During lockdown, FICPI representatives met a strong USPTO team for wide-ranging and invaluable discussions

On May 19, 2020, FICPI President Julian Crump along with FICPI representatives across committees and countries, had a very informative and productive virtual meeting with the USPTO.  

While FICPI generally meets with the USPTO and other IP offices once a year, due to the pandemic, the meetings for 2020 will proceed virtually.  FICPI was extremely pleased with the USPTO participation, the scope of topics discussed and the success of holding the meeting virtually.

Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Iancu led a vast team from the USPTO, including: 

  • Andrew Hirschfeld, Commissioner for Patents
  • Valencia Martin Wallace, Deputy Commissioner, Office of International Patent Cooperation 
  • Robert Bahr, Deputy Commissioner, Office of Patent Examination Policy 
  • Dan Ryman, Deputy Commissioner (Acting), Office of Patent Quality 
  • Andrew Faile, Deputy Commissioner, Office of Patent Operations 
  • Rick Seidel, Deputy Commissioner, Office of Patent Administration 
  • Charles Kim, Director, Office of Petitions 
  • Matthew Such, Director, Technology Center 2800 
  • Charles Pearson, Director, International Patent Legal Administration 
  • Michael Neas, Deputy Director, International Patent Legal Administration 
  • Richard Cole, Deputy Director, International Patent Legal Administration 
  • Karen Young, Director, Technology Center 2900 
  • Brandon Rosati, Technology Center Operations Manager, Technology Center 2900
  • David Gooder, Commissioner for Trademarks
  • Sharon Marsh, Deputy Commissioner for Trademark Examination Policy
  • Meryl Hershkowitz, Deputy Commissioner for Trademark Operations
  • Greg Dodson, Deputy Commissioner for Trademark Administration
  • Gerald Rogers, Chief Judge, Trademark Trial and Appeal Board
  • Scott Boalick, Chief Judge Patent Trial and Appeal Board
  • Jacqueline Bonilla, Deputy Chief Judge Patent Trial and Appeal Board
  • Kalyan Deshpande, Administration Patent Judge Patent Trial and Appeal Board
  • Shira Perlmutter, Chief Policy Officer and Director of International Affairs
  • Charles Eloshway, Senior Patent Counsel, Patents Team
  • David Gerk, Senior Patent Attorney, Patents Team
  • Amy Cotton, Senior Counsel, Trademarks Team
  • Courtney Stopp, Patent Attorney, Patents Team

FICPI fielded a team comprising:

  • Julian Crump, FICPI President
  • Roberto Pistolesi, Secretary General
  • Coleen Morrison, CET President
  • Michael Caine and Robert Watson, CET Vice Presidents
  • Sharon Crane, CET5 Chair
  • Lena Shen, CET8 Chair
  • Swarup Kumar, CET3 Reporter and CET7 Chair
  • Rob Katz, FICPI US Vice President
  • Douglas Johnson, FICPI US President
  • Danny Huntington, President of Honour
  • Brett Slaney, CET6 Chair

During the meeting, the USPTO informed the FICPI representatives of the successful initiatives that the USPTO has implemented during the Covid-19 crisis, including the expedited patent applications for small and micro entities, and the Patents 4 Partnerships licensing platform.  FICPI noted that as practitioners with clients who frequently use the USPTO, FICPI members have been extremely pleased with their experience at the Office during this challenging time.

FICPI’s Covid-19 response

FICPI also discussed its response to the crisis by creating a Covid-19 Strategy Team, who engaged in coordinating webinars to assist practitioners with their businesses and daily lives during the pandemic. FICPI noted the section on its website dedicated to Covid-19 related information and resources, including a constantly updated spreadsheet of information relating to the changing deadlines and rules of IP applications in countries and regions around the globe. See https://ficpi.org/covid-19-resources. In addition, while the 19thFICPI Forum in Cannes, France has been postponed to 2022, FICPI noted that it now has a new task force planning a Virtual Open Forum in winter 2020 (dates now confirmed for 4-5 November 2020). 

Subject matter eligibility

Director Iancu also led a discussion regarding subject matter eligibility, and the efforts the USPTO has made to encourage reasonable scope of protection in view of the recent Supreme Court Decisions. 

FICPI noted the recent report indicating that the USPTO’s extensive Examiner training and Guidelines have had a significantly positive impact on uncertainty in examination. FICPI confirmed that it has been closely following developments in jurisprudence and proposed legislation on Section 101, and is hopeful that all of these efforts will strengthen the rights defined in Article 27(1) of the TRIPS Agreement, and will promote the innovation as intended by intellectual property protection.

The importance of local representation

FICPI further discussed the importance of local representation as the most effective means of ensuring that our clients receive the broadest reasonable protection for their intellectual property, and dealing with counterfeiting. 

In this regard, FICPI mentioned the recent Declaration of the 6th Presidents’ Meeting, during which Presidents or their representatives from seven national and international IP attorney Associations, including FICPI, gathered in Sydney on 10 February this year. 

They discussed important issues of local representation for foreign patent and trade mark applicants and protection from forcible disclosure in legal proceedings of confidential advice given by IP attorneys to their clients (e.g. legal privilege). 

The meeting concluded with a Declaration, agreed by all those in attendance, to the effect that their Associations believed that foreign applicants should be required to appoint a local representative having a relevant professional qualification or otherwise recognised to have suitable knowledge, skill and experience to act before an IP Office, and that the same requirements should also apply to local applicants who choose to appoint a representative to handle their application, although it was acknowledged that all applicants should be free to represent themselves before their own local IP Office, if they wish.  FICPI has subsequently adopted this Declaration.

Invaluable discussions

The assembled group also discussed a wide range of additional topics in the time available, including FICPI’s position on the various elements of the package of measures for substantive patent law harmonisation which is being discussed within the Group B+ meetings. In addition, the group discussed: 
(1) The USPTO’s utilisation and protection of artificial intelligence and its implementation of new electronic systems such as Patent Center Beta; 
(2) Efforts by the Office to deal with bad faith and counterfeiting with respect to both design patents and trademarks, including an expedited cancellation project; and
(3) The new PTAB motion to amend practice, and virtual hearings in post-grant procedures. 

FICPI report: “The IP Practitioner: Adding Value to Innovation?” 

Prior to the meeting, FICPI forwarded its recent publication called “The IP Practitioner: Adding Value to Innovation?” to Director Iancu. 

This publication is intended to initiate a discussion of the value added to the innovation system by patent and trademark attorneys and FICPI intends to continue this work in the future. The stimulation of economic growth and the creation of jobs and wealth by protecting new inventions, designs and brands can only succeed through a partnership between IP Offices and a strong local profession on the ground to be on hand to help innovators and their businesses in their own countries and regions. 

FICPI was very appreciative of the USPTO officials’ time and consideration of these issues, and was particularly pleased with the success of holding the meeting virtually.  FICPI applauds the USPTO’s efforts, particularly during this unprecedented time.

FICPI’s view and involvement 

FICPI’s strong relationships with Offices around the world helps to ensure that the views of FICPI’s independent IP practitioners are represented, and that FICPI is included in discussions with key officials. Through its committee network, FICPI builds knowledge and ensures its members gain a wider perspective and can help influence key developments. 

Next steps 

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