Five Insights From My Conversation With the USPTO Commissioner

By: Megan McLoughlin, Director of Prosecution Products, LexisNexis® IP | August 9, 2021

My Conversation with the USPTO Commissioner

Want some insider intel on what’s happening at the U.S. Patent and Trademark Office (USPTO)? I recently had the opportunity to join a webinar panel with Gene Quinn of IPWatchdog® and leaders of the USPTO. We had an enlightening conversation with Drew Hirshfeld, commissioner for patents, and Robin Evans and Robert Bahr, deputy commissioners for patents, discussing the governmental organization’s processes and policies.

The following are my top takeaways from the discussion, including hot issues affecting the Office, quality assurance, patent examination policy, using AI and much more.

 

  1. The application process is a partnership. Though the prosecutorial portion often feels adversarial, both sides—from the client and patent attorney to the examiner—have the same goal of producing the best quality patent.
  1. When the USPTO makes panel decisions and delivers guidance, it does not chase individual cases. The Office has to consider various factors, such as the teaching point, how consistent the teaching point is with other decisions, how many dissents were on the panel, etc. Therefore, it is looking across multiple cases and looking for patterns when deciding when and how to deliver guidance.
  1. The Office wants to hear from people. The processes at the USPTO are not behind a veiled curtain. Commissioner Hirshfeld encourages applicants and attorneys to reach out to him to help him get insight into what people need and what needs fixing.
  1. The Office has made great strides in modernizing its technology. Along with updating its IT systems, the USPTO has also been investing in AI. Examples of this are a prototype tool for examiners to improve their searches and new classification technology.
  1. The Office is continually adjusting its training and review processes for patent examiners. The patent review process helps identify systemic issues and improve training for examiners. From these reviews, the Office has made adjustments to the examiner’s Performance Appraisal Plan (PAP), added refresher training for examiners and taken other measures to improve the patent process for both sides.

 

To get more details, including insights into new developments into how the Office is categorizing patent review errors, access to the Master Review Forms used to strengthen compliance across the organization and more, you can watch the entire webinar here.

 

 

Integration of Automation in the Patent Process

Automation has come a long way in a short amount of time, thanks to developments in big data, machine learning, robotics and the Internet of Things. Many people and businesses have grown accustomed to having software and machines perform tasks that humans once...

How Ex Parte PTAB Decision Data Helps to Streamline Prosecution Processes

A distinguishing strength of a good patent practitioner is the ability to analogize or discern similarities. The problem is that finite hours are available for sifting through thousands of pages of online resources to find the needed information. This is where help...

Performance Checks to Provide Better Patent Services

Improvement is iterative. It often arises from an accumulation of small changes that stem from experience and self-awareness. Before making changes, one must first be aware of steps that will likely lead to better results. Performance checks help to identify issues to...

Use Patent Data to Understand USPTO Examiners

Getting to know someone is hard and getting to the level of really understanding someone takes even more effort . . . usually. When it comes to patent prosecution, patent data and analytics make the process to understand USPTO examiners easier than ever. Here are a...

LexisNexis PatentAdvisor® Hidden Gems to Enhance Patent Practices

The PatentAdvisor™ patent analytics platform has become a favorite among patent professionals looking to enhance patent practices and perform as efficiently as possible. Fueled by USPTO patent data, PatentAdvisor provides users with all sorts of patent...

Response to Office Actions—Weighing Options

Contrary to many clients’ perceptions, it is always open to interpretation whether an invention deserves patent protection. Every USPTO patent examiner is unique in their outlook and opinions, and have their own way of interpreting the patentability of a specific...