Suggestions for USPTO Director David Kappos

By Gene Quinn
September 8, 2009

One month ago today David Kappos was confirmed at the Undersecretary of Commerce for Intellectual Property and the Director of the Patent and Trademark Office, and days later he was sworn in by Commerce Secretary Gary Locke.  Since Kappos took control of the USPTO the outward appearance of things has been slow, save his nomination of Robert (“Bob”) Stoll to the position of Commissioner for Patents, and the naming of Margaret (“Peggy”) Focarino Deputy Commissioner for Patents. We are all still awaiting what I suspect is the inevitable withdrawal of the claims and continuations rules, which would moot the Federal Circuit appeal. I just cannot see any other outcome being logical. The Department of Justice really tipped the government hand asking the Federal Circuit to delay taking the case up en banc pending Kappos’ arrival and potential withdrawal of the rules. So the big question seems not to be if those rules will be recalled and the appeal mooted, but when will the announcement be made. Then the even bigger question will be what will Kappos and the USPTO do with respect to streamlining the application process and plowing through the backlog of cases? As we enter into the home stretch of fiscal year 2009 and are getting ready for the beginning of fiscal year 2010, I have a couple suggestions for Kappos’ consideration.

In no particular order of preference, here are my thoughts on initiatives that should at least be considered:

1. Streamline Patent Applications

This may come as a shock to virtually everyone, but I do not think that the Patent Office had a bad idea with respect to the claims and continuations rules.  It seems clear to me that the effort was to attempt to streamline patent applications and make them bite-size so that they could be more uniform in size, complexity and number of claims.  This is smart for a lot of reasons, but the reality is that the rules were terrible, ill-conceived and also directly contradicted the statute, Constitutional purpose and common sense.  A true mess was created by the leaders of the “old,” Dudas/Doll era Patent Office, you know the “Anti-Patent Office” or maybe the “we don’t allow Patents Office” or “lets hold up innovation until it is technologically irrelevant Patent Office” or… well… I suspect you get the idea.

The goal of streamlining patent applications and the patent process is perfectly fine, it just needs to be done in a way that makes sense and doesn’t declare war on those innovations that are the most commercially relevant.  You know, the ones that the Constitution wants to encourage.  Could you imagine Thomas Jefferson suffering the embarrassment of a monopoly on nonsense while limiting real innovation?

In any event, if Kappos and the Patent Office are going to really revisit the examiner work quota they need to do that in a way that allows them to engage in real world workflow management.  A first step will be to have uniform patent application size, uniform number of claims and get a handle on how much time examiners should have to spend on each application without the payment of additional fees.

2. Fee for Service

The Patent Office never has believed they are a fee for service entity, and that is almost comical.  They charge more for size, more for additional claims and lets face it, everything is a la carte.  Getting anything from or out of the Patent Office is a little like going to Ruths’ Chris Steakhouse or Morton’s.  Everything is a la carte.  The difference is that at a fine steakhouse they actually charge you commensurate with what you order and what is provided.  I don’t mind paying more for quality there, and I certainly wouldn’t mind paying more for quality at the Patent Office.  Come to think of it, I wouldn’t mind paying more for any service at the Patent Office.

Just like I laugh every time I hear President Obama talk about the Post Office and how they have not put Fed Ex and UPS out of business (no kidding!), I can’t believe why the repository of all that is our technical knowledge and innovation infrastructure should operate as a quasi-government corporation.  The Post Office does some things extremely well, and so does the Patent Office.  We should keep those things and remake everything else.  We should not force everyone into the same pigeon hole in term of price, and a la carte services should be priced appropriately and according to the work performed and service provided.  Of course, this presumes there will be service provided and work will be performed in a timely fashion.  The truth is that under the Old Patent Office any a la carte services were over priced.  I still cannot believe the audacity to make you wait for 3, 4, 5, 6 or more years for a first office action on the merits and then charge you an extension fee for responding 3 months and 1 day after receiving said office action.  That takes real nerve and cast iron cojones.

3. Actually Enforce UPL Rules

Fifty-one weeks ago today the Patent Office made effective new Rule 11.5 relating to the unauthorized practice of law.  For reasons known only to those within the Patent Office, and perhaps more specifically to those in the Office of Enrollment and Discipline, the USPTO has seen fit not to enforce the unauthorized practice of law rules.  I have heard from numerous people in the know that the Patent Office does not believe they have the authority to enforce its Rules against non-attorneys and non-agents.  So that means that the unauthorized practice of law rules can only be enforced against those who are authorized to practice.  Come on!  Even for a government agency that cannot make any sense, can it?

