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David Kappos to Leave the USPTO


Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: November 26, 2012 @ 1:28 pm
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David Kappos, Director of the USPTO for a little while longer.

UPDATE #4: 4:19pm ET on Nov. 26, 2012

David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, will be stepping down and leaving the agency effective the end of January 2013. This news originally came to me from a high-ranking, well placed source within the USPTO who spoke on the condition of anonymity, and has subsequently been confirmed by the USPTO.

“I am honored to have served this administration by leading the USPTO,” said Kappos. “I believe we have made great progress in reducing the patent backlog, increasing operational efficiency, and exerting leadership in IP policy domestically and internationally. Thanks to the entire USPTO staff for their dedication and hard work. I wish them the very best as they continue their efforts to support the U.S. economy by promoting and protecting innovation.”

Indeed, Director Kappos has presided over the USPTO at a time of great change, thanks in no small part to the passage of the America Invents Act (AIA) on September 16, 2011.  This has lead the USPTO to put the pedal to the metal cranking out proposed rule package after proposed rule package.  The final wave of the initial AIA implementation rules packages will come out in February 2013 ahead of Phase 3 of the AIA implementation on March 16, 2013, which is when the U.S. will convert from first to invent to a first inventor to file system.

Given the timing of Kappos’ departure it is all but certain that he is sticking around long enough to finalize the first inventor to file rules before stepping down as Director. The first inventor to file rules package will need to be approved by the Office of Management and Budget (OMB) prior to finalization and ultimate publication in the Federal Register and the rules need to be published at least 30 days ahead of becoming effective. The OMB approval process takes at least several weeks, but can take longer.  Thus, the USPTO should have its final rules completed and sent to OMB by sometime in early January 2013, if not earlier.

In working with the Obama Administration to help get the AIA passed, Director Kappos and his staff worked closely with Senator Patrick Leahy, who Chairs the Senate Judiciary Committee and who took a lead role over the past several years shepherding the AIA through to completion. Upon learning of Director Kappos’ decision to step down Senator Leahy issued this statement:

I have had the distinct pleasure of working with Dave Kappos over the last three years in his capacity as Director of the Patent and Trademark Office, and for many years before that in Mr. Kappos’s role in the private sector. Director Kappos was instrumental in the development and enactment of the Leahy-Smith America Invents Act. He and his team have set the PTO on course to implement the key provisions of the Act, which will improve the patent system for decades to come. Director Kappos’s leadership of the PTO has been applauded by Democrats and Republicans, and by all sectors of the business community. I was sad to hear of his decision to step down; the President and the Commerce Department have lost a valuable member of their economic team. I wish Dave all the best.

Indeed, in addition to correcting so many of the practices and procedures and ushering in a new era of communication and mutual respect, Kappos will be known for his work on the AIA, both in the halls of Congress and in his tireless effort to produce the voluminous rules required to implement Congress’ vision.

“Dave Kappos has done a terrific job of helping to shape and implement the administration’s innovation agenda. His three-and-a-half year tenure is marked by many notable accomplishments which have helped improve the IP system both here and abroad,” said Acting Commerce Secretary Rebecca Blank. “We are fortunate to have had Dave on our leadership team. We all benefited from his deep knowledge, strong management skills, and passion for the issues before the USPTO. I thank him for his distinguished service.”

Now speculation will turn to who will be Kappos’ successor. Early speculation is already centering around soon to be former Congressman Howard Berman (although if Ambassador Rice leaves the UN look for Berman to also be on the short list for Ambassador to the UN), Todd Dickinson (former USPTO Director under President Clinton and the current AIPLA Executive Director), Victoria Espinel (current IP Enforcement Coordinator), Bob Armitage (the soon to retire General Counsel of Eli Lilly) and Deputy USPTO Director Teresa Rea. Regardless of who will occupy Kappos’ chair next, barring any unforeseen circumstances Rea will at least temporarily become Acting Director upon Kappos’ departure. Should Rea likewise step down next in line would be Commissioner for Patents Peggy Focarino.

