Being in the greater Washington, DC area allows me to show up at IPO events, USPTO events and a host of other events. In June when IPO honored Judge Michel at the Smithsonian I caught up with Q. Todd Dickinson, who is the current Executive Director of the American Intellectual Property Law Association and a former Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. I asked him if he would speak with me on the record, and he agreed. My travel schedule for the PLI patent bar review got in the way a bit, but throughout the summer we bumped into each other several times. At the USPTO Roundtable on Three Track we again talked about and interview, and shortly thereafter the interview date was set. On August 18, 2010, I had the privilege of sitting down for an extended one-on-one interview with the man known simply as “Todd” to practically everyone in the patent community.
When Dickinson was introduced at the USPTO Roundtable on Three Track, Patent Commissioner Bob Stoll simply said “Todd, would you like to come up?” Dickinson came to the podium and with his typical quick whit said “thank you Bob, I realize like Cher I only need to be known by one name…” Indeed, Dickinson does only need one name, and while he and Stoll joked about whether that was “Q.” or “Todd,” it is undeniable that he is indeed one of the larger than life figures in the patent industry. I like Dickinson a lot and respect him a great deal, so it was great to sit down and chat with him for close to 90 minutes.
Since Dickinson assumed the reigns at AIPLA he has taken the organization in what can only be described as a strong positive direction. Dickinson told me during the interview that the AIPLA takes positions on every Federal Register Notice, whether it deals with Copyrights or Patents, while still being involved in what seems to be a never ending stream of amici brief opportunities. From my perspective, long gone are the days when AIPLA seemed almost incapable of standing up and taking a position, as was almost the case with the claims and continuations rules some 3 years ago. No doubt, AIPLA is extraordinarily relevant today, and Dickinson is an excellent advocate, always informed and fairly presents the sometimes divergent views of the AIPLA constituencies.
As you will read in Part 1 of the interview (see below) Dickinson was not only the first Director of the USPTO, but he was the last Commissioner. The American Inventors Protection Act shuffled the titles around for seemingly unknown reasons, and since the AIPA went into effect while Dickinson was at the helm of the USPTO he is guaranteed a place in patent history, or at least patent trivia. In Part 1,we talked about his philosophy with respect to allowances and the fact that during his tenure (followed by Nick Godici’s tenure) allowances were over 70%. We also discussed how he managed to get on the short list for the Director/Commissioner job, the confirmation process, the craziest question he received during confirmation, vanishing IP boutiques and RCEs. Part 2 is largely devoted to patent reform, which will be extremely interesting, I promise!
Without further ado, here is Part 1 of my interview with Q. Todd Dickinson.
QUINN: First I’d like to thank you for taking the time to sit down and chat with me about patent matters and about the AIPLA.
DICKINSON: My pleasure. We deal with all intellectual property here, don’t forget not just patents.
QUINN: No, no, that’s good and we will try and cover some of that, too. Actually, that may be a good place to just start here. I received an email the other day, which kind of surprised me. The person says, not knowing I was coming to talk to you, “Someone needs to remind the AIPLA that they represent the patent folks.” Apparently there is a perception that you’re doing too much on the copyright side, which to me came as a complete shock.
DICKINSON: Hilarious (laughing). As you can imagine by my laugh we usually get the opposite comment. But I guess we must be doing something right then.
QUINN: Well, that was the way I took it. If somebody’s saying, oh, you’re doing too much on the copyright, then obviously you’re doing some good stuff there. In any event, as you know one of the things I like to do is get behind the scenes with people and get to know them in ways, and dive into things that probably aren’t so well known about them. So one of the things I thought might be good is if you could give us a Reader’s Digest version of why, how, and where you decided to go to law school and then we can pick up with your career from there.
