What Do the Return to Office and Hiring Freeze Orders Mean for Examiners and SPEs?

Further to reports that Patent Trial and Appeal Board (PTAB) judges will soon be required to return to the office, the lingering question for many is what effect the order—as well as the current, indefinite hiring freeze—will have on Supervisory Patent Examiners (SPEs) at the Office and on day to day operations of the examining corps more broadly. SPEs are also not exempted from the return to office order, as, like PTAB judges, they are not covered by a collective bargaining agreement (CBA).

Drew Hirshfeld, former U.S. Patent and Trademark Office (USPTO) Commissioner for Patents and interim head of the agency from 2021-2022, told IPWatchdog that the combination of the hiring freeze and the potential for SPEs to resign or take a buyout option in lieu of having to return to the office could have “devastating” effects (although the buyout option was paused nationwide by a federal judge on Thursday).

“Anything that’s going to reduce USPTO staff is a problem,” Hirshfeld said. But if a large number of SPEs leave, the trickle-down effect will further compromise the ability of remaining examiners to adequately take on the USPTO’s workload. “Many SPEs train their examiners, and the newer they are, the more training they need,” Hirshfeld explained. “SPEs also have administrative functions of their art unit. Somebody will have to pick up the work of the SPEs that leave, and that responsibility will likely fall on more senior examiners. These examiners, who are typically the most productive, will have less examination time, causing further negative impact on pendency.”

Essentially, less experienced examiners will have to pick up the slack of examination, with less supervision, which does not bode well.

While some initially pointed to the Department of Commerce memo published on January 24 as proof that the Executive Order on returning to work will not affect the USPTO at all, Hirshfeld said he never read it that way. The memo simply rescinds and discusses the Commerce Department’s “December 2021 U.S. Department of Commerce Telework and Remote Work Plan,” which is a separate telework program from the USPTO’s, so the note that the memo does not apply to the USPTO simply clarifies that the USPTO is not covered under Commerce’s telework regime.

Also last week, former TC1600 Quality Assurance Specialist Julie Burke posted on her LinkedIn page an email sent by then Commissioner for Patents Vaishali Udupa—who has since resigned herself— to all patent employees that indicated “all routine teleworkers should return full-time to USPTO offices, as soon as possible, but no later than Monday, February 10, 2025.” Employees covered by the CBA are exempt. Burke estimated the announcement would affect “about 500 managers, supervisors and PTAB judges.”

Since the mandates are almost certain to result in SPE resignations, perhaps in signifiant numbers, the USPTO “will likely fall way behind on the backlog, which is not good for the country,” Hirshfeld said.

Hirshfeld was hopeful that the USPTO was seeking exceptions to the hiring freeze and return to office, and said that the Office may have to consider other options if exceptions aren’t granted. For example, the Office could conduct faster examinations through options such as outsourcing searches or deferred examination, but Hirshfeld was skeptical that these solutions would be enough. “Contracting out searches never seemed to be a viable option when I was at the Office,” he explained. “The patent system is most efficient when one person is doing the work from start to finish.” And as for deferred examination, Hirshfeld doesn’t think the number of applications that would ultimately fall off is likely to be significant enough to offset the impacts of the hiring freeze and reductions in USPTO staffing.

With respect to the PTAB, while the increased use of discretionary denial may be an effective way of reducing the workload should a large number of judges resign in light of the order, Hirshfeld said there will likely be complaints and litigation.

“It’s a slippery slope because there will be a lot of complaints that they’re not doing the job they’ve been asked to do. In my view, PTAB judges should be making decisions on a case by case basis and doing what’s right for each case, and not making decisions based on staffing levels.”