In the meantime, Director Kappos will stay in charge for approximately another two months. It will be sad to see him go. While I cannot speak for the entire patent community, I suspect the overwhelming majority of patent attorneys and industry stakeholders will agree with me when I say that I hope whoever is next will possess the same understanding of the patent and innovation industries as Director Kappos.

As more information becomes available please check back here for the latest on this breaking news story.

David Kappos at the White House on November 17, 2010 for the National Medal of Science and the National Medal of Technology and Innovation awards ceremony.

 

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Posted in: Gene Quinn, IP News, IPWatchdog.com Articles, Patents, USPTO

About the Author

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.

 

32 comments
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  1. Sorry to see him leave the USPTO. He did an outstanding job.

  2. Many, many thanks Dave. Best Director in my career in terms of overall achievement at the USPTO. Hopefully he can help find a replacement as committed as he was to the success of the PTO.

    John White

  3. What a sad state of events! For those within the IP community who were not happy with the results of the presidential election, the overwhelming majority felt that, “At least we’ll also have David Kappos for 4 more years!” Dave not only understood what needed to be done, but did what needed to be done. He asked nothing of his staff that he was not willing to do himself. Not to mention, that even in his high-level position, Dave was approachable and very down to earth. I just hope, as John says, that his predecessor is as committed to the position as he was, and as Gene put it, will possess the same understanding of the patent and innovation industries as Director Kappos did.

    -Renee

  4. I have already posted elsewhere and can only repeat that Dave Kappos has been an outstanding and especially a LISTENING director. However good his successor, he will be remembered and missed.

  5. He didn’t fix the problems at the Patent Office, I.e. inadequate prior art searches.

    Wayne

  6. Wayne-

    A factual analysis of the Kappos tenure reveals that he did fix problems at the Patent Office.

    I suspect that you want certainty with patent searches, and that is just not practical. Patent examiners have only so many hours to do their job, which necessarily means that they have less hours to search and consider prior art than we might like for them to have. So we have the option of destroying the patent system and bringing it to a screeching halt, requiring onerous patent searches, or we can have a functioning patent system that recognizes that 98% of patents won’t matter.

    -Gene

  7. Guessing Kappos got a very high paying job offer in the private sector, but who knows. I’m sure he will do much better than his predecessor: http://www.dcpatent.com/attorneys/doll-john.php
    (this isn’t nice, but I’m not sure I would want my firm to be associated with JD)

  8. I echo Renee’s sentiments as I based – in part – my vote on the expectation that an Obama win would likely lead to four more years of some of the best and most tireless leadership that the Office has seen in quite some time.

    Not to play the devil’s advocate (I get paid for that, so why play), but perhaps Kappos did not want to be in Office if the AIA implodes for any number of reasons including constitutional challenges. May I remind everyone that the ‘separability’ clause amendment was expressly voted down, which means the ENTIRE AIA would need to be canceled if any single one part of it is found unconstitutional. That includes the non-Detroit satellite offices, the revamped Appeals organization, all false marking cases, and so much more – and I know of at least three potential Constitutional killers that could create a snafu like nothing patent law has ever seen. I am reminded of the South Korean Cheabols (build them too big to fail), but fail they did. Would you want to be at the helm if that crash happens?

  9. BD-

    I can’t imagine the AIA being unconstitutional, but I suppose time will tell.

    I doubt seriously Kappos is leaving because of the AIA. My guess is that he has stayed to see the rules through to completion. The timing is just too coincidental to be otherwise (in my opinion). Having put the final AIA rules package to bed he can leave on a high note.

    I am a little surprised he is leaving though. I just thought he had more he wanted to do. He carried the ball forward quite a lot, but I thought he would make a real run at meaningful harmonization during a second Obama term. Harmonization seems inevitable, I just hope that the next person understands that can’t mean caving on patent eligibility. That remains the big issue for the foreseeable future, so getting someone who understands the importance of that issue and the importance of patents to business would seem critical.

    -Gene

  10. I agree he’s leaving on a high note. But unlike you Gene, I think he’s been able to tick all the boxes on his To Do List. As Obama is just getting started, Kappos is through with his agenda.

