President Obama Intends to Appoint Kappos as PTO Head

UPDATED: 8:42pm ET

At some point in time today, presumably after I nominated Alfred E. Neuman for PTO Director, President Obama announced that he intends to appoint David Kappos as the Undersecretary of Commerce for Intellectual Property, a position that will make him the Director of the USPTO.  It was predictable that word of the nomination, or iminent nomination, would come while I am on the road teaching the PLI Patent Bar Review Course (I am in Boston presently teaching at Suffolk Law School).  In any event, I am not exactly sure what to make of the White House announcement today.  Exactly what does it mean when the White House announces  President Obama intends to appoint Kappos to be PTO Director.  Is this an announcement that an announcement of Kappos as PTO Director is forthcoming?  I don’t know, but it seems as if Kappos is heading to the PTO, which means Alfred E. Neuman once again will not hold a position within the US government.

I have no reason to believe that my hopefully humorous nomination of Alfred E. Neuman played any role in prompting the White House to announce its intent to announce the nomination of David Kappos as PTO Director.  I did search far and wide before I posted the Neuman story earlier in the day, and I see now that news sources are just starting to pick up on the announcement, including other patent blogs.  Who knows whether President Obama is reading, but I have heard rumors that some within the White House read  Perhaps it is better to say that they are keeping an eye on me, who knows?  If the President is a reader and he is interested in reaching out to the IP community he has an open invitation to talk to me and address the readers of  OK, I know, I am allowing the fact that the PTO thinks I am “media” or a “journalist” go to my head… but what if?  OK… enough!


For some time I have heard reports that Kappos would be the pick, but no one ever had reliable enough information to run with the story.  In fact, Kappos’ nomination was a tightly held secret.  The only reliable information I could get was that the nominee had been picked, and that the vetting process was taking longer than expected.  I suppose after some embarrassing troubles with respect to unpaid taxes the White House justifiably was cautious.  I just have to wonder why it is that a nominee for Director of the PTO would go through a vetting process that was far more rigorous than the vetting of high level members of the President’s Cabinet.  Perhaps in time we will learn that the rumors were incorrect, but if they were and the vetting took so long why wasn’t that vetting process employed for other senior level Executive appointments?  While the Patent Office is far more vital than the average citizen would ever believe, is it more important than, for example, the Department of Treasury?

In any event, here is what announced today:

Today, President Barack Obama announced his intent to nominate the following individuals for key administration posts: David J. Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office and Warren F. “Pete” Miller, Jr., Director, Office of Civilian Radioactive Waste Management, Department of Energy.

President Obama said, “The talent, commitment and expertise these two fine individuals possess make them valued additions to our team as we work to keep our nation safe and put us on a path to prosperity. Their decision to serve their country is commendable, and I look forward to working with each of them in the months and years ahead.”

President Obama announced his intent to nominate the following individuals today:

David J. Kappos, Nominee for Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office Mr. Kappos is Vice President and Assistant General Counsel, Intellectual Property Law, for IBM Corporation. Based in Armonk, New York, Mr. Kappos directs IBM’s Intellectual Property Law function, providing legal counsel over all facets of protecting and licensing IBM’s intellectual property assets and leading IBM’s engagement of intellectual property law policy issues. In particular, Mr. Kappos is responsible for the management of IBM’s patent and trademark portfolios; protecting and licensing intellectual property (patents, copyrights, trademarks, knowhow and technology) worldwide; directing intellectual property law operations relating to the research, services, consulting, computer systems, storage products, semiconductor and technology development, software, marketing and other groups, divisions, and entities within IBM. In addition, Mr. Kappos has responsibility for IP policy and coordination with IBM’s litigation and corporate development groups in matters relating to intellectual property. Mr. Kappos serves on the Board of Directors of the American Intellectual Property Law Association, the Intellectual Property Owners Association, and the International Intellectual Property Society. He is also the Vice President of the Intellectual Property Owners Association. He has held various previous leadership positions in intellectual property law associations in Asia and the U.S. He has spoken widely in Asia, Europe, and the U.S. on intellectual property topics. Mr. Kappos received his Bachelor of Science Degree in Electrical and Computer Engineering from the University of California Davis in 1983, and his law degree from the University of California Berkeley in 1990. He joined IBM in 1983 as a Development Engineer and has served as an Intellectual Property Law attorney in IBM’s Storage Division and Litigation group, as IP Law Counsel in IBM Software Group, as Assistant General Counsel in IBM Asia/Pacific, IBM Corporate Counsel and as Assistant General Counsel prior to his current position.

