Live from PLI Patent Institute: Deputy Director Sharon Barner

Live from New York it’s the 5th Annual PLI Patent Law Institute.  Okay, it doesn’t roll off the tongue quite the same way, but over the next two days we will explore all aspects of the practice of patent law, from litigation, to transactional practice to patent prosecution.

Starting off day one is the newly minted private citizen Sharon Barner, who most recently was the Deputy Director of the United States Patent and Trademark Office.  Barner was introduced by John White (of PLI patent bar review fame), who pointed out that during her tenure she continued to commute weekends back to Chicago from Alexandria, VA so as to not uproot her family.  Over her tenure, which was about 16 months, Barner also managed to fit in no less than 8 trips to China on official government business, among the 17 foreign missions she participated in.  Let’s just say she really racked up some frequent flyer miles!

Today Barner is here to talk to us about what is going on at the USPTO.  She is discussing the USPTO Strategic Plan, which she was primarily responsible for pulling together during her tenure.  She also went on to discuss appeals to the BPAI, the IT system overhaul, patent reform, patent politics, Microsoft v. i4i and much more.  As a former Deputy Director we are getting not only the facts, but her opinions as well.  An excellent, informative and candid presentation.

As Barner started her comments she began by explaining exactly why we saw, and continue to see, such dramatic change at the USPTO.  It comes as no surprise to anyone involved in patent prosecution, but there were in fact many things that needed to be done in order to address the enormous backlog of patent applications and growing pendency of applications.  There was also an understanding that there might be very little time to know whether what was being pursued could realistically bear fruit.

Hearing Barner talk about the fact that time might be limited reminds me of what Director Kappos told me in July 2010.  He explained to me that he was cognizant that he served at the pleasure of the President and that meant that he could be out of a job at any time.  Now not to start rumors — I have not heard anyone or anything suggest that Director Kappos’ time is limited, but the leadership at the Patent Office does seem to understand political realities and hit the ground running and continues to sprint to get as much done to engage foundational change that can build for the future and create more efficiencies to sustain an ongoing and improving operating capacity.

One of the most interesting things Barner has said is just how shocked she was to see the state of the IT systems at the PTO, which “experience weekly crashes,” and the archaic processes examiners have to follow in order to get their job done.  Barner explained that she would ask: “why do we do it that way?”  To be told: “because we have always done it that way.”  Therefore, before doing much of anything else the new leadership needed to “eradicate [processes] that don’t make sense, which were vestiges of a paper process.”

Moving on, Barner started talking about the IT systems.  “We could spend a whole day talking about the IT system overhaul, but I can tell you that Director Kappos, coming from IBM, is personally engaged in the IT system overhaul.”  Barner explained that one of the key aspects of the overhaul is scalability because by the very nature of technology once you complete the overhaul at least some parts of the overhaul will already be obsolete.  Thus, scalability is critical so that you do not have to continually start from scratch to address obsolescence.  With this in mind the IT system overhaul will reengineer the processes and implement new core technology.  When she arrived Barner also explained that every employee had both a desktop and a laptop, which is unnecessary and adds cost.  So all desktops will be replaced with laptops, so everyone will have a laptop.  This adds security concerns, but the Office is working through those.

Barner then moved on to the Board of Patent Appeals and Interferences.  She explained that when she first started looking at appeal process there were “at least 90 steps.”  Barner then went on to point out: “if you have filed at the Federal Circuit you know that there are not 90 steps to filing a brief.”  As she was talking her powerpoint presentation was showing a flowchart.  The flowchart slowly scrolled from left to right.  Barner explained this is the flow chart that we put together explaining the process for filing an appeal with the Board.  She said: “when I printed this out it was 9 feet long.”  Barner pointed out that with so many process steps there is just more opportunity for appeals to get hung up and derailed.

One of the most shocking things that Barner talked about was with respect to policy.  She explained that the Patent Office is not even at the table when many decisions relating to patent law and patent policy, which impact business and impact practice.  She explained that when she arrived at the USPTO in most situations it was the Federal Trade Commission that was setting patent policy and that discussions of patent policy held at the White House did not include the Patent Office.

It was unclear to me, but it seems that Barner is saying that things have gotten better, but she did say that the only way this is going to change is if the patent bar and stakeholders get and remained engaged.  That leads me to believe that the Patent Office is still not at the table much, if at all.  It also seems that our engagement is absolutely essential.  Barner pointed out that some of the changes the Patent Office is undertaking are as the direct result of suggestions from the patent bar.  I know that to be true and would recommend that every practitioner engage to the extent possible.  I know the demands of practice, trust me.  Sometimes I run around like a chicken without a head just like everyone else, but I do think we can better represent the interests of our clients by staying engaged.  This leadership team at the Patent Office wants to hear from us and if we have a good idea they will implement it.

On to patent reform.  Will it happen?  Only several people raised their hand to say they think it will.  Barner said: “there is a high likelihood that patent reform will happen this year.”  She went on, “now that I am not at the Patent Office I can tell you that I’m not sure that is a good thing.  There are some things in there that I agree with… there are some critical things in the patent reform bill that we need.”  Barner explained that the White House is engaged in patent reform and just last week the Patent Office had a meeting at the White House regarding patent reform, which was the first such meeting in two years.  It is amazing to believe that what seems to be a legislative priority for Senator Leahy hasn’t until last week gotten any time at the White House.  Obviously, having the White House on board and interested in getting something done means it is much more likely.  Having the House Republicans on board, as Congressman Chaffetz told me they are, also points toward patent reform getting done this year.

In the question and answer session Barner fielded a question from the audience from me regarding the Microsoft v. i4i case.  I asked about the burdens that would be placed on the Patent Office and examiners if the Supreme Court does lower the presumption of validity.  She explained that such a decision would have an enormous and negative impact on the operations of the Patent Office.  Since I was asking the question and following up I couldn’t get it all down, but I will get the tape and expand upon the Microsoft v. i4i discussion in the coming days.  I suspect the Patent Law Institute will have a lot more discussion of that, and it will likely be the central topic of discussion at the reception tonight hosted by Skadden Arps.

The take home from Barner’s presentation seems to be that things were worse than many of us understood, and there is still a lot to be done.  It seems having a Director that is a patent attorney, who has surrounded himself with quality high level managers who are willing to question the orthodoxy to see if there is a better way to get things done, is paying dividends.  Yes, the metrics are not as good yet as we would have liked, but it seems clear that there is an enormous re-engineering of the Patent Office on every level.  Upgrading the IT systems, streamlining processes and asking whether there is a better way to be doing things given the new electronic filing reality means that the foundation is being laid for a fully functional Patent Office.

Now if we can just get Team Kappos more money… sigh…