The Importance and Future of the USPTO with Drew Hirshfeld

On Intellectual Property

Today, Jeff Harty and Drew Hirshfeld talk about the potential impact of the DOGE advisory board on the U.S. Patent and Trademark Office. Their conversation covers how the office is funded and how the USPTO maintains productivity and handles the large backlog of patent applications. They also discuss the impact of the return-to-office executive order and the importance of hiring the best talent as patent examiners, wherever they’re based.

In this episode, Jeff Harty and Drew Hirshfeld discuss:

• The impact of the DOGE advisory board on the USPTO.
• Advantages of having a clear prosecution record in patent cases.
• How the hiring freeze and the return-to-office executive order affect those at the USPTO.
• Extensive productivity reports for USPTO examiners.
• The crossroads facing the USPTO.

Key Takeaways:

• Those with senior roles at the USPTO often have two main goals: to improve the quality of work and to improve pendency—getting results of patent decisions to the applicants faster.
• If an examiner is clear as to why they are making decisions and an applicant can see what the examiner is doing, it is easier to understand what is happening. When it is not clear, the examiner and applicant can talk past each other, and that is where discrepancies will happen.
• Allowing for telework and work from home allows the USPTO to recruit top talent from around the country, not just in the immediate area of the office.
• The USPTO is unique in that it is entirely funded by user fees, not federal tax dollars.

“I think that the USPTO’s best quality initiative is its telework program, its ability for people to work at home, because you’re able to choose people from a pool that’s across the country now, as opposed to just in the Alexandria, Virginia, area.” —Drew Hirshfeld

About Drew Hirshfeld: Hirshfeld was a long-tenured employee of the U. S. Patent and Trademark Office (USPTO) and was named one of Managing IP’s Top 50 Most Influential People in IP in 2021 (Managing IP is part of the Euromoney Institutional Investor PLC group). Hirshfeld began his career at the USPTO as a patent examiner in 1994 and has held a variety of senior management positions. He was named Commissioner for Patents in 2015 and performed the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO from January 2021 to April 2022. Most recently,Hirshfeld served as Acting Deputy Under Secretary of Commerce for Intellectual Property and Acting Deputy Director.

Hirshfeld now brings his wealth of patent prosecution and litigation experience to Schwegman Lundberg & Woessner. His achievements included leading the USPTO’s response to the Supreme Court’s 2021 Arthrex decision by implementing a new process for director review of final written decisions from the USPTO’s Patent Trial and Appeal Board; serving on the USPTO’s Precedential Opinion Panel to decide issues of exceptional importance to the Patent Trial and Appeal Board; and overseeing extensive patent prosecution training for patent examiners and members of the public.

While performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, Hirshfeld was responsible for more than 13,000 employees and an annual budget of more than $4 billion. He was also responsible for all USPTO functions related to the examination and issuance of all patents. In addition, he championed the USPTO’s mentoring program.

Outside of work, Hirshfeld and his wife have three daughters. He enjoys woodworking to make things for his family, including an acoustic guitar, kitchen cabinets, and furniture.

Connect with Drew Hirshfeld:

Website: slwip.com

Email: [email protected]

LinkedIn: linkedin.com/in/drew-hirshfeld

Connect with Jeff Harty:

Website: nyemaster.com/attorney-directory/jeffrey-d-harty

Email: [email protected]

LinkedIn: linkedin.com/in/jeff-harty-5a9a1643