DICKINSON: Well, I was in college in the early 70s and was very heavily involved in student government at the little college I went to. And it was also a time of activism. The Vietnam War was winding down. But I was a chemistry major, and my chemistry advisor who was the chairman of the department came to me one day when I was a late junior, maybe early senior and said, “I hear you want to go to law school?” I said, “I’m thinking about it.” And he said, “Well, how are you gonna combine that with chemistry?” Everyone else I think who was a chemistry major at that school was going to med school, and I didn’t have an interest in that. And he said, “Why don’t you look into patent law.” I didn’t know anything about it. And I went off to law school and did, and one thing sort of led to another. But I decided to go to law school primarily because of a general interest in politics and public policy and that belief you have in college you can change the world a little bit.
QUINN: How did you decide to go and get a chemistry degree? Because I tell the story that I was going be a chemical engineer until I took chemistry.
DICKINSON: When I was about probably about eight or nine I came down one Christmas morning and there was a huge, one of those big eight, ten panel Gilbert Chemistry Sets, which I’d asked for. And I fell in love. And I retained that interest in chemistry and my two best friends it turned out were also interested in chemistry. We had a very strong program in the high school I went to so my primary interest was available. I even had a big lab thing built up in the basement. Those two guys, one’s now an M.D. and he works for NIH in research. And the other teaches chemistry at the University of Denver. So we all sort of hung in there with it.
QUINN: Well, good. And you went to the University of Pittsburgh?
DICKINSON: I went to Allegheny College undergrad. And then I went to the University of Pittsburgh for law school, right.
QUINN: Is that just because it was local?
DICKINSON: My grandfather was in the original class there. And my father had been admitted. And the dean of the school was a family friend. So there was a personal connection.
QUINN: Another thing I’d like to start asking folks, because I get interesting answers to this, and maybe reflective answers as well, is this: if you Todd Dickinson now could go back and talk to an earlier version of Todd Dickinson, whether it be maybe when you were going into law school or right out of law school or at some pivotal point in your life, what point would that be and what advice would you give that younger Todd?
DICKINSON: I think I can point to a couple. My career has been built by moving a fair amount, and we can talk about that at some point. But I think the advice I’d give, and I would give it to myself at several points is the risk is worth taking. Don’t be afraid of it, it’ll turn out okay.
QUINN: Were you ever afraid — because I see in your career you have taken a non-linear path, which many would suggest against. I mean, I like it. That’s sort of the way that my career has kind of gone, very non-linear.
DICKINSON: I think part of that is a function of our profession, frankly. The growth of the importance of intellectual property law and deciding I’m going to be a lawyer happened to coincide. And so there’s just been this increasing need for people as I’ve gone through my career so I’ve been pretty fortunate in terms of having been recruited for positions and been able to do what I wanted to do. I was able to become a chief patent counsel, for example, at a pretty early age. I was in my late 30s, which is somewhat early. Because I had the experience of being in an oil company, in Chevron for ten years and being from Pennsylvania, and Sunoco, the Philadelphia based oil company was looking for a chief patent counsel.
It’s also been a function, and this is on the advice side, of being open to new challenges when they’re presented. I think sometimes people are closed off and don’t see the possibilities and opportunities on occasion. And then I think another factor is a lot fewer people build their careers that way anymore. It’s become a lot rarer for somebody to stay with a company their whole entire career. My father, for example, was with Alcoa, the aluminum manufacturer, and he was with them for his whole career. And I think that’s more and more unusual.
QUINN: Do you think that that’s a function of our practice area? Or maybe a larger societal matter?
DICKINSON: I think it’s a combination of both. I think we’ve seen a significant amount of movement, personnel movement; certainly at the senior ranks, if you will, in our profession. Every once in a while I’ll stop at one of our meetings or another association meeting and I’ll look out over people I’ve known for 20 years in the career. Maybe 10% are where they were five years before. There’s just been a lot of movement.
QUINN: Is that because of the changing face of the large IP boutique?
