David Kappos Shines at Senate Confirmation Hearing

By Gene Quinn
July 29, 2009

David Kappos

David Kappos

To start the confirmation proceedings in the Senate Judiciary Committee, Senator Patrick Leahy (D-VT) introduced David Kappos this morning with a lengthy and impressive recitation of Kappos’ credentials and experience.  He started out with IBM as an engineer after graduating with highest honors from the University of California Davis with a degree in electrical and computer engineering, and moved to the legal department upon completion of his Juris Doctor degree, and then ascended through the ranks at IBM to become Vice President and and Assistant General Counsel.  Senator Leahy then allowed Kappos to introduce his family members “for the Kappos archives.”  After introducing his parents, Kappos then introduced his Aunt and Uncle who had come to the hearings “from their home in Vermont.”  This lead to Senator Leahy saying “oh boy, you know how to get at” and then he started laughing, as did the entire gallery.  Of course, Leahy is from Vermont, so Kappos was off to a good start immediately in an easy and friendly atmosphere set by Senator Leahy.

Kappos started his prepared statement by saying: “I am very grateful to President Obama and to Secretary Locke for the trust that they have placed in me.”  After a few more niceties, he jumped into the substance of his remarks, which follow below:

It is exceptional and humbling under any circumstance to have the opportunity to serve one’s country, but it is particularly so for me as the son and grandson of immigrants.  My father, who you met just a moment ago came to this country from Greece and my mother’s parents came to the U.S. from Italy.  So the opportunity to be here today is particularly poignant for me and it is also for my family.  If recommended by this Committee and confirmed by the Senate I look forward to joining Secretary Locke and his team at Commerce in their mission as stewards of American economic growth, job creation and innovation.

I have spent nearly my entire professional career in the field of intellectual property law, and indeed my entire career around technology and innovation.  First as an electrical and computer engineer, then as a patent attorney handling matters before the USPTO, litigating patent disputes both as a defendant and as plaintiff, managing intellectual property matter in Asia and finally as Vice-President and Assistant General Counsel for Intellectual Property Law, managing IBM’s intellectual property interests globally.  So I have seen the intellectual property system from all sides.  I care passionately about this field and the role that intellectual property plays in advancing American innovation.  So it is particularly exciting for me to be considered for the position of Director of the USPTO, an organization that traces its roots to the Founding Fathers and to their understanding that promoting and rewarding innovation is critical to our country’s success.

The PTO faces many challenges as we all know.  Most immediate are those resulting from the economic downturn.  The need for a stable and sustainable funding model.  The need to address pendency concerns while preserving and enhancing patent quality and the imperative to attract and retain skilled personnel at a time of fiscal constraint. Secretary Locke has personally asked me to refashion the patent examination process to meet these challenges and in carrying forward this direction I will focus substantial personal attention within the USPTO as my top priority.

Additional challenges flow from rapid globalizing trade environment impacting trademark and patent interests as well as respect for intellectual property and the consequences where intellectual property is not respected.  Longer term, the USPTO is going to need to keep abreast of the astounding pace of technological change across a broad range of scientific discipline.  It must must constantly rethink how it carries out its constitutional imperative to promote innovation and scientific advancement for the public good, both in terms of the technology confronting the Office and in terms of leveraging that technology and applying the law to that technology.

So as I consider these challenges I am mindful of several things.  I am mindful that the USPTO serves the interests of all innovators in this country, small and large, corporate and independent, academic and applied, and most importantly the public interest.  While I have spent my career to date at a large corporate enterprise, I am familiar with the concerns of all USPTO constituents, including small and independent inventors, the venture and start-up community, public interest groups, the patent bar and many others, and I will reach out to all of them.

I am mindful of the incredible dedication of the thousands of USPTO employees and the essential role they play in the success of the US innovation system.  I will work everyday with the USPTO employees and the unions that represent them to establish strong, positive relationships grounded in professional treatment for professional judgment.

