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.

Last week I wrote an article titled Inauspicious Start to Greater USPTO Transparency, in which I wrote about how disappointed I was that some things never seem to change at the Patent Office.  I was referring to the fact that a Federal Register Notice had been published on September 17, 2009, and gave until September 28, 2009, to provide comments on the interim Bilski guidelines that the Patent Office wanted in place.  I also wrote about how disingenuous it seemed to be not only because of an 11 day comment period, but because the Patent Office by their own admission was already training patent examiners on the guidelines prior to receiving any comments.  This smacked of the same type of nonsense that happened all the time during the Dudas days, where many hundreds of comments were received and summarily ignored.  It also smacked of CYA requesting comments, which also happened during the Dudas days.  I was disappointed because there was so much hope for a Kappos Administration.  I am extraordinarily happy to report that the United States Patent and Trademark Office has decided to extent the comment period.  I guess things really are changing at the Patent Office, and that is a very good thing and definitely something for all those in the innovation space to be happy about.