One month ago today David Kappos was confirmed at the Undersecretary of Commerce for Intellectual Property and the Director of the Patent and Trademark Office, and days later he was sworn in by Commerce Secretary Gary Locke. Since Kappos took control of the USPTO the outward appearance of things has been slow, save his nomination of Robert (“Bob”) Stoll to the position of Commissioner for Patents, and the naming of Margaret (“Peggy”) Focarino Deputy Commissioner for Patents. We are all still awaiting what I suspect is the inevitable withdrawal of the claims and continuations rules, which would moot the Federal Circuit appeal. I just cannot see any other outcome being logical. The Department of Justice really tipped the government hand asking the Federal Circuit to delay taking the case up en banc pending Kappos’ arrival and potential withdrawal of the rules. So the big question seems not to be if those rules will be recalled and the appeal mooted, but when will the announcement be made. Then the even bigger question will be what will Kappos and the USPTO do with respect to streamlining the application process and plowing through the backlog of cases? As we enter into the home stretch of fiscal year 2009 and are getting ready for the beginning of fiscal year 2010, I have a couple suggestions for Kappos’ consideration.
In no particular order of preference, here are my thoughts on initiatives that should at least be considered:
1. Streamline Patent Applications
This may come as a shock to virtually everyone, but I do not think that the Patent Office had a bad idea with respect to the claims and continuations rules. It seems clear to me that the effort was to attempt to streamline patent applications and make them bite-size so that they could be more uniform in size, complexity and number of claims. This is smart for a lot of reasons, but the reality is that the rules were terrible, ill-conceived and also directly contradicted the statute, Constitutional purpose and common sense. A true mess was created by the leaders of the “old,” Dudas/Doll era Patent Office, you know the “Anti-Patent Office” or maybe the “we don’t allow Patents Office” or “lets hold up innovation until it is technologically irrelevant Patent Office” or… well… I suspect you get the idea.
The goal of streamlining patent applications and the patent process is perfectly fine, it just needs to be done in a way that makes sense and doesn’t declare war on those innovations that are the most commercially relevant. You know, the ones that the Constitution wants to encourage. Could you imagine Thomas Jefferson suffering the embarrassment of a monopoly on nonsense while limiting real innovation?
In any event, if Kappos and the Patent Office are going to really revisit the examiner work quota they need to do that in a way that allows them to engage in real world workflow management. A first step will be to have uniform patent application size, uniform number of claims and get a handle on how much time examiners should have to spend on each application without the payment of additional fees.
2. Fee for Service
The Patent Office never has believed they are a fee for service entity, and that is almost comical. They charge more for size, more for additional claims and lets face it, everything is a la carte. Getting anything from or out of the Patent Office is a little like going to Ruths’ Chris Steakhouse or Morton’s. Everything is a la carte. The difference is that at a fine steakhouse they actually charge you commensurate with what you order and what is provided. I don’t mind paying more for quality there, and I certainly wouldn’t mind paying more for quality at the Patent Office. Come to think of it, I wouldn’t mind paying more for any service at the Patent Office.
Just like I laugh every time I hear President Obama talk about the Post Office and how they have not put Fed Ex and UPS out of business (no kidding!), I can’t believe why the repository of all that is our technical knowledge and innovation infrastructure should operate as a quasi-government corporation. The Post Office does some things extremely well, and so does the Patent Office. We should keep those things and remake everything else. We should not force everyone into the same pigeon hole in term of price, and a la carte services should be priced appropriately and according to the work performed and service provided. Of course, this presumes there will be service provided and work will be performed in a timely fashion. The truth is that under the Old Patent Office any a la carte services were over priced. I still cannot believe the audacity to make you wait for 3, 4, 5, 6 or more years for a first office action on the merits and then charge you an extension fee for responding 3 months and 1 day after receiving said office action. That takes real nerve and cast iron cojones.
3. Actually Enforce UPL Rules
Fifty-one weeks ago today the Patent Office made effective new Rule 11.5 relating to the unauthorized practice of law. For reasons known only to those within the Patent Office, and perhaps more specifically to those in the Office of Enrollment and Discipline, the USPTO has seen fit not to enforce the unauthorized practice of law rules. I have heard from numerous people in the know that the Patent Office does not believe they have the authority to enforce its Rules against non-attorneys and non-agents. So that means that the unauthorized practice of law rules can only be enforced against those who are authorized to practice. Come on! Even for a government agency that cannot make any sense, can it?
The Patent Office has a rule that requires those who wish to represent inventors and applicants to take a special patent bar examination and pass said patent bar examination and also pass a character and fitness review. If you are going to have a special rule, and your own branch of the Ethics Police to police the patent bar, then the least you can do is actually require those who represent inventors and applicants to follow the rules! This is not rocket science. Independent inventors lose hundreds of millions of dollars every year, and a big portion of that market represents monies paid for legal services provided by those who are not licensed to provide legal services. The sad reality is the Patent Office is complicit with the invention fraud companies and continue to allow them to operate despite changing their own rules specifically for the purpose of making what they were doing the unauthorized practice of law.
Mr. Kappos, if you really want to win over the independent inventor community that has been a little skeptical of your big tech, corporate America background you should order the vigorous enforcement of Rule 11.5 and clean up the scam market.
4. Examiner Training
I am critical of some examiners, but I also know that the overwhelming majority of patent examiners are hard working people who do try and do their job at a very high level. Those who care to do their job at a high level need support and training. The work at home program has cleaned out many senior level mentors and the younger examiners do not have the day-to-day learning they once had. I also see a number of examiners in the PLI patent bar review course every year, and it is clear that these folks really want to do a good job, but they do not understand all of the many rules and have misunderstandings about 35 USC 102. Lets face it, 102 is a life long learning project. Lets also face the reality that examiners do not have a broad based understanding of the MPEP. They know what they deal with day in and day out very well, but they do not understand the broader picture and why attorneys and agents do certain things. The examiner corps should be required to understand the bigger picture and become knowledgeable regarding the MPEP. If patent attorneys and patent agents need to take a patent bar examination to represent clients then why don’t patent examiners have a similar requirement? Why not teach them the rules of practice rather? This seems like a no-brainer to me and one that is long since overdue.
This should keep Mr. Kappos busy for a while, at least if he were to try and do any of what I am suggesting. The reality is that the likelihood is that nothing will get done. I think Kappos is a good guy, but I hope that the gravitational pull of the Patent Office doesn’t suck him in. There is such hope right now, and I sincerely hope that he doesn’t wind up wasting his time on prosecution super highways, or prosecution highways that use superconductivity to streamline the global harmonization of patent laws between concerned tri-lateral participants to international conferences. I have no idea what that means, but I think that is what Dudas spent his time working on. How that made the day to day operations of the Patent Office better remains a mystery. In any event, we will know things have changed if we can actually understand press releases and the photo ops are with Kappos actually on campus of the USPTO in Alexandria. I have my fingers crossed!