she’s still weighing her options and hopes to find a solution for that. Guidance is likely to be issued in the first half of his second year in office.The commission would intervene, for example, if case law intervened to change practice, Mr Vidal said. [through Director Review]we need a panel to delegate,” she added.

About PTAB: We Could Do Better

IPWatchdog asked Vidal if she thought the PTAB was working as intended, as she was particularly active in making director review decisions last year. What she’s learned so far through her director review process. She noted statistics that 80% of PTAB proceedings involve parallel litigation, a figure that should be viewed in the context of “only a subset of patents asserted in federal court are being challenged in the PTAB.” between 20% and 25%, she said. . [the PTAB] It’s working as intended, nothing to change. We couldn’t have spent so much time asking for feedback, hearing from stakeholders, issuing guidance, and looking at policies to make it work better,” Vidal said. Added.

But Vidal defended the PTAB judges, explaining that they “maintain the highest integrity” and simply “apply past guidance and case law as they see it.” She also acknowledged the value of her predecessor Andrei Iancu’s patent eligibility guidance and said the patent office would use it as a model for future changes regarding obviousness and written descriptions. she explained:

“Can we do a better job? I think a lot of places can do it. I think… We are also working on related guidance. [Sections] 103 and 112, on the issue of wanting to ensure the same certainty between the mission and the PTAB.we know [Section] The 101 guidance had that effect. It worked so well that I have a team working on both 112 and 103. Can we do more? absolutely. Overall, I think it can be shaped in a way that serves its intended purpose. “

Vidal also said he’s working on ways to improve the PTAB process, so it’s not necessarily what the Office sees as abuse, but rather that the system’s misbehavior is being curbed. “Like what we see in the office, people will find ways to use it to their advantage,” Vidal said. I want to make sure that [and] So using all the USPTO procedures really benefits the whole country. [and] Support innovation, including those trying to enter the market. “

listening and learning

In today’s blog post, Vidal has spent a lot of time listening to IP people so far. In January, the Office will partner with the Food and Drug Administration (FDA) to host a full-day listening session where industry and advocate representatives will discuss how patents impact access to affordable medicines. gave me the opportunity to talk about In response to follow-up questions Vidal did not have time to answer in person at yesterday’s press conference, Secretariat addressed criticism of the way the hearing session was conducted. Virtually available; therefore, many who might have signed up to speak otherwise did not. A notice sent out last December indicated that those wishing to speak at the listening session had to be present in person, but on the day of the event, several panelists were considered remotely. .

A USPTO spokesperson confirmed an error in an email response sent to IPWatchdog.

• “Yes, we gave some speakers the special favor of making a virtual appearance, but we didn’t make it clear that it was an option in the Federal Register notice.
• We apologize that some speakers were unable to attend due to our error, but we hope that they were able to provide written comments during the open period which lasted for several more months.
• Improved listening session process to clarify that speakers can be both face-to-face or virtual. “

Second year priorities

Vidal also said the Office remains committed to proposed rules governing the PTAB’s practice of discretionary denials of inter partes review (IPR) petitions and provided guidance in June 2022. Explore options and approaches through advance notice of proposed rulemaking on this topic.

Discretionary denial practices, ways to expand the IP bar, and recent RFCs on AI and inventors, along with the new PTAB “Error Correction Panel,” are all topics the Secretariat will publish in the coming weeks and months. is.

In response to a question from Professor Dennis Crouch of Patently O, Vidal also said that the patent office would make it more difficult for patent and trademark applicants from China to obtain rights, and that lawyers representing Chinese clients would be subject to greater scrutiny. A Vidal blog post noted that the Office had implemented identity checks for all trademark applicants “to protect the system from fraudsters” and that “150 orders were We have terminated more than 600 invalid applications and granted 70 registrations for violations of the Trademark Enforcement Rules and website terms of use.” issued. But she told Crouch, “It’s no secret that we’re in an economic war with China, but I want to keep that out of the work the USPTO is doing.” She said the Office was simply identifying threats based on misconduct and not always China. I also mentioned what I am trying to do.

This year’s retrospective blog also promoted Vidal’s many programs to improve inclusion and diversity, bringing underrepresented and underresourced groups into the innovation ecosystem, and promoting the USPTO’s free resources and pro bono Details the past year’s efforts to expand the program. According to data provided in a blog post, of those assisted through patent pro bono programs, 43% self-identified as female, 35% identified as African American or Black, and 14% identified as identified as Hispanic American, 8% identified as Veteran, 5.7% identified as Asian American or Native Pacific Islander, and 1.5% identified as Native American. increase.

Vidal has been active internationally since its first year, meeting with over 20 foreign IP leaders. More than a dozen cooperation agreements signed carried out 222 programs by the Global Intellectual Property Academy (GIPA).