DICKINSON: There are a lot of factors. I think that the number of pure boutiques has gone down significantly. One thing that happened is that as those boutiques grew or as the profession grew, the large law firms which for years would shun IP lawyers suddenly decided they needed them, and in some cases they were playing catch-up. And so they would go to certainly people with books of business, partners primarily at boutiques, and cherry-pick. And if enough of that happens, it presents a big challenge for a boutique. There’s also the phenomena where boutiques were totally brought into large firms. When I left the Patent and Trademark Office I went to work for Howrey Simon, but a few months before I came there they became Howrey Simon Arnold & White because they merged with the Arnold White & Durkee, one of the classic great IP boutiques in the country’s history. So that’s another thing that’s happened.
QUINN: Just the changing face, I guess.
DICKINSON: The changing face, yeah.
QUINN: Well, I know this is going to be an incredible fast forward, but I’ve got a lot of things I’d like to talk to you about the Patent Office and also AIPLA, so maybe if we could just sort of jump right into when you joined the Patent Office. Now, I have it as being in February 1998 when you became Deputy Assistant Secretary of Commerce and Deputy Commissioner of Patents and Trademarks, is that correct?
DICKINSON: It’s actually a little before that; shortly after President Clinton’s reelection. One thing that happens is there’s usually a lot of change and they look for new folks for different positions. And I was approached about coming into the office initially as Deputy. And we went through discussions of that and through the protocol and the clearances and all that elaborate process. So at that time the Deputy position was a Senate confirmed position. So that takes a while. And so the question arose do you wait? I was at Dechart at the time. Do you wait in your law firm while the confirmation occurs or do you come to DC and come into the office through some other means? And it’s tricky for lawyers in particular. Because you can’t take new clients and you run into conflicts and when it takes four, five, six months for the confirmation it’s a problem. So Secretary Daley – Bill Daley at the time – when he decided he wanted to hire me invited me to come and be a Special Assistant to him. So I came in as a Special Assistant in December of 1997 while my confirmation was pending. And it was a great time, because you really can’t do anything but learn. So for me I found it an extraordinary advantage because I was able to just roam around the Patent and Trademark Office, or have people come and talk with me without having a lot of responsibilities at the time because you really can’t do anything until you’re confirmed. But it just gave me an opportunity to really learn and get to know people in a less pressured climate. And it was extraordinarily valuable.
QUINN: Well, good. Now, back then, I think you already touched on this, the titles were somewhat different.
DICKINSON: They were.
QUINN: What were the titles and what would they be roughly equivalent today?
DICKINSON: The senior title then was Commissioner of Patents and Trademarks. Then there was the Deputy Commissioner of Patents and Trademarks. And then there were two Assistant Commissioners, one for patents and one for trademarks. When the American Inventors Protection Act came along in 2000, they changed the titles for reasons you’ll have to ask the drafters. But they decided to change the senior title to Director of the United States Patent and Trademark Office. And then Deputy Director of the United States Patent and Trademark Office. And then the two Assistant Commissioners became the Commissioners, one for patents and one for trademarks. It is confusing. It’s confusing to this day ten years later in some ways. But that’s what they chose to do.
QUINN: So you were actually then the first Director?
DICKINSON: I was the last Commissioner and the first Director, right.
QUINN: So how does one get onto a short list of potential candidates? I mean, how does one get in touch with someone like Secretary Daley?
DICKINSON: It’s in part a mysterious process and part a directive process, I guess. I had been involved in electoral politics and was involved in both of the Clinton campaigns in Philadelphia where I was at the time. And, they like to say politics is like high school a little bit. And it is, you meet people and you make friends and they say, “What do you do?” And they say, “Oh, we’re thinking about this or we’re thinking about that.” And they have lists for the various positions throughout the government. And someone will say to someone, “Would you like to be on the short list?” And they said that’s going to take some lobbying on your behalf, and does Senator Specter, your home state Senator, like you? You used to work for Senator Feinstein, what about her? Mayor Rendell? Folks that you have political connections to as well as the President’s campaign team. So one thing sort of leads to another.
QUINN: Okay, now when you ultimately do get the call and you get nominated and you get into the confirmation process. What is that like?
