On Monday, July 19, 2010, I was granted behind the scenes access to the United States Patent and Trademark Office, and was allowed to follow USPTO Director David Kappos throughout the day as he went from meeting to meeting. Nearly 18 months has passed since, and we have just entered what could be the final year of the Obama Administration, so it seemed as if the timing was right to once again sit and chat with the Under Secretary of Commerce for Intellectual Property.
I requested an interview through proper channels and it was arranged to take place at the USPTO on the 10th floor of the Madison Building in Director Kappos’ office. The interview took place on Thursday, December 22, 2011. The title Kappos 2.0 is how I have referred to this follow-up series. In the initial series spawned three different articles; one about what I observed as a day in the life of Director Kappos, the interview with Director Kappos and an article about Kappos’ Senior Management Team. In addition to what will be a three-part interview with Director Kappos, the Kappos 2.0 series will also entail in depth interviews with some of Kappos’ Senior Management Team, so stay tuned through the first quarter of 2012 for more.
Director Kappos is someone I respect, which undoubtedly will come through in the interview. He is hard working and embodies a “pedal to the metal” approach. As you will read, he well understands that as a political appointee his time at the USPTO could be limited, and he plans on making the most of whatever time he has remaining.
Director Kappos was extremely gracious with his time, speaking to me on the record for nearly 90 minutes. He answered every one of my questions without dodging, and even spent time to discuss several things I did not raise. Truthfully, I could have spoken with Director Kappos for many additional hours, but I believe you will find that neither I or he shied away from any topics. We chatted about the problems with lengthy application delays, the increasing discontent within the patent bar regarding RCE filings, the America Invents Act and the challenges he faces getting 6000+ patent examiners on the same page with policy initiatives, among many other things.
Without any further ado, here is part 1 of my December 22, 2011, interview with David Kappos.
QUINN: We are now recording. Thank you for taking the time to chat with me today. I know it’s probably been since July of 2010 since the last time we really sat down and chatted on the record.
KAPPOS: Yeah, long time.
QUINN: And at that point in time I did a profile on you and your management team – spending the day by shadowing both – and it was sort of a day in the life of Director Kappos. You’ve been here now for almost two and a half years and depending upon which way the election goes in November this this year could be the last hurrah or you could have the chance to stay for another four or five years. So I thought maybe we’d get a look at things that are going on at the office, things that you are thinking about doing over the next year and talk about some of the successes the office has had. Maybe we can start with Track 1 which I know you’ve championed quite a lot and I think there are a lot of people that are interested to know how that’s going. Have there been any allowances?
KAPPOS: Great, Gene, great place to start. I’m happy to talk about all of those things. And I think it’s fair to say we’re making measurable progress at USPTO. I think it’s also fair to say we’ve got plenty of challenges and we’ve got a lot more to do. I frequently say we’re sort of in the third inning of a nine inning game here. And I want to stay to make sure we win the whole game not just the first three innings of it.
So Track I was put in place by AIA, of course. And we began accepting Track I applications on schedule for the last week or so of September and of course continuing this current fiscal year with a cap of 10,000 applications. We’re almost up to 2000 Track I applications now. So there’s a modest pace of applications coming in, but it is by no means overwhelming. Frankly, we’d honestly like to see more Track I applications. I would love it if the IP community would give me the problem of maxing out at 10,000. I would also welcome the chance to work with our union to expand the program further at some point. We are already handling applications in Track I at stunningly fast rates. In fact, the time, ironically, Gene, you know how this is, the time that it takes to get the patent published after the notice of allowance gets sent out is turning out to be the long pole in the tent for us in Track I. Who would have ever thought that? And we’ve been working for a long time on e-publication and e-grant, patent e-grant. This is something I think you and I probably talked about before. That will shave quite a bit of time off the grant cycle because then you don’t have to go through the publication process. But we’re still working on it. Turns out it’s very complicated in terms of how you get the patent assembled so that it can be electronically published and do it on the time frames we’re trying to do. But anyway, taking the publication cycle out of the mixture. We have not only granted Track I patents, but as of today we have mailed notices of allowance in 16 Track I applications. And I think there are actually more allowed cases for which notice of allowance has not yet been mailed but will be within days. So we’re literally now mailing notices of allowance essentially daily for Track I. And that’s actually remarkable, Gene, because the program was only put in place three months ago. So you’re talking not only did you get the first office action, you got whatever interview you were gonna do, the first office action, the second action, the notice of allowance all in less than three months. The quickest one we’ve done was 37 days from filing to notice of allowance. That’s remarkable. In fact, of the 420 office actions we’ve put out so far, some of them have gone to notice of allowance but in many more cases we’ve put out office actions, on the average they’ve gone out in less than two months. So we are not only meeting our targets, but we’re dramatically overachieving our targets in the first few months of the Track I program.
