Live from PLI Patent Institute: Deputy Director Sharon Barner

Live from New York it’s the 5th Annual PLI Patent Law Institute.  Okay, it doesn’t roll off the tongue quite the same way, but over the next two days we will explore all aspects of the practice of patent law, from litigation, to transactional practice to patent prosecution.

Starting off day one is the newly minted private citizen Sharon Barner, who most recently was the Deputy Director of the United States Patent and Trademark Office.  Barner was introduced by John White (of PLI patent bar review fame), who pointed out that during her tenure she continued to commute weekends back to Chicago from Alexandria, VA so as to not uproot her family.  Over her tenure, which was about 16 months, Barner also managed to fit in no less than 8 trips to China on official government business, among the 17 foreign missions she participated in.  Let’s just say she really racked up some frequent flyer miles!

Today Barner is here to talk to us about what is going on at the USPTO.  She is discussing the USPTO Strategic Plan, which she was primarily responsible for pulling together during her tenure.  She also went on to discuss appeals to the BPAI, the IT system overhaul, patent reform, patent politics, Microsoft v. i4i and much more.  As a former Deputy Director we are getting not only the facts, but her opinions as well.  An excellent, informative and candid presentation.

As Barner started her comments she began by explaining exactly why we saw, and continue to see, such dramatic change at the USPTO.  It comes as no surprise to anyone involved in patent prosecution, but there were in fact many things that needed to be done in order to address the enormous backlog of patent applications and growing pendency of applications.  There was also an understanding that there might be very little time to know whether what was being pursued could realistically bear fruit.

Hearing Barner talk about the fact that time might be limited reminds me of what Director Kappos told me in July 2010.  He explained to me that he was cognizant that he served at the pleasure of the President and that meant that he could be out of a job at any time.  Now not to start rumors — I have not heard anyone or anything suggest that Director Kappos’ time is limited, but the leadership at the Patent Office does seem to understand political realities and hit the ground running and continues to sprint to get as much done to engage foundational change that can build for the future and create more efficiencies to sustain an ongoing and improving operating capacity.

One of the most interesting things Barner has said is just how shocked she was to see the state of the IT systems at the PTO, which “experience weekly crashes,” and the archaic processes examiners have to follow in order to get their job done.  Barner explained that she would ask: “why do we do it that way?”  To be told: “because we have always done it that way.”  Therefore, before doing much of anything else the new leadership needed to “eradicate [processes] that don’t make sense, which were vestiges of a paper process.”

Moving on, Barner started talking about the IT systems.  “We could spend a whole day talking about the IT system overhaul, but I can tell you that Director Kappos, coming from IBM, is personally engaged in the IT system overhaul.”  Barner explained that one of the key aspects of the overhaul is scalability because by the very nature of technology once you complete the overhaul at least some parts of the overhaul will already be obsolete.  Thus, scalability is critical so that you do not have to continually start from scratch to address obsolescence.  With this in mind the IT system overhaul will reengineer the processes and implement new core technology.  When she arrived Barner also explained that every employee had both a desktop and a laptop, which is unnecessary and adds cost.  So all desktops will be replaced with laptops, so everyone will have a laptop.  This adds security concerns, but the Office is working through those.

Barner then moved on to the Board of Patent Appeals and Interferences.  She explained that when she first started looking at appeal process there were “at least 90 steps.”  Barner then went on to point out: “if you have filed at the Federal Circuit you know that there are not 90 steps to filing a brief.”  As she was talking her powerpoint presentation was showing a flowchart.  The flowchart slowly scrolled from left to right.  Barner explained this is the flow chart that we put together explaining the process for filing an appeal with the Board.  She said: “when I printed this out it was 9 feet long.”  Barner pointed out that with so many process steps there is just more opportunity for appeals to get hung up and derailed.

One of the most shocking things that Barner talked about was with respect to policy.  She explained that the Patent Office is not even at the table when many decisions relating to patent law and patent policy, which impact business and impact practice.  She explained that when she arrived at the USPTO in most situations it was the Federal Trade Commission that was setting patent policy and that discussions of patent policy held at the White House did not include the Patent Office.

It was unclear to me, but it seems that Barner is saying that things have gotten better, but she did say that the only way this is going to change is if the patent bar and stakeholders get and remained engaged.  That leads me to believe that the Patent Office is still not at the table much, if at all.  It also seems that our engagement is absolutely essential.  Barner pointed out that some of the changes the Patent Office is undertaking are as the direct result of suggestions from the patent bar.  I know that to be true and would recommend that every practitioner engage to the extent possible.  I know the demands of practice, trust me.  Sometimes I run around like a chicken without a head just like everyone else, but I do think we can better represent the interests of our clients by staying engaged.  This leadership team at the Patent Office wants to hear from us and if we have a good idea they will implement it.

On to patent reform.  Will it happen?  Only several people raised their hand to say they think it will.  Barner said: “there is a high likelihood that patent reform will happen this year.”  She went on, “now that I am not at the Patent Office I can tell you that I’m not sure that is a good thing.  There are some things in there that I agree with… there are some critical things in the patent reform bill that we need.”  Barner explained that the White House is engaged in patent reform and just last week the Patent Office had a meeting at the White House regarding patent reform, which was the first such meeting in two years.  It is amazing to believe that what seems to be a legislative priority for Senator Leahy hasn’t until last week gotten any time at the White House.  Obviously, having the White House on board and interested in getting something done means it is much more likely.  Having the House Republicans on board, as Congressman Chaffetz told me they are, also points toward patent reform getting done this year.