Senator Orrin Hatch (R-UT) issued the following statement today regarding the announcement of Kappos:

I’m impressed with Mr. Kappos’ seemingly vast patent and trademark experience, and I look forward to getting to know him better as the committee moves forward in considering his nomination. Whoever takes the helm at the USPTO is going to need to hit the ground running, especially in light of how the current economic downturn has negatively affected the agency.

For some time I have believed Kappos would be President Obama’s selection.  As a Vice-President in IBM Kappos has strenuously supported patent reform that would assist high-tech, which is not surprising at all.  He has, however supported post grant review, which will devastate the Patent Office should it come to pass because resources would be divereted to deal with already issued patents while the backlog of applications would continue to grow.  Additionally, Kappos has testified to Congress about how patent litigation is out of control, but the raw numbers simply do not support that conclusion.   To read more on this see Announcement Nears on New Patent Office Directors.

I wish Mr. Kappos well, and I will reserve judgment until we learn what direction he will take the USPTO.  As any lawyer knows, the positions a lawyer takes while employed as a representative does not mean that is what the attorney believes themselves.  Attorneys are advocates for clients or the corporations they are employed by.  So while I do have some concerns, and hope that the US patent system does not turn in a high-tech friendly direction at the expense of other stakeholders, time will tell.  Thankfully President Obama has given us someone familiar with the system and knowledgeable regarding intellectual property matters, and patents in particular.  The announcement of Kappos is, therefore, a good day for the patent system.  Even if I disagree with him from time to time, a Patent Office run by a “patent guy” is indeed very refreshing!

Tip of the hat to President Obama.  Thank you for listening to the concerns of the patent bar and stakeholders.


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Join the Discussion

27 comments so far.

  • [Avatar for Noise above Law]
    Noise above Law
    June 28, 2009 10:16 pm


    One small nit: “…which are mostly only rejected as to form.” – Isn’t “form” objected to, rather than rejected?

    Otherwise, thank you for your comments. I may have my disagreements, especially with post allowance prosecution, but I appreciate your write up as it bespeaks of thought and sincerity.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 28, 2009 04:43 pm

    Examiner Hawk-

    No problem. I thought we were largely agreeing.

    Thanks for joining in the debate.


  • [Avatar for Examiner Hank]
    Examiner Hank
    June 28, 2009 01:00 pm

    Oh, no I was just addressing some points by others made, sorry if this entire post seemed directed at you. I only used your quote, “There are thousands of absurd patents filed all the time” as a starting point for my post.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 28, 2009 12:33 pm

    Examiner Hawk-

    I know very well that examination is a trade off. Where in my writing do you believe I have suggested otherwise? To the contrary, I have been advocating time and time again for recognition that examination is a trade off and it is unrealistic to take the “leave no stone unturned” approach that is advocated by some, particularly those who despise patent trolls.

    I also agree that there are many problems associated with hiring new examiners. They need training and hand holding and babysitting, there is no doubt. But why not allow those with training experience break in new examiners? John White and I have taught thousands of people how to pass the patent bar, and I have trained many hundreds of law students and taught them how to do searches, draft patent applications and prosecute applications. Professional trainers could eliminate the training burden, create a much more sophisticated junior examining corps and lead to a lot of benefit with respect to handling the backlog. It is insane for the Office to burden those who can and should be most productive with training and mentoring examiners. Training should be outsourced and mentoring should be done by retired examiners.

    I think your idea about post allowance is a good one. I have never understood why claims cannot be added once allowable matter is defined. Rather than forcing continuations or RCEs something like what you suggest would be a great idea, although it might well lead to fewer maintenance fees down the road, which is something to consider.

