Kappos Round-Table Listening Continues on Campus of USPTO

David Kappos participates in inventor round-table at USPTO, 3/29/10.

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.


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Join the Discussion

9 comments so far.

  • [Avatar for Dave Norton]
    Dave Norton
    May 4, 2010 10:58 am

    I’m new to this. Both inventing and red tape that goes with it. But the last week I’ve tried to start educating myself on the red tape side as time permits. A daunting task for me. What I’m finding on your site seems to be good stuff. And in the reading I came across in an article posted April 4, 2010, “Kappos Round-Table Listening Continues on Campus of USPTO”. In the 8th paragraph of this article is the comment, “extending to 24 months the essential useful life of a provisional patent application, “. As I understand it, a provisional patent gives a person 12 months to get his act together on an invention and then file for a regular patent. Is this being extended to 24 months? I am one of VERY limited finances, and if that is the case I would have more time to get my ducks in a row.

  • [Avatar for Dale B. Halling]
    Dale B. Halling
    April 7, 2010 03:59 pm


    Your post brings up several interesting points.

    Interferences & Independent Invention:
    If there were only 55 interferences last year, how come all the people calling for patent reform state that independent invention happens all the time? If independent conception of inventions are so common you would expect a lot more interferences. While I would grant you that the PTO is very reluctant to declare interferences, even taking this into account it shows very little independent invention. So all the people calling for patent reform claiming that technological progress is inhibited because they are not allowed to practice their independent inventions appear to be disingenuous at best. What is more likely is that they have not independently derived these inventions and they just do not pay a license fee to the true inventor.

    First to File vs. First to Invent:
    The proposed solution for the first to file conversion is the scaled down one year grace period. Your post clearly points out the limitations of this provision – namely it only protects the inventor against bar issues, but does not protect them from thieves that file a patent before the true inventor. This does nothing to preserve our patent system for independent inventors or start-up companies. No one with any resources and knowledge will rely on this scaled down one year grace period. Within a decade of having passed this reform, people will argue that the one year grace period is meaningless and we should just move to a true first to file system. Given the cost of filing a patent this will be the nail in the coffin of American Entrepreneurialism. The patent system will just be for large entrenched companies who create incremental inventions.

    Cost of Interferences:
    Your argument sounds logical. Since most independent inventors cannot afford the cost of an interference, we will just get rid of them. This correctly identifies the problem, but proposes an unjust solution. A just solution is to reduce the cost, time, and formalism associated with interferences. Logically, the inventor is the first one to conceive of the invention and reduce it to practice. We need a system that is just and practical. A practical system that is not just will lead to unintended consequences. For instance, the publication requirement has led to our patent system giving away our technology to the rest of the world. The practical answer was to publish our patent application and conform with the rest of the world. The just and practical answer was to fund the PTO fully, eliminate needless formalities to patents and have patents issue in under one year. The just and practical answer would have ensured that the US stayed the technological leader of the world and therefore economically vibrant. Our present economy is the result of the sin of being practical but not just.

    24 Month Provisional:
    While I am not inherently against this proposal, I can just hear the critics screaming “submarine patents.” Extending the time to 24 months from 12 months that a provisional patent application allows the applicant to file a regular patent application sounds like a practical solution, however the better answer would be to streamline the process of applying for a patent. We should work to reduce the time it takes to obtain a patent, reduce the cost it takes to obtain a patent, and reduce arbitrary rules required to obtain a patent that add no real value to the patent system.

    Real Patent Reform:
    Nothing in the present patent reform proposal does anything to solve the real problems faced by inventors. Instead of agreeing to a less bad patent reform bill, which should trash this bill and start over. The number one issue that has to be in any patent reform bill is to stop fee diversion. Fee diversion is fraud pure and simple. If Congress had to live up to Sarbanes Oxley, they would all be in jail. We need to repeal KSR. Any objective system of patentability is better than a subjective standard for entrepreneurs and businesses. (Only a judge or a trial lawyer thinks a subjective test is just). For more on real patent reform see http://hallingblog.com/2010/02/25/patent-reform-and-independent-inventor/

  • [Avatar for David Boundy]
    David Boundy
    April 5, 2010 12:33 pm

    No question, PTO’s heart is in the right place, and that is a welcome and remarkable change. But now we have the “pure heart empty head” problem, because of the PTO’s long self-imposed isolation from the real economic life of patents, inventions, and inventors. The cost in filing a provisional (or this extended quasi provisional) is not PTO filing fees. PTO fees are all but irrelevant. The big costs are:
    (a) attorney fees for getting a disclosure up to the standards required by § 112 ¶ 1 (including getting publication-quality draiwngs, which are still required by this proposal); and
    (b) the inventor’s time sucked into patent stuff and taken away from running the business. (Perhaps some people at PTO are under the misimpression that everyone else documents their work the way IBM does? No way — not even close. I’ve seen the internal documentation culture at IBM, HP, and DEC — IBM stands alone in its mastery of producing paper! For everyone else, seldom does such a document exist for pure business reasons, and producing it for patent purposes alone is a costly exercise.)