    Harmonisation? Inevitable? Surely not. For me, there’s nothing more to come. Eligibility/patentability is more or less the same now, world-wide (technology Yes, abstract No). As to the definition of the prior art, and the nature of the grace period, the harmonisation cow is now milked dry. Much more important to harmonise on what constitutes prior art than to worry on whether a particular business method can be patented, because we ALL need to know what is the applicable prior art, EVERY time we draft a patent application.

    When England and Germany harmonised in 1973, that was harmonising the old UK Empire with the 20th century German patent law empire that includes Japan, Korea and PRC. What’s left to harmonise with, after that?

    Since then, pragmatic, money-making, business-orientated Asia (for which the Rule of Law is somewhat elastic) has happily compromised (whichever way the wind blows) between the USA and the EPC.

    Thus, Europe is on its own on the grace period and on its own with its definition of the prior art, but don’t make the mistake of supposing that the 38 nation EPC Group sees any reason to change its EPC. Even if it were to perceive a need, I doubt it is any longer capable of agreeing to change even a dot or a comma.

    Here’s a Link. When it opens, select the 3rd of the 4 pdf’s , on the subject of “Conflicting applications”. It’s very well written. Food for thought, on harmonising the definition of the prior art

    http://www.epo.org/news-issues/news/2012/20121108a.html

  11. Very sad. One of the few Obama appointments who was competent and who I respected. We can only hope to get someone decent to fill Kappos’ shoes (Q. Todd Dickson comes to mind), but I’m not hopeful that the Obama administration in its second term will do so. Yes, I’ve got a very “jaded” view of the current administration. and having Obama reelected for a second term simply makes me nauseous.

  12. Best wish to Mr. Kappos and thanks for a job well done.

  13. Many many thanks to Director Kappos. Sorry to see him leave the USPTO. He did an outstanding job.

  14. [...] For more on this story see: David Kappos to Leave the USPTO. [...]

  15. [...] the agency by the end of January 2013. The news was reported late yesterday by the industry blog, IP Watchdog and confirmed independently by sources at [...]

  16. I am very sorry to hear of this, as he was such asset for the USPTO and the IP community. His communication and management skills were a real breath of fresh air, and the PTO is undoubtedly much better for all of his tireless efforts.

    Thanks a million David, and you will be missed after you leave office. Best wishes to you.

    Stan~

  17. Kappos made some progress on prior art search by continuing/expanding/refining the Peer-to-Patent program in conjunction with university and private sector crowdsourcing initiatives. That will be the ultimate solution to doing prior art search in this age of information explosion. There is no way a single examiner, no matter how competent, can do a thorough/exhaustive search. But crowdsourcing is expensive and should be reserved for the top tier of a mutli-tier system, as a prerequisite for litigation.

  18. David Kappos was the finest PTO Director I’ve known.

    I wish that I had 1/20th of his work ethic.

    It always moved me (actually, blew my mind) when he took time to actually listen to my thoughts, recommendations, and complaints. He did that repeatedly at conferences. Little old me!

    I was especially happy to see him defend software patents, vigorously, at a time when half the Supreme Court probably hates them.

    I will miss him as Director so much.

  19. I see some talk of having Kappos appointed to one of the vacant seats on the Federal Circuit. That wouldn’t be bad idea at all; with Linn stepping down and Newman and Lourie already eligible for senior status, we certainly could use some new “patent blood” on the Federal Circuit.

  20. EG-

    That would be a very good thing, to bring some reason and knowledge to patent issues in the FedCirc when they arise. Kappos must have been the bearer of very serious responsibilities and pressure during his tenure at the PTO, even if only in his own mind.

    Who knows, some of our Supreme Court Justices might even start to listen, when experience and wisdom speak out clearly and rationally about patent disputes.

  21. EG-

    I have heard Kappos to the CAFC, but I think that is largely wishful thinking. Not that it wouldn’t be a good move, and not that he wouldn’t be interested, but I haven’t heard it from anyone who I would say is doing anything more than speculating (and hoping). Of course, I was wrong about Kappos leaving the USPTO.

    -Gene

  22. Wow..

    Rader, Newman, and Kappos would be a powerful force in the current 101 wars.

