Deputy for Patent Exam Policy: The Devil is in the Details

We argue, hour by hour, day by day, about large issues of morality and ethics and discuss how to make our nation “green”. We discuss large high-level issues like “should we have a public option for healthcare?”, but we give less attention to the details regarding what such an option might look like. Similarly, in the patent system, the public often argues large issues like the patent eligibility of business methods, computer related inventions, and genes, but gives less attention to the establishment of consistent standards for determining which patents will issue and what innovations will be buttressed by the exclusivity incentives that come with those patents. It is time to focus on the details, and a good place to start is with the hiring of a new Deputy Commissioner for Patent Examination Policy (DCPEP).

Undersecretary of Commerce for Intellectual Property and Patent Office Director David Kappos will soon select a new DCPEP. The importance and influence that this person will bring to the future of innovation should not be underestimated. In the past, this person was selected from a pool of career executives having little practical interaction with the private sector. Perhaps it is time that a candidate is selected from the not-so-small pool of individuals who not only understand the workings of the USPTO, but who also understand the needs of private enterprise. Perhaps instead of focusing on the candidates with law degrees, it is time to focus on individuals with policy skills.

Patent examination policy is a rubber–meets-the-road position. It is here that the laws passed by the Congress, the edicts issued by the White House, and the (sometimes not so) subtle legal interpretations of the courts converge. It is from this office that practical real-world policy emerges. It is here that patent examiners receive their examination marching orders and it is from here that the interpretation of the laws, edicts, and interpretations are converted into changes that ultimately find their way into the patent examiners’ bible: the Manual of Patent Examining Procedure (MPEP).

The MPEP, more than anything else, controls what will be patented and why. The MPEP is where patent examiners find refuge when management or applicants agree or disagree with their decisions. The MPEP is also the only source of information that the public can reasonably rely upon when they disagree with the patent office.

Anecdotally, it was reported that a CAFC Judge asked former DCPEP Stephen Kunin, who had more authority over patent policy: the CAFC or the USPTO? The reported reply from Mr. Kunin was, “The USPTO, of course. We [the USPTO] see and decide hundreds of thousands of legal fact patterns each year. The CAFC only sees a handful. Unless Congress intervenes (a rare and unlikely event), it is the USPTO that decides whether or not to implement the findings of a court decision by providing patent examination guidelines and ultimately revisions to the MPEP.”

While the Undersecretary and the Commissioner for Patents are the bosses, they are busy deciding high level issues and rely upon the expertise and staff of the DCPEP to adapt to changing legal, political, and social dynamics. It is the DCPEP who influences things like whether the separate written description requirement discussed in the famous UC California v. Eli Lilly case should be adapted to a broad policy framework or considered to be limited to its facts. It is the DCPEP who responds to small issues like what a computer related invention comprises and what is takes for a business method to cross the patent eligibility threshold.

The DCPEP and their staff help provide fodder for public outrage and debate areas such as stem cell and gene patenting even while quietly and methodically shaping the policies by which these things are judged. Similar to the town hall meetings about health care coverage, the debates on patent eligibility are often loud, boisterous, and perhaps most importantly, take up TV news time and column space in newspapers and blogs. The debates about the standards upon which patents are issued on genes, stem cells, computer implemented inventions, informatics, chaos theory, and Frisbees™, however, receive little attention.

The overarching patent eligibility policies are hotly debated in many areas, such as the current debate in the HHS Secretary’s Advisory Group on Genetics, Health, and Society (SACGHS) on whether or not gene patents help or hinder medical innovation. The USPTO policy staff, on the other hand, decide relatively quietly, what standards will be used for deciding when to issue patents on this contentious subject matter. A few vocal patent attorneys and small public interest groups may opine as to the merits of particular patent examination standards, but their voices often fade to background noise when presented in the same fora as the debates on patent eligibility.

The eligibility debates are important; however, these issues carry huge momentum. Lawmakers and judges may take generations to find answers to eligibility issues. In the meantime, bureaucrats at the USPTO must continue to determine when and under what circumstances to issue patents. Therefore, this treatise focuses on more pragmatic aspects of public policy that need to be decided today. The answer as to whether to patent the components of our common genetic heritage is important. It has also been decided in black letter law for over a generation. This does not mean that we should not continue to debate the question. Right now, however, we need to ensure that balanced and consistent patent policies for issuing patents on things like cloud computing, genetic testing, and new educational methods are developed and maintained. Right now, as we face a potential flu pandemic, it is critical that balanced standards be maintained for what it takes for a vaccine to be patented and preserve our private sector innovation infrastructure even while we debate the role of the private sector in healthcare.

The ongoing fundamental social debates, while the foundation of our Republic, serve to distract the public from the subtle actions of law and policy makers. Time is a precious commodity and we, the members of society, only have so much to dedicate to outrage. We rely upon our political representatives and professional bureaucrats to take care of the details.

