Five Questions the New Commerce Secretary Should Ask When Vetting a USPTO Director

“The USPTO should enjoy a fan at the helm—a knowledgeable fan and believer in what the USPTO is and does, and who can articulate and defend, in short sentences, its mission and vital purpose to the coming generations of America.”

Dear Howard Lutnick [the Trump Nominee for Commerce Secretary]:

In this busy transition season from one administration to the next, I am here to help! Lucky you! I have already penned an open letter to [the Department of Government Efficiency] DOGE regarding patents and America. I understand you are now interviewing candidates for the job of Director of the United States Patent and Trademark Office (USPTO). I have been in the fortunate position of having personally observed much of the last four decades of senior USPTO staff and their effectiveness. I have even written articles (for this publication) ranking them! I started my career there as a patent examiner and speech writer for then Patent Commissioner Donald Quigg in the Reagan years. Since then, I have run various patent related businesses and been in private practice as a patent attorney and teacher of patent prosecution practice (i.e., how to present and pursue patent applications through the USPTO until issuance). I’d like to share my thoughts on the attributes I’d suggest you look for in the next Director.

First, this person must be an unabashed fan of the patent system! There are enough critics in and out of government and in academia. The USPTO should enjoy a fan at the helm—a knowledgeable fan and believer in what the USPTO is and does, and who can articulate and defend, in short sentences, its mission and vital purpose to the coming generations of America. Too often, those within the patent world fail to successfully communicate the ongoing scaffold to societal progress the patent system and USPTO create.

Patents and the incentive system surrounding their creation have created the future of this country since 1790. This has been so because when you treat tangible ideas just like any other “property”, our capitalist system is extremely well suited to support the exploitation and use of that property. It is ownable and defensible and leverageable in the same way as any other property. There is no moral component; it is a general good for the nation, across all technical disciplines. If, once a patent is obtained, it is freely licensed, dedicated to the public, or preserved within and used by a single entity, it matters not. It is deployed at maximal value to those who own and control that property. Where government has in whole or part financed the basis for the property, then it, like any other owner, should predictably share in the reward. Bottom line: this nation needs more “intellectual” property in the form of patents, not less. Hence, the first question for an incoming Director should be:

1) “Are you a patent ‘fan’ and can you defend the USPTO and its needs for support for the role it plays, both political and economic, inside and outside an administration and across the globe?”

Next: The USPTO’s role in the patent system is simple: issue valid patents in a timely fashion. To do this, the USPTO needs to get working. Recent hiccups owing to COVID, and policies derived therefrom, have resulted in a growing backlog of unexamined cases. Hence, job one of the new hire is to get the USPTO working again. Hire new examiners into and in accord with the respective technical backlogs, i.e., computer scientists, biologists, etc., matched to the longest lines within the USPTO, and train them in-person. This training can be done at the main USPTO building in Alexandria and in each regional USPTO office around the country. After two years, and solid performance, a work from home or other flexible schedule may be permitted.

Working at the USPTO is exciting! It means playing a vital role in what comes next for the nation technically, whatever that may be. But only valid patents can perform that function. Hence, bolster the current examination system with the best search and analytical tools that can be brought to bear. Defensible property creates investment security. Indefensible property, i.e., patents that end up being invalidated, creates unpredictability and only speculative investment. Hence, the second question for the Director should be::

2) “Can you rapidly devise and implement a plan to get the USPTO busy and effective again?”

Next: Support efforts on Capitol Hill (such as the Patent Eligibility Restoration Act) to revise Judicial misdirection on what is eligible for protection via patents. The interests of the nation are served best by as little restriction as possible in this regard. If morality becomes a factor, for example, for medicines and treatments, then address that, if at all, during enforcement or licensing. Likewise for computer implemented methods. The work of our programmers, whose clay and molds are software and computers, need broad encouragement! AI is just the first wave of what’s next. There exist technologies we as yet do not know of and cannot comprehend, but if they are eligible for patenting, they will come. That basic belief has been an article of faith since the founding of this country and has been voiced by many a Director of the USPTO (beginning in 1836). Hence, the third question should be:

3) “Can you convince fence sitters and their lobbyists of the worth and vitality of the patent system for them and their interests?”

Get America investing again!

