Earlier today some of the top manages from the patent side of the building at the United States Patent and Trademark Office were on stage at the IPO Education Foundation PTO Day to discuss the current state of affairs at the USPTO and what to look forward to next year. The morning started off with Bob Stoll (Commissioner for Patents), Peggy Focarino (Deputy Commissioner for Patents) and John Owens (Chief Information Officer), sharing the stage to provide a year in review, as well as updates on patent operations and the IT infrastructure. The early morning patent session, which I attended, was moderated by Bill Smith, currently Of Counsel with Woodcock Washburn and himself a former member of the BPAI. Later in the day the head man himself arrived. The luncheon speaker was David Kappos, Under Secretary of Commerce for IP and Director of the USPTO.
All of these management officials seems quite open, very straight forward and created news. For example, at lunch Director Kappos explained that the goal for fiscal year 2010, which ended on September 30, 2010, was to get the backlog down to 699,000 — dubbed “project 699.” The Office was not successful, but Kappos says they will get well below 700,000 for fiscal year 2011, perhaps as low as a backlog of 650,000. Kappos’ immediate follow-up: “I say that as Commissioner Stoll starts to choke at me saying that.” Indeed, there are ambitious goals at the USPTO for FY 2011, including a move to unity of invention.
Being a computer geek myself, and as one who has time and time again criticized the sad state of IT affairs at the USPTO, I found Owens’ presentation quite interesting. Owens has one of the more undesirable jobs at the Patent Office, which is keeping together an IT infrastructure that is so dilapidated that it is unfair to infrastructures everywhere to even characterize what the PTO has in that way. It is not his fault, it is a legacy issue, and one that has largely (if not solely) been created by Congress continuing to siphon money from the fees collected by the USPTO, which for the past two decades has prevented any investment in the systems and infrastructure that makes the Office work.
Early on in his presentation Owens explained that every piece of paper submitted to the Patent Office becomes an image file, which is not searchable. Luckily, Google has come to the USPTO rescue. Owens explains: “Google is doing this for free, which is good because I didn’t have a budget for this.” What is Google doing? They are converting TIF petition files into searchable files so that we, and the USPTO, can actually search petitions files and past petitions acted upon.
Owens went on to talk about the Patent File Wrapper (PFW) project that he scrapped in December of 2008 because “it didn’t meet performance expectations.” Owens talked about this to explain the new philosophy of the IT department, which he explained is new for government but not at all new for industry. When things go wrong you go back to the basics, break it apart and figure out a better way. He is aiming for an IT system that is free of legacy systems, flexible, scalable and redundant. He explained that he is working toward a day when system failures are so out of the ordinary they would make front page news. Sadly, USPTO system failures, as all those in the user community can attest to, are anything but out of the ordinary — they are to be expected and planned for.
The IT department at the USPTO is working from the ground up to bring the Patent Office into the 21st century, but making files XML compliant and tagged appropriately. The MPEP will be produced in native XML, something that we should see a beta test for users with during the first quarter of 2011. Of course, the entirety of the rework of the IT systems is something that won’t happen overnight, and will be pursued incrementally. The Patent End to End (PE2E) will be fully deployed sometime during 2013.
After Owens left the podium the session went into the question and answer segment, and the first question was asked by Steve Kunin of Oblon. Steve asked the Stoll or Focarino if they could comment on the USPTO’s efforts to pursue satellite offices, something there has been much speculation about. Stoll confirmed that the Office is looking into a pilot program for regional “nodes or Offices.” He stressed that the “pilot” nature did not mean it would be for a limited time, but likely would be one location first, which would be evaluated and reevaluated to verify efficiency. So it is safe to say that although a pilot regional Office seems extremely likely it would not be one that would suffer the fears of closure if it does work out as expected, although this group of PTO managers seems committed to pursuing business responsible protocol and will constantly ask whether any project or program is satisfactorily forwarding the goals of the Office.
So where will the first regional Patent Office be? I want to stress that Commissioner Stoll did not state any particular location, but if you weave together what Commissioner Stoll said along with the comments of Commerce Secretary Garry Locke not too long ago, it sure sounds like the first regional Patent Office location will be in Detroit. About six weeks ago Secretary Locke told a reporter that Detroit was a candidate. Today, Stoll explained that an ideal location would be one that is economically depressed and offers suitable talent the USPTO could draw upon to hire to staff the regional Office. Given Locke’s acknowledgment that Detroit is on the list, the fact that Locke is a frequent visitor to Detroit, the Administration seems extraordinarily interested in helping the Michigan economy, which has been so hard hit, and Stoll’s explanation of certain characteristics desirable, it seems pretty clear that Detroit is the lead candidate. But politics is everything and as Member of Congress start to lobby for their district who knows what will happen.