DICKINSON: Well, I received my — actually I received a couple calls. One was from Commissioner Lehman, Bruce Lehman at the time who was also interested in me coming to work with him. As well as the Daley folks. And it was very exciting. It’s very — you suddenly realize that if it goes forward, as the plan goes forward that your life’s about to take a really interesting turn. And we could talk a little bit about what it’s like to be in that position after having been in the profession for a while. But there’s also a fair amount of heavy lifting you have to do. Recently I was going through some of the old files. And I happened to come across a box that had some of my confirmation stuff in it. And I’d forgotten how much between the financial disclosures, the political disclosures, the letters of support you have to get from folks and from institutions. It’s a fair amount of work as well. But when the secretary says he wants you and the President backs it up, that carries a lot of weight. I think that’s what David Kappos found this time. Because there was a short list this time, too.
QUINN: Yes. Now you said we could talk about what it’s like from the practice side and you’re getting ready to go into government. What did you mean by that? It seemed like you might have had something specific in mind.
DICKINSON: Well, it’s more looking forward to after the confirmation has occurred and you start the job. Or after at least, again, I came in first as a Senior Advisor to the Secretary waiting for confirmation to occur. So it was a bit of a different transition than say David Kappos would have had. I often tell people it’s the best job I ever had. And it’s just amazing to come to work. We used to be here in Crystal City, of course, and on the 9th floor just across the Street. And there were days when you’d come in and you’d look up and you’d see the emblem of the agency and the big letters there. And I turned the corner and I think, jeez, I’m the person who represents this Office. And it’s humbling a bit, but it’s also just very cool to realize that you get to make the decisions that affect a lot of individuals, that affect growth in a lot of ways. And they affect the profession in which you’ve invested your career. And that’s the most interesting thing, I think. And one thing that I think I was probably most conscious of and hopefully most responsive to was being the steward of the profession and the steward of the Office. The responsibility is pretty significant when you know from your career what the Office does and what it means to a lot of people.
QUINN: And you’ve touched on this a little bit already, but can you describe the feeling immediately upon learning that this was not just hypothetical but that you were going to be nominated.
DICKINSON: In large part it’s like when you get a job offer, any job offer. But to realize that you’re going to go through this process and the President wants you is just amazing. It’s that moment when it hits you, you know?
QUINN: And who was the first person you called?
DICKINSON: Who was the first person I called? Well, again, you mean when the offer came in. It was my parents.
QUINN: What was the craziest question that you got either in writing or in a confirmation hearing?
DICKINSON: One Senator wanted to know, who shall remain nameless at the moment, one Senator wanted to know if I was giving our technological secrets over to the Red Chinese.
QUINN: Are you kidding?
DICKINSON: That’s what he asked.
DICKINSON: What I think he was referring to was – when we had first made the whole patent database available on disks, Congress placed a specific prohibition against selling those disks to the Chinese government. It was in an appropriations bill. And so I presumed that was the question he was asking. But it was an interesting phrasing, I thought.
QUINN: Indeed. And how did you respond to that?
DICKINSON: Fortunately, I knew what he was talking about, and I said that. And then another senior Senator said to me something along the lines of — this in the transcript I guess, but something along the lines, if there were enough Chinese people they could download it off the Internet. Is that right, Mr. Dickinson? And I said yes, that’s probably true, Senator. And he smiled back at me.
QUINN: Okay. Well, that’s interesting. Now, you’re confirmed.
DICKINSON: Yes. As Deputy. Actually, that question occurred from my Commissioner confirmation. I went through confirmation twice.
QUINN: Right. And how close in time were they?
DICKINSON: A year and a half.
QUINN: And did they really go through the entire full process again?
DICKINSON: All the paperwork, yes. The first time I didn’t have a personal hearing. It was vetted in the Committee. There was a hearing when I was nominated for Commissioner.
QUINN: So let’s say now you’re in the Commissioner’s chair, you’re directing the ship.
QUINN: What’s the first thing that you did?
DICKINSON: As Commissioner?
