Nominations: Deputy Commish for Patent Examination Policy

By Gene Quinn
August 27, 2009

Lets be perfectly clear, the Patent Office does not call me and ask my input regarding anything, which should be readily apparent to those who read IPWatchdog.com regularly.  Had the Patent Office done so, and actually taken my suggestions to heart the Department of Justice would not have needed to ask the Federal Circuit to hold off on taking the claims and continuations case en banc pending David Kappos being confirmed and perhaps withdrawing the rules and mooting the case.  No, it wouldn’t have been necessary because I was suggesting that directly since at least December 2008, and was begging Jon Dudas in my writings week after week to do the right thing the go back to the drawing board as early as September 2007.  In any event, this doesn’t stop me from pounding my keyboard and publishing my thoughts here.  I guess you could say I am naive enough to believe that eventually good ideas will be implemented; and yes, I do understand that I just impliedly referred to good ideas and the federal government in the same sentence.  Notwithstanding, there is real hope in the patent community that Kappos will usher in real reform, so I have hope.  In the meantime, I want to nominate a few people for the open position of Deputy Patent Commissioner for Patent Examination Policy.

I have no idea whether any of these, or any of the people I will ultimately nominate, are interested in the job, whether they will apply for the job, or would even accept the job should it be offered to them.  So let me suspend reality for a moment, have a bit of fun and point out the names of a few folks who are certainly qualified, have the requisite broad based patent experience and knowledge and who, in my opinion, would do an excellent job assisting the Director and Commissioner in the creation of sound patent examination policy.

First, let me begin by saying who I will not nominate — Judge Pauline Newman and Judge Randall Rader.  My thoughts on these two jurists are well documented, and I have the utmost respect for each.  I believe each to be extraordinary patent thought leaders, they both really get and understand the patent system, patent law and the role proprietary protections play with respect to encouraging innovation and fostering economic development.  They are, however, in great need on the Federal Circuit, and it is silly to even consider suggesting they would, could, should or might consider such a downgrade in position.  I did nominate both for USPTO Director (see Newman Nomination and Rader Nomination), and while I do sincerely wish that cloning technology were more advanced and they both could be cloned and deployed into multiple positions through the Patent Office and Federal Judiciary, I would at least like to try and keep my nominations somewhat realistic.

Without further ado, my first two nominations are:

John White

John White

John White is a US patent attorney and a patent lecturer. He is an Adjunct Law Professor at John Marshall Law School, and he is also the principal lecturer/author of the PLI Patent Bar Review Course, a course that he originally created. In fact, since John began teaching patent bar review courses in 1995, he has personally taught approximately 40% of all practicing patent attorneys and agents how to successfully become admitted to the Patent Bar. John has also taught US Patent Examiners at the United States Patent & Trademark Office (USPTO) in the “Law and Evidence Course” necessary for them to advance to Partial Negotiation authority as Examiners.  John is my friend and former law partner, and I teach the PLI course with him.  I have not discussed this nomination with him, because I did not want him to talk me out of nominating him.  I do not know whether he has any interest, but the skill set he would bring to the job is particularly desirable.  Of all those I know in the patent community, John’s knowledge of the MPEP is second to none, and far surpasses most.  In fact, I would say his knowledge of the MPEP puts John in the rarified territory of being the top 1 or 2 MPEP experts in the country.  Wouldn’t that type of knowledge of the MPEP, experience as an examiner and years of experience as a patent attorney be a wonderful combination of experiences to bring to the position of Deputy Patent Commissioner for Patent Examination Policy?  I think yes.