Unfortunately, for better or worse, the devil is in the details. If we are going to adapt the limits of Moore’s law on computing power to the potential of the $1000 genome sequence for personalized medicine, we need innovation. If we are going to have innovation in a time of increasing federal deficits, impending inflation, and shrinking job pools, we need public sector investment. If the Founding Fathers were correct when they agreed to include patents in the US Constitution even before they could agree on a bill of rights, then we need a robust patent system based upon past success rather than current politics. (Harmonization is a topic for another day.)

So, do not underestimate the position and power of the Deputy Commissioner for Patent Examination Policy. The USPTO used to be considered a backwater agency and the DCPEP was a minor prince in that small kingdom. Those days are long gone. The DCPEP is one of the most important offices within the USPTO. It is time that rather than populating this position with someone politically favorable, this individual is selected for their ability to recognize and balance the needs of innovation, understand the limitations of the examination system, and appreciate the private sector’s role in the future of innovation.

About the Author

Brian R. Stanton, Ph.D., is a consultant on management, intellectual property (IP), and business infrastructure policy matters. Most recently, he was the Director of the Division of Policy at the National Institutes of Health’s (NIH) Office of Technology Transfer. Dr. Stanton was responsible for IP and technology transfer policy for NIH and the U.S. Public Health Service (PHS). While at NIH, he led a revision of the US PHS’s technology transfer policy manual and co-authored numerous licensing policy documents including the Organization for Economic and Cooperative Development’s (OECD) guidelines for the licensing of genetic inventions. Prior to NIH, Dr. Stanton spent over a decade at the US Patent and Trademark Office (USPTO) where, among other things, he co-authored policy documents including the USPTO’s Utility and Written Description Examination Guidelines and helped develop uniform patentability standards for the biotechnology and pharmaceutical industries and assisted the public in addressing difficult patent, trademark, technology transfer and development issues. Dr. Stanton continues to serve as an advisor to numerous governmental and NGO bodies including the IPR Task force of the HHS Secretary’s Advisory Committee on Genetics, Health, and Society (SACGHS), Health Canada, the World Health Organization (WHO) and the OECD.

The Author

Brian R. Stanton, Ph.D.

Brian R. Stanton, Ph.D. works on IP, trade, and associated technology innovation policy matters. A principal in Stanton Consulting Services, Dr. Stanton was the Director of the Division of Policy at the National Institutes of Health’s (NIH) Office of Technology Transfer and was responsible for IP and technology transfer policy for the U.S. Public Health Service (NIH, FDA, and CDC) until 2006. His prior appointment at the US Patent and Trademark Office included efforts in establishing IP standards for bioinformatics, transgenic animals, and genomics.

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 17 Comments comments.

  1. Gerry Elman August 26, 2009 3:16 pm

    Well stated, Brian. Thanks for calling it to the IP community’s attention.

    Would you accept the position, if offered? Or, who’d be on your short list?

  2. BRS August 26, 2009 4:10 pm

    Gerry…thanks for thinking that I might be qualified. Do you think David Kappos would consider me? This position is tougher than one might think. I recall debating genus/species relationships with Steve Kunin one afternoon. I don’t think we agreed, but his thinking was clear, deliberate…and on the record! These debates need to take place in the open. Thanks again.

  3. Gene Quinn August 26, 2009 4:25 pm

    Those were the good old days, when discussions were on the record! When Dudas entered there were a lot of good people who were lost, like Kunin, Godici and others. Lets hope Kappos holds on to those in senior positions who are qualified and brings in (or brings back) others who are capable and can lend some assistance.

    -Gene

  4. JohnDarling August 27, 2009 7:27 am

    The position will be filed by a lifer who’s never written an app, or an opinion, or anything else that had to be correct.

    While it would be nice if somebody who actually knows something about something other than the count system and other inside baseball PTO nonsense got the job, it’s not going to happen. Probably because nobody in private practice would want the job.

    That’s truly unfortunate.

  5. EG August 27, 2009 8:16 am

    Gene and Brian,

    Very nice post. The DCPEP might be an interesting one if I didn’t live so far away from DC. And I know Steve Kunin, a really good soul who knew his stuff and handle “lively debate” on policy issues with class. We could certainly use another Steve Kunin in that position.

  6. Mark Malek August 27, 2009 10:09 am

    JohnDarling – I hope you are wrong. Maybe, just maybe, the PTO has learned the errors of the past and will look to new and innovative ways to fill this position. Just think – before Kappos, we never really had a Patent attorney in charge of the PTO…..pretty novel concept, eh?

  7. JohnDarling August 27, 2009 10:24 am

    Mark,

    I hope I’m wrong too. But I don’t think I will be. How many applicants from private practice do you think Mr. Kappos is going to have to choose from to fill the spot? My guess would be none.