I am acutely mindful that innovation today is global and that IP policy is of paramount importance not only in our country, but also in the EU, Japan, China, Brazil, India and many other developing countries.  I will use my international experience and my understanding of global IP trends to help this Administration represent the interests of American innovators globally.

Finally, I am mindful that the Office for which I am being considered, working as part of Secretary Locke’s team and within the Administration’s agenda, must be intensely focused on how to serve the American people at this time of economic uncertainty.

I believe the USPTO can play a significant role in enhancing economic growth, creating jobs and advancing American innovation, and I hope to play a part in this important mission.  Again, I am grateful for the opportunity to address you here today, and I am pleased to answer any questions.

Senator Orrin Hatch (R-UT) also had very kind words for Kappos, expressing his support for his nomination.  Senator Hatch said he would submit questions to Kappos in writing, but he then went on to say “I am counting on you to help us do a better job up here on Capitol Hill, for the people, for innovators, for the Patent Office and we will do everything we can to assist you.”

Senator Franken (D-MN) then asked questions of Kappos, asking him if he had any thoughts of intellectual property in terms of the entertainment industry, especially in China.  Kappos then answered the question, discussing mostly copyright matters and working with the international community to stop piracy, mentioning education as one particular way to help stem the tide of counterfeiting of copyrighted materials.  I don’t begrudge Kappos from answering the question, but I certainly hope Kappos is not going to spend any time whatsoever on copyright matters and piracy.  Given that the Patent and Trademark Office only deals with patent and trademark matters, and given that we have a Copyright Office and a Trade Representative, it would be an extraordinary mistake to have the Director of the Patent and Trademark Office spend even a second on copyright matters, despite the fact that he is also Undersecretary of Commerce for Intellectual Property.  If he spends any time on copyright matters that will take away from his ability to fix the US patent system.  With all do respect to the distinguished junior Senator from Minnesota (by way of Saturday Night Live and Air America), given the monumental problems facing the Patent Office and innovation and the economy in the US, it is ridiculous to be at all concerned with copyright counterfeiting overseas, and even more ridiculous to expect the Director of the Patent and Trademark Office to do anything with respect to copyrights.

Senator Jeff Sessions (R-AL) then asked Kappos if he thought he could dig into the backlog and reduce pendency if he constantly had the threat of fee diversion hanging over his head every year.  Kappos then said that he is “well on the record being opposed to fee diversion.”  He said that the community is fully supportive of the Patent and Trademark Office, and “will fully fund the Patent and Trademark Office, and is willing to even pay more in fees if necessary, but fee diversion has created a crisis of confidence int he user community.  He also then explained that the user community is “steadfast in that it does not want to pay additional fees just to have them diverted to other government uses, as worth as those other government uses may be.”

In all, what Kappos said was certainly reassuring, and he should have absolutely no problem getting confirmed.  If he does stay mindful of the needs of all those who use the USPTO, small, large and in between, and the interests of the diverse industries who sometimes need contradictory things in order to thrive, he will not only be a good leader, but he will be an exceptional leader and might really reform the Patent Office into the entity it can and should be in order to foster economic development and job creation in the US.  Having written about this for many months, the fact that he sees that the USPTO can and should work toward being an agent of economic growth is music to my ears.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 16 Comments comments.

  1. scrappy July 29, 2009 9:50 pm

    This is good news. Other that the stopgap job performed by Q. Todd Dickinson, this will be the first time in 16 years that a President has appointed a person who knew anything about patents to lead the PTO.

  2. Gene Quinn July 30, 2009 2:52 am

    Scrappy-

    I couldn’t agree with you more. Q. Todd did a good job, and he would have been a good appointment as well. I get the sense that Kappos is exactly the right guy. I have been skeptical due to the positions he took with IBM, and maybe I am too willing to give him the benefit of the doubt, but I am. As the son of immigrants he knows the work it takes to succeed, and he has done that at a very high level. I believe him when he says he understands the need to take everyone’s concerns into consideration. With Senators Leahy and Hatch on his side that should mean bi-partisan support in Congress, and they obviously respect him. This could be very good for the patent system.

