Earlier this afternoon the United Inventors Association, a 501(c)(3) not-for-profit founded in 1990 and dedicated to providing inventor education and support, wrote to Congress to set the record straight on the UIA stance on patent reform efforts.  UIA Executive Director Patrick Raymond sent a letter to Senator Patrick Leahy (D-VT), who is Chairman of the Senate Judiciary Committee, and an identical letter to Congressman John Conyers (D-MI), who is Chairman of the House Committee on the Judiciary.  The primary purpose of the letter, as stated in the letter itself, was to make clear that the primary mission of the UIA is to provide reliable information to inventors and not to undertake lobbying efforts.  The letter makes clear that the UIA is “not involved in any campaign against this proposed legislation.” The letter goes on to explain that while some “coalitions” and “alliances” are claiming to speak “on behalf of all independent inventors nationwide,” they do not speak for or on behalf of the United Inventors Association or its membership.

David Kappos speaks to Inventors on Video about Patent Reform Legislation

The United States Patent and Trademark Office is sending the message that it believes patent reform is needed and that it is not something that will harm independent inventors, and the messenger is none other than the Director of the USPTO, David Kappos.  Just this week the USPTO launched a bi-monthly e-publication aimed at the independent inventor community – Inventors Eye.  The first issue of Inventors Eye takes on the issue of Patent Reform, with a letter from Director Kappos.  A video tape of Kappos essentially explaining the same thing as said in the letter, perhaps with a little more information, is available on the USPTO Website.  The clear message is that the current patent reform proposals are a net benefit to the independent inventor community.  I personally agree with Director Kappos and think that independent inventors and small businesses should not be afraid of patent reform but view it as an opportunity for enhanced opportunity.  There are some things in the legislation that will immediately benefit inventors and small businesses, and initiatives the Patent Office is working on outside the patent reform legislation that should be beneficial as well.

David Kappos, USPTO Director

Earlier this month David Kappos, Undersecretary of Commerce for IP and the Director of the USPTO, wrote a blog article explaining his desire to revamp, revise and re-engineer the Manual of Patent Examining Procedures.  In this article Director Kappos openly asked for comments and suggestions, which is certainly a welcome change from the past. Everyone I know who has met Kappos believes that he is indeed interested in making the Patent Office better and welcomes ideas.  I had the opportunity to meet with him briefly and he and his staff seem very receptive to ideas and suggestions.  Kappos has been criss crossing the country speaking with inventors and members of the patent bar, soliciting ideas.  There is a clear sense that the US Patent System is in severe need of help, which is hardly a newsflash to anyone who has been paying attention.  It seems equally clear that Kappos and those in senior level positions within the USPTO understand they do not have a monopoly on good ideas.  This in and of itself would be a refreshing change, but coupled with the fact that Kappos is interested in tackling difficult issues and the future seems bright.

EDITOR’S NOTE: President Obama’s recently submitted budget would allow the USPTO to hire 1,000 patent examiners during both FY 2011 and FY 2012.  It would also provide an interim fee increase on certain patent fees which is estimated to generate $224 million.  There is no mention of fee diversion, but reading between the lines it seems the budget would allow the USPTO to keep all, or at least more, of the fees collected.  More to come, but below is a press release issued by the USPTO on February 1, 2010.  It is worth a read.

########## PRESS RELEASE STARTS HERE ##########

Washington – February 1, 2010 – Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) David Kappos today announced President Obama’s $2.322 billion fiscal year 2011 (FY 2011) budget request for the USPTO.

The president’s budget request for FY 2011 will support a five-year plan designed to enable the USPTO to achieve the strategic objectives laid out by Under Secretary Kappos and Commerce Secretary Gary Locke – a significant reduction in patent pendency periods and the existing patent inventory backlog; improvement in patent quality; enhanced intellectual property (IP) protection and enforcement; global IP policy leadership; and investment in information technology (IT) infrastructure and tools to achieve a 21st Century system that permits end-to-end electronic processing in patents and trademark IT systems.