    There are folks working at the PTO who do have significant private practice experience. I know several of them personally. Worked with them in private practice. Maybe they’ll apply for the position, maybe they won’t. I don’t know.

    But if they do, and the job is given to some lifer anyway, you can’t rest assured that nothing is going to change over there.

    I worked with a practitioner at a previous firm. Excellent attorney. Had plenty of trademark (prosecution) and litigation (patent and trademark) experience. Worked for WIPO for several years in Switzerland. Top notch guy. He applied for the Deputy whatver of the Trademark side back in 2002 or 2003. Couldn’t even get an interview. Some lifer from the Trademark side got it.

    Simply ridiculous.

    I know we’re all hopeful that Mr. Kappos is going to change things. I’m hopeful. Cautiously optimistic. But I’m telling you right now, the person who gets picked to fill this post is going to be a indication of whether things really are going to change.

  8. Gene Quinn August 27, 2009 1:17 pm

    John-

    I think you are right. The filing of the DC position will be a big indication of whether Kappos will really change the culture. I am sure there are qualified people in the Office, but I personally think that there are a lot of qualified people outside the Office who are very attractive candidates, including a lot with PTO experience who were cast aside some 5 years ago at the dawn of the Dudas era. With 5 years of living under the rules of the Office in private practice a number of those folks would be appealing and offer unique perspectives.

    -Gene

  9. JohnDarling August 27, 2009 1:57 pm

    Gene,

    The reason we need somebody with private practice experience is because we need somebody who respects the law. And what I mean by that is somebody who understands that you can’t simply instill policies like “quality = reject, reject, reject.” Somebody who understands that the law controls, not some policy designed to prevent the Patent Office from being embarrassed by issuing patents on exercising cats with a laser pointer.

    In private practice, we’d all love to simply tell our clients that every claim of every application they’re filing is patentable, that every one of their competitors is infringing every one of their patented claims, and that they’re never infringing any claim. Ever. But we can’t do that. We have to respect the law. Sometimes the answer isn’t the one you want. But you have to deal with it when you’re in private practice.

    At the PTO, nobody has to respect the law. You have hordes of SPE’s who were given the job 5 minutes after passing the full sig program. They’re supervising hordes and hordes of newbies hired in the last 5-6 years. So they get an OA from one of their juniors, they look at it, and check to see if anything is allowed, if there’s nothing allowed, they grab their pen and sign away.

    Can you imagine doing that when you’re supervising junior associates in a firm? Can you imagine signing anything put in front of you by a junior associate, without reviewing it, simply because from a skimming of the work it appeared that the associate had argued all the claims are patentable, or because the associate opined all the competitor’s claims were non-infringed and/or invalid?

    Of course you wouldn’t do that. Nobody in private practice would (or at least I hope nobody would). You would sit down with the associate, go through the work, make sure you were comfortable with the correctness of the factual and legal analyses, and then sign your name to it, or allow the associate to sign it.

    There’s nobody in the lifer class over there at the PTO that’s ever worked under conditions like that. The SPE class over there has a generally prevailing attitude of, “Hey, don’t see any claims indicated allowable, what the heck, can’t get in any trouble for signing it, where’s my pen!!!!”

    If some PTO lifer is given this position, you can forget about anything changing over there.

  10. Noise above Law August 27, 2009 3:24 pm

    RESPECT.

    wow, I was hoping for UNDERSTAND.

    I like your requirement better.

  11. JohnDarling August 27, 2009 5:19 pm

    NAL,

    You gotta aim high.

    It was the lifer class over there that wrote the claim examination and continuation rules. Nobody who has any respect for the law would have written those.

    The PTO received hundreds of comments, from very knowledgeable practitioners and organizations, that told them the rules were contrary to the law. The PTO just ignored the comments. No respect for the law.

    Feel free to review then-Solicitor Whelan’s remarks about the rules. I attended a Bar Association of DC (Patent, Trademark & Copyright section) meeting where Whelan spoke about a month before the comments on the rules were due (May 2006 or thereabouts) and somebody at the meeting told him the rules were contrary to law and might be challenged. Mr. Whelan replied, “We thought about that. We think we have a 50-50 chance, so take your best shot.”

    You simply can’t have people like that in positions of power at the PTO.

    The chief writer of those rules is gone, as are many of the old time lifers who cooked up that stinking pile of mess and then walked away when the mess hit the fan. But the driving force behind them remains. Until he is removed things will not improve. He is 100% responsible for the mess over there, IMO. He has to go.

  12. Lazarus Long August 28, 2009 11:20 am

    JD, I agree that “He has to go.” because “he” was the one behind the rules packages & many of the other recent problems at the office, including the “reject=quality” mandate. I just find it interesting that you don’t actually name “him”. Why not?? 🙂

    Personally, I think that there are TWO people up there that are responsible for the problems, both male, AFAIK, both of them are responsible for the rules packages.