    I have no objection to to this new program, as long as the law isn’t changed. God bless anything that gives inventors more options, without depriving the public of notice of what’s pending (though I question whether § 133 gives the PTO has legal authority to grant any more than six months to reply to a Notice to File Missing Parts – the PTO can only make this proposal work if they delay issuing the NTFMP until six months after filing the non-provisional).

    But just as surely, this is no substitute for the grace period.

  • [Avatar for Steve M]
    Steve M
    April 5, 2010 12:01 pm

    Sorry; “renders obvious” should be “anticipates” in my above comment/question.

  • [Avatar for staff]
    April 5, 2010 10:02 am

    “Kappos Round-Table Listening Continues”

    Hardly! The meeting was announced only a few days in advance which extremely limited the number of inventors who could attend (notice all the empty seats). It was a sham. He claims to be meeting with inventors around the country yet no one has heard of any such meetings in their region: double sham!

    Patent reform is a fraud on America. It is patently un-American.

  • [Avatar for Gene Quinn]
    Gene Quinn
    April 5, 2010 10:34 am

    Dear Staff-

    I feel sorry for you, I really do. You are always so angry, and always so wrong.

    Yes, this meeting was announced with 7 days notice and that was raised at the meeting and Director Kappos agreed in the future they would try and give more notice to inventors. In this situation, however, the meeting was broadcast live over the Internet and Internet questions were received and asked during the presentation. It was also announced that all questions submitted over the Internet would receive a responsive answer by the USPTO. So your comment that inventors could not attend is hollow and without any merit whatsoever. While they might not have been able to attend in person they could have attended online. The fact that you know there were empty seats in the room demonstrates either you were there or you were watching on the Internet. So lets just be perfectly clear, you are the sham, not the USPTO or Director Kappos.

    Further, if you haven’t heard of these meetings happening across the country it is because you are not at all tuned into the independent inventor community. They have been happening and the fact that you may not have known about them shows just how out of touch you and your organization really are. Again, it is you that is the sham.

    I am starting to get sick and tired of the flame throwing without any substance. When you post comments it is just to throw insults and rarely, if ever, do you provide any substantive input or analysis. I also find it interesting that your organization has a PO Box in Washington, DC and donations are to be sent to Grand Blanc, MI. It is also curious that your website claims that Ron Riley “often counsels members of Congress on national and international intellectual rights and on the protection of America’s intellectual assets.” Setting aside that I don’t believe that for a minute, assuming it is true then why wouldn’t your organization have known about Kappos’ meetings all around the country with independent inventors? If your organization is that connected how could you all have missed the inventor round-tables? Members of the Board of Directors of the United Inventors Association have met with Director Kappos and they have also attended a round-table event in Boston.

    Now let me make this as clear as possible. I am not going to allow IPWatchdog.com to be taken down into the gutter. Disagreement is fine, and those who comment can and do go after people pretty hard. One filter I use (among others) is whether there is substance being added to the discussion or just flame throwing. If you do not start adding to the substantive discussion you will be banned.


  • [Avatar for Public Searcher DIP]
    Public Searcher DIP
    April 4, 2010 06:42 pm

    Re: “a 12 month plan to patent that does not include an ESD”

    IBM is the only large filer that figured out how to do the ESD on grand scale (for better and worse), so I’m not sure what this means for the future. Of the thousand+ AE applications getting through the PTO annually, it appears that 50% are IBM patents…

    Of course, if they do away with the ESD and keep the pre-examination search statement to garner a 12 month action, I’ll be hiring quite a few people. That said, I sure wish they’d teach the examiners how to properly review a search first if they go that route.

  • [Avatar for Steve M]
    Steve M
    April 4, 2010 06:03 pm

    A (likely common?) scenario and important question without interferences:

    I discover an app (or issued patent) which my earlier-filed app renders obvious, and add identical claims from that one to my app.

    Now what (happens)?

    Who gets the invention?

  • [Avatar for patent leather]
    patent leather
    April 4, 2010 05:25 pm

    Kudos to Kappos! Nice to have a Director that actually cares about inventors!