It is that time of the year when everyone has made or is making resolutions for the new year, most of which will undoubtedly be broken within a few days or weeks, particularly those promises to lose weight, exercise more or find more time for unwinding and better managing stress. All are things I hope to do in the new year, but it will be so much easier to lose weight once football season is over, and exercising will be easier when it is a little warmer outside and the days are longer. On top of that, after taking time off for the holidays how can anyone really manage stress when you come back from the holidays to a pile of work? Oh well… I might as well take this opportunity to set forth my Patent Wishes for 2010 instead of engage in resolutions sure to be broken.

Last year I provided 5 wishes, 2 of which came true — Obama appointing a Patent Attorney and the withdraw of the claims and continuations rules. The Patent Office also adopted several suggestions I made throughout the year, or they came up with the same ideas on their own, who knows? Whatever the case may be, I am hoping that this year I will get at least a few of my wishes granted, but at least some require Congressional cooperation, so I am not going to do anything silly like hold my breath, although I am sure some would like that! All I can do is give good ideas and hope folks in the right places are listening, which I suspect they are.

Without further ado, here are my patent wishes for 2010:

1. Repeal KSR v. Teleflex
2. Adequate Funding for the Patent and Trademark Office
3. Reform Inequitable Conduct
4. Do away with Examination Support Documents
5. Acceleration for Those Without Multiple Applications
6. Frivolous, Fanciful & Otherwise Non-attainable Wishes

And now the analysis…

Christmas is coming early for inventors, innovative companies, patent attorneys and anyone in the technology/innovation industry that relies upon patent protection. Faced with a growing backlog and long patent pendency periods in a difficult fiscal environment, the United States Patent and Trademark Office (USPTO) is reaching out to former patent examiners, inviting them to return to the agency.  According to David Kappos, the Director of the USPTO and Undersecretary of Commerce for Intellectual Property: “Because of their prior experience, returning examiners will need little training and will be able to hit the ground running. These examiners can have an immediate impact on the patent examination backlog and reducing the backlog is our top priority.” In the past I have written over and over again that the USPTO should bring back former patent examiners, precisely for the reasons stated by Kappos (e.g., 5th paragraph and 5th paragraph).  I am not about to claim that the USPTO listened to me, but whether they listened to me or came up with this idea on their own it is something I have thought made a lot of sense for a long time. So, not surprisingly, I think this is a wonderful idea!

This year as we wind down and look back we not only need to look back at the previous year, but the first decade of the new century and new millennium will be ending.  So at this reflective time of year it seems appropriate to take a look back at the biggest patent related news stories of the decade.  As with any Top 10 list, or any ranking, there will undoubtedly be disagreements, arguments and some things that people believe should have been on the list.  What follows is Part 1 of my personal Top 10 patent news related stories for the decade. Once I get all 10 out, by later in the week, I will provide a survey that allows you to rank them, and I hope you will.  We can then take a look back at my Top 10 vs. the Top 10 of IPWatchdog.com readers next year.  Please also feel free (and I am sure you will) to point out things that I missed or clearly got wrong, at least in your opinion.

Without further ado, in descending order, here is Part 1 of my Top 10 Patent Related Stories of the Decade:

Earlier this week Mike Drummond, the Editor in Chief of Inventors Digest, authored an article titled US Senate Votes to Leave Patent Office Underfunded for 2010.  In this article Drummond explained that over the weekend, while no one was paying attention, the Senate voted to leave USPTO funding at the same level in 2010 as it was in 2009, which is bad enough because the Patent Office desperately needs more resources in order to tackle the problems left over by the previous regime.  Worse, the Senate vote would re-institute fee diversion, which means that if the Patent Office were to collect revenues over and above the amount allocated by Congress those additional fees would not be able to be used by the Patent Office to improve operations, or even for just handling the increased work generated by additional filings.  Rather, fees received over and above the allocated amount would be stripped from the Patent Office and diverted into the General Treasury account.  That is plain and simple a National Innovation Tax, and it is an enormously bad idea.