The Patent Office has a rule that requires those who wish to represent inventors and applicants to take a special patent bar examination and pass said patent bar examination and also pass a character and fitness review.  If you are going to have a special rule, and your own branch of the Ethics Police to police the patent bar, then the least you can do is actually require those who represent inventors and applicants to follow the rules!  This is not rocket science.  Independent inventors lose hundreds of millions of dollars every year, and a big portion of that market represents monies paid for legal services provided by those who are not licensed to provide legal services.  The sad reality is the Patent Office is complicit with the invention fraud companies and continue to allow them to operate despite changing their own rules specifically for the purpose of making what they were doing the unauthorized practice of law.

Mr. Kappos, if you really want to win over the independent inventor community that has been a little skeptical of your big tech, corporate America background you should order the vigorous enforcement of Rule 11.5 and clean up the scam market.

4. Examiner Training

I am critical of some examiners, but I also know that the overwhelming majority of patent examiners are hard working people who do try and do their job at a very high level.  Those who care to do their job at a high level need support and training.  The work at home program has cleaned out many senior level mentors and the younger examiners do not have the day-to-day learning they once had.  I also see a number of examiners in the PLI patent bar review course every year, and it is clear that these folks really want to do a good job, but they do not understand all of the many rules and have misunderstandings about 35 USC 102.  Lets face it, 102 is a life long learning project.  Lets also face the reality that examiners do not have a broad based understanding of the MPEP.  They know what they deal with day in and day out very well, but they do not understand the broader picture and why attorneys and agents do certain things.  The examiner corps should be required to understand the bigger picture and become knowledgeable regarding the MPEP.  If patent attorneys and patent agents need to take a patent bar examination to represent clients then why don’t patent examiners have a similar requirement?  Why not teach them the rules of practice rather?  This seems like a no-brainer to me and one that is long since overdue.

This should keep Mr. Kappos busy for a while, at least if he were to try and do any of what I am suggesting.  The reality is that the likelihood is that nothing will get done.  I think Kappos is a good guy, but I hope that the gravitational pull of the Patent Office doesn’t suck him in.  There is such hope right now, and I sincerely hope that he doesn’t wind up wasting his time on prosecution super highways, or prosecution highways that use superconductivity to streamline the global harmonization of patent laws between concerned tri-lateral participants to international conferences.  I have no idea what that means, but I think that is what Dudas spent his time working on.  How that made the day to day operations of the Patent Office better remains a mystery.  In any event, we will know things have changed if we can actually understand press releases and the photo ops are with Kappos actually on campus of the USPTO in Alexandria.  I have my fingers crossed!

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 as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 6 Comments comments.

  1. Dan Feigelson September 9, 2009 7:21 am

    Gene, regarding your point no. 3, it’s not simply that the USPTO doesn’t bother to enforce its own rules. In principle, under 35 USC 33 and 18 USC 1001, US citizens who without authorization represent others before the USPTO may be subject to fines and/or imprisonment. But foreign residents who do the same aren’t subject to any penalties, and at least here in Israel, some people have figured this out. I posted about this last month on my own blog (http://www.iliplaw.com/2009/08/licensure-of-patent-practitioners-2-why-does-the-uspto-discriminate-against-us-citizens-.html).

    What’s really absurd about the situation is that at the same time USPTO says it’s powerless to enforce the statute against non-registered practitioners, the USPTO itself facilitates this fraud, since it allows anyone to obtain a customer number, and it doesn’t check to see if anyone associated with the customer number is actually registered to practice. Obviously, if a lone inventor wants to get a customer number, he should be able to; but under the present system, Joe Crook can get a number and then prosecute applications on behalf of a third party. Even if the USPTO doesn’t feel it can impose penalties against non-registered practitioners, it surely can discharge its gatekeeper role, and prevent unregistered practitioners from practicingg. For example, it could make a rule that either all the inventors on an application are associated with the customer number, or at least one registered practitioner is associated with the customer number. Failure to comply with this requirement would result in suspension of the examination of the application until the requirement is complied with; this would be considered delay on the applicant’s part and would not result in patent term adjustment under 35 USC 154.

  2. Gene Quinn September 9, 2009 10:36 am

    Dan-

    You raise a good point. There are legitimate reasons the USPTO would allow non-registered people to practice. For example, if a group of inventors want to file an application they can elect one inventor to prosecute and thereby represent the others. This and the example you mention are a far cry from letting companies pose as patent law firms, or letting widespread abuse by those who are clearly practicing law and are not co-inventors. On the Trademark side it is even worse. LegalZoom files approximately 5% of all trademark applications filed at the USPTO, they engage in representation, provide advice and the advice is typically incorrect. They probably spend about $4 million a month in fees to the USPTO (perhaps more now) and brag they are the largest user of the USPTO. This is an abuse and the USPTO officials who turn a blind eye are a part of the problem.

