2021 Dc Delegation Report-july 20, 2021

• Jurisdiction: United States,Federal
• Publication year: 2021
• Citation: Vol. 46 No. 3

2021 DC DELEGATION REPORT-JULY 20, 2021

DELEGATES

John Pavolotsky

DC Delegation Chair

Heather Antoine

IP Section Chair

Kieran de Terra

Executive Committee Member

Mariana Noli

Executive Committee Member

David Tseng

Executive Committee Member

John R. Wierzbicki

Programming Chair

The Intellectual Property Section conducted a virtual Washington, D.C. delegation on June 9-11, 2021.

An actual visit to Washington, D.C. had been planned for April 2020, but COVID intervened, and there was no delegation in 2020. The delegates regrouped, reconvened, and decided to go virtual in 2021. A traditional, in-person delegation is planned for 2022, when federal agencies go back to the office, as current trends suggest. During our virtual delegation, we met with the United States Patent and Trademark Office, the Computer Crimes and IP Section of the Department of Justice, and the Intellectual Property Enforcement Coordinator. Despite the virtual nature of our visit, the meetings were engaging and informative. A virtual visit with the Copyright Office would have been arranged as well, but for the excellent (and comprehensive) "Copyright Office Comes to California" virtual program on April 27 and 29, 2021. A recap of that program is provided below, and, of course, the entire program is available via InReach on the IP Section website. With a new administration, our delegation was eager to learn about new developments and possible changes in approaches to IP practice and policy. The theme, however, was mostly consistency, which reflects the constant and continuing importance of IP issues.

The 2021 delegation consisted of the following representatives from the IP Section:

John Pavolotsky, Chair of the DC Delegation, Executive Committee Member

Heather Antoine, Chair of the IP Section

Kieran de Terra, Executive Committee Member, Programming Chair Technology, Internet and Privacy Interest Group

Mariana Noli, Executive Committee Member, Vice Chair International Interest Group

David Tseng, Executive Committee Member, Chair International Interest Group

John R. Wierzbicki, Programming Chair, Copyright Interest Group

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U.S. PATENT AND TRADEMARK OFFICE

Opening Remarks

The DC Delegation met with Commissioner for Patents Drew Hirshfeld, who performs the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO), and a contingent of 30 people from the USPTO over a remote call.

Commissioner Hirshfeld began by highlighting that the USPTO recently received its all-time highest favorability rating on the question of patent quality, at a ratio of 19-to-1.

In response to Covid-19, the USPTO adopted a mandatory work from home policy. This has now shifted to a 'maximum' work from home policy. More USPTO personnel are anticipated to go back to the office sometime in July 2021. The USPTO has been able to handle its responsibilities in response to these changes with no noticeable drop-off in pendency based on patent term extension.

In terms of filing volume, there has been a slight reduction in patent filings over the past year, but trademark filings have significantly increased.

In terms of upcoming or potential changes, Commissioner Hirshfeld identified two things for stakeholders: 1) the transition to the use of DOCx for filings starting in 2022 and 2) improvements to technology infrastructure, including a new search for all examiners and integration of the use of AI within the USPTO.

Commissioner Hirshfeld ended his remarks by emphasizing that the role of the USPTO is to be non-partisan, so it is unlikely that there will be any significant changes arising from a change in administration.

PATENT OFFICE

Speakers: Brian Hanlon, Soma Saha, Paolo Trevisan, Jerry Lorengo, Valencia Martin-Wallace, Dan Ryman, Matt Such.

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Covid Relief Efforts

Measures have been well received, such as the e-filing of Hatch-Waxman patent term extensions as well as plant patent applications. There have been over 650 applications for the Covid-19 prioritized examination pilot program, and fewer than 80 slots remain. Only 13 applications have been filed under the deferred fee provision patent pilot program and the program will be evaluated to see if it extends beyond September 17, 2021.

Patent Prosecution Trends

On application pendency, the USPTO is dedicated to reducing examination times. Examination of patents is currently being performed by a staff of 8,000 examiners and 700 managers. Having sufficient technological expertise is crucial to lowering pendency times, and the USPTO will hire and allocate staffing as needed to handle the workload. The USPTO is focused on two metrics: 1) a first office action 14 months from the filing of the application and 2) total pendency of 36 months. The USPTO aims to have 90% of the applications within 90% of that timeline by 2025. The Examination Guidelines relevant to 101 and 112 have also helped to speed up the examination process.

