Nick Godici Part 2: Comparing Reagan and Obama, the Backlog, Examiner/Attorney Relations, Bilski & Being PTO Director

Nick Godici

Nick Godici, currently with Birch, Stewart, Kolasch & Birch LLP, is a former patent examiner, Commissioner for Patents and Acting Director of the United States Patent and Trademark Office. During the Summer of 2009 he was personally asked by Secretary of Commerce Gary Locke to return to the Patent Office as a special adviser to the Obama Administration and to pave the way for David Kappos to take over as Director. On Tuesday, June 29, 2010, I sat down with Godici in his Falls Church office for an in depth interview. This is part 2 of a 3 part series.  For part 1 see On the Record with Former PTO Director Nick Godici – Part 1.

In this interview we talk about how two Presidents that are extremely different on so many fronts, Presidents Reagan and Obama, are pursuing quite similar strategies regarding the Patent Office.  We also talk about the importance of good working relations between patent examiners and the patent bar, the enormous backlog of applications at the Patent Office, the Patent Office process for handling decisions and issuing guidance in situations such as the recent Supreme Court decision in Bilski v. Kappos and what it is like to be Commissioner for Patents and the Director of the Patent and Trademark Office.

Start Part 2 —

QUINN: Well let me ask you that, what advice would you give, if you could travel back in time, and you today be sitting in your office at the Patent Office just transported in, what advice would you give a younger Nick Godici?

GODICI: I had maybe some misconceptions and I think maybe other examiners might have had the same misconceptions that I did. Number 1, I did not appreciate how much interaction there was between the attorney and the applicants or the client and how much the client was involved behind the scenes. I thought the attorney wrote an amendment or came in for an interview or did whatever they did in prosecuting a patent application that they were using their own judgment or doing their own thing. Not so, not so. And I wish that more examiners and other folks at the PTO realized the relationship that occurs between the client and the representative, the patent attorney and the fact that the attorney reports back to the client on every action that comes out of the PTO. There’s more likely than not an interaction in terms of a meeting of the minds between the attorney and the client on how to proceed to the next step, what kind of coverage, and what kind of amendments. The patent attorney has ultimate accountability because your client can fire you if he does not like the job you are doing. Also costs are an issue. Keeping the costs down for your client is an issue so the attorney’s got a tougher job than I maybe recognized when I was at the PTO.

QUINN: And that’s a message that needs to get out. But I also think a lot of attorneys, I shouldn’t say a lot, there’s always in every crowd a small number of people that give the rest of the group a bad name and people are willing to focus on that crowd. And I think probably better relations would occur all around by realizing that we have a job and examiners have a job.

At the end of the day we can be like in that cartoon, remember where the coyote and the sheep watchdog were clocking in? It was an old Bugs Bunny cartoon I think. They go in and they’re going to spend the whole day fighting each other, the coyote trying to get to the sheep and dog trying to protect the sheep. And they’re walking to work with the time card to clock in and as soon as they clock in they hate each other. Then they clock out and they’re friends again. I think that’s probably a good message to get across and I wonder do you have any thoughts on how to do that?

GODICI: I think this has happened from time to time but I’d like to see patent attorneys come in and just talk to the incoming examiners. Have a couple of modules where prosecuting attorneys will come in and explain what it’s like on the other side of the fence from a procedural stand point, how things work and so on. The other thing is patent attorneys work very hard. The work comes in waves from the PTO so you’re under time restraints to get it back to the PTO within the statutory periods or shortened statutory period. But you’ve got all of this interaction that you’ve got to do first with your client and like I said before, there are budget constraints. There’s not unlimited time. You can’t bill 50 hours to do an amendment. It’s more like you’re doing an amendment a day.

It’s just that those kinds of things are not necessarily appreciated by all examiners, and a lot of times not only examiners but even managers at the PTO. They have what I call a “PTO-Centric” look at things. Everything revolves around the PTO and this is the mindset that I think is improper that they sometimes have. The PTO is a cog in the overall patent system that spurs innovation, creates jobs, creates economy and so on. And if it wasn’t for that, the PTO wouldn’t need to exist so the center of the patent world is not the PTO. The center of the patent world is innovation. The PTO is a part of the system and needs to do a good job but they’ve got to keep the perspective of what the patent office is there for.