    I agree with your suggestion that the USPTO could deal with some of the problem simply by tightening up customer number practice. They could also take their head out of the sand and stop focusing on the extremely few situations where no attorney or agent is needed and actually enforce their rules. To have a patent bar exam and not prevent non-attorneys or non-agents is absurd.

    Thanks.

    -Gene

  3. Mr. Examiner September 9, 2009 11:03 am

    Gene,
    When younger examiners become a GS-11 or 12 (before we can be selected for telework) we must take and pass a “cert exam”, which contains questions selected from the same pool as the patent bar exam, the exam is just half as long. I disagree about examiners not knowing the MPEP enough. Sure examiners are going to know more of what they use daily, but I think it’s also that way for attorneys. Take it as a compliment Gene, but I think you know the MPEP far better and in depth than most attorneys (especially considering you teach the bar review courses, when you teach it forces you to be constantly refreshed and aware of all the subject matter). I think if many attorneys started taking your review course (which they wouldn’t because they’ve already passed the bar and have an ego the size of a Morton’s steak) you’d find many of them fail to properly understand the MPEP as well!! People are entitled to a patent UNLESS…..and the unless is what the examiner needs to understand, and I think many of us understand just fine. As an end note, about 50% of my applications contain at least one independent claim broader than the prior art that is cited by applicant’s own admission. Making the PTO narrow the claims up FOR the applicant is NOT going to help expedite prosecution and eat at the backlog.

  4. Gene Quinn September 9, 2009 11:25 am

    Mr. Examiner-

    I do take what you say as a compliment, and you are probably right. I think attorneys should take a refresher course like ours periodically. I still learn more things all the time, particularly when students ask for advice on cases they are working on. We frequently get asked the most obscure and fact specific questions you can imagine, which have little or nothing to do with the material tested. Then we overhear the student calling back into the office “they said what we should do is…” Of all of the proposals the USPTO came up with during the Dudas era the best one was substantive CLE requirement, which didn’t move forward and is going to be watered down to the point where it is meaningless. The MPEP is complex, the rules change, they are inconsistent at times and a big problem is attorneys not knowing the rules. I agree with you on that.

    In my experience, examiners we see frequently do not really understand 102 and what they can do and what they cannot do. This is not to blame anyone, just a reality. I think examiners could be better trained and help along the way, which would lead to a better work force and greater retention. I do agree that by the time an examiner can telework they get it, know plenty and those folks need to be doing the heavy lifting because they can. I think we need to do more to get the younger examiners to that point quicker though. My comments on telework realted to the fact that with many experienced folks not in the building that means there is a higher density of those who are not experienced, and they do not get the mentoring they could or should. I need to write more on this point.

    I think greater understand on both sides would be extremely beneficial.

    -Gene

  5. Noise above Law September 9, 2009 3:42 pm

    Dear Gene,

    I find that your article brings out some strong reactions – some positive and some negative.

    Looking at your introductory paragraph, I am struck that the question of “when” is simply the wrong question. Much more important is the question of “what will…do”. This question is very much impacted by the decision to pursue the claims and continuations litigation or not. Whether this is “clear” and inevitable to withdraw very much depends on the legal ramifications of such withdrawal. As I understand it, and please correct me if I am mistaken, IF Kappos does indeed withdraw the litigation, the rule of law would revert to the District holding. That district holding was a complete defeat for the Office and its agenda of grabbing substantive rule making power. A retreat now is to acknowledge total defeat, giving back the partial victory obtained at the CAFC so far.

    I don’t see that happening, even with Kappos in charge. The collateral damage is just too great.

    **While writing this I also note this potential development from Patently-O: “Professor Arti Rai to join the PTO? …Professor Rai suggests that the PTO should continue to use the courts to secure additional control over its own rulemaking and procedural authority.”

    If this be true, your position on inevitability is lost.

    Regarding Initiative 4 – Examiner Training. I enthusiastically agree and would go one step more. The recent “guidance” provided by the Office concerning interim examination instructions for evaluating patent subject matter eligibility contains the typical doublespeak and lack of commitment that we have come to loath from government agencies. Specifically, the rationale offered for such temporary guidance was proffered as to address the disparate BPAI and examiner holdings since Bilski, yet in the very first paragraph the Office conditions the guidance with “These examination instructions do not constitute substantive rulemaking and hence do not have the force and effect of law.” And “Consequently, any perceived failure by Office personnel to follow these instructions is neither appealable nor petitionable.”

