On Monday, March 29, 2010, the United States Patent and Trademark Office conducted an inventors round-table in the Madison Auditorium on the campus of the USPTO. USPTO Director David Kappos has been meeting with independent inventors and those who work with independent inventors all across the country. Kappos, who keeps late hours more akin to the private sector, has been making time to meet with inventors pretty much wherever his travels take him across the country. I know he has held such meetings in California, and in Boston, as well as other locations. This marked the first time the event was held in Alexandria. There were probably about 40 people in the room, and the event was broadcast live over the Internet. Kappos took a number of questions and seemed very engaged. It is a breath of fresh air for the USPTO to be listening to the inventor community in a substantive way like this. But it goes beyond just listening. The USPTO proposal with respect to essentially extending the life of a provisional patent application to 24 months, which was announced officially last week, was the result of a suggestion Kappos received at a round-table event in California. So not only is the USPTO listening, they are taking what the hear into consideration. What a novel, yet profound concept.
During the 1 hour meeting at the USPTO Director Kappos reaffirmed his commitment to embracing input from independent inventors, saying “I completely agree that we need to have a continuous channel to the independent inventor community.” In fact, when the issue came up about trying to somehow use market realities to dictate which patent applications get advanced and considered quicker, Kappos said: “Using economics as a filter is a great point and something we have been thinking about.” This is something that I have written about in the past, so I am quite excited that the Patent Office is considering such a proposal. Kappos explained, however, that he wants to be careful because with an economic test there is a risk that you may “disadvantage” some inventors who are unable to prove their invention will have direct economic impact or create jobs, and he doesn’t want to force inventors to make assertions they really cannot back up in order to achieve a faster examination. He did explain that the Office is struggling a bit to come up with an appropriate test, and is all ears if anyone has suggestions. I am working on creating a proposal myself, so if anyone has any ideas let me know, even if it is just a concept or random though. I can work it into some overall suggestions and try and try and get it considered. But the mere fact that the Office is looking for input, and when they get good input acting on that input, is extraordinarily exciting. What a difference a couple of years make!
Kappos also fielded some questions about patent reform, particularly the one year grace period under present law. Under the proposals there would still be a grace period, but the potential problem I see is that the grace period relates only to activities of the inventor and not across the board. See Patent Reform Should Preserve a Real 1 Year Grace Period. If you as the inventor publish your invention or sell your invention you would still have 12 months within which to file a US patent application. If other do that, however, today you would be OK if you filed within 12 months, but under the proposed law you would lose the ability to obtain a patent. I suspect that loop-hole will get addressed during any discussions regarding the bill in Congress, but it is something to keep an eye on for sure.
In addressing patent reform Kappos discussed the fact that moving from a first to invent system to a first inventor to file system is not going to present any real changes, and he is of course right. Doing away with interferences will not impact independent inventors at all. First, the cost of intereferences to determine who the first inventor is goes into the multiple hundreds of thousands of dollars, so independent inventors would not be impacted by doing away with it because they don’t have the resources to win anyway. Kappos didn’t get into the cost of interferences, but instead focused on the reality that they just do not come up hardly at all. For example, according to Kappos, during fiscal year 2009 there were 55 interferences declared, meaning it happens in .01% of applications. On top of that, out of the 55 declared only 2 involved small entities. On top of that, in these 2 situations involving small entities who claimed they were the first to invent although the second to file, neither prevailed. So small entities were 0-fer in FY 2009.
Kappos also explained that the last time a small entity prevailed in an Interference as the junior party (i.e., the party who claims to have invented first but filed the patent application second) was during FY 2007. He also provided data on 2005, explaining that 94 interferences were declared in FY 2005, with 13 involving small entities as the junior party, with none of the small entities prevailing. His conclusion, which is mine as well, is that “we already have a first inventor to file system.” So doing away with interferences is not a problem whatsoever. So, in my opinion, for those who want to affect change with respect to the pending patent reform legislation, you do yourself a tremendous disservice to focus on the first to invent versus first to file changes. Statistics are what they are, and if you continue to push in the face of overwhelming evidence that it doesn’t matter then you are likely to either not be taken seriously, or just completely ignored. That is why I suggest the far more important thing is to focus on the 12 month grace period. For more on interference proceedings see: Interference Proceedings & First to Invent and MPEP Chapter 2300 on Interference Proceedings.