DICKINSON: Let me reflect on that a second. Well, a couple of first things. One of which was to reconstitute the management team. I come from a corporate background so I had kind of a corporate, maybe business type view of how it should be managed. And I like to do it by a consensus of executives. So I reconstituted the executive committee and we started to meet routinely to go through whatever issues were confronting us at that time. One of the first activities I engaged in was finalizing putting all the patent database up on the Internet. That had been a work in progress to that point, and that was very important to me. And so we were able to do that. There was a lot of resistance to doing it, so it’s amazing to realize a decade later, but there was a fair amount of internal resistance to doing it.
QUINN: What was the resistance?
DICKINSON: Internally the — this sounds so odd now, but the public dissemination bureau, the Information Dissemination Division, I think they were called, derived about $3 million a year by selling hard copies of patents. And if you were able to just download them for free, that cut into that organization’s budget. So they resisted this for a long time. And then there was also an investment that had to be made to getting it up and there was obviously just the logistics and the literal aspects of the IT department putting it up on the internet. Outside search firms strongly opposed it and came close to suing us. Small search firms in particular because they thought it was going to negatively affect their business. But it’s hard to remember a decade ago you still had to go down to the search room, or hire somebody to go through the search room, and flip through the hard copies.
QUINN: What would they have sued the government – on what –
DICKINSON: You may laugh. Under the Paperwork Reduction Act.
QUINN: For making less paperwork?
DICKINSON: When you make a substantial change like that in terms of the paper, you have to go through certain notice and hearings processes, and they were alleging that we hadn’t done that. But I always thought it was ironic that putting things on the Internet for searching, making them paperless, triggered the Paperwork Reduction Act.
QUINN: Oh, that’s a good one. You can’t make that up.
QUINN: All right, let’s see. I have a chart here. This is the allowance rate chart [see below]. And this is one that I got from Rob Clarke, at a presentation he gave at PLI back in March of ’09 at the Patent Law Institute.
QUINN: It is. And I can’t help but notice that it looks to me like the time in our recent history that we had the highest allowance rate was the time that you were in the captain’s chair. Is that an accurate way to read that chart?
DICKINSON: I see it more that we were between the mid 60s, up to about 70%, a fairly narrow band, since 1975, for 30 years. And then it dropped from being in that 60s. It just drops off in the last four or five years.
QUINN: Right. It almost seems like when you and then maybe after you left and then after Nick Godici was no longer in the chair, then things fell apart?
DICKINSON: Well, several factors I think come into play. First of all, we took some heat about it. People were a little cynical about it, but we made — Commissioner Lehman before me and then I made a strong effort to — we call it customer service. I remember I was interviewed for the New York Times Magazine, a guy name James Gleick and he was really cynical about it because we had posters and such. But the idea behind customer service was that applicants and the office should work together much more than they had in the past to find allowable subject matter. And if you’re gonna do that, the likelihood is if you’re working together you do it in a more transparent way that you’re gonna increase allowances somewhat. And we did maybe three, four, five points. Also right around that time the American Inventor’s Protection Act came in which created RCEs. I think one huge factor in this drop off is what came to be the Office’s reliance, I think, on the use of RCEs in the prosecution process.
QUINN: Now, how exactly did that happen?
DICKINSON: How did RCEs come in?
QUINN: Well, we can talk about that. But my question really is how did things change when RCEs came in from an examiner perspective? Did it change their work load, their quota, their counts?
DICKINSON: RCEs came in at the end of my tenure. So I’m just reading some tea leaves and trying to do it from memory; from outsider’s memory. But RCEs originally were a version of what used to be called a file wrapper continuation. The one key reason why they came in was because of patent term adjustment. And it was pointed out early that if you didn’t have some vehicle like the RCE, that all of the patent term adjustment you may have accrued would be lost when you flied a continuation. So in order to keep that harsh result from happening, they created the RCEs. A Request for Continuing Examination. And that is where it started. But it eventually was seen by many as a vehicle by which the examiner could defer a final determination.