    How exactly is such superfluous guidance that apparently is not enforced and followed by examiners supposed to address anything? Of what use is guidance that does not have to be followed?

    Or is John Biggers correct in his post from Patently-O:
    “I wonder about: “Since Guidelines are not rules or laws, an examiner’s failure to follow the Guidelines is neither appealable nor petitionable.” – because is it not pretty fundamental that federal agencies are required to follow their own rules? Not enforceable by administratve law judges and federal courts? Supreme Court cases on the point:
    Arizona Grocery Co. v. Atchison, Topeka & Sante Fe Ry., 284 U.S. 370, 52 S.Ct. 183, 76 L.Ed. 348 (1932)
    United States v. Nixon, 418 U.S. 683, 94 S.Ct. 3090, 41 L.Ed.2d 1039 (1974)
    Is it not pretty doubtful that the PTO will get some kind of king’s-X against following its own guidelines – just by SAYING that they are not rules?”
    at http://www.patentlyo.com/patent/2009/08/interim-guidelines-on-statutory-subject-matter.html

    Regarding Initiative 3, enforcing UPL Rules. I enthusiastically agree here too. Hmmm, should examiners also pass a test of knowledge on the MPEP (those guidelines they don’t even have to follow)? Do they pass a similar or more stringent test? I believe that the USPTO does have answers to these and other questions. Just look for Department C-22. ;-p

    Regarding Initiative 1 and 2, here I strongly disagree with much of what you state and think that your positions are inconsistent across these initiatives. My disagreement is more with your initiative 1, as fees are currently different for certain levels of effort (whether the examination process itself benefits is clearly another matter).

    While the focus of your initiative 2 is on fees, I implicitly read from this that one size fits all is not appropriate. You even state that we should not force everyone into the same pigeon hole. My issue is that you take the reverse of this stand on the matter that is even more crucial than fees. Each application should stand on its own merits. Not only is this a constitutional issue so expressed by Congress, but is also a key factor in the anti-bright-line rule stance held by the Supreme Court. Each application should not be pigeon holed to fit some generic size or claim limitation. Yet that’s exactly what you call for in your initiative 1. You merely state that uniformity in size, complexity and number of claims would be desirable, yet you don’t state why. You state that the ill-begotten effort at rules “directly contradicted the statute, Congressional purposes and common sense”, yet you repeat that very same mistake with the uniformity goal. In my humble opinion, it would be much more desirable (and more in line with current Law) to simply not try to have a generic production unit in a scheme to measure productivity. Conflating a management idea with the purpose of the office is just bad news.

    A secondary issue is the broad proclamation that innovations that are most commercially relevant should not have war declared against them. This concept presupposes that commercial relevance can somehow magically be divined at the onset of the patent process. It just isn’t so.

  6. Gene Quinn September 9, 2009 3:54 pm

    Noise-

    I am not aware of Aarti Rai joining the Patent Office. If that happens I would be completely and totally shocked. I have heard rumors that I cannot substantiate but which come from multiple sources that she was offered the position of Director of the USPTO and turned it down. I don’t know that is true, but it has enough plausibility that it cannot be dismissed. If this is true (which I personally think is likely) it would not make sense for her to join the USPTO in any position. So if Patently-O is correct good for them getting a scoop. It would go directly against everything I have been hearing and my sources have so far been dead on accurate with everything. Much I do not have the ability to write until something happens, but I have been tipped about a good many things that have always turned out to be exactly what happens. I just wish I had liberty to run with some stuff before it happens. Oh well, my sources and respecting them is far more important to me than being first. I prefer to be right and have the ability to speak with authority.

    With respect to the inevitability of the rules being withdrawn, we shall see soon enough. You are right that with the original panel of the CAFC being vacated the standing precedent would be from the district court case. District court precedent is good, but not as weighty as an Appeals Court, so if I were the Director or in the DOJ I wouldn’t worry at all about that precedent standing. The Dudas/Doll USPTO always wanted substantive rulemaking, Congress has always said NO and the CAFC vacated decision effectively said yes. Kappos et al don’t need substantive rulemaking. They can honestly stay within procedure and get practically everything they need done accomplished, save some minor things that would change statutes, which they couldn’t do even with substantive rulemaking.

    I will be shocked if the claims and continuations rules are not withdrawn. Kappos is a practical guy, he personally opposed those rules at the district court, the DOJ has showed its hand and I think everyone knows why the full CAFC accepted the case en banc. If they were going to affirm the panel there would be no reason for them to take the case en banc. The writing is on the wall. The claims and continuations rules are DOA.

    -Gene