Next: Support additional legislative efforts to make the USPTO’s Patent Trial and Appeal Board (PTAB) mimic district courts when checking patent validity. This legislation (the PREVAIL Act) vests the patent holder with a similar property right, with presumed validity, and thresholds of proof, as in a district court. Inasmuch as this PTAB system was presented as a less expensive and faster solution than a district court, bolster that similarity. Hence, the fourth question:

4) “Can you implement legislation, if passed, to remake the PTAB in the mold of a district court, but with a technical and patent-sophisticated staff?”

Finally: Restore injunctions as a ready remedy for patent holders seeking to enforce their rights. Forced licensing or damage payments reduce patent holders to rent collectors, not owners. Hence, the last question to ask a candidate for Director should be:

5) “Can you articulate why the Constitutional imperative of exclusive rights was, is, and remains the correct application of the patent system?”

Best of luck Howard, in making your choice. We are all pulling for you and the USPTO, and Patent System!

John White Recognized as one of the top patent educators in the United States, John has over 40 years of experience in all phases of the patent field. At Harness IP, John is [...see more]

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com.

Join the Discussion

14 comments so far.

IamI
January 26, 2025 09:08 am
A couple of things:

1) It is possible to keep AUs together on campus. They were grouped together when the PTO moved from Crystal City to Carlyle, and were kept on the same floor as much as possible after that for many years. They cared less about it once space got tight and things kept moving virtual, but if they brought people back they could make an effort to keep everyone close again.

2) Yes virtual training is a problem for many reasons. But the patents side of things, as a whole, is more efficient with maximum telework than it was when people were commuting to the office regularly. The data supports it. The backlog is an issue for reasons outside of the increased efficiency.
Doreen Trujillo
January 23, 2025 03:10 pm
If the paragraph below is true, it is disconcerting. I cannot imagine that people who will refuse to work when they can be monitored in person will work harder at home.

“Second, it has been proven by data over and over that, at least with respect to patent examining, full-time telework results in more efficient examination and output. Getting examiners back on campus will destroy morale, which means many will do the bare minimum (this sounds petty, but it is the truth about people). Many will just “hang out” with each other in offices, take long lunches or gym time, and head out early for happy hour. At least working at home, most examiners hunker down and do their work without temptation of social hour. As to quality, the issue isn’t remote work, it is training and mentoring. In my opinion, the PTO has an abysmal training program and virtually no mentoring. Fixing training and mentoring will result in higher quality patent examining; making people sit in an office and take meetings over Teams will not.”

I think that the answer may lie in a compromise.

1. Require new examiners (and those training them) to work in-person. There is no better way to train. It is much easier to mark-up a hard copy than to deal with tracked changes and comments. And, one can explain why each mark-up was done. New examiners can go remote once they become primary examiners.

This may require designating certain primaries as trainers, and compensating them accordingly and exempt them from the “count” requirements. Not sure if they do that now, but it often seems like the trainers don’t even review what the trainee has prepared.

2. Require that examiners be available for in-person interviews if an applicant requests it. I had an examiner outright refuse to do an in-person interview with an inventor willing to come from a foreign country. Having done both in-person and video interviews, the former are far more likely to result in an agreement that sticks. Video interviews are less personable.

3. Encourage in-person hearings. After all, we have regional offices. Maybe encourage new examiners to attend some.
ProPatent_ProPTO
January 23, 2025 12:59 pm
While I might agree with Nancy’s comment that something is lost in a complete virtual work environment, as someone who has also spent almost 20 years inside and outside of the PTO, including positions of management, disrupting the PTO with a full RTO will not result in more output and higher quality. It seems the assumption in the argument is that in-person work necessarily results in better and more work product. This could not be further from the truth, at least with respect to the PTO.

First, there will likely be very little face-to-face interactions between junior employees and supervisors/mentors even with everyone on campus. Art units will not be sat near each other (they rarely have been and it would be logistically impossible). Most examiners close their doors to work as the job is inherently autonomous. Many art units have examiners spread across 6 offices all across the country, so the only way to have meetings is virtually.

Second, it has been proven by data over and over that, at least with respect to patent examining, full-time telework results in more efficient examination and output. Getting examiners back on campus will destroy morale, which means many will do the bare minimum (this sounds petty, but it is the truth about people). Many will just “hang out” with each other in offices, take long lunches or gym time, and head out early for happy hour. At least working at home, most examiners hunker down and do their work without temptation of social hour. As to quality, the issue isn’t remote work, it is training and mentoring. In my opinion, the PTO has an abysmal training program and virtually no mentoring. Fixing training and mentoring will result in higher quality patent examining; making people sit in an office and take meetings over Teams will not.