The Patent Office defines a small entity as an entity having 500 or fewer employees. Hardly a “small business” typically. To be sure, true small businesses that are the backbone of the US economy and independent inventors qualify a small entities, but how many mom and pop shops can afford $600,000 for an intereference? I suspect none.
It is true that I prefer inventors to act as if they do not have a grace period; that is the safest thing to do, but the grace period is enormously important no doubt, as is the ability to swear behind references to show an earlier date of invention. We can have a first inventor to file system without losing a 12 month grace period for all activities, including third-party activities. Also, if it is to be a first inventor to file system then why would we lose the ability to swear behind references that were not the subject of a patent application? First inventor to file makes a lot of sense because it encourages earlier patent applications, which is good for the inventor because all things being equal that is what they should be doing, and it is good for the public and satisfies the Constitutional directive, which is the disclosure of information. So it can be win-win if done appropriately, which I do belief is the intention.
There will no doubt be some who smell a rat, to quote Patrick Henry. Truthfully, that is completely understandable given the 5 years or so prior to when the Obama Administration came to power. There were back room deals, requests for comments that were ignored and a general attitude from the Patent Office that the inventor community, the patent bar and industry were the enemy and to blame for everything that was wrong with the system. The new view, however, seems to be an open one that recognizes that the Patent Office does not have a monopoly on good ideas, as witnessed by the Federal Register Notice extending to 24 months the essential useful life of a provisional patent application, which was an outside suggestion. The focus on commercial viability to let the market determine which patent applications should be taken up earlier was also an outside suggestion, so there is indeed things you can point to that demonstrate a new environment and reason to engage in dialogue if not reasons for outright trust.
Kappos also announced that there will soon be another Federal Register Notice regarding acceleration of patent applications. He has heard the outcry from the legal community about the onerous nature of Examination Support Documents. Based on Kappos’ support of the challenge to the claims and continuations rules when he was still Vice-President at IBM, it seems exceptionally likely that he also came to the Office with a healthy dislike of the current acceleration procedures, which seem about ready to change. Kappos explained that he has already signed a Federal Register Notice relating to acceleration of patent application and the proposed changes would do away with the need to submit “onerous documents” in exchange for quick action by the Patent Office. This translates into doing away with Examination Support Documents (ESD), which have been referred to by me as “the rope that will be used to hang the applicant” and referred to by others as an Express Suicide Document. Essentially, with an ESD you have to go line by line through your application pointing out what is new and how it is different from the prior art. So not only do you have to write and file the application, you need to examine it yourself. The cost of preparing such a document is easily into the tens of thousands of dollars, even for a simple invention, and would be used later by challengers to say you misled the Patent Office and committed inequitable conduct. So a 12 month plan to patent that does not include an ESD could be extremely popular and an excellent step in the right direction.
We will have to wait and see what the Federal Register Notice says about the proposed new 12 month to patent plan. Kappos did explain, however, that what is going into the Federal Register Notice is not a final plan, but one that discloses the thinking of the Patent Office. He further explained that the Patent Office really wants input in the form of comments, and will consider them. This ought to not be news, but it really is. When Federal Register Notices call for comments the agency must accept those comments and are supposed to consider them. In the past, particularly under the Dudas Administration at the USPTO, comments seemed to be summarily rejected and hardly considered except to fashion a reason why the suggestion/comment was inappropriate or could not be done.
The fact that Kappos is holding round-tables, forwarding good ideas for action and really listening to the community the Patent Office serves suggests he is the anti-Dudas, and that things really are different. I hope (and suspect) the trend will continue.