In the question and answer session Barner fielded a question from the audience from me regarding the Microsoft v. i4i case.  I asked about the burdens that would be placed on the Patent Office and examiners if the Supreme Court does lower the presumption of validity.  She explained that such a decision would have an enormous and negative impact on the operations of the Patent Office.  Since I was asking the question and following up I couldn’t get it all down, but I will get the tape and expand upon the Microsoft v. i4i discussion in the coming days.  I suspect the Patent Law Institute will have a lot more discussion of that, and it will likely be the central topic of discussion at the reception tonight hosted by Skadden Arps.

The take home from Barner’s presentation seems to be that things were worse than many of us understood, and there is still a lot to be done.  It seems having a Director that is a patent attorney, who has surrounded himself with quality high level managers who are willing to question the orthodoxy to see if there is a better way to get things done, is paying dividends.  Yes, the metrics are not as good yet as we would have liked, but it seems clear that there is an enormous re-engineering of the Patent Office on every level.  Upgrading the IT systems, streamlining processes and asking whether there is a better way to be doing things given the new electronic filing reality means that the foundation is being laid for a fully functional Patent Office.

Now if we can just get Team Kappos more money… sigh…


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Join the Discussion

7 comments so far.

  • [Avatar for Just visiting]
    Just visiting
    February 18, 2011 10:54 am


    If you get a chance, please ask Sharon was is being done about certain APJs of the BPAI blatantly ignoring the law (e.g., improper burden shifting, introducing new grounds of rejection without designating them as such, still applying en banc Bilski (i.e., the MOT) test despite SCOTUS Bilski and Research Corp Tech, failure to follow ex parte Frye, giving deference to the Examiner’s findings — the list could go on but I’m a little too busy today to write a 10,000 word essay).

    I am serious … I was going to call Sharon about a couple of these issues, but found out at the same time that she was leaving.

  • [Avatar for Copyright Attorney]
    Copyright Attorney
    February 18, 2011 12:51 am

    Here is a similar story

    US Patent Office Director David Kappos has announced his new Deputy Director: longtime intellectual property law professional Teresa Stanek Rea. Ms. Rea is currently a partner at Crowell & Moring and was president of the AIPLA from 2008-2009 and was previously with Burns Doane. Ms. Rea replaces Sharon Barner who stepped-down this January after a short, but effective tenure.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    February 17, 2011 04:47 pm

    Does anyone have any opinions about whether my Provisional application would legally be considered to be to have any rights as regards to being the FTF? I filed it about 8 months ago.


  • [Avatar for Stan E. Delo]
    Stan E. Delo
    February 17, 2011 02:23 pm

    If the i4i case goes south, and *Patent Reform* also passes, I am afraid I will be forced to either abandon my PPA, or maybe just file a missing parts application and hope like hell something good happens during the extra year I can get that way. How depressing…


  • [Avatar for Stan E. Delo]
    Stan E. Delo
    February 17, 2011 02:15 pm


    Thanks a lot for the tip. I find it amazingly short-sighted of Congress to continue to take PTO funding when it represents such a tiny drop in the very large bucket of the Federal budget, especially with all the rhetoric being bandied a around lately about growing the economy by encouraging innovation?


  • [Avatar for Gene Quinn]
    Gene Quinn
    February 17, 2011 01:55 pm


    I have heard about the Senate soon voting on patent reform. What I am hearing from other sources it seems like there is indeed real interest in moving forward sooner rather than later. Of course, the House will have to pass something and over the last several years the House has not wanted to just adopt what the Senate does, so there should be some room for compromise still in the Conference process. Having said that, the big ticket items seem to be locked in and we will have patent reform sometime this year, perhaps quite soon.

    I don’t know about the CR, but I would remind you and others that the fight won’t end with a CR. Last year the Patent Office was able to convince Congress to give them an extra $129 million at the end of the fiscal year. The PTO collected $200 million more than they would have been able to keep for FY 2010, and the PTO managed to convince Congress to let them keep and use $129 million. Not perfect, but even with a CR there will be an opportunity to do that again. But until the funding is settled (hopefully on a long term basis) the PTO cannot move forward with additional hiring and overtime necessary to cut more substantially into the backlog. So we need to keep pressing and stay engaged.

    Incidentally, during Barner’s presentation today she mentioned that she was engaged in the process of negotiating with Congress to get the $129 million back and was told by many that it was a waste of time. She was successful, so hopefully in her departure others will be able to spearhead such negotiations again.


  • [Avatar for Arthur Dent]
    Arthur Dent
    February 17, 2011 12:52 pm

    Speaking of Patent Reform, Reuters is reporting that the Senate may vote on the Patent Reform bill within two weeks:

    On a separate note, unfortunately it looks like we’re going to get another continuing resolution (CR) passed by March 4th (the day the current CR expires), as opposed to a proper FY2011 budget. As I understand it, the PTO (which is still locked into 2010 spending levels under the CR) would run out of funds available for examiner overtime after or around March 4th. Not due to dwindling fee collections (fee collections are quite robust this year, so I hear), but rather because the PTO would be hamstrung to the much lower 2010 spending levels. If so, we can expect the backlog to increase substantially over the remainder of FY2011.

    How hard is it to let the PTO spend the fees it collects?