Regime Change – USPTO

By John White
December 4, 2016

Time for changeWhat is the fate of the PTO in light of the forthcoming regime change? In this regard, not much has been said or written that has had any direct factual basis with respect to USPTO direction under a Trump administration. Yes, there has been some informed speculation in view of those the transition team has called or likely taken advice from, but so far not too much to go by. So, allow me to step into the fray and tell you what the USPTO needs to do to make America great again!

First, let’s review what recent past administrations did and why. The Reagan administration, the first of my own personal patent era, and in which I worked at the PTO as an examiner and a (very) junior speech writer for then Commissioner Quigg, was typical. A Commissioner (now Director) was selected from those at or near the ends of their respective careers, sort of as a capstone. The selection(s) came from industrial stalwarts (Phillips Petroleum – (Commissioner Quigg), Monsanto – (Deputy Peterson). They were succeeded by Harry F. Manbeck (GE). The big work of that era was reducing application pendency. An examiner hiring binge was coupled with the slogan 18 by ’85, which became 18 by ’87, and was eventually achieved as 18 by ’89! The 18 referring to average application pendency in months. The PTO was well run by careerists (like Rene Tegmeyer et seq.) and, more-or-less, not interfered with by the political appointees. The political appointees did what they do best, they were the face of the Office, they obtained the resources necessary to deliver on the political promises and the careerists ran the day-to-day operations.

That changed with the Clinton era when Bruce Lehman was appointed. He was not in a career capstone phase, but was younger (more ambitious/energetic perhaps) and sourced not from industry, but from Capitol Hill. He was also determined to change the PTO from what it was; a staid backwater of engineers, to a more representative and progressive government agency. This was all very new fangled for the PTO, and in some ways it struggled, but in other ways it succeeded. Lehman was succeeded by Q. Todd Dickinson. An able successor who also ushered in the American Inventors Protection Act (AIPA) that began the “published application”, the “Director” era, and many, many rule adjustments. The overarching issue thru the Clinton era was keeping the money from fees charged to users. The PTO was, it seemed, always short of funds, and Congress was always keeping more than they promised of the fees generated. The PTO was raided to fund other government programs and the apolitical Office started to succumb to the whims of Washington.

The next Director, James E. Rogan (former Congressman), was another Capitol Hill sourced appointee. Politically savvy perhaps, but not necessarily steeped in the USPTO or its particular (unique) issues. He was succeeded by Jon Dudas (his Deputy) who was, in turn, succeeded (briefly) by a USPTO careerist, John Doll, during the switch from Bush to Obama. During this time frame from 2000-2008, for at least the early years of the Bush admin, the PTO had solid careerist support (Nick Godici et seq), but that eventually unraveled towards the end of the administration (by then Dudas was Director, and John Doll was Commissioner) to where the PTO was successfully sued in the Eastern District of Virginia to stop the ill considered “continuations rule package”. To say this lawsuit was unprecedented is a huge understatement. In addition, the PTO tried several “quality” initiatives that succeeded in both driving up pendency and driving down the rate of the allowance to historic lows (37% or so). In short, the PTO was in a bit of a mess by the end of the Bush years.

But, help was on the way (insert sound of the Calvary bugle here) in the form of David Kappos (IBM). In the first years of the Obama administration, he brought both energy and imagination to the job of Director. He really leaned on the careerists (Bob Stoll et seq) to deliver, and they did. The PTO was more-or-less transformed into a responsive customer centered government agency, that was also a good place to work. A tremendous effort within the PTO was also put forward to create the rules backing for the AIA. A huge job that cannot be overstated. He was succeeded, briefly, by Terry Rea (Acting) and then by no one, for the longest time, until Michelle Lee took the helm after a long and uncertain battle of succession. Names for new Directors were put forward, and just as quickly quashed by various factions. Director Lee was the last person standing.

The PTO then drifted towards being a very user unfriendly operation that has become a center of suspicion and cynicism. I do not think Director Lee necessarily played a direct role in this, i.e., guided this trajectory with policy objectives, but rather was present when it occurred. I do think, however, that politics and branding may have played a role. Kappos had been perceived as too “pro patent”; after all, he hailed from the PTO’s largest customer, IBM. Then Lee became the “anti-patent antidote”; hailing from a patent system foe, Google.

In my judgment, the circumstance of this drift is the eventual full impact of the AIA post grant procedures playing out thru the PTAB. The PTAB righteous invalidation crusade has ridden the coattails of the Supreme Court introducing a great deal of uncertainty into 35 USC 101. The present suspicion and cynicism has to do with the PTO seemingly duping applicants out of their money for filing and maintenance fees then, just when the patent might be worth something, invalidating the same patent at the behest of a higher paying industry group thru a post grant procedure. Faith and trust in the patent system, and the PTO role in it, is truly at a low ebb. The political aspect is, from all appearances, justified or not, that the Tech lobby (ie, Google, Cisco, et al) has spent millions ginning up the troll threat to where the PTAB believed that, in order to justify itself, invalidation was job one. Capitol Hill (follow the money) has obligingly played along. And, again, it didn’t help perceptions that Michelle Lee hailed from Google, pre her tenure at the USPTO.

