Will Obama PTO Director Be Good Choice?

So far no one knows who President-Elect Barack Obama will appoint to be the Undersecretary of Commerce for Intellectual Property, a position known in the industry as the Director of the United States Patent & Trademark Office.  Right about now the appointment of a new PTO Director is likely the farthest thing from Obama’s mind given that recent reports suggest that New Mexico Governor Bill Richardson has withdrawn his nomination as the Secretary of Commerce.  Richardson’s decision to not seek Senate confirmation and remain the Governor of New Mexico allegedly stems from the fact that he is facing a federal grand jury investigation into whether he exchanged government contracts for contributions to three Richardson political committees.  It seems clouds of suspicion are going to follow Obama and the Democrats all the way into the White House, whether it be as a result of the pay-to-play allegations surrounding Governor Rod Blagojevich, the new pay-to-play allegations surrounding Governor Bill Richardson or the fact that Senate Majority Leader Harry Reid attempted to influence Blagojevich’s Senate nomination.  With all of this political uncertainty swirling in the air it raises the question in my mind whether we are going to get a competent scandal-free appointment to run the Patent & Trademark Office.  I shudder to think that we might not even get someone better than Jon Dudas, or that in a show of bipartisanship Obama might retain Dudas, which would be the nightmare scenario.

So who will Barack Obama appoint to run the Patent Office?  No one knows for sure, but one piece of factual reality that we do know is that his old Harvard Law School classmate, Arti Rai, has been appointed as a member of the agency review team on science, technology, space, arts and humanities.  Rai is regarded in some circles as an expert in patent law and the biopharmaceutical industry, although I don’t suspect many in the pharma industry would look to her as an expert given her support for the failed claims and continuations rules that would have crippled the industry had the Dudas Administration not been stopped from implementing them.  Nevertheless, she is a professor of patent law at Duke University and during the winter of 2007, she was the Hieken Visiting Professor in Patent Law at Harvard Law School, so it seems likely that she might have some influence in at least suggesting which candidates would be appropriate and qualified to be the next Undersecretary of Commerce for Intellectual Property.

If President-Elect Obama is receiving guidance from Rai on patent matters or on who to appoint to run the Patent Office we are all in deep trouble.  It was Rai, along with fellow Obama advisor Mark Lemley, who is a Professor of Law at Stanford Law School, that spearheaded the filing of the Amici Curiae brief of eleven intellectual property law professors in support of the Patent Office position in the GlaxoSmithKline and Tafas challenge of the claims and continuations rules.  How anyone who knows anything about patent law or patent practice could support the claims and continuations rules is puzzling, but the unfortunate truth is that law professors do not know anything about practicing law so their viewpoint is obviously one without experience.  So when the brief filed by Rai and Lemly talks about the Examination Support Document (ESD) as “certain information” that the Patent Office is allowed to require it is clear that none of these professors have ever drafted a patent application, conducted a patent search or prosecuted a patent application. 

So what is an Examination Support Document? It is probably best to consider an examination support document as the rope that will be used to hang the applicant. Alternatively, it could be characterized as a document that eliminates the need for the Patent Office to do any work. Essentially, the examination support document places the burden on the applicant to examine their own application. The best part for the Patent Office is that if they feel that the examination support document is lacking or insufficient they just tell the applicant to submit another one. For those who would need to file an examination support document the price of obtaining a patent would skyrocket, and it would quite simply be impossible to obtain a meaningful patent because of all the traps that lie in wait.  Even during oral arguments Judge Rader asked why anyone in their right mind would ever file an ESD.  He quite correctly pointed out that filing an ESD would be suicidal because it would virtually guarantee that any patent issued would be worthless because of inequitable conduct challenges during litigation.  Hardly “certain additional information” if you ask me.

In any event, if you would have to file an ESD here is what you must include: 

• A statement that a preexamination search has been conducted, searching patents and patent application publications, foreign patent documents, and non-patent literature, including an identification of the field of search by United States class and subclass and the date of the search, database searches, the search logic or chemical structure or sequence used as a query, the name of the file or files searched and the database service.
• A listing of the reference or references deemed most closely related to the subject matter of each of the claims.
• For each reference cited, an identification of all of the limitations of each of the claims (whether in independent or dependent form) that are disclosed by the reference.
• A detailed explanation particularly pointing out how each of the independent claims is patentable over the cited references.
• A showing of where each limitation of each of the claims (whether in independent or dependent form) finds support under the first paragraph of 35 U.S.C. 112 in the written description of the specification. If the application claims the benefit of one or more applications under title 35, United States Code, the showing must also include where each limitation of each of the claims finds support under the first paragraph of 35 U.S.C. 112 in each such priority or benefit application in which such support exists.

Additionally, remember that when Jon Dudas testified before the House or Representatives Sub-committee on Courts, the Internet and Intellectual Property he minimized the impact that the continuations rules would have had on application growth rate, acknowledging that the rules would likely have only reduced the number of filed applications by 1%, or roughly 5,000 applications.   Specifically Dudas said: 

The USPTO, using historical and projected counts of continuation applications, assumed there would be a change in applicant behavior with implementation of the continuations rule. The limitations proposed in the continuations rule were assumed to result in a 1% reduction of applications received (approximately 5,000), beginning in FY2010. Although the reduced applications total assumed was not significant, the statement intended to inform the audience that the proposed continuations rule was an element of forecasted future year patent applications.

So the claims and continuations rules would result in a 1% reduction in the number of applications received and would strike a blow right at the heart of the most commercially relevant of all inventions.  At the same time the claims and continuations rules would destroy the pharma and biotech industries, as well as make it virtually impossible for any start-up companies to ever challenge the market dominance of established giants.  In short, the claims and continuations rules were ill-conceived, not well thought out and would have caused economic disaster for large portions of the US economy.  Excuse me for saying this, but anyone who in any way supported the claims and continuations rules can hardly call themselves an expert on patent law, and they can hardly profess to have any real common sense.  The fact that Obama might be listening to Rai and/or Lemley with respect to who to appoint as the next Director of the USPTO is scary indeed.

About the Author

Eugene R. Quinn, Jr. President & Founder of IPWatchdog, Inc. US Patent Attorney (Reg. No. 44,294) B.S. in Electrical Engineering, Rutgers University J.D., Franklin Pierce Law Center L.L.M. in Intellectual Property, Franklin Pierce Law Center Send me an e-mail

Gene is a US Patent Attorney, Law Professor and the founder of IPWatchdog.com. He teaches patent bar review courses and is a member of the Board of Directors of the United Inventors Association. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money and various other newspapers and magazines worldwide