    -Gene

  3. scrappy July 30, 2009 8:25 am

    The PTO’s biggest need, IMO, is for good (forward-looking) IT changes. In terms of IT, the PTO has been a “follower” for the last decade, using technology developed by other patent offices (EPO) rather than innovatively addressing its own problems.

    With both the EAST search system and IFW, wholesale changes if done properly will help immensely. Mr. Kappos may be in a better position to oversee these things even than Mr. Dickinson.

  4. IPBloke July 30, 2009 10:00 am

    Scrappy
    Can you name one search engine that can flip images faster than EAST? IMHO EAST has been a leader from the beginning and so far no one can match its flip rate.

  5. patentguy July 30, 2009 10:19 am

    Senator Franken would be well advised to do his homework before attacking Kappos for speaking out about copyrights and piracy. If confirmed, in addition to his role as the Director of the USPTO, Kappos would also wear a second hat as the Under Secretary for Intellectual Property. As the Under Secrectary, he would be required by law to give counsel to the President, as well as conduct studies and programs in all areas of intellectual property, including copyrights and antipiracy issues. Thus, it is perfectfully appropropriate for Mr. Kappos to address these critical issues.

  6. scrappy July 30, 2009 11:27 am

    IPBloke,

    No public systems can or need to, but flip-rate isn’t the end-all of a search system.

    Or are you going to flip through 30 million patents to find what you want?

    If you’ve done any searching, you know this.

    Yes, EAST is a 1-dimensional leader for flipping through gobs of US patents and applications – I call it “picture searching” and I use it when I need to flip, flip, flip through thousands of documents. Try searching for anything other than pictures:

    1) Try chem formula searching: go ahead, search for alumina (we won’t even worry about AlxOy or AlOx, just Al2O3). Now to do this, not only do you have to search for arcane subscripts, you also have to know the PTO IT specialists changed the way they index subscripts in patents in the 2005-2006 time frame, and with all PGPUBs, just to confuse Examiners:

    “al.sub.2” adj “o.sub.3” : 68,939 hits
    “al.sub.2o.sub.3” : 61,320 hits

    “al.sub.2” adj “o.sub.3” or “al.sub.2o.sub.3” : 129,981 hits

    How many Examiners or searchers can find all the documents with alumina?

    2) Try classification searching. The US Classification of PGPUBs is horrendous. No matter, you say, we can use International Classification to find the PGPUBs (thankfully the CIPP and CIPS fields do NOT use the classifications applied by the US Examiners, but apparently rather those applied by the EPO Examiners, stripped of course of the useful EPC breakdowns that the EPO always uses – why the PTO ever thought to strip it I’ll never know):

    g11b5/31.ipc,epc,cipp,cips. : 10,255 hits
    g11b005/31.ipc,epc,cipp,cips. : 8,395 hits

    (g11b5/31 or g11b005/31).ipc,epc,cipp,cips. : 17,769 hits

    How many Examiners or searchers can find all the documents in a particular IPC?

    3) I could give tons of other examples where EAST is giving a false sense of searching to Examiners (even those who are well-trained). This goes even beyond its simple inefficiencies due to the USPAT, PGPUB, JPO, EPO, and WPI file separations that will often make an Examiner or searcher see a document that is not relevant 5 times in a hit set, and will not automatically show him/her all family members of documents that are (i.e., to get the best date).

  7. scrappy July 30, 2009 11:29 am

    Hi Gene, could you fish out my comment? Thanks.

  8. Gene Quinn July 30, 2009 1:37 pm

    Patentguy-

    Senator Franken asked him about copyright issues. I was the one who said it was stupid for him to be at all concerned about copyright issues. I stand by that comment. There are plenty of other people in the US government who are in the entertainment industry pocket. Obama has appointed several of them to top DOJ positions, there is the Copyright Office and Trade Representative who can also handle copyright issues. None of them are at all qualified with respect to patents. Is is ridiculous for the Director of the Patent and Trademark Office to also have responsibility for copyrights, regardless of the title he holds.

