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This week in IP: Hirshfeld leaving USPTO, EPO filings rise, and more

Drew Hirshfeld, soon to be the USPTO's deputy director

Dispersed law firms grow fast; Chile joins Madrid; Judge Brown Jackson answers IP questions; Philippines IP office waives fees for women; EPO VICO project extended

Kathi Vidal confirmed as USPTO director; will focus on pro-bono

Kathi Vidal was confirmed as USPTO director by the Senate on April 5 in a voice vote.

Now she has been confirmed, Vidal will likely focus on broadening pro-bono programmes at the USPTO, according to office sources.

One source said Vidal highlighted her desire to make this subject one of her priorities during pre-confirmation meetings at the office.

Click here to read the full article. 

Other Managing IP stories published this week include:


USPTO acting director announces plans to leave office

Drew Hirshfeld, who has been the unofficial acting USPTO director since January 2021, announced yesterday, April 7, that he would leave the office in the summer.

In a written statement sent just two days after Kathi Vidal was confirmed by the Senate as the new USPTO director, Hirshfeld said he would temporarily serve as acting deputy director but that the role would be the last step in his USPTO career.

“I had already planned to leave government service this summer, and I cannot think of a better way to conclude my time at the agency than by helping Kathi in any way I can before a permanent deputy director arrives,” he said.

He added that Andy Faile would continue to serve as acting patents commissioner (Hirshfeld’s old job) until a permanent commissioner was named, and Dave Berdan would return to his permanent position as general counsel.

“I am incredibly grateful to the both of them for their tremendous service,” he noted.

Speaking on Vidal’s confirmation, Hirshfeld said she was without a doubt the right person to lead the USPTO.

“Not only is she highly qualified, but she has also repeatedly shown me and so many others how thoughtful and steadfast she is in her determination to do the right things for this agency and our nation’s inventors and entrepreneurs.

“She will be a great leader.”

Hirshfeld started his USPTO career as a patent examiner in 1994. He became the patents commissioner in 2015 and took over the day-to-day running of the USPTO when former director Andrei Iancu stepped down in early 2021.

EPO filings on the up; Huawei top applicant

The EPO received almost 190,000 applications in 2021, the highest number in a single year to date, it was revealed this week.

The Patent Index 2021, published on Tuesday, April 5, showed there were 188,600 applications filed, up 4.5% on 2020.

China-based Huawei was the top applicant, having applied for 3,544 patents, followed by South Korean technology companies Samsung (3,439) and LG (2,422).

Huawei’s top filer status was mirrored by an increase in filings from China, which increased its percentage of applications at the EPO more than any other nation. Chinese filers submitted 16,665 applications last year, representing a 24% increase on 2020.  

In terms of countries of origin, the US – which accounted for 25% of all filings – was top, followed by Germany (14%), Japan (11%) and China (9%). The top 10 list of businesses included four companies from Europe, two from South Korea, two from the US, one from China and one from Japan. 

Digital communication was the field with the largest number of European patent applications (up 9.4% on 2020 in 2021), ahead of medical technology. Computer technology was the third strongest field for EPO patents.

António Campinos, president of the EPO, said the strong demand for patents last year showed that innovation was robust, having risen despite global events.

“It highlights the creativity and resilience of innovators in Europe and worldwide. They have filed higher numbers of patent applications and the strong growth in digital technologies provides compelling evidence of the digital transformation taking place across all sectors and industries,” he added.

UK legal consultants grow at three times rate of law firms 

Firms that operate consultancy models are increasing their headcounts at three times the rate of mid-market law firms with revenues also growing faster than firms using traditional models, according to an analysis published on Wednesday, April 5.

The analysis, by capital market company Arden Partners, assessed publicly available data from 2018 to 2020 along with growth metrics for legal consultancy firms against the entire legal mid-market (185 firms).

The findings revealed that firms that employed consultancy models, also sometimes called dispersed models, grew revenues and lawyer headcounts at a faster rate than the entire market.

Lawyer numbers at firms that operate consultancy models have grown at a compound annual growth rate (CAGR) of 21% compared to just 7% for mid-market firms. Revenues among the legal consultants have grown at a two-year CAGR of 26%, compared to 10% for the legal mid-market.

The legal consultant business model offers lawyers a central service platform, and brand and management infrastructure from which to operate in return for a percentage of revenue.

The lawyers themselves are self-employed consultants, who retain an average of 70% of their billings, with the remainder taken by the firm.

Some of the firms cited in the report as consultancy leaders, including Keystone Law and Gunnercooke, have IP practices.

John Llewellyn-Lloyd, head of business and professional services at Arden, said: “As further financial data becomes public in the coming months, we expect to see that this trend is accelerating.