Lastly, there is simply not enough space to accommodate a full RTO, even if a large percentage of examiners quit. Adding additional office space, equipment, furniture, etc. will be astoundingly expensive, which will inevitably lead to higher fees, not to mention it will take years to implement.

Regardless of your personal opinions on remote work, it is the norm at the PTO and has been for well over 20 years. It is institutional and cultural. Taking a sledgehammer to it will be devastating to the patent corps, but more importantly, the patent system. Backlogs will skyrocket, quality will go down (remember, examiners are people too—morale matters), and fees will go up. I suppose I could be wrong and when the dust settles an RTO might be good…but it will be many years and there will be a lot of pain before that comes to fruition.
Pro Say
January 23, 2025 11:12 am
Furthermore, since the PTO is self-funded and therefore does not constitute a cost to tax payers, taking actions which reduce examiner numbers won’t save the federal government a dime.

Not. One. Dime.

Which is exactly why the Patent Office should be — indeed must be — exempted from these orders / actions.

Instead, such actions (i.e., no new hires, no more remote work) will only serve to further damage America’s critical patent system.

Would someone — or multiple someones — please let Trump know this / remind him of this?
Nancy J Linck
January 23, 2025 10:25 am
As one who has worked inside and outside of the PTO for more than 40 years, I agree with Investor’s comments. I also find some of John’s more concrete suggestions frightening. The idea that the PTAB should be turned into an alternative district court is just crazy for the reasons others have given. Instead the power it has now should be significantly limited. Also, as to PTO staff, President Trump’s order that federal employees return to the office would, if implemented at the PTO, in my opinion, increase the quality of examiners’ work and perhaps even the quantity. While workloads may have increased over the years, so have the tools to do the work making that work easier (and faster). The loss of working side and side and exchanging ideas and helping new examiners has taken a huge toll. Yes, there would be challenges in providing office space and replacing those who quit because they don’t want to go to work. But overcoming those challenges would be well worth it.
Bob Dickerman
January 23, 2025 08:09 am
You guys are overthinking this again. Unfortunately, you are wasting your breath talking about the Constitution, the law, and how the system is supposed to work. All of that is out the window now that we have a fascist cult leader in the White House who explicitly promotes violence against cops and his political opponents, backed by a corrupt SCOTUS, and a corrupt majority party in Congress. Trump, the SCOTUS majority, and the congressional majority have only contempt for the Constitution. The only thing that matters now is what the unelected, richest man in the world, Elon “patents are for the weak” Musk, prefers, and what he whispers into Trump’s ear. Musk will determine the fate of the USPTO from here on out.
Luis Figarella
January 23, 2025 07:32 am
Spot on John, thanks for keeping the ‘strategic’ in mind, while highlighting some of those ‘tactical issues’ that drive me and my fellow patent prosecutors N-U-T-S (‘Gracias’ Gen. McAuliffe).

Far above my pay-grade, but after 20 yrs in this ‘cosa nostra’ as a patent prosecutor and 35 as an inventor, we sure seem dedicated to destroy something that is one of those ‘shoulders’ that we all are standing on…

LuF
Investor
January 23, 2025 07:30 am
Question #1 should be….

How are you going to insure the inventors their patents are investment worthy!!?

Innovation isn’t dead because we all know it’s being stolen and the USPTO system is enabling the theft.

#2. Question is How will you turn patents from a liability to an asset !!?

Question# 3 …..

How will you stop efficient infringement ?

Question# 4…..

How will you make a patents front cover award content truth again?

Question # 5 ……

We all saw big tech company heads and billionaires sitting behind Trump at the inauguration and AI news conference. How will you persuade congress to sign legislation that favor’s inventors and small business investors so they can compete and climb to the top with value as in the past!!?

I know personally some of the candidates. My choice is John Squires. He can answer all these questions and if chosen will take back the patent world and the winds would blow changes back in favor and to being a positive for the patent owner.