QUINN: That’s a good segue, because I know you were at the Office when Reagan was president.

GODICI: Right.

QUINN: You know, President Obama and President Reagan do not get compared a lot at all –

GODICI: That’s true.

QUINN: Other than it’s to say that they are diametrically opposites. But in this one little tiny area it seems as if they’re singing from the same sheet music.

GODICI: Right.

QUINN: So I was wondering if I could ask you a couple of questions about during the Reagan administration. That was the move to get to 18 months average pendency.

GODICI: Right. Gerry Mossinghoff was in charge of the PTO. He had support from the Secretary of Commerce, which was Malcolm Baldridge at the time and was able to get a fee increase at the PTO and was able to have the funds to hire examiners to basically work off the backlog through the 80s and accomplish that goal by the end of the 80s.

QUINN: And that worked.

GODICI: And it worked.

QUINN: And what was the general morale in the examiner core? Was every body on the same page?

GODICI: Yeah, I believe they were. I was an SPE through the 80s. From 1980 to 1990. So clearly I was on the ground in terms of trying to make that goal. And when we got towards the end of the decade we were within shouting distance of making 18 months pendency. We were all on board. One of the things we had to do was balance the work and move it amongst different areas. It was somewhat uneven in terms of where the filings came and where the backlogs were and so we were moving work from harvesting machines to abrading machines and we were all trying to help each other out. “This group has a backlog in this area so we’ll take 100 cases from you and we’ll work them off the docket.” There was that kind of mentality going on because we knew that we were trying to get to that number.

QUINN: I’ve been trying to say that this needs to be done now, because in certain areas at the Patent Office moves things pretty quick. And in certain areas that may be, and this is a bias I will admit to, in areas where I tend to represent people, don’t move quick. They move very, very slow. And I tend to think that those are the areas that would spur the economy a bit more potentially. Now I get criticism from within the patent bar, from people saying, “You can’t take an examiner from one area and throw them a case another area.” Now I know that to not be true. Talking to some of the old timers, and it seems to be like what you’re saying, is that if you’re an examiner you can examine. I assume you wouldn’t want to throw somebody into biotech or pharma or chemical unless they had a certain aptitude.

GODICI: Right.

QUINN: But there’s a whole host of areas where you could do that correct?

GODICI: Yes, but you have to be careful because I think technology is probably tougher than it was in 1985 or 86 when we were doing this but we were able to survive doing that. When we moved technology from one area to another we always tried to have some training available. We gave them a little extra time because we knew it was new to them and they had to learn. When you get down to 6 months pendency to first action which is what the average was to get to 18 months overall pendency, that means that you’re working with, in some cases, very small dockets. In some cases examiners would run out of work and have to take work from other areas. We just found ways to mitigate against any kind of down fall of quality by having the people who knew the art available to help out and consult with. Then we get back to your work at home issues; it might be more difficult to do it today as it was in the 1980s because of the issue of not having consultants around like we had in the 80s.

QUINN: Maybe, maybe not. Because I think that the Patent Office is trying to get rid of the residency requirement from the work at home at least in some respects. Because then that would certainly open up a lot of retirees who may be willing to take on a couple of cases to keep their mind sharp. A lot of the guys like to be involved to see the new technology, because we’re all geeks on some level.

GODICI: Right. [Laughing]

QUINN: But then if you’re in Arizona retired or in Florida retired and you have to come back to the campus, that’s not the greatest gig to have.

GODICI: Exactly, that’s why I think that virtual office or work at home or telework whatever name, has its benefits. You just have to be aware of the flip side in terms of the training and metrics.

QUINN: Now what I am hearing you say, and I haven’t really thought about this previously although I’ve probably been dancing around it, is that much like people would consider a litigator to have specialized skills set; if you’re a litigator you can litigate anything. Is it true to think that with a good examiner that you can pretty much examine, maybe not anything but given time you could examine quite a lot more than just what is straightaway in your wheelhouse.