“The consultancy model makes a very strong investment case for public and private investors with an ever-increasing market share, higher quality infrastructure, a great ability to recruit talent cost-effectively and a significant growth opportunity with such a fragmented and pressurised smaller mid-market legal sector.”

Chile joins Madrid Protocol

Chile deposited its instrument of accession to the Madrid Protocol on Monday, April 4, as Managing IP said it would last week.

The protocol will enter force on July 4, over a year after the country’s legislature approved the bill accepting the system in May 2021.

This development makes Chile the 111th member of the Madrid System.

The most recent country in the Americas to ratify the Madrid Protocol was Jamaica, which deposited its instrument of accession on December 27. The protocol entered into force there on March 27.

Judge Brown Jackson responds to IP questions

Judge Ketanji Brown Jackson, the latest nominee to the US Supreme Court who was confirmed by the Senate yesterday, April 7, responded to Republican senator Thom Tillis’s questions about intellectual property on Friday, April 1.

Tillis asked the judge – who is the first black woman to serve on the Supreme Court – how she would ensure certainty and predictability for patent owners in light of the current situation on Section 101.

She said it would be inappropriate to comment on the current state of SCOTUS’s precedents in this area.

She added: “I would note that the Federal Circuit and innovators have not hesitated to ask for clarification when they need it. If confirmed, I would carefully apply the text of relevant statutes, constitutional provisions, and precedent to any case implicating these issues.”

Tillis also asked Brown Jackson for her thoughts on anti-suit injunctions, but she said it would be inappropriate to comment because this was a policy issue entrusted to Congress and subject to an ongoing policy-making process.

The senator asked the judge about her experience presiding over copyright law. She noted that she had overseen two of these cases when she was a judge at the District Court for the District of Columbia.

One case was Alliance of Artists & Recording v General Motors, a suit that hinged on whether certain audio recording devices installed in consumer automotives were prohibited under the Audio Home Recording Act.

She decided that the devices didn’t fall under the statute’s scope, and her decision was affirmed in 2020 by the Court of Appeals for the District of Columbia Circuit.

She also presided over Buchanan v Sony Music Entertainment in 2020, where she granted the defendant’s motion to dismiss for failure to state a claim. This decision was affirmed by the appellate court in 2021.

Tillis said on March 30 that he wouldn’t vote to confirm Brown Jackson.

Philippines IP office waives fees for women-run MSMEs

The Intellectual Property Office of the Philippines and the Department of Trade and Industry launched a programme last week to waive fees for patents, utility models and industrial design applications filed by women-led micro, small and medium-sized enterprises.

The fee waiver will also be available for the first publication fee and substantive examination fee for inventions.

IPOPHL director-general Rowel Barba and trade secretary Ramon Lopez signed a memorandum of understanding for the Juana Patent and Juana Design Protection Incentive Program to give effect to the initiative.

Ann Edillon, head of the IPOPHL Enforcement Office, said the programme would run from April 15 2022 to April 30 2023, or until up to 50 patents, 150 utility models, and 150 industrial design applications had been filed by eligible applicants.

To qualify for the programme, the MSME must be women-led and have been in business for one year.

Eligible applicants must also be registered with the DTI, Securities and Exchange Commission, or Cooperative Development Agency, perform business in priority sectors, and can have total assets up to P100 million ($5 million) and a maximum of 20 employees.

In a virtual launch, IPOPHL-Bureau of Patents director Lolibeth Medrano said the goal of the incentive programme was to “promote gender inclusivity and enhance national innovation”.

She added: “IP is one of the areas where female participation can be greatly enhanced.”

Pilot project for oral proceedings in VICO opposition extended

The EPO announced on Wednesday, April 6, that it had decided to further extend the pilot project for oral proceedings in opposition by videoconference until December 31.

Two years of positive experience and steady progress in the large-scale implementation of VICO oral proceedings led to the extension decision, the patent office said in a press release.

The EPO launched its VICO pilot project in May 2020.

“The extension reflects the EPO's continuing concern for the health and safety of staff and visitors on-site in the light of the ongoing pandemic and provides an opportunity to release additional tools and procedures in relation to VICO,” the office said.

Proceedings would only be adjourned until after December 31 in cases where the VICO oral proceedings could not be used “for serious reasons”, the office added.

An expert panel would consider requests for on-site oral proceedings to ensure a thorough and harmonised assessment.

Along with the extension of the pilot project, the EPO announced it would improve its digital infrastructure to enhance user experience, noting that it would add features to Zoom to better support attorneys presenting their cases through VICO proceedings.

These would include making available digital whiteboards for use by attorneys to sketch diagrams and additional audio channels on request to facilitate interpretations into admissible non-EPO languages.

“The EPO will continue to update and broaden its training portfolio to help representatives familiarise themselves with these new features,” the office noted.

According to EPO statistics, around 350 opposition cases are now heard by VICO every month.

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