    Oh, and there are a LOT of long-term people in the office that were/are against these policies & rules packages. Unfortunately, most of them are not high enough in the food change to make a difference.

    thanks,

    LL

  13. JohnDarling August 28, 2009 12:30 pm

    LL,

    He is John Doll. I don’t have any problem expressing my opinions with regard to Mr. Doll’s tenure at the PTO.

    I have seen him speak several times. In my opinion, he is arrogant and hostile towards applicants and practitioners.

    I’ve also read the interviews that he’s given to various publications. He states that it is his opinion that patent application quality is poor, and that is the reason for the lower allowance rate. He is wrong. He never presents any evidence of this “poor” application quality other than his opinion, which is meaningless as he simply has no idea what he is talking about. Practitioners draft, and prosecute, applications to serve their clients, and they do so in response to the requirements of the statute, the code, and the precedential decisions rendered by the reviewing court, i.e. the Federal Circuit. We do not draft and prosecute applications to serve the interests of the Patent Office. Examiners, and PTO (mis)managers, are not our clients. We also do not do the things we do simply to annoy the examiners and the PTO. Yet so many over there think we do. I wonder where they got that attitude from.

    We are willing to be as cooperative as we can while still fulfilling our professional responsibility to represent our clients as zealously as we can within the bounds of the law. Mr. Doll has absolutely no understanding of this because he’s never done what we have to do. I’ve seen him whine about the breadth of claims submitted, the number of claims submitted, and the number of references submitted. All of those things are done because, in our professional judgment, they are necessary to fully protect the client’s interests. What does Mr. Doll not understand about that?

    Instead of keeping his mouth shut, he has been running it far too much. And the result is that he has instilled an unwarranted and very damaging hostility in the examining corps towards applicants and practitioners. You see the posts from these, or should I say this, junior examiner every day: constant allegations that every single practitioner and applicant commits inequitable conduct in every response of every application. Junior examiners posting on the patent blogs that none of their applications have any allowable claims at all, not that they’ve been told to reject everything, but actually believe that nothing is patentable. Where else could they have gotten such ridiculous attitudes and beliefs?

    He also constantly puts out these phony statistics purporting to show what outstanding work the PTO is doing. His latest one is his boast that the PTO is affirmed 70% by the Federal Circuit. Never mentions that the PTO gets to cherry pick which cases go to the Federal Circuit. Same with the BPAI “affirmance” rate. Completely phony statistics. Utter garbage.

    I’m sure there are those over there who were against his “quality = reject, reject, reject” mandate. My question is: where’ve they been for the last 5-6 years? My guess is that they were “following orders.” That’s a shame.

  14. Lazarus Long August 28, 2009 1:38 pm

    JD, I agree with your assessments of Doll. You are pretty much right on. I remember him saying at an all-hands meeting a few years back (before the rules packages) that his goal was to make all applicant’s come in with ESDs like they do for accelerated exam. BAD idea & glad that didn’t happen. I would add in Joe Rolla to the list (I thin he is still up there; he has come & gone a few times now as a contractor or employee). Some of these ideas, particularly about IDS submissions, were from him.

    Let’s hope the new people that go up there are better.

    I also agree with you that most cases have something allowable disclosed. Probably 90+% do. Of course, getting it into the claims is sometimes another story.

    I do think that it would be helpful if cases based on foreign apps are actually proofread & edited after filing & not wait for the examiner to proofread it. It would help make understanding the cases a bit easier.

    thanks,

    LL

  15. patent leather August 29, 2009 7:48 pm

    JD: “The chief writer of those rules is gone, as are many of the old time lifers who cooked up that stinking pile of mess and then walked away when the mess hit the fan.”

    Who are you referring to, Bob Spar? Spar was a helpful type at the OPLA and used to help applicants with all sorts of odd problems. It’s a shame he got mixed up in that fiasco.

    I still don’t understand why Doll is back as Commissioner. Doesn’t the Commissioner have to be appointed by the Secretary of Commerce? Was this done again, or are there some interim rules at play? Maybe someone can have him removed on these grounds.

  16. JohnDarling September 1, 2009 9:32 am

    “It’s a shame he got mixed up in that fiasco.”

    I wasn’t referring to Mr. Spar. My sources tell me that Rolla wrote most of the rules. Maybe my sources are wrong.

    It’s a shame he got mixed up in that fiasco?

    That’s revisionist history. Those rules were written with the intent of screwing applicants and practitioners to cover up for PTO (mis)management’s abysmal performance in managing their work. Nobody got mixed up in that fiasco. They all participated of their own free will.

  17. JohnDarling September 1, 2009 9:33 am

    “I still don’t understand why Doll is back as Commissioner.”

    My understanding is the Commissioner is appointed to a five year term.