    So if the Senate or President expect Kappos to utter a single word about copyrights then they need to be ready for the consequences. I will berate them daily and show to everyone just how unimportant the US economy and innovation must be if the top innovation official in the government has to pander to the copyright industry and divert attention to curbing piracy when so many others in government already have that as their primary job description.

    -Gene

  9. IPBloke July 30, 2009 5:15 pm

    Scrappy
    Yep I didn’t think you could name one.
    Granted things could always work better, that is true for everything but to say the PTO has been a “follower” in IT as you say is just plain wrong.

  10. Public Searcher DIP July 30, 2009 5:23 pm

    Scrappy,

    Good post re: EAST. I’m a full time user of the system and it is great for being free and super fast. But it also has very distinct weaknesses. US Examiners and searchers using EAST have questionable access to foreign art. We may have abstracts of 30 million documents, but the multiple databases include a ton of overlap as you mentioned, no updating of the EP database (replaced by WPI perhaps), no full text searching, and virtually no old (pre 1980) foreign art.

    That said, it is an old system and hasn’t had a major update in 10 years. But at least they’re finally letting us avoid reviewing PG-Pubs that have a corresponding issued patent after eight years of our complaining! And the ability to perform large Forward and Backward citation searches as a separate L# is a powerful tool not available many places.

    One thing to watch out for though if they do a major overhaul of the IT. Many of the very good 3rd party systems that simplify life by grouping family members for easier search purposes are doing you/us a disservice for clearance/infringement work because the claims of each of those family members are unique and distinct from one another. And while I love semantic analysis and relevancy rankings as yet another search tool, it’s very easy to fall into the trap of using them exclusively, much the way many examiners/searchers do with key word searching.

    On another note Scrappy: Use .ipcr. rather than the cipp and cips codes for pulling art by IPC

  11. scrappy August 1, 2009 12:45 pm

    Thanks, Public Searcher DIP. Just curious, why do you say use .ipcr.? I will check it out, but I remember trying it when it was introduced…. (I think you know the story behind “reformed IPC”.)

  12. scrappy August 1, 2009 12:47 pm

    Public Searcher DIP, the Forward and Backward citation searches in EAST are welcome. tHE pto’S APS computer system did the identical thing in the 1980s. (WEST lost the function in 2000.) But neither EAST nor APS covers/covered the citation of ANY foreign documents, and EAST does not attempt to cover related family members of the patent for which the search is being conducted. Clearly, later examined US or foreign family members would provide the most relevant hits in a backward citation search.

    Questel-Orbit introduced a new dimension of forward/backward citation searches around 2000 (it goes well beyond EAST’s 1-dimensional US capabity). Perhaps the EAST developers might use it as a model. In Questel’s Pluspat, you can easily 0) obtain all the family members for a document and then (for all US and foreign family members):

    1) perform backward citation searches that includes all foreign documents,

    2) perform forward citation searches on all the backward citations found in 1,

    3) perform forward citation searches that includes all foreign documents,

    4) perform backward citation searches on all the forward citations found in 3,

    5) AND all the results together and then limit them by publication or application date.

    It takes about 2 minutes (there can be MEM/print charges in Pluspat, so below may not be efficient). In one fell swoop, you learn all the art many applicants thought was best (and were required to disclose under Rule 56), as well as the best art that many Examiners knew about from their individual experiences. What a way to start a search, without even using keywords, to learn what’s been known across the industry (and perhaps across the world) before!

    [This is not legal advice:]

    file pluspat
    /pn us7123456 or ep1234567
    citb ss 1
    mem /pn rk 4
    prt mem mem1 nonstop
    er mem mem1
    citf ss 2
    mem /pn rk 4
    prt mem mem1 nonstop
    er mem mem1
    citf ss 1
    mem /pn rk 4
    prt mem mem1 nonstop
    er mem mem1
    citb ss 4
    mem /pn rk 4
    prt mem mem1 nonstop
    er mem mem1
    1 or 2 or 3 or 4 or 5
    6 not /pd>2001-02-03
    mem /pn rk 4
    prt mem mem1 nonstop
    his

