When the Supreme Court hands down a decision bearing on a hotly contested area of law, it means the work has just begun for any agency tasked with administering its consequences. Last term, the Court rendered such a decision in Association for Molecular Pathology v. Myriad Genetics, adding a new wrinkle to the already confounding question of patentable subject matter under §101 of the Patent Act.
As companies consider current cases related to patents before the Supreme Court, they would be wise to learn from the challenges the USPTO faced in implementing the Myriad decision. And for the reasons set forth below, we believe that the USPTO and the entire business community are well served by engaging in rigorous public debate about the guidelines that should be established to implement the decision from the Supreme Court.
Bernard Knight, known throughout the industry simply as “Bernie,” was an important part of “Team Kappos” during what many are already referring to as the “Golden Years” of the United States Patent and Trademark Office. Knight has a resume full of government service, rising through the ranks to become Acting General Counsel of the Treasury Department, and then General Counsel of the United States Patent and Trademark Office during the Kappos era. That means that he was one of core group of leaders tasked with creating and then implementing the rules of practice necessitated by passage of the America Invents Act (AIA).
In September 2013, Knight left the United States Patent and Trademark Office. I bumped into him shortly thereafter and he agreed to go back on the record with me for an interview, which took place on December 16, 2013. To read my first interview with Knight please see Exclusive Interview: USPTO Attorneys Bernie Knight & Ray Chen.
Knight is now a partner in the Washington, DC, offices of McDermott, Will & Emory, where he focuses his practice on complex patent litigation matters. Knight advises clients on intellectual property cases before the United States Supreme Court, as well as engaging in oversight on patent and trademark cases before the Court of Appeals for the Federal Circuit and the district courts.
There was nothing off the table, so to speak, in this interview. We discuss how and why he choose McDermott, as well as what it was like working for David Kappos and working with Judge Ray Chen when he was Solicitor at the USPTO. We also discuss the future of the Patent Office, the appointment of Michelle Lee to be Deputy Director of the USPTO, substantively what the USPTO was trying to do with respect to post grant procedures, the new ethical rules applicable to Patent Attorneys and Agents, and a variety of other issues.
On Thursday, December 5, 2013, the United States House of Representatives passed the Innovation Act by a vote of 325-91.
Surprisingly, the Innovation Act (HR 3309) had only been introduced on October 23, 2013, and was marked-up on November 20, 2013. So what was the rush? This break-neck pace, which took place in a Congress that has been noted for its extraordinary inaction, is curious to say the least. Indeed, one Member of Congress went much further than raising a curious eyebrow. “This schedule suggests the fix was in,” said Congressman Dana Rohrabacher (R-CA) on December 3, 2013, “The clear message to little inventors: give thanks for your intellectual property rights, because you may not have them by this time next year.”
There is no doubt that Congressman Rohrabacher is correct, even if his criticism seems at first glance to be a bit over the top. There can be no serious disagreement over the undeniable truth that over the last 7 or 8 years there has been a steady erosion of patent rights both in the Courts and thanks to laws passed by Congress. There can also be little serious disagreement that the speedy process afforded the Innovation Act prevented those who favor strong patent rights from mounting a credible opposition to the bill. Unfortunately, the forces that seek to weaken patent rights are well funded and fight the battle each and every day. Even before the America Invents Act (AIA) was passed in 2011 there were efforts underway to plant the seeds of what will be the next “industry ask” of Congress, which is stripping the ITC of its patent jurisdiction or at the least preventing the ITC from issuing exclusion orders. See Follow the Moneyand Weakening the ITC Will Harm the US Economyand Are Some Patent Holders More Equal Than Others?
The Truth is that while innovators spend their time inventing and doing business, not focusing on what has been taken for granted in the United States since the days of Thomas Edison, which is a strong patent system. Indeed, in this round of patent reform Universities, small businesses, technology based start-ups and independent inventors were given no meaningful opportunity to express their views. At the one hearing on the bill David Kappos, former Director of the USPTO and now a partner at Cravath, Swaine & Moore, cautioned Congress about going to fast and pointed out that no independent inventors were even invited to testify. But there is no rest for those who seek patent reforms that make patents less valuable, they are hard at work on whatever the current attempt is to chip away at patent rights, but also working to lay the foundation for further erosion of patent rights.
I’m in New York City today at PLI headquarters on Seventh Avenue for the USPTO Post-Grant Patent Trials 2013 program. I will moderate a panel this afternoon, but as the day starts the first speaker is David Kappos, former Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Since leaving the USPTO at the end of January 2013, Kappos has landed at the New York offices of Cravath, Swaine & Moore, an extremely well regarded Am Law 100 firm and great place to land. It was good to see him, he says he is doing well, and he seems to have as much energy and enthusiasm as ever.
Kappos started by explaining that this is his first public speaking engagement since leaving the USPTO. From the outset he also explained that the slides he would be using for the presentation were prepared by the USPTO. This presentation was originally scheduled to be given by James Smith, Chief Judge of the PTAB, who had to beg off as the result of sequestration cuts.
This article is by no means a substitute for the presentation by Kappos. In 60 minutes he managed to bring everyone up to date on what is going on at the USPTO relative to Appeals and other post patent proceedings. Of course, there were a handful of things that particularly caught my attention. For that reason I also provide my thoughts and comments in the format of comments from the peanut gallery, or perhaps as a patent attorney equivalent to Mystery Science Theater 3000. In order to differentiate my thoughts/comments from the FTC statement, my comments are italicized, colored, indented and tagged with the IPWatchdog logo.
David Kappos will speak about Post-Grant Trials at PLI in NY on March 27, 2013.