QUINN: Yes, that’s what I was gonna ask you. Because it seems that’s the perception in the industry. And it’s not all examiners, and I’d like to hear your thoughts on this, but it’s almost hard to blame the examiners in a way.
DICKINSON: Oh, absolutely.
QUINN: Because as the innovations have gotten more and more technically complex, which it just has to do if you’re gonna have a patent system, they don’t seem to have gotten any more time to do their job.
DICKINSON: I’m a strong supporter of the examiners. I’m always an advocate for more time for examiners. And that not only do they need more time, but the kind of direction or guidance they got I think perhaps naturally resulted in that fall off in some ways because they weren’t being incented to allow cases. In some ways they were being discouraged from allowing cases. The public debate raged about the quality of the work they were doing. And I think whether implicitly or explicitly they got direction that said you’re not going to get in trouble if you don’t allow a case. You might if you do. And I think that’s what shows that fall off.
QUINN: How much of that would you attribute — Are you familiar with the swing patent?
QUINN: Okay. The New York Times and NPR did a big piece on that, which for the patent world getting that kind of coverage on NPR and the New York Times is huge. And it seemed to be a lightning rod. And it did seem to get a lot of attention because I think the inventor was a 6-year-old child. His father was a patent attorney.
QUINN: Now how much of this drop off do you think is accounted for that. And the reason I ask this is nobody at the Patent Office has ever told me this, but you talk to folks and it seems almost all of them will eventually talk about that patent.
DICKINSON: There are a couple of those patents that have become infamous. And I don’t know, I kind of take a longer range view of it. You can go back a hundred years or more and you’ll find books or pamphlets where there’s some funny patent that came out of the office, you know, a method of doing this or a process of doing that. And it’s almost a classic thing to have what might be perceived as weird inventions that happen to be patented. So that particular one obviously is a challenge because it seems so completely obvious, at least in first blush. And it came at a time when the system broadly was being questioned, and the quality of patents particularly being questioned. Another thing that happened right around 2000 was there were two major studies, the Federal Trade Commission and the National Academy of Sciences, both of which were looking at the question of quality at the time. And so these were usually held up as examples of low quality patents. Part of me says that’s the tail wagging the dog. To take out of the 400,000 applications that get filed in a year and the 250,000, 300,000 that get issued, to take one or two and hold them up as exemplars for poor patents I think that’s beyond, that’s not even anecdotal, I think that’s inappropriate reasoning in certain cases. I have a lot more respect for somebody who has a broader based study, for example, of a significant number of patents where there maybe issues or questions.
QUINN: In talking to some of the old-timers, they told me that a lot of the folks that were either Commissioner or — well, I guess primarily talking about the Commissioners of the past, largely had a philosophy that you would do more damage by burying and not allowing something that should be allowed than by occasionally making a mistake and allowing something that maybe ought not to be allowed. And it strikes me that that philosophy was completely changed over this time.
DICKINSON: The data would certainly suggest that. But as I said, there’s also other factors like RCEs. 40% of applications now are either RCEs or continuations, that’s a lot. I think one of the goals, for example, of the Kappos count system reform was to try to incent the examiners away from RCEs and more towards greater use of interviews. While they reduced the count for an RCE, there’s a of that discussion that they may not have reduced it enough.
QUINN: I agree. And I wonder whether they could have gotten that through the union had they — . But I think —
DICKINSON: You take the first steps you take. They deserve credit for taking the first step.
— END PART 1 —
Part 2 — Todd Dickinson Interview Part 2: Patent Reform is Not Dead. In Part 2 we talk patent reform. You might be surprised to learn that Dickinson doesn’t think it is dead yet for this legislative cycle.
Part 3 — Todd Dickinson Interview Part 3: Fee Diversion, Kappos, 3 Track. In Part 3 we discuss how fee diversion presents a huge problem to the system, how Director Kappos is doing and whether there should be any concern for him burning-out and the AIPLA position on the Three Track initiative.