    Perhaps bad patents are the result of bad searching. I don’t understand why the patent office doesn’t create an assembly line mentality where those who are good at one task continue to do that task. Good patent attorneys have figured this out. You rely on competent searchers to find the art, you review the art and then you write claims that are likely allowable. Unfortunately, the broad claims that you reference might be a strategy for many reasons. With applications pending for so long you never know how many times the Federal Circuit and Supreme Court will change the law, so might as well go as broad as you can. Another thought used to be that you go very broad because you don’t want the industry knowing what is likely going to be patented ultimately. This was something done by some as a result of publication, and at a time when it didn’t take a decade to get a patent. With the backlog you really have to file applications with allowable claims otherwise your clients will have absolutely no rights for the better part of 5 to 10 years.


  • [Avatar for Examiner Hank]
    Examiner Hank
    June 28, 2009 12:00 pm

    Gene – there are thousands of absurd patents filed all the time? How about millions! As an examiner, pretty much every application that comes across my desk is absurd in that I spend time writing some rejections with a 102 or a simple 103. And our patent system encourages this. A co-worker years ago had “A transceiver.” as claim 1; I’ve rejected an equation in a dependent claim that I found in a textbook; I had a wireless USB application from a large software corporation at a time when I was using a wireless USB keyboard in my office. I mean a three line claim with an RF input, a converter and a USB output, and the rejection was argued without amendment past finality. So when applications start with useless, delusional statements like “I believe I am the original, first and sole/joint inventor” what do you expect from your patent examination process? The only good applications I get are the continuations of previously allowed applications which are mostly only rejected as to form.

    How can attorneys help? I suggested to management that they allow dependent claims to be added for no fee post-allowance (i.e 1.312 practice) as a better way to present trivial claims in an application. That way I don’t have to waste time rejecting filler-type dependent claims during prosecution.

    I read Kappos’ congressional testimony concerning S. 515. I think it’s smart to encourage as much administrative post-allowance activity as possible. I would have no problem making a new allowability determination if I was presented with new art. What would that take me…a few hours at most? It might take a supervisor and a director as well to re-open prosecution after allowance based on a third party provided reference, but that would save all parties money since PTO employees are a reletively cheap resource.

    One thing examiners don’t need is more time. 1) We really need less claims per case and this is illustrated by the fact that new examiners have cases with the lowest number of claims cherry picked for their dockets. That leaves the harder, longer cases for more experienced examiners. 2) Even with double the time, the quality would remain the same. I have junior examiners come to me for help after searching all afternoon and throwing 15+ search queries at a claim. Many times I do 2-3 queries and find exactly what they were looking for in just a few minutes. So it’s more of a training issue to find desired prior art than a need of more time to perform “wild goose chase” searching. If I had more time, I would simply get a bigger bonus by doing more or have more time for extra bathroom breaks (I work from home so my bathroom breaks would be elaborate). 3) When I allow, I make sure I’m not hit with a quality error which means I search in a such manner that our internal quality auditors can’t find a good reference behind me. It’s embarrassing to have someone find a reference behind you with a few simple search queries. So this does not mean I continue an exhaustive search until “my time runs out”. It means I search until I’m relatively sure I have covered a good number of keyword combinations that cover the claims and the invention in the specification. If I finish early that leads to a production bonus, overtime or a bathroom break, and I always finish early because I have become good pretty at finding what I’m looking for.

    So what about the patent backlog? The reason why the office can’t hire too many examiners is because newbs have to be trained and typically they do a terrible job distinguishing allowable subject matter and require lots of babysitting until they are GS-13s (3-5 years of experience). This is simply a matter of hiring more examiners or lowering the amount of examination time per case.

    If you look at quality, some examiners can game the system, make it to a primary examiner and still be fairly incompetent searchers which leads to wasted prosecution time on your part and some bad issued patents just because they can’t find what they are looking for. So please don’t come to the conclusion that bad patents means insufficient examination time. This is false logic. Bad patents result from bad searching, and by bad patents, I mean ones where good art could have been reasonably found during examination.

    When you all talk of low quality patents remember this: examination is a trade off between efficiency too. If I search for 2 additional hours per case and find nothing, what was the point? I’m wasting time that could be devoted elsewhere, especially to my amendments which I may or may not get an allowance (production credit). If anything, lower the number of claims per case and watch quality go up a bit. So far my experience with Accelerated Exmaination cases (AE) having a lower number of claims has been positive.