GODICI: If you could understand the technology, you could pretty much examine a patent application. That’s the way I look at it. Look at the attorney; look at it from the other side. The attorneys are more generalists than examiners are. How do attorneys deal with a new client and a new technology from a new client? They roll up their sleeves and they dig in and they try to learn the technology. And they do what they have to do in terms of the interaction the person who has the knowledge to figure it out.

QUINN: Well there’s an interesting ethical piece there too. Because attorneys can do that as long as you believe for yourself that you can ethically represent the client to the level necessary. So if you think you can understand the technology and you’re willing to put in the time, then it’s ethical to represent the client.

GODICI: Right. Don’t get me wrong, probably the highest or certainly the most efficient examination with high quality comes from a patent examiner who’s been in his art for years and years and years and has issued all the patents that become the prior art. I know a lot of the examiners that I worked with, especially in the mechanical areas were just that. They were experts in their art and they had been examining for 25 years in their art and they knew the prior art because they were the patents that they themselves examined. So you get real efficient examination there. But when circumstances evolve to where moving work around or being more flexible or being more of a generalists are needed I think it can be done and it was done in the 80s. It was done by necessity because we got down so low and had what we called short docket syndrome in a few areas and we just had to move work around.

QUINN: It seems that what’s going on at the Patent Office presently mirrors in a lot of ways what was going on during the Reagan administration to march towards a lower average pendency. The people that I talk to seem to think that the 18 month goal, if we could get to 18 months like it happened then, would make everybody in the patent community would be happy.

GODICI: Yes.

QUINN: Do you think in today’s day, we can replicate that and get down to that level?

GODICI: It’s possible. It’s going to be more difficult than it was in 1986, or 87 or 88, I think.

QUINN: Is that because of the enormous numbers we’re dealing with?

GODICI: Yes. Back then we’re talking about filings of 100,000 applications and I think that the maximum number of examiners that were hired was about 200 examiners per year during those years and the modeling showed that if you hired 200 examiners per year for about 4 or 5 years, you hit 18 months pendency. Today we’re talking about a backlog of a million applications that are pending and 700,000 or so that have yet to have an office action. So I just think that the magnitude of the challenge is much bigger than it was in the 80s. The other problem is funding. The funding of the PTO is just a problem that needs to be solved. It’s so illogical to me that fees paid by you today to file a patent application are spent on examining a patent application that was filed three years ago and you hope that someone comes along three years from now and files an application and pays money to the PTO so that your application that was filed today can be examined three years from now. It’s kind of like a “Ponziesque” kind of thing. Add to that the uncertainty of whether or not all of those fees will be appropriated to the PTO three years from now and you really are faced with challenging funding problems.

QUINN: Right.

GODICI: You’ve got industries that are more than willing to fund a well run PTO, everyone agrees with that. I have not heard anybody from an industry or the legal community say that we’re opposed to fees that would be used to fund a well run PTO. Everybody agrees with that. Even if it called for an increase in fees, I think to be perfectly honest with you. Where people hesitate and stop is some will say “Well why should we pay a higher fee if we’re not assured that that money would stay within the office to do the job that we paid the fee for?” The fee diversion or the appropriation process is a huge problem that until it’s fixed this whole concept of reaching an 18 month pendency or 10 month pendency or whatever the goal is, is really severely hindered and whoever is running the PTO has two arms tied behind their back because of that in trying to meet the goal.

QUINN: Well it also seems, and I don’t know if you’ve seen the Bilski case yet –

GODICI: It’s on my desk; I’m slogging through it [Laugh]

QUINN: It seems that and I don’t necessarily want to get into the merits of it, but I think to some extent the patent office was just thrown and basically said “You guys figure this out.” They’re saying processes are patentable, they’re saying business methods, at least some of them, are patentable, abstract ideas are not patentable, if you satisfy machine or transformation, patentable.

GODICI: Right.

QUINN: But that leaves a whole lot of in between, between that and an abstract idea. So it seems to me that a lot of rejections that examiners have been giving, machine or transformation 101 now go away and that also maybe exacerbates the backlog, because you’re not going to be able to go through vast quantities of these applications on a threshold inquiry.