Congress convened in a rare session last Sunday. On that sleepy news day, the U.S. Senate passed an appropriations bill leaving the U.S. Patent and Trademark Office funding for 2010 essentially the same as 2009. President Obama should send this bill back. The USPTO is solely funded through fees. But Congress controls the purse strings. The USPTO has fewer examiners now than it did at the start of this year. The agency faces a $200 million budget shortfall. It’s instituted a hiring freeze and can’t pay for needed IT upgrades. Why Congress would leave the USPTO underfunded to the tune of $200 million – particularly during a time of nascent national economic recovery – is vexing.

Yesterday the United States Patent and Trademark Office announced the creation of a pilot program to accelerate the examination of certain green technology patent applications. The announcement was short on details, which will apparently be forthcoming, but the move to accelerate green technology patents is one that can and should pay off handsomely. Back on March 30, 2009, I wrote an article titled A Proposal for Green Technology, which called on President Obama to issue an Executive Order requiring the accelerated examination of patent applications that relate to green technologies, while cautioning that relying on the current acceleration avenue would be inappropriate given the number and magnitude of unfavorable admissions that would need to be made. While it is unclear as yet under what circumstances green patent applications will be advanced out of order, we can only hope that the onerous and untenable Examination Support Document will not need to be filed in order to accelerate. If an ESD is required that would make this enormously positive initiative nothing more than a publicity stunt because as long as patent applicants must file an ESD few will because the document must include horrific admissions that would almost certainly render any patent unenforceable if litigated.

USPTO Director David Kappos

Mike Drummond, the Editor of Inventors Digest, sat down for an interview with David Kappos a few weeks ago while he was in Alexandria, Virginia, attending the Independent Inventors Conference. As has probably become apparent over the last several months Mike and I have been cooperating on a number of projects, sharing articles and doing some cross promotion. While I am just a patent attorney with an attitude, a particular point of view and one who can type super fast without looking at the keys, Mike is a real journalist. He has done a couple journalistic tours in Iraq and was nominated for the Pulitzer Prize for work he did while writing for the Charlotte Observer. So while I sometimes pretend to interview people, Drummond is the real deal. With a little arm twisting I was able to convince him to give me a sneak peek of his interview with David Kappos, the new Undersecretary of Commerce for Intellectual Property and the Director of the Patent and Trademark Office. What follows are excerpts from Drummond’s exclusive interview with Kappos. You can read the full story in the magazine’s January 2010 issue, which if you are not getting you really should! So subscribe to Inventors Digest today!  Oh yes… to keep within the spirit of the obviously unconstitutional FTC endorsement guidelines that went into effect on December 1, 2009, I am endorsing Inventors Digest and suggesting you should subscribe because I think it is an excellent magazine.  It also happens to be the only place you can read the full Kappos interview with Mike Drummond. Inventors Digest did not pay me to say that, and those who know me know that no one could pay me enough to say something I don’t believe!  So I hope you are happy FTC police, and please don’t come knocking!

USPTO Director David Kappos

Last week I chatted via phone with Terry Carter, a journalist working on a story for publication in the ABA Journal.  We talked about a number of different patent topics, and I am certainly looking forward to reading his article when it appears.  Later on in the week Carter informed me that he was having difficulty getting through red tape at the Patent Office to schedule an interview with USPTO Director David Kappos.  He told me he was thinking about trying to prepare a patent application on a method to get an interview with David Kappos, which he thought might bring a chuckle to those within the Patent Office and perhaps make it easier to get a return phone call.  It seemed like a very creative plan, so I offered my assistance and over the span of a couple hours we put together a mock patent application for a method of getting an interview with one David Kappos. I turned to my own invention — the Invent & Patent System — to create a first draft of the application, sent it off to Carter and after the exchange of a few e-mails it was good enough for its intended purpose and I understand it was faxed to the Patent Office. It did indeed help Carter cut through the red tape and schedule an interview with Director Kappos for early next week.  Mission accomplished!