Next week on Wednesday, March 27, 2013, I will be once again in New York City at Practising Law Institute headquarters on Seventh Avenue, roughly between Central Park and Times Square. The program for the day is titled USPTO Post-Grant Patent Trials 2013, which will provide 6 CLE credits for attendees.
I am a moderator for the segment titled Practice Before the PTAB Roundtable, which will discuss the first trial petitions filed, motions practice, scheduling, the possible need for rule refinements and practice tips for practitioners. Robert Sterne of Sterne Kessler and Professor Lisa Dolak of Syracuse University College of Law will be the panelists.
A new addition to the program just announced today is David Kappos, who is the immediate former Director of the United States Patent and Trademark Office. Kappos, a life-long employee of IBM prior to taking charge of the USPTO, is now with Cravath, Swaine & Moore LLP in New York City. Kappos will discuss the Patent Trial and Appeal Board, specifically discussing ex parte reexamination, the remaining legacy inter partes reexamination cases, inter partes review and the transitional program relating to covered business method patents. His segment will run from 9:15 am to 10:15 am. In addition to being presented live in New York City the program will also be webcast.
Earlier today Cravath, Swaine & Moore LLP announced that David J. Kappos, former Under Secretary of Commerce and Director of the United States Patent and Trademark Office (USPTO), joined the Firm as a partner. The Wall Street Journal Law Blog points out that this is only the fourth lateral hire by Cravath in the last 50 years. Indeed, Cravath is not a firm know to play the revolving door lateral hiring game, but obviously couldn’t pass up the opportunity to add a talent of the likes of David Kappos. He is listed on the Cravath website as being a member of Cravath’s corporate law group.
“I am simply thrilled to be joining Cravath,” Kappos said. “I was fortunate to work closely with Cravath on many intellectual property matters over the years as a client at IBM, and I developed an extremely high regard for the Firm’s unique ability to achieve the best possible results handling the most complex and important corporate and contested IP issues. Of critical importance to me, Cravath handles intellectual property in the context of the client’s business objectives, with absolutely first-in-class legal expertise, both in the corporate and litigation arenas.”
Cravath is indeed a very decorated law firm with a long and celebrated history. In recent years the firm continues to be in the first tier for M&A, securities, commercial banking and litigation according to both Chambers USA and Legal 500. In 2012, U.S. News and World Report named Cravath “Law Firm of the Year” for intellectual property litigation.
USPTO Senior Leadership. From left to right: Acting Director Teresa Rea, Trademarks Commissioner Deborah Cohn, and Patent Commissioner Peggy Focarino. Taken by Renee Quinn at the Women’s Symposium at the USPTO.
Today is the last day of the Kappos era at the United States Patent and Trademark Office. Director Kappos assumed control of the Office in August 2009, and three and one-half years later he is leaving the Office a better place, with virtually all metrics pointing in the right direction. The backlog of applications is down, the backlog of appeals has started to fall, the most sweeping patent reform in generations has passed, the USPTO has promulgated volumes of new rules to make the patent system better and to implement the America Invents Act, there has been a Memorandum of Agreement signed with the Smithsonian on the Innovation Expo, which will be held in June 2013, and the future Innovation Pavilion that will be housed at the Arts and Industries building, a new examiner count system was put in place revising the production goals and time given to examiners for the first time in more than a generation, the patent bar examination was updated for the first time in 5 years and continues to be updated every six months. The accomplishments are many. These are but a few that leap to mind at the moment.
But how will the Patent Office fare when the clock strikes 12:00 midnight later tonight and Director Kappos becomes private citizen Kappos? The USPTO will be in very capable hands. One of the biggest accomplishments of the Kappos Administration happened behind the scenes but oddly in plain view. I speak of “Team Kappos” regularly. It is because they are a team in a very real sense as far as I can tell. And while the assembly of the team was done in the public eye and those interested enough know who Kappos’ top lieutenants have been, Kappos quitely assembled an extremely talented team of dedicated, hard working individuals who will capably carry on.
Before profiling the top officials who will continue the work of the patent system, allow me also to pause and recognize a truly extraordinary moment in Patent Office History. The top three officials at the USPTO will all be women. Acting Director Teresa Rea, Commissioner for Patents Peggy Focarino and Commissioner for Trademarks Deborah Cohn will lead the Office forward steering America’s engine of innovation and commerce. If that doesn’t create a buzz of excitement even in Washington, DC, I don’t know what will! It is excitement well deserved and perhaps could lead to a higher profile for the USPTO, which would be very good for the patent system as a whole.
Kappos at the USPTO hosting a public meeting on Patents End2End (12/14/2012).
On January 15, 2013, I had the privilege to interview David Kappos one last time in his role as Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office. What follows is my exit interview with Director Kappos, where we reflect on his time at the USPTO, all that he has accomplished and the legacy that he will leave behind.
When conducting interviews I sometimes get a sense for whether the interview will be a good one once transcribed. Those who have helped me transcribe the interview and review it prior to publication (as we do with all interviews) tell me that this is a good interview. You will have to be the judge of that. I confess to being incapable of being objective.
Although I do write what I believe to be objective news articles from time to time, I am an opinion columnist. I am also an ardent believer in the patent system. The Kappos era at the USPTO also largely coincides with the time frame where I started to write daily (sometimes more). I attend public events at the USPTO and have interviewed Director Kappos several times and most of his top lieutenants. I have gotten to know Director Kappos and have seen first hand what his leadership has meant to not only the USPTO, but to the larger patent system in general. He has been a friend to the patent system and in my opinion is leaving the Patent Office far better than he found it. He will be sorely missed when he leaves at the end of the month, although he will leave with an excellent management team in place to carry forward the work for which he has laid the foundation.