Why the history lesson – so we can learn from it! If we are not students of history, we are doomed to repeat it. My advice is to revert to the Kappos ethos of a user friendly and responsive set of careerists, with the political operators standing to one side, and to legislate (if necessary) a Reissue Off-ramp for patents caught up in PTAB proceedings. If the PTAB will not indulge amendments, and they likely won’t inasmuch as they are not “examiners”, then let the patent owner solve the issue another way, i.e., through reissue. I would also remake the PTAB to include far more careerist examiners. Clearly the PTAB composition, at the moment, seems to have too much of a political brief of “fixing” a problem related to “bad” patents. The CAFC is barely beginning the process to reign them in. This mechanism of one fee to obtain a patent and a higher one to get rid of it, from the same government entity, is a recipe for cynicism.

Faith needs to be restored in the patent system; across the board. It is our best mechanism to foster a bright future based on innovation driven economic growth. We, as a society, need to incentivize the best and brightest to come forward with ideas, attract investment by virtue of solid protection, and let the job generating fruit be harvested. The current tech industry tendency toward trade secrets helps no one. It is uncertain, undisclosed, and murky (at best). Bring the ideas out of the shadows and let’s build a future. A well run, credible, PTO is a critical cog in this system and my hope is the Trump administration is getting this same advice. The USPTO matters, it should not be overlooked!

The Author

John White

John White is a Director at Soryn IP, a patent advisory and finance firm that, among a host of patent-centric offerings, assists parties in identifying and acquiring patent portfolios that satisfy strategic and business needs. Mr. White is also a US patent attorney and a principal lecturer/author of the PLI Patent Bar Review Course. Since John began teaching patent bar review courses in 1995, he has personally taught nearly 50% of all practicing patent attorneys and patent agents how to successfully become admitted to the Patent Bar. has also taught numerous US Patent Examiners at the United States Patent & Trademark Office (USPTO) in the “Law and Evidence Course” necessary for them to advance to Partial Negotiation authority as Examiners. John serves as an expert witness in litigations and is regarded as a leading authority on patent practice and procedure. For more information please see his profile page.

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Discuss this

There are currently 20 Comments comments.

  1. David December 4, 2016 12:11 pm

    Great article.

    In a relatively short number of years, the USPTO has transformed from “a staid backwater for engineers” into one of the nation’s most powerful govnement agencies.

    The PTAB is at the center of this, and the future fights to come (both judicial and legislative) will define the future of the nation’s patent system.

  2. Night Writer December 4, 2016 3:15 pm

    >>into one of the nation’s most powerful govnement agencies.

    I think this is only because of all the politics that are trying to put their finger on the patent scale.

    Let’s hope that Trump learns from Reagan and Carter. Very good arguments can be made that the economic/innovation boom that occurred after Carter was due to Carter pushing for strong patents to end the malaise.

  3. David December 4, 2016 3:48 pm

    Night – come on. It’s real money and power for the legislative and executive branches. Curtailment will not come without coercion.

  4. angry dude December 4, 2016 7:25 pm

    “…the very first official thing I did, in my administration — and it was on the very first day of it, too — was to start a patent office; for I knew that a country without a patent office and good patent laws was just a crab, and couldn’t travel any way but sideways or backways.”

    Mark Twain

  5. Eric Berend December 5, 2016 5:17 am

    I will refrain from the usual cynicism that seems apropos in so many aspects of this topic, and cautiously agree with the simplified synopsis and perceived potential for positive improvement; however hypothetical it may be. Reasonably well written article, with a not impossible premise.

  6. Michael E. Zall December 5, 2016 7:14 am

    Prediction- Mark Cuban…

  7. Anon December 5, 2016 8:01 am

    Mr. Zall,

    Now that is funny. Maybe nominate Lemley to the Supreme Court as well.

  8. Fatih Ozluturk December 5, 2016 8:13 am

    Terrific article for both its historical perspective and for its accurate description of where we are. Also the suggestion to give the patent holders the reissue detour as a way to adress the fact that PRAB doesn’t usually allow amendments is a very good one. I would like to see someone with the same perspective as John’s to be the next director, frankly.

  9. Chris Gallagher December 5, 2016 9:44 am

    Well done John …. Thank you for your thoughtful analysis, insights and recommendations.

  10. EG December 5, 2016 10:07 am

    Hey John,

    Very thoughtful article. The PTO desperately needs someone more like Kappos than Lee. Lee is a complete amateur when it comes to the PTO.

