Following the INTA 2022 conference (April 30-May 4), FICPI President, Julian Crump led a team to visit the USPTO on Friday, 6 May 2022.  This was FICPI’s first in person visit to an IP Office in three years – a small team was on site to meet us, led by the Deputy Commissioner for International Patent Cooperation, Valencia Martin Wallace, and many others were present virtually, including the new Under Secretary of Commerce for Intellectual Property and Director, Kathi Vidal.

FICPI’s team also comprised Elia Sugrañes, Coleen Morrison, Robert Watson, Sharon Crane, Danny Huntingdon, Rob Katz, MaryAnne Armstrong and Naresh Kilaru.

The meeting, which ran for about 4 hours, covered a wide range of topics as usual, with numerous inputs from the USPTO.  This detailed exchange followed a warm welcome from Director Vidal who welcomed FICPI’s global view and set out her priorities for the USPTO, including improving the amount of innovation coming from the US, protecting innovation in a way that works for everyone and connecting IP with funding.

There was a particularly fruitful exchange on Diversity, Equity and Inclusion (DEI), with the USPTO sharing a number of their initiatives and FICPI explaining how we are beginning our journey in this area (find out more here).

In discussing the effects of the conflict in Ukraine, the USPTO pointed to the recent notice (issued on 5th May, the day before our meeting) which relates to a General Licence allowing the payment of IP related costs to Russian entities – this was an issue we had raised following the concerns of a number of members.

Patent topics included discussion of docx filing, AI search tools, the pending referrals at the Enlarged Board of the EPO on priority (G1/22 & G2/22), issues surrounding the patenting of antibodies and Director reviews of PTAB decisions.

In the Designs area, the recent report on Articles of Manufacture was discussed, which referenced comments made by FICPI based on recent resolutions, as well as issues surrounding increased pendency and office actions raising minor objections.

The huge spike in trade mark filings in 2021 was highlighted, along with the issues this has caused for pendency.  The Deputy Commissioner explained that the Office is actively reviewing its business processes as a result.  We also covered initial impressions of the new procedures introduced by the Trademark Modernisation Act, misleading solicitations and NFTs.

We were also updated on the USPTO’s plans to consult on Substantive Patent Law Harmonisation, as well as on the activities of the IP5, TM5 and ID5.

It was an intense but enjoyable meeting which hopefully marks a return to in-person meetings with Offices, where appropriate.

Many of the topics for our meetings with the Offices come from the work of our Committees, especially the Study and Work Committee (known by its French acronym, CET), but some of the topics were raised by members.  Please do get in touch with the CET Executive if you have topics that you think should be raised with offices at any time.

FICPI’s view and involvement

FICPI’s independent IP attorney members bring insights and counsel from a wider external perspective and a commitment to high quality work. Regular meetings with Offices and other organisations in the field are an important element of our work to promote common solutions and in our advocacy work for private practice.

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Report from 7th SACEPO Working Party e-Patent Process online meeting // 17 February 2022