QUINN: One of the things I think that is keeping more Track I applications from coming in is just the patent attorney conservative nature.
KAPPOS: You know it and I know it.
QUINN: Nobody wants to be the test case. And I think there are a lot of folks that think in the past some of the acceleration, you know, the old fashioned acceleration because of age or things like, that would be waving a red flag at the examiner and say, in order to meet your requirements here reject, reject, and reject faster.
KAPPOS: Right, right.
QUINN: So it would be interesting to know what’s going on there. Are you seeing examiners taking that mentality or do these examiners with these applications think they’re working for the patent granting authority, or for the patent denial authority?
KAPPOS: Rejecting authority, yeah. So you want to know what the grant rate is. That would be one metric.
QUINN: Well, that would be one metric. But even more so than that is I wonder if there’s somebody looking over these things to see whether or not the first action is what we in the industry might call a real first action versus something that is there in order to get it off somebody’s desk. I think if there was this perception that you were getting real consideration faster leading to a quality decision and an examiner who’s working with you to help identify what is allowable, and then I think that the uptake would go through the roof. Now I threw a lot out on the table so I’ll step back and let you go where you want to.
KAPPOS: Well, those are actually great questions, Gene. We are watching what’s going on with Track I very closely because first and foremost we want to ensure that the quality is being maintained. Our quality rate has actually been going in a good direction and we certainly have not sacrificed quality at all while we’ve been increasing processing speeds at USPTO. But I’m very adamant that we’re not going to let Track I become either a rubber stamp or a rubber reject if I can mix in that metaphor. But we would be happy to provide you with more data and more information so that you could objectively understand what’s going on there. I actually think it’s a very good story so far. And I believe from, now this is admittedly anecdotal, but from the examiners I’m talking to I’m sending thank you emails literally going out and shaking the hands of examiners who are doing this work very quickly to make sure they know that I appreciate it. And my impression, again admittedly anecdotal, I haven’t done any survey on this, but my impression is that these examiners are doing every bit a serious a job as they do on every case. They are actually giving as you say a real first action and looking for patentable subject matter, trying to work with applicants. But let’s get the data and let you write about it and call the strikes and balls as you see them. If you see something wrong obviously we’ll go fix it. But we would love to see more people use Track I and we’ll share with you any data we can to let you form your conclusion.
QUINN: That would be great. And I have two questions to follow up here. And they sort of fit into the use category but not exclusively. A $4000 fee to accelerate.
QUINN: $4800, okay. Is there yet a small entity discount? And my understanding is there is not yet, but that there will be once you guys can go through the fee setting process that the AIA gives you the authority to do.
KAPPOS: Yeah, that’s exactly correct. AIA created the micro entity status and it gave us the mandate to set fees. While the 75% micro-entity fee will not trigger until a new fee schedule is in place, the existing 50% reduction for small businesses does apply through Track I however, so they can get it for $2,400. We’re getting ready to schedule the required meetings in the first quarter of 2012. As soon as we can we will get that micro-entity discount set.
QUINN: And so then we’re really looking at March of 2013 timeframe?