No one should file for a patent until massive patent reform is
In place so an inventor can get paid.
tom
January 22, 2025 11:06 pm
@Irratated

While it is acknowledged that managers are not directly involved in the examination process, it is imperative to examine why a disproportionate number of Senior Executive Service (SES) managers at the USPTO appear to evade accountability for the escalating backlog, deteriorating examination quality, and rising fees. As America’s innovation agency, the USPTO bears a fundamental responsibility to protect and foster innovation. Given this mandate, it is unreasonable to rely solely on the old strategy of increasing the number of examiners—particularly when many of these examiners are likely to resign in the near term due to an unsatisfactory work environment established by a top heavy management structure. Such a reactive measure fails to address the root causes of the problem. Examiners are held accountable for meeting production standards that increase with seniority; however, SES managers do not appear to be held to any comparable standards.

What is needed is a leaner leadership team that is not only accountable but also equipped to implement meaningful reforms and introduce innovative solutions. This is exemplified by the proactive initiatives employed by former Director David J. Kappos, who tackled the backlog through process reengineering, the introduction of Track One, and the establishment of a new examiner performance plan. He didn’t just hire more examiners. (https://www.uspto.gov/about-us/david-j-kappos) Simply adding more examiners to a system that is fundamentally mismanaged will not resolve these systemic challenges. We should ask and expect far more from the new director.
Pro Say
January 22, 2025 09:22 pm
Already distressed by the huge and growing patent backlog you say?

Well . . . if Trump’s “all fed employees must return to office” executive order doesn’t exempt the Patent Office (as it should) . . . just wait until 1,000+ remote-working, the-most-experienced examiners quit because they can no longer work from home.

Trump is a bull in a china shop.

One who’s about to gore American innovation.

Unless cooler heads prevail.

Meaning there’s one more question to ask potential Director candidates:

“Will to fight for American innovation . . . by fighting for the examiners?”
Anonymous
January 22, 2025 04:20 pm
The PTAB can never be “in the mold of a district court” because it lacks the main component – a JURY.

A patent is an “exclusive Right” per the Constitution. There is no constitutional right that if exercised requires a waiver of another constitutional right. No inventor, by virtue of seeking a patent, ever waives his right to trial by jury.

If the new administration truly believes in giving power back to the people, the way to do it is by jury trials.
Irritated
January 22, 2025 03:10 pm
@tom

The number of examiners *Must* increase. Denying this is ludicrous. Bordering on willfully ignorant.

The number of applications filed per year always goes up.

The number of prior art references that can be searched always goes up.

The number of patent employees who are eligible to retire always goes up.

What are we supposed to do in 10 years when the 1/3 of primary examiners currently within 10 years of retirement have done so, and the replenishment effort needed to replace and train new primary examiners has not been undertaken? Primary examiners are the bulk of the office, and the bulk of its work output. Junior examiners do a fraction of the work because of the time and effort it takes for them to reach primary status.

Managers do not examine, do not search, and do not write the actions the office sends out. Doing things to management does not assuage the backlog. The backlog is a “number of actions” vs “number of received applications” measure – the easiest way to continue raising the number of actions is not to fire managers, it is to hire more examiners to do those actions and ensure the staffing of the uspto can maintain an appropriate supply of primary examiners through retirement waves.
tom
January 22, 2025 02:25 pm
The United States Patent and Trademark Office (USPTO) does not require an increase in the number of examiners, but rather a more effective management structure. Currently, the USPTO’s management is excessively overstaffed with over 100 Senior Executive Service (SES) managers, each accompanied by their own advisors, and there is a distinct lack of accountability within this management tier. This figure represents twice the number of SES managers per employee when compared to the federal government average. Moreover, there are three levels of SES management overseeing one another, extending from the Commissioner of Patents to the first-line supervisors. If the new director seeks meaningful reform, addressing the issue of managerial excess and inefficiency within the USPTO should be a primary focus.

The tired and ineffective practices of hiring additional examiners to address the backlog or raising fees to generate revenue are both short-sighted and lazy strategies that fail to address the root causes of the problems at hand.
mike
January 22, 2025 01:29 pm
I largely agree with John, however, “remaking the PTAB” presumes that the PTAB is right for America’s innovation system. The PTAB is a failed experiment. As we’ve seen for almost 15 years, adjudicating property right disputes should belong in the hands of a jury, not in the hands of government employees having a financial incentive to satisfy patent challengers.