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Stephen Kunin

Stephen Kunin

Steve Kunin has more than 38 years of experience in the patent world and 24 years of organizational management and leadership experience. He also formerly held the title of Deputy Commission for Patent Examination Policy, leaving the Patent Office only several months after the coronation of Jon Dudas as Director of the USPTO. Those familiar with USPTO history know that after Dudas took the reigns there was a brain-drain from the USPTO, and Kunin was one of those who was unfortunately lost, Nick Godici was another. Godici has returned in a consulting capacity for a time, so why not bring back Kunin? It would be nice to pretend that the last 5 years didn’t happen anyway and get on about doing the business of the Patent Office, which rumor says is to actually grant patents. In any event, while at the USPTO Kunin participated in the establishment of patent policy for the various Patent Organizations under the Commissioner for Patents, including changes in patent practice, revision of rules of practice and procedures, establishment of examining priorities and classification of technological arts, and oversaw the operations of the Office of Patent Legal Administration, Patent Cooperation Treaty Legal Administration, and the Office of Petitions. He originally joined the PTO as a patent examiner in June of 1970, became a Senior Examiner in 1977, Director of the Manufacturing Group in May of 1983, and when a new Electrical Communications examining group was formed in April of 1984, he became its first Group Director. Since November 1, 2004, Kunin has served as a partner with Oblon, Spivak, McClelland, Maier & Neustadt, P.C. I cannot imagine why he would ever want to leave Oblon to tackle the enormous problems of the Patent Office, but again, as with John White, the experience and knowledge that Kunin has is the exact type of experience and knowledge the next Deputy Commissioner must have.

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 10 Comments comments.

  1. JohnDarling August 27, 2009 12:53 pm

    I nominate Caroline Dennison.

  2. Lazarus Long August 27, 2009 1:19 pm

    I (seriously) nominate John Darling. He always says he has the answers & it would give him a chance to try to put them in place. Plus, he does have experience in & out of the office. But will he apply??

    thanks,

    LL

  3. JohnDarling August 27, 2009 1:44 pm

    Thanks, LL, but I can’t afford the pay cut.

    Do send Ms. Dennison an e-mail and tell her that JD expects her to apply for the gig. If nothing else, it will give her something to laugh about.

  4. Lazarus Long August 27, 2009 2:00 pm

    JD, that’s the problem with most people on the outside. They can not, or will not, accept a pay cut to come work at the office in upper management. If they do not, then all that is left to choose from are people that are already on the inside. Not saying that there are not some good people inside, there are. But to get the people like you are always talking about getting would usually require an outsider. If they do not apply …

    thanks,

    LL

  5. JohnDarling August 27, 2009 2:39 pm

    Ms. Dennison is highly qualified. The single most qualified person working at the PTO at the moment. There is no other individual over there with her range of experience, inside the PTO and in private practice. Mr. Kappos can scour the ranks of the PTO for the next year and he won’t find anybody inside the PTO more qualified than her. Whether she’ll apply for the job I don’t know. I hope she hears about my campaign, which I just started here like an hour or so ago, to get her nominated and submits her application.

    The pay is a problem, I can’t deny that. There are other factors though that would make somebody in private practice reluctant to go work in the management of the PTO. One of those factors is the lifer culture over there. I know that nobody over there wants to hear that, but it’s true. There are simply too many people at the PTO who have the attitude of “Hey, I don’t care what the Deputy Dog for Policy and Table Scraps says, I been gittin’ my counts this way for 20 years and I ain’t about to change what I’m doin’ no way, no how.” In the real world, people like that don’t last long under competent, experienced management. They’re removed first thing. At the PTO, those people are venerated. They’re exalted. They’re beloved. They’re given “outstanding” ratings and awards and bonuses.

    And nobody, and I mean absolutely, positively, without a doubt, nobody in private practice would be willing to go work at the PTO and try to put up with POPA’s nonsense. That’s a deal breaker all by itself.

  6. anonymousAgent August 31, 2009 10:52 am

    I nominate Kevin Noonan, the Chief Patent Doc

  7. Anon September 2, 2009 9:51 am

    Before Kappos nominates a Deputy Commissioner, he needs to get a handle on the problems within the OCIO. A major re-alignment was announced by John Owens, a CIO appointed by Dudas in his waning days. Why on earth did Kappos allow Owens to move forward with this? This re-alignment has done nothing more then add additional layers of bureaucracy (more chiefs, not enough indians) and allows his AOL cronies to exert even more negative influence within the OCIO. AOL Folks like Dave Conley, Elaine Greene, David Chiles, Lisa Kidd and Joseph Wolf need to be shown the door. Kappos is going to have a major problem on his hand with the number of grievances that are about to be filed. The hiring practices of Owens and Conley need to be investigated.

    The IG needs to get in here to investigate the steering of government contractors. You need look no further then Owens Swat Team, which was awarded to a personal friend, and the PTO NET 3 hardware contract. This is just the beginning. They are also discrIminating against Raytheon and CSC, so that they can knock down their ratings and award an additional SDI contract to the current Swat Team led by a close former associate of Owens and Conley.

