Hirshfeld Says He May Move Forward on Important Items If Biden Appointee Takes Too Long

“If we’re going long enough without a nominee then maybe I need to move forward on things.” – Drew Hirshfeld

IPWatchdog and LexisNexis held a “Conversation with the Commissioner of the USPTO” today, in which Drew Hirshfeld, the U.S. Patent and Trademark Office (USPTO) Commissioner for Patents, Performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director, explained that, while he would prefer to wait until a political appointee is heading the Office to move ahead on substantive reforms, he will consider moving forward on important initiatives if necessary. “I’m trying to run the agency as if I was in this permanently, knowing I’m not and I won’t be, because I think that’s the right thing to do for the system,” Hirshfeld said. “If we’re going long enough without a nominee then maybe I need to move forward on things.”

Hirshfeld and Gene Quinn, IPWatchdog, Inc. Founder and CEO, were discussing changes that may need to be made to encourage more diversity in the patent bar, on which Hirshfeld has already taken some “common sense” actions. While he expects to implement the three changes noted in the March request for comment that the Office issued within the next month, “we are planning to have a much more fulsome discussion” on closing the gender gap in the longer term, Hirshfeld said. Such a discussion will ideally take place once a permanent Director is appointed, but with no word on a potential nominee being named anytime soon, Hirshfeld indicated that he would ultimately do what’s best for the Office and stakeholders.

What Next on Arthrex?

Hirshfeld also addressed the status of changes being made in light of the Supreme Court’s Arthrex decision, which mandated that the USPTO Director be able to review Final Written Decisions (FWDs) of the Patent Trial and Appeal Board (PTAB). As a result of that, the Office announced that it would be implementing an interim rule governing the process for requesting Director review. He explained that “everything we’re doing in the process, we’re deliberately calling interim. What we’re putting in place is flexible and can be modified.” He added that, following the Arthrex decision, he and others at the Office started to brainstorm about what the decision meant and agreed that, at a minimum, the director needs to sua sponte be able to review final decisions. However, Hirshfeld felt very strongly that people should be able to directly request review as well.

Parties will be able to request Director review of PTAB decisions during the interim phase of the rulemaking process by concurrently entering a Request for Rehearing by the Director into the PTAB End to End (E2E) electronic filing tool and submitting an email notification of the Request for Rehearing to an agency email account dedicated to receiving such notifications. Timely requests must be filed within 30 days of a PTAB final written decision (FWD) pursuant to agency regulations governing motion decisions codified at 37 CFR § 42.71(d). Director Review applies only to FWDs and not to institution decisions. The Office began receiving requests for review almost immediately.

Quinn has written before that he believes this process will lead to litigation. “While I think Drew Hirshfeld does a great job, and I have no questions about his ability or integrity, the USPTO is making a huge mistake,” said Quinn, following the USPTO’s Boardside Chat on the topic earlier this month. He added:

According to the Supreme Court in Arthrex, Administrative Patent Judges of the PTAB are not considered unconstitutionally appointed inferior officers exceeding their authority if their decisions are subjected to the review of a Director who is nominated by the President and confirmed by the Senate. Hirshfeld does not meet this requirement and cannot cleanse the Appointment Clause violation identified by the Supreme Court. The Supreme Court couldn’t have been more clear: ‘Only an officer properly appointed to a principal office may issue a final decision binding the Executive Branch…’ Hirshfeld has not been appointed within the meaning of the Appointments Clause, and any action he takes with respect to Arthrex petitions from the PTAB will be void ab initio. Expect litigation on this issue.

As far as whether the Director Review process will be the subject of an official rulemaking at any point, Hirshfeld said that, while there “absolutely will be transparency and time for comments and back and forth, it’s still a discussion whether that’s done through official rulemaking.”

The POP Survives—for Now

The Office already has some precedent for the framework for a review process in the Precedential Opinion Panel (POP), which Hirshfeld told Quinn will, for now, remain intact. “I don’t intend to have [the POP] go away, at least until we get further consideration internally and views from the public,” Hirshfeld said. He continued:

I think it’s an odd situation where you’d have the Director sitting on a panel of three when ultimately the decision is the Director’s only; I think that’s an awkward construct. But then again, on the flip side, I can conceive of a situation where the POP might not have the Director on it. We’re giving more thought to how and when the POP might be helpful and then we’ll make the decision.

Biden Executive Order

Finally, Hirshfeld addressed the sweeping Executive Order issued by President Joe Biden on July 9, which included several sections in which the USPTO is implicated. One such section asks the Attorney General and the Secretary of Commerce “to consider whether to revise their position on the intersection of the intellectual property and antitrust laws, including by considering whether to revise the Policy Statement on Remedies for Standards-Essential Patents Subject to Voluntary F/RAND Commitments issued jointly by the Department of Justice, the United States Patent and Trademark Office, and the National Institute of Standards and Technology (NIST) on December 19, 2019.”

Hirshfeld said he anticipates that the USPTO and NIST will be involved in the discussions, but that “it’s all very new” so he had no additional information.

Today’s webinar also included presentations and questions from Robin Evans, the USPTO’s Deputy Commissioner for Patents; Robert Bahr, the USPTO Deputy Prosecutor for Patents; and Megan McLoughlin, Director of Product Management at LexisNexis. The archived recording will be available here shortly.



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Join the Discussion

3 comments so far.

  • [Avatar for Anon]
    July 16, 2021 11:33 am

    “Thinking” does not confer appropriate – read that as Constitutionally sanctioned – authority.

    If you “don’t have time” to do it right the first time, how will you find the time to UNDO that which is then deemed improper and then REDO everything with propriety?

  • [Avatar for Pro Say]
    Pro Say
    July 16, 2021 09:48 am

    “The Office began receiving requests for review almost immediately.”

    Where may such requests be obtained?

    Ideally in a publicly-accessible, stand-alone portion of the PTO website; so folks don’t have to dig through all the PTAB case files to find them.

  • [Avatar for Paul Morinville]
    Paul Morinville
    July 15, 2021 10:31 pm

    “Hirshfeld said that, while there “absolutely will be transparency and time for comments and back and forth, it’s still a discussion whether that’s done through official rulemaking.”

    He wants to above the law. He has no authority to enact any rules because he is not the Director. Even if he was, he could not do it without following rulemaking under the APA.