    What can Kappos do internally? Hopefully he will help continue to update our computer systems, after all he’s an IBMer. 1) My link to from home to work is 1.5 Mbps through Microsoft Remote Desktop Connection which is rather slow and makes my job a bit more tedious than it already is. 2) Our searching program uses TIFF images still. Google Patents actually has a better display portion by showing patents using PDFs with keyword highlights. If Google Patents had a better query interface, it would be better than what we have which is sad. For some stupid reason our image databases go down at 10p on Friday and Saturday nights even though we’re authorized to work overtime until midnight on those days, so often I wind up going to Google Patents to so I can see the patent images (the text portion of our search still works though). 3) Our case transfer, docketing and internal website backbone architecture is seven years so maybe this can be redone as well. I think we have way too many IT people at the office ~1400 (1 for ever 4 examiners) but we still don’t have the systems in place as promised. We supposedly were on an eight year migration to an XML based patent filing and examination system but we’re not even close to that yet even though I believe this is year 8.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 22, 2009 12:18 pm


    I agree with you, and that is why I am going to give Kappos a full and fair shot. I just hope that he doesn’t come with so much baggage that he sees the world through only one particular color of lense.


  • [Avatar for Gene Quinn]
    Gene Quinn
    June 22, 2009 12:17 pm


    We absolutely do need to stop the one-size-fits-all mentality at the USPTO. My suggestion regarding the presumption is in that direction, and not to do away with it. There are thousands of absurd patents filed all the time. There are so many the prey upon the unsuspecting, get terribly limiting rights, and force needless work on the Office when there is little or no realistic chance the patent will ever amount to anything. What I suggest is a two-tier system. For those who want a patent, for whatever reason, why not offer them something that approximates registration and without much, if any, prosecution? I think a lot would jump on that, leaving open resources for the USPTO to focus on applications where the applicants want and are willing to participate in a process aimed at still having a presumption of validity.

    Regarding the Supremes view of patents, they have ensured that their attempts to treat every case interchangeably means discrimination will be rampant. I am not sure about whether that also means applications won’t be examined on the merits in an independent way. We certainly have proof of disparate treatment, but I am not sure about what you say, although I am opening to listening to more.


  • [Avatar for EG]
    June 22, 2009 11:15 am


    I understand the concern over Kappos coming from IBM and the computer software/hardware cabal. But the fact that he is a patent attorney of at least 18 years is a real plus in my book, and may also lend some credibility to the PTO which is sorely lacking now with the patent bar. Like I know you are, I’m weary of neophyte political patronage dumpees like Lehman, Rogan and especially Dudas who have no real patent experience and who have run the PTO almost into the ground.

  • [Avatar for Noise above Law]
    Noise above Law
    June 22, 2009 07:46 am


    Avoidance of reviewing past patents (at least for patents in particular pertinent art fields) should be encouraged

    should read:

    Avoidance of reviewing past patents (at least for patents in particular pertinent art fields) should be discouraged

  • [Avatar for Noise above Law]
    Noise above Law
    June 22, 2009 07:44 am


    Under the current law, I am aware that art found after an application matures into a patent may invalidate a patent. So why change the law to weaken the presumption? I am also aware that the disclosure of art and the rules governing both inequitable conduct and treble damages for willfulness create the perverse logic that companies have used to actually forbid searching for prior art – both for its inventors and for its counsel. I view this as a real cancer that should be addressed on its own merits. Avoidance of reviewing past patents (at least for patents in particular pertinent art fields) should be encouraged. I do not know how to account for KSR’s hyper empowerment of PHOSITA across all art fields, but I’ll save that discussion for another post.

    None of this; however, in my humble opinion, warrants the corruption of tampering with the presumption of validity.

    Gene, if you have a concern with Office resources now, what do you suppose will happen if the presumption of validity is made dependent on cited art? I know that I would recommend to my clients that the IDS submitted be as inclusive as possible – If this means that literally thousands of references be listed to cover shades of future (unknowable) interpretations, I will call for that storm to pursue my clients rights. With validity modified as you suggest, anything less than that level of diligence would mean that I would be leaving my client exposed. And where do you think the examiner (who, it has been put forth on this blog, doesn’t even have time to fully read the application itself) will find the time to read the thousands of cited references? How does this not weaken the system just as Alan’s desired change?