  8. Gary Holliday September 3, 2009 11:06 am

    Although I’m not a patent examiner, I applaud your willingness to address who should be appointed Deputy Commissioner. However, we have to face the facts that the USPTO is a monopoly regarding the approval/disapproval of a Patent. Also it’s one of the many bureaurcratic institutions established and controlled by Congress. As we all know, these days Congress seems to be out of control and so many of their institutions are the same. It”s the trickle down effect. It appears at least to me that Congress no longer listens to the public but they do embrace this idea of putting bandages if they think the problem will just go away till another day. This seems to be the case of the USPTO. Let’s put a bandage on ,or even better let’s change from one bandage to the next thinking that they’ve successfully pulled the wool over the eyes of the public. In the meantime the USPTO management becomes experts at deception covering up the realities of what’s happening internally that will ultimately impact the publics ability to get a patent through the process. Case in point is the USPTO’s IT initiatives. Their record for IT initiatives is about 70% failure and 30% minimal success. They tend to apply the bait and switch routine to avoid the inevitable failure of their systems. In other words, when a new director comes on board the first thing they do is reorganize to protect the innocent. The next thing they do is introduce a new piece of software or concept, Cloud, for example. Then they buy about a year of time to stave off being blamed for failure because they have to learn what Cloud is all about as they try to implement this concept. In the mean time their technology infracture is in shambles because everything is wired together piecemeal. By the time the new Commissioner is in his second year they’ll switch to some new tactic hoping that their first tactic is forgotten about. Then the y move onward without fixing the real problems. As you can see it’s a vicious circle if the new Commissioner let’s the IT group get by with this bait and switch routine. Truly someone needs to be appointed as Deputy Commissioner. However, that person needs to stop the game and get to work with real milestones especially in the IT departments and take out the bloat in the Patent Process.

  9. JohnDarling September 3, 2009 2:35 pm

    The two posts above are enlightening. For an agency that is supposed to be promoting innovation, the PTO’s IT infrastructure is barely ahead of the abacus.

    For example, if I search a patent number on the PTO website now, all I get is the text. I can click a button to get the tiff image of the patent.

    But shouldn’t I be able to get the IFW of the patent too (assuming it is a patent that has an IFW), or at least the PAIR record (if it is a patent that has a PAIR record, but no IFW), without having to switch over to EBC and selecting PAIR? Can’t they put a button(s) there that let’s me jump right to PAIR and/or the IFW?

    I mean, who wouldn’t want that functionality? Is the PTO working on providing it? If so, what’s taking so long?

    Why does it take 3, 4, 5, even 6 weeks for responses I file by EFS to be entered and docketed to the examiner? Can’t they automate that? Do we really need LIE’s shuffling electronic versions of the documents around? Good lord, it’s like the PTO is still back in the old days with guys pushing mail carts around Crystal City. It’s ridiculous.

    My sources in the PTO also have complained to me about how terrible their internal systems (e.g. eDan, or whatever the heck it is) are. The stuff they tell me makes my head spin. Messages get deleted with no record of them ever having been sent or received. It’s like the systems were designed by people who’ve never worked in an office environment.

    Mr. Kappos does have his hands full. But the things he needs to do immediately (sorry posters above) are 1) send all of the donothingknownothinguselessdeadweightGS-15’s (e.g. QAS, RQAS, TQAS, WQAS, subject matter experts, business process specialists, workgroup managers, appeal practice specialists (ROFLMAO), etc.) back to examining and 2) automate the entry of filings and get rid of 90% of the LIE’s.

    Once he does that, he can turn his attention to the OCIO.

  10. helen September 4, 2009 4:44 pm

    I’m a West Coast patent lawyer. With bad economy, millions are unemployed. I have settled for a part time job. People are standing in line for job openings, while the USPTO CIO is in the “hiring spree”. Mr. John Owens hired six of his friends with salary above hundred of thousands each. This CIO must resigned.
    Secretary Gary Locke should make good his promise on holding upper managers a high ethical standard.
    It’s the Secetary of Commerce’s responsibility of cleaning favorism and corruption at an organization that supposes to protect World Intellectual Property