In other items of interest —
- Stoll characterized Kappos as “like the Energizer bunny; he never stops.” Seemingly, neither will the reforms of patent practice. Stoll say that, for example, the Office “will be putting out a Federal Register Notice soon to look at unity of invention.” Stoll went on to say that much more is in store for 2011, and will be even busier than 2010, and that “many of the ideas are coming from the user community.”
- Owens was asked about special characters not displaying properly. He explained that right now the Office takes in applications in many different ways, including fax, to which he said: “we still take faxes until the decision not to accept them is made, which will hopefully be soon.” It is unclear whether that is the wish of an IT guy having yet another complication to deal with, or maybe that is really on the table.
- Stoll was asked about whether there has been any thought about getting rid of the 2 column patent format. Stoll responded: “we are looking at that… I think we will be moving in that direction very shortly.”
- A response to a question prompted Stoll to discuss the patent prosecution highway. He observed that under the PPH the allowance rate is about 95% and there are not many continuations, which suggests that those using the PPH are happy enough with the breadth of the claims they receive.
- Focarino and Stoll discussed the revamped Patent Academy. I have been a critic of the reduced mentoring that seems to be going on any more, particularly as more and more senior examiners work primarily from home. It was refreshing to hear that the Office is trying to weigh the legitimate needs of their workforce and offer flexibility in terms of working from home while realizing that more mentoring needs to go on. Stoll explained the Office is trying to get back to the days where more hands on mentoring was done, and now new examiner recruits are introduced to the person who will be their SPE on the second day of training to facilitate the building of a working, and mentoring, relationship. Focarino point out that the revamped Patent Academy is a 4 month program of training that is conducted over a 12 month period of time, with trainees being sent out to their groups and then come back for more training.
- Owens discussed video conferencing and file sharing technologies that will be used by examiners working from home, and which the patent bar will be able to use to communicate about applications with examiners. I asked whether the Office is taking into consideration the implications such technologies might have on the file, particularly on prosecution history estoppel. Stoll explained that the Office is considering the issue, but didn’t have much of an answer really. He acknowledge the issue of figuring out what a “complete file” would be when such technologies are employed are difficult questions. I followed up to ask whether the Office might consider requiring the archiving of multi-media presentations or recording video conferences, which obviously would make them far less appealing and far more problematic from a prosecution history estoppel point of view. Again, the response was that the Office is looking into the issues. Kappos would later address the issue somewhat in his lunch presentation saying that he thought that videotaping interviews would be too formal and he is not in favor of that.
- Work from home was a big theme, particularly given that Telework legislation is currently awaiting the President’s signature. It seems to be the general consensus that the Telework legislation would allow for far greater flexibility, particularly with respect to the aforementioned regional Patent Office. Still, according to Focarino there are close to 3,000 patent examiners working from home at least part-time. Stoll explained that the biggest issues that he and Focarino face are the mentoring issue and the need to create a PTO environment for those working from home so they can create “the water-cooler environment.” Focarino stressed that SPEs are not working from home 100% of the time, although some do work the max allowed, which is 32 hours per bi-week.
- The Ombudsman Program was raised by Bill Smith. He explained that attorneys he knows that have utilized it have had nothing but positive things to say. He asked if examples of what is appropriate use of the system could be discussed. Stoll explained that already the program has seen “the full gambit of inquiries,” but said that the difficult issues are those where subject matter is entangled with process. The Ombudsman Program is best for process issues and not appropriate when the disagreements are on substantive points. Examples of situations where it is appropriate and has proven quite useful are when an applicant or representative is not able to get in contact with the examiner assigned or papers are lost. Stoll also explained that “it can be difficult to get examiners to come in for an interview and applicants are reluctant to put pressure on the examiner.” These types of process issues are being handled well by the Ombudsman Program it seems.
- Finally, the topic of Requests for Continued Examination came up. Stoll said, and I do believe, that he wants to have RCEs be available, but he doesn’t want them to be necessary. Stoll and others within the Patent Office are striving for the day when RCEs are rare, not because the Office won’t let us file them, but rare because they won’t be needed. I pointed out that it is the perception of some, perhaps many, that some examiners are not receiving the message from the powers that be on the issue of not forcing RCEs. Stoll pointed out that the new examiner count system is helping, and acknowledged that the Office is doing what it can to stress the importance of not forcing RCEs, including active intervention with groups that have abnormally high rates of RCEs and making sure they understand the Office policy to not force applicants into them.
Next in my two-part coverage of the IPO’s annual PTO Day, Kappos’ lunch presentation.- - - - - - - - - -
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About the Author
Gene Quinn is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.