    There are many concerns with the USPTO’s model of operations (count system on the so-called produciton basis). Any offered solution that does not treat this cause as a critical element is noise. The Law requires that an application be examined. Implicit in this is that the application will be examined on its merits. Much as the Supreme Court has pushed for the treatment of EACH application on an individual basis with the elimination of bright line tests (e.g. KSR and relatively soon – Bilski), the treatment of all applications as interchangeable units on a production line violates the implicit spirit of the law that the application is to be examined on its own merits. I am always curious as to why this concept never seems to be explored by the academia.

    A possible step in fixing the one-size-fits-all mis-management is to stop treating all applications in a one-size-fits-all manner. D’Oh!

    Actually adding a step of assessing the application in the pertinent art field by the Office’s top talent in that field would expedite processing and allow a more rationale assignment of resources. Scoring on complexity, length and nuances can lead to expectations for examiner throughput that would actually treat examiners with more professionalism and respect than they currently receive and thus may also contribute to retention. The need to cherry pick a docket in order to meet quota would be eliminated. The adage of “you get what you measure” is aptly portrayed in the current mis-management of Office resources. Eliminate the noise there and leave the presumption of validity alone.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 21, 2009 11:23 am


    There is no need to eliminate troll suits. Obviously, there is no troll problem because if there were Tech Companies would use reexamination, but they don’t. Creating a system that weakens patents is not the answer. I realize that is extremely desirable for those that are infringers, but why are owners vilified and tortfeasors exalted? If there were no infringement it wouldn’t matter whether there were deep pockets.

    I do support alteration in the presumption of validity. If you want to create a lower class patent that does not enjoy full presumption of validity, but rather is presumed valid with respect only the prior art disclosed by the applicant or found by the examiner, I am for that. Those who want to play hide the ball and disclose nothing would get what they want, a patent that considers no prior art and is not presumed valid. Of course, this requires a change to inequitable conduct, which is the only change needed in reform. The PTO view of the duty of candor needs to be adopted and enacted into law so that the Federal Circuit is required to follow the law.


  • [Avatar for Noise above Law]
    Noise above Law
    June 21, 2009 11:07 am

    …until then, readers may like to review the comments at:

  • [Avatar for Noise above Law]
    Noise above Law
    June 21, 2009 10:48 am

    Gene (and Alan) have heard me say this time and again:

    Do NOT eliminate the presumption of validity.

    Nothing will ruin the concept of “patent” faster than the single action of removing the presumption of validity. Yes, I understand that the Office, as it currently metes out its meager allotment of time (without regard to an individual application’s complexity) may not be following its Lawful mandate, but that is a poor reason to change the Law.

    All of the efforts of certain “Fairness” groups for their primary agenda item will be successful with the removal of the presumption of validity.

    If one were to remove that presumption, then one might as well go to the full extreme and eliminate ALL examination and simply have a “patent” registration system.

    Paul, my apologies for mistakenly posting that you “missed” this item – you clearly had not missed it – I had typed my comment on my handheld and somehow had overlooked your thoughts. Never-the-less, your thoughts I have heard before (from the likes of Alan) and I vehemently oppose them.
    more later….

  • [Avatar for Alan McDonald]
    Alan McDonald
    June 21, 2009 09:40 am

    Before you ask, I do NOT work for the high tech industry!!! Barely passed my one EE course in engineering school.

  • [Avatar for Alan McDonald]
    Alan McDonald
    June 21, 2009 09:37 am

    Gene has heard me say this time and again:

    The most important patent reform is to eliminate the presumption of validity and lower the standard for invalidity in court to preponderence of the evidence. That would eliminate most “troll” suits and raise the bar such that the patent system rewards SIGNIFICANT innovation only.

    Second to that is the need for damages reform, again so that there is no “trolling” for deep pockets alone.

