Inauspicious Start to Greater USPTO Transparency

I certainly hope this is much ado about nothing, but it is hard to ignore the fact that it seems as if we are off to an inauspicious start under David Kappos.  Yes, he is saying all the right things, seems to understand the mistakes of the past and there is real reason for hope and optimism.  Nevertheless, despite the many positive developments that have occurred over the last several months, the United States Patent and Trademark Office may have just fired a shot across the bow.  I hope this doesn’t mean we are back at it with an all new cast of characters playing by a tired and worn out playbook.  What am I talking about? This morning I came across a post by Peter Zura at the 271 Patent Blog explaining that if you want to comment on the interim patentability guidelines you need to do so no later than Monday, September 28, 2009.  The notice was published in the Federal Register only on Thursday, September 17, 2009, and set an 11 day comment period, suggesting that the promises of transparency may be greatly exaggerated.  A Federal Register Notice giving an 11 day comment period is probably not the best way to further goodwill, and not likely going to lead to making friends and playing nice with the patent bar.

The Federal Register Notice explains that the Patent Office is allowing interested individuals to comment because the USPTO wants to know what the community thinks of the interim guidelines. The Notice also explains that no public comment period is required, so seemingly they are providing a full 11 days of notice just because the Office values the input of the patent community. Here is what the Notice says on this point:

The USPTO is providing this opportunity for public comment because the USPTO desires the benefit of public comment on the Interim Patent Subject Matter Eligibility Examination Instructions; however, notice and an opportunity for public comment are not required under 5 U.S.C. 553(b) or any other law.

In all fairness, the establishment of guidelines probably doesn’t require notice and the opportunity for public comment, but a Federal Register Notice smells to much like CYA activity.  Furthermore, if you are going to solicit public input it would seem to me to be appropriate to give meaningful time to provide comments and meaningful notice to the relevant community that comments are sought.

Again, in all fairness to the Patent Office, although the Federal Register Notice was not published until last Thursday and set only an 11 day comment period, the USPTO did apparently post the call for comments to USPTO.gov in the form of a Press Release on August 27, 2009. You can see from the screenshot of the News and Notices page below that this falls between Electronic Application Processing and Senior Management Changes.

What is odd, however, is this notice never seemed to make its way to the front page of USPTO.gov.  Apparently interim guidelines, asking for public input and changing the way the USPTO handles something as fundamental as patentable subject matter is not considered “Top News.” The USPTO homepage presents the “Top News” and as you can see from the screenshot below, taking a step toward electronic application processing is considered “Top News,” as is the beta testing of a new website design, but something that affects the USPTO interpretation of a fundamental patent principle is not worthy of mention on the homepage.

I don’t want to seem petty, and I don’t want to play the part of Chicken Little, but for most of the Bush Administration the Patent Office suffered from significant perception problems.  During the Spring of 2009 it became apparent that things were changing, and six months later we all know that those changes are very real and the USPTO is headed in different direction.  Nevertheless, this sort of short comment period and using the homepage of the USPTO to promote non-substantive news while relegating substantive matters to deeper pages makes me start to twitch just a little and causes a wave of anxiety spread through my body.  Are things really different, or are we in for more of the same?

Probably the thing that causes me the most concern is that the USPTO is already training examiners with respect to these interim guidelines even before they receive comment.  Here is what the USPTO website says:

The USPTO is issuing the Interim Eligibility Instructions and has begun the process of training examiners on these instructions to reduce the delay in delivering these instructions to examiners, but the USPTO desires the benefit of public comment on the instructions and will revise the guidelines as appropriate based on comments received.

Obviously the PTO does not understand how deep the mistrust ran in the patent community.  If comments are really going to be considered it seems like a waste of time to engage in training, only to have to engage in re-training.  With the backlog and pendency what they are the Patent Office needs all hands on deck, and training and subsequent re-training takes precious time.

Not that the PTO follows my advice, but if I could counsel Kappos on this I would tell him that he should extend the comment period as a gesture of openness and good faith.  I don’t care whether this is substantive rulemaking and I don’t care whether the USPTO has to provide an opportunity for those interested to comment.  Someone at the UPSTO needs to stand up and demonstrate that they understand how marginalized the patent community became under the Dudas era, someone needs to do something to demonstrate “Under New Management” doesn’t mean just different people, it means a different approach.

Perhaps hope and expectations for things being done differently will work to create unreasonable expectations.  Kappos says that he wants input, understands that the Patent Office needs to serve all interests from individuals to mega-corporations.  This is all very good and creates hope for a better patent system and a better Patent Office.  Yet, an exceptionally short comment period is rather deflating, particularly knowing that interested parties have to drop their daily work to provide comments that likely won’t matter given that training has commenced.

The truth is that those seriously following PTO business tend to clue into announcements of importance once they are published in the Federal Register, or when announcements are made on the homepage of the PTO website. Add to this the reality that announcements made at the end of August while so many are on vacation frequently get buried, and perhaps this much ado about nothing story starts to present the tell-tale signs of what became known as business as usual at the USPTO over the last 4 or 5 years.

I am as hopeful as everyone that things will be different, and I have been exceptionally encouraged by what has been happening on the Alexandria campus over the last several months.  That being said, if I could have 30 seconds of time with senior management at the USPTO I would convey this — I realize you did not create the problems of the past, but there were many well documented problems nonetheless.  Turning the page and starting fresh is a wonderful concept, but when new actions start to look like old patterns it is only human to raise questions and wonder.  Posting something in the Federal Register weeks after it was announced in a Press Release suggests CYA mode.  Perception becomes reality, and I think the totality of the circumstances can easily be interpreted as the Patent Office not wanting comments, but wanting to make it look like input is desired.  If this is not the case, then extend the comment period and in the future consider putting announcement relating to substantive issues on the USPTO homepage.