What I Want and Why: An Open Letter to the Next PTO Director

By John White
September 24, 2017

So, we have a new name to vet for USPTO Director; and, we get to see whether that person can hang in there through the confirmation process. Tea leaf reading articles have been written to try and discern what this person’s attitude or philosophy is toward patents, the system, etc. None of this is very direct. That is, assessments are made based on certain assumptions which may, in fact, be wrong. Articles have looked at past clients, past case outcomes, choice of work, and so forth, but all that reveals is a person taking clients and working in the field and doing a good job. I plan to take a more direct approach. Inasmuch as the new Director can change, or do whatever they want once in the job, and will be subject to political winds, I thought I’d just tell them what I want and why. Simple. Here’s my list.

First, believe in your product and the team that produces the product. Stop the labeling of “legitimate patents” as compared to other, presumably, “illegitimate patents”. There is only one type of patent, the one produced by the PTO. End of story. Each receives the examination it can in light of the fees paid. Each examination is done according to the laws and rules set forth in the statute and in accord with the CAFC administration of that statute vis-à-vis the PTO. This is true across all technologies. Examiner’s do the best they can with the tools available. This includes training, searching, and examining. The PTO does not favor one group over another. It calls balls and strikes in light of the relevant statute or rule.

If you find any of the foregoing not to be accurate, set about fixing it. You have a very able professional staff who knows how to get things done. Rely on them. If they tell you something can or cannot be done, they are probably right. Work with them.

The last PTO Director clearly did not believe in the product the PTO produced, nor in how the products were used post issuance. Post issuance, the PTO was used as a Star Chamber to rid the system of “illegitimate” patents. The only common denominator as to their “legitimacy” or lack thereof, was they stood in the way of a well funded competitor. Patentees were lured into the Patent Office, fully disclosing their innovations in exchange for time and scope limited property rights, when those innovations proved economically worthwhile, the PTO charged a higher price and stripped the patent owner’s of their rights to exclude. Who, in their right mind, would file a patent application?

Get rid of the PTAB altogether, or provide a reissue off ramp which auto stays any PTAB proceeding until the reissue emerges. It cures most of what ails the PTAB process (ie., no real right of amendment) and provides for intervening rights to off-load past damages. Going forward, post reissue, the PTAB could then re-decide the petition in view of what an examiner skilled in the relevant field has determined. The PTAB, in its present configuration, is obviously pursuing a political end. This is unworthy of the PTO and is not in accord with the Constitutional charge of the patent system.

Keep fees low and timelines short. A patent is a wasting asset. Term is burning from the moment filed. I know that patent term adjustment is meant to address some of this, but the far, far, better solution is to keep pendency, across all technologies, short. Work to resolve this discrepancy. The lead an innovator has in any technological area is often dependent on the exclusion a patent can provide – the delay and uncertainty owing to long pendency helps no one.

Promote the role patents play and have played in this country. Speak as an advocate on Capitol Hill. The patent system has played a role in defining the United States since inception. It is not anachronistic. It plays the same role now, as it ever did. The system needs a “cheerleader”, not a “qualified endorsement”! Who better to play that role than the Director of the USPTO? The patent system is a force for good – in all technologies and for all purposes. It encourages and it discloses and it rewards. Keep it simple. Life-saving drugs are developed. New methods create efficiencies. New materials change industries. The globe is made smaller, and people are more connected. There are few things that can be described in such first order adjectives as the patent system. People, across the political spectrum need to know the Director of the USPTO is an advocate for the system that person administers.

If the new Director would read this and have the PTO staff read it, at all levels, and then act on it – I would be much obliged.

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 9 Comments comments. Join the discussion.

  1. Judge Rich's Ghost September 24, 2017 2:04 pm

    You should cite Judge Michel’s supplemental congressional testimony. He puts forth a reasoned basis for adopting the off-ramp. http://www.ipwatchdog.com/2017/09/19/judge-paul-michel-presents-supplemental-testimony-ptab-reforms/id=88047/

  2. Benny September 25, 2017 5:40 am

    “Keep fees low and timelines short”…” believe in your product…”
    So you want professional examination, cheap and in short order. Engineers say, you can have it cheap, fast and reliable – pick 2.

  3. Eric Berend September 25, 2017 11:55 am

    @ 2. ‘Benny’:

    This appears to be a sensible riposte. Who can argue with this classically modern “engineer’s aphorism”?

    The trouble with your assertion is, however, that it represents a false dichotomy: so long as fees ostensibly collected for the purpose of examination are diverted to anything else – and in particular, for costs of IPR proceedings at the PTAB – the USPTO is “cheating” the described triangulation, and the simplistic model you present, does not map to the reality of practice, here.

  4. Anon September 25, 2017 12:24 pm

    Great response Eric.

    Also of note, is that the famous “three-point” trade-off does NOT apply when you move outside of an original specification (and you change things in a fundamental way).

    Such a change would be in play if one were to recognize that the current “metrics of the job” are not THE job.

  5. Gene Quinn September 25, 2017 12:42 pm

    Benny-

    Why do we need professional examination? Patents really should just be given out after a cursory review. With the PTAB there is absolutely no need to do anything other than a once lightly inspection. It is impossible to justify the time and expense the PTO puts applicants through only to snatch away commercially valuable patents.

    -Gene

  6. Anon September 25, 2017 2:09 pm

    Gene,

    Your comment reflects a past suggestion of mine that we move to a full registration only system and eliminate upwards of 95% of the multi-Billion (yes, that’s a “B”) innovator paid examination arm of the patent office.

    For a substantially less amount of money, a decent formalities and catalogue system could be designed and run.

    Your point of “why pay for examination that is later given no credit” is directly on target with such a massive reduction of fees to innovators.

    (Note that I purposefully omit discussion here of the potential ramifications to the worth of such a patent system, both for promoting innovation as well as protecting innovators that may chose to voluntarily engage such a system)

  7. Curious September 25, 2017 7:59 pm

    Why do we need professional examination? Patents really should just be given out after a cursory review. With the PTAB there is absolutely no need to do anything other than a once lightly inspection. It is impossible to justify the time and expense the PTO puts applicants through only to snatch away commercially valuable patents.
    Comments like these should be put into proper context — they are jests based upon the current state of the USPTO — not actual recommendations to be implemented. I would hate to have somebody visit this blog and be misled into believing that a patent registration system would be a good idea for the United States.

    First, if people think there is a “troll” problem today, a patent registration would increase that problem by a least an order of magnitude.
    Second, until really examined, the vast majority of these patent registrations would have as much value as what most patent applications have these days — which is ZERO value. With no value, these patent registrations would hardly serve as a basis by which venture capitalists could use in evaluating a company for investment purposes.
    Third, instead of being based upon actual worth of the underlying technology, the value in a patent registration would be much more highly correlated with how talented (and aggressive) your licensing/litigation attorney is.

    All-in-all, a patent registration system is a terrible idea.

  8. Night Writer September 26, 2017 8:23 am

    >>All-in-all, a patent registration system is a terrible idea.

    Probably true. Probably makes sense to continue to exam patent applications.

    But, mark my words, during the next recessions patent applications from US corporations will drop 30 percent with similar drop in research.

  9. Night Writer September 26, 2017 8:25 am

    The sad truth is that we live in a different world. The director doesn’t care what you want. The director is going to be 100 percent beholden to whatever political forces paid for his appointment.

    (You are in the downfall part of Rome.) Be interesting to see what Warren Buffet has to say about all the corruption.

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