  • [Avatar for Noise above Law]
    Noise above Law
    June 20, 2009 06:17 pm


    You also miss the white elephant – presumption of validity of an approved patent vanishes.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 20, 2009 05:06 pm


    They would have to be scare tactics because if even a single post grant review were filed it would negatively affect patent pendency and the backlog. With the PTO budget ever shrinking no additional folks will be hired, so if it passes a new department will be needed, which will take examiners from other areas to focus on the post grant review, which will only make matters worse.


  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    June 20, 2009 01:20 pm

    I am very hopeful that Dave Kappos, as the first PTO Director with the most real and current patent law and practice knowledge and experience since Todd Dickenson (more so than many even earlier PTO Commissioners) will bring more fully informed and fact-based rational decision making to PTO reforms. In particular, effectively addressing the inexcusably long delays of by far the most important of the PTO’s work obligations – the pending reexaminations of patents in extensive and commercially disruptive patent litigation involving billions of dollars in exposures, many millions of dollars in avoidable legal costs, and wasting much court time. That, plus “submarine” patenting, illegal rulemaking, and several other ongoing PTO problems, does not required any new rules, new legislation, or additional funding – merely better PTO management.

    I wish I could say the same for most of what passes for debate on patent reform legislation. Patent attorneys, with both engineering or science degrees and law degrees should be far more thoughtful, factual and logical than most other citizens. But too much of this legislative debate seems to be based on unfounded “the sky will fall” hyperbole reaction to any change. Yet I remember the highly inefficient PTO and other patent practices and the erratically anti-patent judicial decisions between circuits in patent law 46 years ago that were since eliminated in patent reforms. Even those automatically resisting change would not want their return. Nor have the 1999 et sec patent reform statutory changes had the disastrous consequences predicted by their opponents.

    For example, as noted, I hold no brief for the presently pending proposed opposition system. It has are seriously debatable issues, such how an opposition system limited only to newly issued patents can possibly benefit the vast majority of patent disputes, which are much later on older patents over products which will not even exist when the patent issues. Also, as the Senate Committee already recognized by its amendment of the pending legislation, a PTO administrative proceeding is not necessarily the best place to decide certain disputed non-documentary discovery evidence issues. However, I feel strongly that, like all legislative and rule making proposals, even this proposal should be debated on the basis of the best available and most comparable factual information available rather than dramatic but unsupported conjectures of doom.

    In particular, this profession ought to more seriously consider the following fundamental issue: Is is really in the public interest, or even in the long-term interests of our profession [other than troll company owner-attorneys] to only allow even clearly invalid patents to only be effectively challenged by defendants in plural million dollar lay jury trials, with a legally unique “clear and convincing evidence” burden, even though almost all patents are granted after only a few hours of examination with a clearly inadequate prior art search by a single young non-attorney patent examiner? [Which lends itself to very lucrative shake-down settlements just for litigation-avoidance even on invalid patents.] Or, should a much faster and cheaper alternative, with more patent claim and technology knowledgeable examiners, be provided? If so, what? Congress has already acted twice on that issue by enacting two different reexamination systems. However, both have been subverted by PTO delays so extensive as to make most reexaminations useless for that public goal. An easily fixable problem, as noted. Likewise, there is near universal agreement that one part of the present inter partes reexamination estoppel provision is dangerously ambiguous. It’s fix is in the pending patent reform legislation.

  • [Avatar for Wayne]
    June 19, 2009 08:44 pm

    Hum, I personally think we would have been better off with Alfred E. Neuman. as PTO director. While Kappos is competent, competence only gets you so far. I don’t think he has the imagination to tackle the problems at the PTO. And while Neuman would have blown things up spectacularly, that might have resulted in a proper plan to fix the PTO being implemented.

    Instead, bandaids will be the most likely fix.

  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    June 19, 2009 05:26 pm

    of alleged widespread use and PTO burdens were raised against the adoption of inter partes reexaminations, and were proven clearly unfounded.
    The main problem with reexaminations has been the failure of PTO managment to get examiners to comply with the statutory “special dispatch” requrements. But oppositions, if adopted and used, will be run by Board Trial Section APJs, who now run interferences on a fast track basis. Especially in disposing of validity issues.