The Wall Street Journal is reporting good news for patent owners, in particular those holding patents on green technologies. President Obama, who is currently attending the Asia-Pacific Economic Cooperation forum in Shanghai, China, along with other world leaders announced that they no longer have ambitions of reaching a binding international agreement on climate change during the United Nations Climate Change Conference in Copenhagen, which begins December 7, 2009 and runs through December 18, 2009. This is extremely important for those who are interested in strong intellectual property protections, particular patent rights. It had been feared that in order to obtain an international agreement the Obama Administration would broker the patent rights held by US concerns and give them to third world and developing nations in exchange for them taking steps to curb carbon dioxide emissions. Thus, the news that there will not be a binding agreement as a result of the UN conference in Copenhagen can allow patent and intellectual property advocates breathe a sigh of relief, at least for now.

Just about 24 hours ago I posted an article relating to my changing position with respect to first to file, and already there is something of a firestorm.  I understand there are those who feel I have abandoned them and adopted a naive view of the world. But excuse me for recognizing the new tone and identifiable actions taking place at 600 Dulany Street.  Yes, I have been an ardent supporter of first to invent for years, but I have been questioning my views for some time, as I speak with attorneys, inventors and others.  Then several things recently caused me to realize the benefits of first to file for the independent inventor community, and then I heard USPTO Director David Kappos explain that in 2007 only 7 cases were decided in favor of an individual who invented first and filed second.  Kappos explained “we already have a de facto first to file system.”  All this arguing for 7 cases?  Cases where once the rule changes behaviors will change to the point where some, perhaps most or even all of those 7 cases will never happen again because everyone will know they need to file rather than wait.  On top of that, it is inarguably good, correct, legally sound and business appropriate advice to file sooner rather than later.

David Kappos addresses Inventors Conference 2009 at USPTO

I am just getting back from two days at the United States Patent and Trademark Office, having attended the 14th Annual Inventors Conference.  There is much to report, and much to write about, and I will continue to digest, analyze and write about what I saw and my impressions in the days to come.  It is, however, undeniable that there is a completely different tone at the Patent Office.  Senior level management, from Director David Kappos,  Deputy Director Sharon Barner, Patent Commissioner Bob Stoll and Deputy Commissioner Peggy Focarino, mingled with inventors and seemed genuinely happy to discuss issues and appear committed to revitalizing the patent system.  There were many, including myself, who wondered what direction the Patent Office would take under new leadership, and while it is early to give a grade, if we are going to be honest and give an interim report card the only fair grade to give at this point is an A.  From top to bottom there is an optimism that exudes from everyone I spoke to at the Patent Office.  Changes that ordinarily would take months are taking weeks, and the political leadership seems to REALLY understand the importance of innovation.  In fact, in video-taped comments played during lunch today Commerce Secretary Gary Locke said that the Obama Administration pledges to provide US inventors the strongest IP protection available anywhere in the world.  What more could we realistically ask for at this point?

The 14th Annual Inventors Conference is presently ongoing at the United States Patent and Trademark Office in Alexandria, Virginia.  The conference started yesterday and continues today.  I am here at the USPTO presently, and I was here yesterday as well and had an opportunity to hear Patent Office Director David Kappos address the attendees during a lunch speech and then again during the reception at the end of the day.  Congressman Dana Rohrabacher (R-CA) also spoke during the reception last night, giving a heavily pro-inventor, pro-patent speech to a very receptive audience.  The event has run smoothly, the presentations have been good and it is always nice to be able to get face-to-face time with friends and allies within the independent inventor community.  The one potential hot-button issue to be discussed at this conference and taken directly head on by Director Kappos was patent reform, and in particular those issues that may be seen by some as difficult to swallow in the independent inventor community.  Credit definitely needs to be given to Kappos for now shying away, addressing concerns and answering questions.  I think he even persuaded some in the audience, one of whom was me.