In terms of raw filing numbers, Covid-19 had a less than anticipated impact on filing volume. Patent filings are down about 2.2% from the last year, but still up by 5% over a five-year window. There have been slight reductions in patent applications in AI and blockchain over the last year. Plant patent applications are down about 14% from last year. Design patents are up over 10% from the previous year. Overall, the ratio of foreign versus domestic applicants has been about even. Presently domestic filers constitute about 48% of the applications.

Patents4Humanity

The USPTO is considering expanding its award competition, which recognizes innovative technologies used to address humanitarian challenges. This competition has operated for six cycles since 2013 and is focused on medicine, nutrition, sanitation, household energy, and living standards.

Patents4Partnership

This is an online marketplace hosted by the USPTO where entrepreneurs can go for licensing opportunities. The program started in 2019. Many of the 900 or so inventions listed on the website are focused on Covid-19 related innovations. The USPTO intends to promote this project more broadly in the future and to expand to other categories of technology listed on the website.

Patent Prosecution Highway (PPH)

Since the USPTO began participating in PPH, it has received about 6,000 requests per year. The USPTO is investigating ways to expand the program further. Eligible applications typically receive a first office action within six months and an allowance rate of 86%, higher than the 79% allowance rate for non-PPH applications. The USPTO is considering whether to integrate the PPH into the Patent Cooperation Treaty.

New Patent Search Tool

The USPTO is currently rolling out a new search tool. The transition process will go into 2022. Foreign prior art will become searchable. The database will include over 70 million documents.

PTAB

Speakers: Scott Boalick (Chief Administrative Patent Judge); Jacqueline Bonilla (Deputy Chief Administrative Patent Judge); Michael Kim (Vice Chief Administrative Patent Judge)

Response to Covid-19

The Board is still operating under mandatory telework. The PTAB is likely to offer remote hearings as an option even after reopening. The APJs advise counsel to coordinate with the Board's IT department in advance of the hearing to resolve any potential technical issues. What has worked well to offset the audio lag from virtual hearings is to have counsel ask questions in groups to avoid cross-talk. Making the virtual hearings available to the public has been popular with schools and practitioners seeking to learn more about trials before the Board.

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Current Structure of the PTAB

The PTAB is a business unit of the USPTO that reports directly to the Office of the Undersecretary. The Board is currently staffed with approximately 250 judges. Last year, the Board paneled over 8,000 appeals in addition to 1,500 AIA cases. Panels are randomly selected but take into consideration factors such as workload, technical expertise, and interest.

Statistics and Backlog

Numerous PTAB statistics are available on the USPTO website, and statistics are updated monthly.¹ The Board is targeting a 12-month pendency goal for appeals—it is currently at 13.2 months across all technologies. In 2021, there are approximately 115 AIA filings per month, with about 700 filings as of June 11, 2021. Over 95% of the AIA filings are IPR petitions, and about 54% of the petitioned patents relate to electronics and computers. The institution rate has remained steady at approximately 55-60%.

Discretion to Deny Review

The Board has received over 822 comments from stakeholders. An executive summary has been posted on the USPTO website. Internal discussions are ongoing regarding what steps to take in the future, which may include rulemaking.

Best Practices Before the Board

The APJs advise practitioners to raise secondary considerations and supporting evidence as soon as possible. They ask practitioners to be concise and focused with arguments and presentations and avoid the "kitchen sink" approach to petitions. The APJs also advise against going into hearings with an expansive slide deck that will be impossible to go through in the time allotted. The APJs will frequently start asking questions right away during hearings, so presenters should account for that in the presentations.

The APJs recognize space constraints in the petitions caused by the need to address discretionary stay factors and advise requesting additional pages to address the issue. The APJs cautioned, however, that the request may not always be granted.

The APJs strongly recommend the Legal Experience and Advancement Program (LEAP) to those practicing before the Board to provide training to new or junior practitioners. The LEAP program allows junior patent agents or attorneys to gain oral advocacy skills before a judge or tribunal. To qualify, one must have seven or fewer years of experience as a licensed attorney or agent. In exchange for...