    Regarding “grouping” of family members, I would never suggest (or consider) viewing just one family member for an infringement search (as EAST currently provides with the WPI file). Rather, the record of EVERY single family member should be concatenated into one family record, so (for example) all the claims of all the family members are immediately at your disposal when you say, “Display the claims.” For example, in the family record, first you would view the US patent (if it exists), then (if they exist), the US published application, the US related patents and their published applications, and the counterpart foreign patents (JP B, EP B, etc.) and published applications (WO, GB, etc.). When text searching, for example, the indexed full text of the PGPUB and the foreign pubs/patents (with machine translations) would be concatenated to the full text of the US patent(s).

    If the text from ANY of the family members satisfies a text search (or if the classification satisfies a classification search, etc.), the whole family text record would be displayed, with the appropriate KWIC highlighted wherever it appears. If you don’t want to see the foreign equivalents or foreign information, just don’t go there – flip to the next document – you’ll be done with that family. (The concatenation order in the family record could be adaptive, based on which documents caused the family to be considered a “hit.”)

  13. Public Searcher DIP August 2, 2009 9:24 am

    Scrappy,

    Re: ipcr. I think the ipcr command will capture the PG-Pubs that have been reclassified during prosecution while the cips and cipp will only capture the intially implemented classifications. Since I’m not sitting at my PSR terminal testing this theory on a Sunday (thank goodness), I may be wrong… But it does capture additional references over the other commands [ Enter as g11b5/31.ipcr. or g11b005/31.epc,ipc. ] and is easier to understand by a non-searcher reviewer (read: attorney client) since it has the letters ipc in it.

    Re: multi-generational F/B searching combined with a date limitation. Yes, a great way to start any validity search! Now don’t give away all out tricks and techniques. [ And don’t forget to include the various application date formats in your cutoff 😉 ]

    Re: family grouping. If I recall correctly, this is one of Questel’s significant positives over their competition. But as I said, I’m an EAST user, so I do not remember all the various product differences.

    That said, we both know every patent searching engine has pluses and minuses. And if you’re a good searcher, you’ll find a way to take advantage of each engines strengths. I’ve been to enough demos and tried enough of ’em to believe this! Now, hopefully this comment doesn’t spend 2 days in Gene’s moderation box.

    DIP

  14. scrappy August 3, 2009 2:51 pm

    DIP, I just checked .ipcr. for g11b5/31. It gives about 1200 more hits than CIPP, CIPS, and the added hits are 99.97% from the CIPN field. The “N” apparently stands for Non-Invention. No PGPUBS from 2006-2009 have received the CIPN designation, and only 10 in the Derwent file have.

    I checked the earliest 20 PUPUBS from 2001 and the most recent 20 PGPUBS from 2005 with the g11b5/31.cipn. designation: 70% of the earliest 20 and 80% of the most recent 20 appear to be clearly incorrect classifications, though perhaps the contractor would call them “liberal” classifications.

    I think restoring some order and integrity (and forward-looking vision) to patent classification should be a first order of business for Mr. Kappos et al.

  15. Public Searcher DIP August 3, 2009 3:25 pm

    Thanks Scrappy. And I’m sorry if the G11B art is your art… that stuff stinks. But at least you get to search the bizarro ECLA cribbed US Class G9B. Pretty funny the way we’re now cribbing the new ECLA breakdowns with all the E subclasses (in 257, 348, and other classes), but still can’t search by the new ECLA classifications themselves using EAST.

    And I agree with regard to classification. Too bad that has been contracted out to semi-trained monkeys. On the other hand, the way practioners draft claim 1 these days, anybody would have trouble classifying them. Funny thing is that Europe used to look to the constant US reclassifications as one of our strong points back in the day.

  16. scrappy August 3, 2009 3:40 pm

    “Pretty funny the way we’re now cribbing the new ECLA breakdowns with all the E subclasses”

    Yeah, in the last 16 years we’ve gone from the classification leader to the classification follower… so too in other patent areas as well.

    Yes, G9B comes in all sorts of handy. Thank you for showing me that way back when!