KAPPOS: I think that’s pretty close, actually. We’re pushing it as hard as we can, but we have to go through all the processes and we’re trying to be very transparent and all of that takes time.
QUINN: Right, right. And then the other question that I had is, it’s come up in my practice recently trying to work with clients who really, really need to get a patent quickly. And in some cases they’re literally on the brink of not being able to continue on in business because they can’t get the investors or they can’t get the licensing deal. Or we’ve had clients that have had licensing offers but are pennies, literally pennies on the dollar because there’s no patent yet, it’s only an application.
KAPPOS: It’s a shame. All of it is a shame.
QUINN: It is. And so I wonder whether or not these clients might be better off to file a continuation or a continuation in part under the Track I acceleration. And is that something that is available to them?
KAPPOS: It is. And a lot of people are doing it. In fact, our data shows that a large percentage, somewhere in the neighborhood of 50% but I don’t remember if it’s more like 40 or more like 60, but it’s a large percentage is actually existing applications in the back file. In other words, applications somewhere in the agency already and people are filing continuations or divisionals to jump into Track I. Perfectly fine, perfectly great, do it. Do it as soon as you can if you want to get in. And according to our statistics you’re going to be getting an office action in about two months, less than two months down the road and really moving that case forward. So, yes.
The other thing, Gene, you probably saw that we recently published a federal register notification opening up Track I to RCEs. So this is part of a larger mosaic that we’re trying to provide alternatives to speed up RCEs for applicants who want to speed up RCEs. And admittedly Track I is expensive, and I know there’s a narrative, “Look you used to offer this a lot less expensively, you know, how come you’re charging so much for it now?” Very sensitive to try and do the best we can on RCEs, but we’re trying to use the tools we have, and this is one tool that’s available to say, “Look, if you want to get an RCE moving fast, you can do it this way.”
QUINN: Speaking candidly—
KAPPOS: You always do, Gene.
QUINN: I try to. I try, as you say, call the balls and strikes. And I understand that there are some greater issues at play, some things behind the scenes and a lot of different things that the public doesn’t get to see like for example with the fees. I mean, if you can wave a magic wand I think you would do that, but the government process and open meeting requirements and everything require you to go through a 16 month process to do what we all know is eventually going to happen. But the one thing that I hear most from attorneys, I think I can say the most complained about issue is RCEs. And because there is still even-even now a feeling that there are some examiners who are not going to issue a patent no matter how good the application is, no matter how good the responses are unless you file at least one RCE. It’s never been a positive feeling, but it was less negative, I guess you could say, if the RCE went backwards into the front of the pile. But now they don’t. It goes backwards into the front of a different pile and I’m hearing increasingly from attorneys that it can take 12 to 14 months or longer to get an RCE looked at. So what are your thoughts on that? What do you want to tell the Patent Bar?
KAPPOS: Yeah, that’s something that is of concern to me also. It’s a concern to all of us at the office. And that’s part of why we put the RCE jump to Track I out in order to provide a safety valve for applicants who need to move RCEs very, very quickly. The good news on the RCE situation is that for the first time last year we actually had fewer RCEs filed than the previous year. So we have finally succeeded in capping off the number of RCEs and actually getting them to go down a little bit. This is a good thing because RCEs are rework. Nobody wants rework. Applicants don’t want rework; it’s not good for the office to have to spend this time on rework. So I feel positive, very positive about the fact that we capped at what was a 23% growth rate when I started, we got that down to a negative growth rate. And that doesn’t even account, Gene, as you know, fee application filings are going up. So it’s not just that RCEs are decreasing as a percentage of applications filings, they’re decreasing on a net bases, too. So that’s good news.