GODICI: Right.

QUINN: So if you were David Kappos or Bob Stoll, the commissioner today, what would you be doing? What do you expect they’re doing, talking about the decision, how are they planning?

GODICI: The bottom line is they’re going to have to analyze the decision and come up with some guidance for 6000 patent examiners on how to deal with the 101 issue. And I’m sure that’s what Bob and Dave are doing today, literally. I am sure they both have had meetings to figure out what’s going to happen. I know the process that occurs.

QUINN: And what is that process?

GODICI: The Process would be, normally the starting point would be the patents organization and the legal area within the patents organization which is now headed up by Bob Bahr who is the acting deputy commissioner for patent policy. Bob and his team will be crafting a document that would evolve into 101 guidelines in view of the Supreme Court Decision and Bilski? There’s a complicated or maybe torturous is a better word vetting process for that document that would include obviously the Solicitor’s Office, it’s going to include the guys from the board of appeals and maybe even some of the other folks in other parts of the office. But arriving at a document that can said to be guidelines in view of the Supreme Court Decision is step one. They would then train the examiners with training examples. Claims that would fall on this side of the patentability line on 101 and also claims that would fall on the unpatentability side and so on. And then you try to develop them in each of the technology centers, and they become, besides the overall guidelines, the training examples become the way that examiners in each of the technology centers are trained. It’s difficult.

QUINN: How long is that process going to take?

GODICI: Well I know it can take a long time. It took a long time with KSR, when the en banc decision on Bilski came out of the Fed Circuit; it took a while before there was an agreement within in the office. I know that Dave and Bob will push to get it done as quickly as possible and not let it linger. I can tell you this; the 6000 patent examiners are hungry for guidance. They want guidance, they truly want guidance. So I think it’s incumbent upon the administration at the PTO to move quickly, to come up with clear guidance for the examiners and give the examiners the tools to figure out how to deal with the new decision.

QUINN: I’ve never been able to ask anyone this question because I’ve never known anyone who was both the Director and Commissioner. Can you very briefly tell me what the differences in the job descriptions are? What does the Commissioner do and what is his or her responsibility and what does a Director do what is his or her responsibilities? What does the day to day look like, if there is an average day to day?

GODICI: I am not sure there is an average day. But as the Commissioner for Patents, you’re concentrating on the patent portion of the Patent and Trademark office. And you’re really concerned about quality examination, having the right resources, having the right tools for examiners and getting the job done. Obviously on the Director’s side of the building, you’re worried about trademarks. You’re worried about international affairs. You’re worried about overall budgets at the office. You’re worried about dealing with the Department of Commerce and the Secretary. You’re responsible for testifying on the Hill and dealing with appropriators and dealing with Judiciary Committees. You’re dealing more with constituents; the Bar groups the AIPLA, IPO, ABA.

QUINN: So would it be good to say there’s a difference such as the Commissioner’s the COO and the Director’s the CEO and those constituencies for the director would be similar to a Board of Directors?

GODICI: Exactly, and I think if you look at the statute they actually call the Commissioner the Chief Operating Officer of the Patent Organization. But if you go into an executive staff meeting run by the Undersecretary and you’re going around the table and you’re addressing issues on the trademark side and you’re addressing issues with respect to what’s going on in the trilateral and at different foreign Offices. So the Director’s job is broader. The patent piece of the director’s job is the most visible. With deference to my trademark friends. It was really a ten to one.

QUINN: Time spent?

GODICI: Budget, People, Whatever. Everything on the patent side was about 10 times what it was on the trademark side. There’s just a much broader scope and dealing externally to the Office with the Director’s hat on, that would take up more of your time.

— End of Part 2.

Part 3 will pick up with Godici explaining why he was recalled to the Patent Office in the Summer of 2009 and just how close the Patent Office came to having to shut down for several weeks and furlough examiners at the end of FY 2009 because there were not enough funds to continue operations.  Godici also answers some fun questions and tells us about a particularly amusing patent, one you will know for sure, on which he was the issuing patent examiner.