The United States Patent and Trademark Office a few days ago announced the designation of the Ryan-Matura Library of Sacred Heart University in Fairfield, Connecticut, as a Patent and Trademark Depository Library (PTDL). The patent and trademark depository library program began in 1871 when federal law first provided for the distribution of printed patents to libraries for use by the public. The addition of the Ryan-Matura Library to the PTDL network makes a total of 82 libraries located in 45 states, the District of Columbia, and Puerto Rico, but why is the is the US Federal Government continuing to support the PTDL initiative and why are they continuing to add PTDLs? The stated purpose of the PTDL program is to assist business, innovators and inventors, presumably by having resources nearby in a local facility, thereby bringing the resources and information of the Patent and Trademark Office to every region.  But why?  With the growth and popularity of a global communications network called by many “the Internet” it would seem that there are far better ways to make the information resources of the USPTO accessible by everyone.  Call me crazy, but if Google can figure out how to make most US patents full text searchable, shouldn’t the USPTO be able to figure it out as well?

James Tissot's David & Goliath, circa 1896

Late this evening attorneys representing Dr. Triantafyllos Tafas filed a Reply to Motion for Dismissal of Appeal and Request for Remand. In this filing Tafas points out that the decision made by USPTO Director David Kappos to withdraw the claims and continuations rules does moot the appeal, there is a difference between mooting an appeal and vacating an underlying district court decision. It seems clear that Dr. Tafas does not want to stand in the way of the extremely positive and responsible decision made by Kappos, but at the same time is at least a little troubled by the possibility that the underlying district court decision issued by Judge Cacheris might be erased as if it never happened. Among other things, erasing the district court decision would likely make it impossible for Tafas to make any claim for payment of his attorneys fees as a prevailing plaintiff.

By now most are likely aware of, or rapidly becoming aware of, the fact that the United States Patent and Trademark Office has finally done the right thing and has scrapped the claims and continuations rules that have divided the patent community for the last 26 months.  It is impossible not to recognize the new and refreshing tone set by David Kappos, the new Director of the USPTO.  Yes, there is a new Sheriff in town and it will not be business as usual.  While I may have strong differences on the direction of substantive patent laws under the Obama Administration, even the sharpest PTO critics must acknowledge that from a process and administration standpoint the Patent Office is off to an exceptionally good start, perhaps even an unprecedented start.  Between the appointment of competent, patent-qualified people to high level management positions within the USPTO, to taking a time out to collect more input from the community regarding the proposed Bilski internal guidelines, to withdrawing the center piece of the Dudas/Doll reforms that would have attacked the most commercially relevant innovations, Secretary of Commerce Gary Locke and his team lead by David Kappos is living up to the hype and delivering.

David Kappos, the Director of the United States Patent and Trademark Office, unveiled yesterday a series of proposals to bring significant change to the examiner “count system” – the methodology for determining the time a patent examiner has to complete a patent examination and how much credit is given for each stage of an examination. In the past I have referred to this as the examiner quota, and like so many others have been begging the Patent Office to make changes and address this matter so that it would be unnecessary, or less necessary, for examiners to manipulate the system and require needless filings (typically RCEs) by applicants and their representatives. The count system was created in the mid-1960s and hasn’t been revised since 1976, and with an ever deepening sophistication of inventions it has been woefully outdated for many years. While I have seemed to rail against patent examiners for manipulating the system, it is hard to place the blame on them for doing what virtually any of us probably would have done. Examiners have been over worked, and responded in ways that allowed them to get the credit they deserved for the work they were performing. Hopefully more realistic work requirements will streamline the process by giving examiners more time and putting an end to needless additional filings that only drag out the entire process to the detriment of the applicant and industry.