  11. Night Writer December 5, 2016 10:57 am

    I think restrictions (much more) should be put on what the PTO director who is leaving can do. Watching Lee go collect her $20 million from Google for her services while the PTO director will not be easy to watch and will encourage the next one to work for industry and not the people of the USA.

  12. Curious December 5, 2016 1:34 pm

    It cannot come soon enough. Maybe then TC 3600 will realize that their job is to examine and allow deserving patent applications — not reject them all.

  13. Edward Heller December 5, 2016 3:06 pm

    My recommendation is to get the PTO out of judging issued patents. No matter how one cuts it, the PTO is always going to be a political institution, and politics will bias the results.

    A patent applicant has recourse to the courts when faced with unfairness. A patent owner is denied access — and we all know why that is.

  14. Night Writer December 5, 2016 9:35 pm

    @13: “get the PTO out of judging issued patents.”

    We can agree on that.

  15. Chris Whewell December 6, 2016 11:09 am

    #realDonaldTrump , here is your crash course in what’s been happening at the USPTO

  16. staff December 6, 2016 1:00 pm

    ‘help was on the way…in the form of David Kappos’

    Sure, for infringers.

    Inventors have not forgotten the DK role in getting AIA passed. Inventors should forever be distrustful of anyone who promoted that bill. We preferred then and now in calling it what it truly was: The America Stops Inventing Act. Added to judicial decisions since 2006 starting with Ebay, together they have crushed inventors and small entities and driven our applications to quite possibly an all time low. According to a recent sample of the PTO web site only about 6% of issued patents are now filed by small entities, whereas historically they have ranged between 50-60% and been as high as 80%. The reason is simple: in the present American patent system it is too hard, expensive and slow for us to get and enforce patents to our inventions. When we have to fight to get or keep our patents we go out of business.

    America doesn’t need another large infringer’s former employee running the PTO who only furthers their interests. What we need is a new director with close ties to inventors who has our trust as we are far more dependent on patents than our large infringers who can control their markets by their size alone. Otherwise, we get what we now have…patent office management that obstructs our obtaining and enforcing our patents. It’s time for more than another large infringer propaganda slogan like AIA which in the end destroys new jobs while exporting existing.

    For our position and the changes we advocate (the rest of the truth) to truly reform the patent system, or to join our effort, please visit us at https://aminventorsforjustice.wordpress.com
    or, contact us at aifj@mail.com

  17. Edward Heller December 6, 2016 3:10 pm

    Staff, absolutely agree on Kappos. Regardless of his management prowess, he was acting and still acts on behalf of the international elites that do not put America first. These elites have been undermining the US patent system since GATT TRIPS, The AIPLA, the IPO and Kappos have long been working on removing the unique beneftis of the US patent system, to level the playing field. But what this has done is weaken the US patent system, taken away the advantages accorded to inventing in the US, including the grace period that worked for US invention, and allowed US patents to be invalidated over foreign invention before it is published (foreign filing dates) and foreign public use.

    Back to 17years from issue for US inventions, back to secrecy of applications based on US inventions, back to a 1 year grace period for US inventions, require courts to issue injunctions where the patent covers US manufacturing, restore US R&D as a protected industry for the ITC. Eliminate all post grant proceeding for US inventions.

    These are the ideas will help restore the US patent system to its former glory.

  18. Patlaw December 18, 2016 2:12 pm

    I think Steve Kunin should be under consideration for new director.

  19. Edward Heller December 19, 2016 8:01 pm

    In selecting a director, technical expertise should be set to one side in favor of being right on the issues for a long time.

    Being a consistent opponent of the AIA is a first requirement.

    Being a consistent opponent of reexaminations and PGRs should be another.

    I think that most of the people being considered in Washington have too long been under the sway of the big international firms that have long been pushing first-to-file and administrative revocation — to be more like the EPO … more like the Germans. Money corrupts, and one way big money corrupts is to hire the firm, the expert, the DC lobbyist.

    The place in the United States that produces more startups that one can shake a stick at is Silicon Valley. Someone who works for the VC’s exclusively would be the best kind of candidate. Someone who understands biasing the patent system against the US startup is not a good thing.

    Also, I still recommend Professor Mossoff. The guy understands the fundamentals of patent law, that patents are property. Mossoff would and should be against post grant revocation.

    But we also need a person who understands that the purpose for the American Patent System is to promote invention in the US — US R&D. That is the main purpose. That purpose is harmed by level playing fields where the location of invention is irrelevant.

  20. FRANK LUKASIK December 30, 2016 6:10 am

    I have volunteered to give up my retirement to become Director. I was a Patent Examiner, Patent Counsel, Dept. of The Interior, Chief Patent Counsel, Hq. Air Force Systems Command, and Director, Navy European Patents Program, London England. My Petition to the U.S. Supreme Court tried to stop the expiration of 1,500 Patents every week (dismissed).