The bad news, again, all available on our dashboard, so everyone can see this, is that the RCE backlog has built up and the time to process the RCEs in some, not all, but in many art units is long; 12, 14 months to get them done. So the Track I option helps with that a little bit. We’re doing a couple more things that I think will help substantially. And I’m happy to mention to you now. One is that we will be offering an option when you have late arriving prior art, particularly after a notice of allowance, comes in from an overseas case, client sends it in, whatever. We’re going to be offering an option where you can get the examiner and we’re going to give examiners time to do this, to consider that art and if the art does not require further examination, which in many cases it doesn’t, the application will stay in the issuance queue, you will not have to pull it out. The examiners will be incented to do this. So you won’t have to go to an RCE and you won’t have to pull your application out to get the art considered. We will do that in parallel with queue that it’s in. So that’s going to help. And you know, Gene, like I know because we’ve been practicing in this area for a while that the instances of applications having to go into RCE because of late arriving prior art is non trivial. It’s not like it’s a majority, but it happens a lot. So this is going to help particularly with increasing cross filings. Everyone’s filing in China now. Everyone’s filing in Japan, they’re filing in Korea, and they’re filing in Europe. And so you get more and more of this where art comes in. So we’re going to solve that problem.
Second thing we’re doing is in cases where we can resolve the RCE, where you can resolve the case after filing you’ve got an advisory action and a little bit more work can be done. Again, we’re working on how to incent examiners on this to give them the right count credit and time credit that we’re going to permit applicants to do that, too. To resolve cases that could be easily resolved without having to go into RCE practice. So that’s another safety valve.
QUINN: And how do you plan on doing that?
KAPPOS: Well, hold that space because we’re working out the details.
QUINN: Because one of the things that I—I like the ombudsman program. I think it’s a great idea. I think it’s been somewhat frustrating because it’s only intended for process. And so often even what seems like process does have some tint of substance to it.
KAPPOS: Yeah, I hear you. The line is a very fine one.
QUINN: The line is fine. And actually, and you’ll be reading this probably not before this interviews publishes, but I’m going to start writing some discussions about thoughts on a mediation program. I practiced in New Hampshire for a while and at the time there was no intermediate court of appeals. Everything had to go to the Supreme Court of New Hampshire, which just becomes unworkable as the state gets larger and larger. So then they created this panel of retired Superior Court and Supreme Court judges to hear the non-precedential issues. So that if there was a mistake made it could be rectified but it wasn’t taking up the time of the Supreme Court. So that’s always intrigued me because I think a lot of the things that we as patent practitioners see, we know is a mistake. We work in this certain area, and last nine out of ten examiners have had no issues with this, and now you get an examiner who does have an issue with that. And it would just be so helpful sometimes to have somebody in a non-judgmental way try and help mediate a resolution without requiring and RCE or with certainly not requiring the appeal.
KAPPOS: That’s a great thought. It’s an idea that we actually have had and have been plying here on the board. By thinking of it as mediation as a safety valve on the board. And we should talk about the board because they talk about backlogs that worry me. But set that aside for a minute. Great idea, love to have you write about it and we will use the ideas.
The last thing I want to say though about RCEs is, we’re also doing something that may sound a little obvious, but you know from dealing with lots of examiners, we’ve got a big agency. We’ve got 7000 going on 8000 examiners here. So you’ve got to do these kinds of things. We’re putting together really nice updated training material and guidance for examiners on how to handle after final practice. Because there’s actually if you look through the MPEP, and I know you study this stuff carefully, Gene, because you teach it. There are a lot of things that examiners are permitted to do, empowered to do, encouraged to do, even required to do in some cases after final and how uniformly and perfectly is that happening? Not in some cases. So we’re going to be putting out a really nice compendium of training guidance to our whole examiner core to say look, our job does not end after the final rejection. When an applicant comes in with reasonable response to a final, here are the things that you need to do to help applicants and to try and avoid going to RCEs when you can. So we’re working on this multi-front approach that we think together is going to be the next step in helping to avoid those RCEs applicants don’t want.
PREVIEW: Up next is discussion of how Kappos approaches the challenge of getting well over 6000 patent examiners on the same page to provide uniformity across Technology Centers and Art Units.