  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    June 19, 2009 05:17 pm

    Gene, the currrent limitation on USPTO “protests” to only pre-publication applications only occurred after 1999 when U.S. application publication started. For many years before that, any of the many U.S. applications important enought to have foreign equivalents filed could be easily obtained therefrom after their 18 month publications. Nor have interferences ever been limited to “word for word identical claims.” Ask any interference expert or see 37 CFR 41.203(a). Furthermore, the Senate patent reform bill has been amended to so greatly reduce the time and subject matter scope of any opposition system as to make it of little practical use.
    These same scare tactics

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 19, 2009 04:45 pm


    You are simply wrong.

    First, protests are rare because the law is that you can only file a protest if you file it before the application is published. But how would you know an application is filed before it publishes? Only if you learned of the application in litigation through discovery. Protest is rare because the law associated with when one can be filed is absurd.

    Second, interferences relate only to when identical (and I mean word for word identical) claims are filed by two or more applicants. They are rare because it is extremely rare to have two claims that are identical in separate applications. This has nothing to do with any kind of challenge to a claim. It is to determine who gets the claim in the first instance.

    Third, reexamination is rarely used, but there is no reason to believe the rare reexamination process provides any insight into post grant review. Post grant review will be like an opposition proceeding, and will effectively tie up patent rights for years potentially. Given it already can take 5 to 10 years to get a patent post grant review will make viable commercial inventions useless. It will also divert examiners from examining to reviewing post grant challenges. We don’t need fewer examiners working to issue patents, we need more examiners.


  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    June 19, 2009 02:56 pm

    [rest of interruped message] The above-quoted text is a view for which there is ample contrary factual experience in long previously available, but rarely used, USPTO “public use proceedings”, “protests,” interferences, reexaminations, etc. Costly and dangerous validity attacks on patents that are not an exisiting litigation threat have not been, and will not be, widely used. The cost of all USPTO reexaminations [both kinds] and interferences is less than 1% of the USPTO budget.

  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    June 19, 2009 02:46 pm

    Re: “post grant review, which will devastate the Patent Office should it come to pass because resources would be divereted to deal with already issued patents “

  • [Avatar for staff]
    June 19, 2009 11:13 am

    Based on his testimony to congress he backs the patent reform bill which has nothing to do with reform. The question is will he be his own man and strive to actually fix the patent office or will he use this as an opportunity to advance the agenda of large corporations like IBM in making patents the sport of kings, stifling innovation and plunging the country deeper into debt and depression? We will see.

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 19, 2009 10:24 am


    Weren’t you the one who told me that I was delusional for thinking that senior level USPTO management read IPWatchdog? I think you might have also been the one who told me that I was wrong about quality review as well. Both of which you got wrong. Seems to me like you are bitter that my information and contacts are better than yours.

    It would appear as if you have no sense of humor, which is unfortunate. You can choose to believe that the White House doesn’t read, and I suppose you can choose to believe that some on the Federal Circuit don’t read or stop by from time to time. I suppose you can also believe that no one on the Hill is aware of either. It is up to you, but those who read regularly realize my information is solid, always correct and I present it in a way that is entertaining and humorous. I even poke fun at myself, as you demonstrate in the quote above, but some like you will never really get it.

    If you like other blogs better than mine that is fine. Then why do you keep coming back? If you think I am vain and offer no insight then why not read “top tier patent blogs” written by law students.

    By the way, I heard the other day that a “top tier patent blog” wondered out loud in a post why Judge Rader would have made a comment back in January to the effect — you guys in the patent bar are not getting Judge Newman as the PTO Director, so stop it, we need her on the Federal Circuit. This “top tier patent blogger” wondered why he would say such a thing. Those who read my writing know that I nominated Pauline Newman to be the PTO Director.

    Coincidence? Time after time coincidence is a pattern, and you can choose to ignore the pattern if you like. Be my guest.


  • [Avatar for ODP]
    June 19, 2009 09:20 am

    Difference between this blog and top tier patent blogs? Vanity:

    “Who knows whether President Obama is reading, but I have heard rumors that some within the White House read Perhaps it is better to say that they are keeping an eye on me, who knows? If the President is a reader and he is interested in reaching out to the IP community he has an open invitation to talk to me and address the readers of OK, I know, I am allowing the fact that the PTO thinks I am “media” or a “journalist” go to my head… but what if?”

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