  23. Kip-

    Yes he would make a great judge in my opinion, and a very good replacement for the recently retired Judge Paul Michel, who understood patent law very clearly. He retired *early* so he could speak freely about his opinions on patent reform. http://www.ipwatchdog.com/2011/07/10/torpedoing-patent-rights/id=18022/

  24. Gene-

    There is probably no surfeit of qualified personnel to manage the USPTO, but I tend to think that David was exceptionally good at his job. Teresa Rea should provide a mostly seamless transition, as she is obviously a very clever and well educated person, who can most likely carry the new agenda forward very handily and with a minimum of pomp and circumstance. Your interviews with several folks at the USPTO are especially useful in this regard, to get a sense of where some might be going.

    Best regards,
    Stan~

  25. [...] than a week after delivering the keynote address, several sources — including IP Watchdog, LegalTimes and Patently-O — reported that Kappos plans to leave the USPTO in January 2013.   A [...]

  26. [...] In January 2013, Kappos will step down as Under Secretary of Commerce for Intellectual property and Director of the United States Patent and Trademark Office. You may find more information on patentlyo and ipwatchdog. [...]

  27. [...] let’s hope things continue to look as good moving forward. With Director Kappos stepping down at the end of January 2013 we can only hope that the next leader of the USPTO will keep the momentum going. Increasingly what [...]

  28. As an Examiner, I was extremely bummed when Kappos said he was stepping down. Even with that, I still I agree I would rather him leave on a high note. Also, knowing his incessant work schedule, perhaps he is a bit burned out. He was so fully committed to the office as a whole, not just to main patent office issues, but what many would consider peripheral issues such as diversity and work/life planning. I do know that whatever he decides to do, he will be very well-liked and successful. His leadership is exactly what this office needed to get us out of our Dudas/Doll doldrums.

  29. JExaminer-

    I will bet you dimes to donuts that he will be on upper USPTO management’s speed dial for quite some time to come. He certainly cleared up a huge mess, in a very short period of time, and his dedication is very remarkable.

    Stan~

  30. As a different examiner, I feel it is important to recognize that not everyone shares the rosy sentiments of post #28 (examiner? I thought the Dudas obsession syndrome affected only people beyond the turnstiles… interesting). Kappos is not a bad guy but neither was Dudas.

  31. Spike-

    Since Dudas has left I had the chance to meet him. I thoroughly enjoyed my meeting with him. He seems like a genuinely nice guy, and I felt bad about some of the things I wrote in the past. Not substantively, but I do wish I realized how much of a nice guy he was. I don’t think he is evil or the devil, but I do think the claims and continuations rules would have destroyed the patent system. I don’t think he was up to the task in the same way as Kappos. That is why I really think we need a patent attorney or at the very least someone who well understands the patent system, why companies obtain patents and the process for obtaining patents from start to finish.

    Cheers.

    -Gene

  32. Gene:

    A factual analysis of the Kappos tenure reveals that he did fix problems at the Patent Office.

    I suspect that you want certainty with patent searches, and that is just not practical. Patent examiners have only so many hours to do their job, which necessarily means that they have less hours to search and consider prior art than we might like for them to have. So we have the option of destroying the patent system and bringing it to a screeching halt, requiring onerous patent searches, or we can have a functioning patent system that recognizes that 98% of patents won’t matter.

    Prior art searches are only a portion of the issues I have with the Patent Office. The fools who want to make software not patentable don’t realize that all of their problems could be addressed by forcing the Patent Office to follow the law as written. Yes, that would almost totally wipe out Software Patents. It would also virtually wipe out Business Method patents, Bio-Tech patents, most computer hardware patents, most automotive patents, most pharmaceutical patents, etc.

    Why won’t the Patent Office follow the law? There are several reasons:

    1) Patent Examiners aren’t well enough trained.
    2) Not enough examiners have expertise in the Arts.
    3) The Patent Office isn’t hiring the examiners that they need.

    We constantly see patents issued that DO NOT extend the Art. The reason we see them is that the Examiners aren’t capable of doing the job.

    Wayne