Sharon Barner served as the Deputy Under Secretary of Commerce for Intellectual Property and the Deputy Director of the United States Patent and Trademark Office for approximately 15 months, being appointed on October 2, 2009 and resigning effective January 14, 2011.
While at the USPTO Barner commuted back to Chicago on weekends to visit her family, choosing not to uproot her children from their schools. Since leaving the Patent and Trademark Office she has returned to Chicago and to Foley & Lardner. Barner was the keynote speaker at the 5th Annual Patent Law Institute sponsored by the Practising Law Instituted. I caught up with her in San Francisco at the Patent Law Institute on March 21, 2011. What follows is the transcript of my interview with her.
During her tenure at the USPTO, Barner was the driving force behind the creation of the “2010-2015 USPTO Strategic Plan.” While Deputy Under Secretary, Barner participated in numerous foreign missions, including trips to Brazil, China, India, Mexico, and Russia, to meet with representatives of government, academia and industry in order to raise awareness of the importance of intellectual property and the positive impact it has on a nation’s economic, social and cultural development. She was also integral in the creation of the USPTO’s first regional office, which is located in Detroit.
Without further ado, my interview with Sharon Barner.
WHITE: All right. Well, Sharon thank you for consenting to be interviewed by IPWatchdog. We’re all interested in your perspective having been on the outside and now going to work at the Patent Office and now once again back in private practice. And so my first question is, before you went to the patent office, before you were even invited or considered, what impressions did you have about the USPTO as an organization and how it was run and the general impressions of any private practice patent attorney, what were your impressions about the PTO?
BARNER: So, John, I think I need to start this, have this conversation from the context of an historical view of my IP legal practice. My practice was almost primarily an IP litigation and strategic counseling based practice. So while I did not practice before the PTO, I wound up looking at hundreds, if not thousands, of patents and trademarks issued by the PTO. And so my perspective from outside the PTO had to do with the clients I represented either as a defendant or plaintiff in litigation, or those with whom I was doing strategic business counseling on issues related to patents, freedom to operate, the ability to operate in certain technology space.
And several months before I got the call from the White House about the position, I was giving a presentation to my management. As chair of the IP Department, part of what I had to do was have a forward looking 3-5 year strategic plan for the department on the IP business landscape. And I was explaining to them, none of whom are intellectual property lawyers, what was going on in the intellectual property landscape.
In summary, we, in the IP space, were dealing with significant backlogs and delays at the PTO, perception of low quality patents, non practicing entities, patent reform, changing legal guidance from the courts, and increasing globalization, to name a few. And part of what I was describing to them was a confluence of events and factors that were impacting intellectual property in a much more severe way than some other areas and which would have an impact regardless of the economic recession. So I was explaining all of these things to them and sort of giving my perspective on what needed to occur to help . And more importantly that something needed to occur because intellectual property and the innovation it protects, are key to sustaining good jobs and business growth.
WHITE: And when did the call come? Was it in the midst of the calamitous economic meltdown in the end of ’08, beginning of ’09?
BARNER: Yes. So the initial call came in April 2009, so not too long after the President was elected and was getting situated.
WHITE: And in that environment was there a heightened awareness of what contribution the Patent Office might make in trying to address what was going on?
BARNER: Yes. The PTO has the potential to have a significant impact and input on policy issues, domestic and international, and innovation generally, as well as IP protection from an operational perspective. So, from a business perspective I was looking at the ongoing impact on business, on R & D, on innovation, and on the legal profession, both from a recession perspective and the other strains on intellectual property industry that I saw. So I looked at it in many ways from a business perspective as well as from a policy perspective, because my job was to make sure that my intellectual property department was healthy.
WHITE: And in that regard, you sound like you had a pretty full plate, how were you able to balance those interests and what you were doing with the prospect of becoming a public servant for a period of years? How did you make that decision?
BARNER: So when I looked at all of the things that were going on that I enumerated and some others, the issue was “what’s going to change that and, as important, who’s going to change it, and who has enough knowledge and perspective to look at all of the things that are being impacted by intellectual property?” And so when I got the call I said “no”. (Laughs) “No thank you”. I enjoyed my practice, you know, I was very successful, I enjoyed what I was doing. And I already talked to my husband and children and they were not interested in moving. So my first response was no. I’m incredibly thrilled that I would be asked to serve, but no.
WHITE: So then what happened? And I ask that in the hope that you might provide guidance to others who get that phone call as well, and they might jump into it.
BARNER: Well, I’ll tell you what really happened was a little self reflection, why not me? Why not give up a successful career if this is really what I think is important to the industry and to the nation? And, very passionately, I did believe this. I mean, I had been talking about the stresses on businesses, innovation and intellectual property for some time. I had already started to work more on policy issues as related to intellectual property. And I also saw the impact these issues were having on my clients, big and small. So ultimately I asked myself, why not you?
WHITE: That’s an excellent point.
BARNER: So that’s ultimately what I started asking myself, is “if you think you know and have an idea of what’s going on, and the various factors impacting businesses, innovation, and intellectual property, why shouldn’t you bring that knowledge to the table if you think it’s something that’s needed for the country’s wellbeing?” From my personal family perspective, at that time everybody had something else going on. It was my son’s first year of high school, my twin daughters the first year of junior high school. And those were important times in their lives as well. And they have always been very understanding of my career. You know, you don’t get to be the chair of the intellectual property department in a firm like Foley without working very hard. And so I didn’t at that time feel like it was fair to force them to move to Washington, because they had always been so understanding. So I decided that if I was going to do this, as part of it I would make the physical and financial sacrifice and commute, at my own expense, between Washington D.C. and Chicago.
WHITE: So you were going to do this even if it was an arduous commute, as it were?
BARNER: Yes, because I believed in the PTO and the important role it plays. Even if my family did not want to move to Washington, I believed that focusing on the policy and operational issues was really critical to the U.S.’s long term growth and sustainability in this area. And looking at it not only from the perspective of the significant impact on the current business and innovation landscape, but also the importance to future generations, so if my children are going to have a good future with good jobs, then I’m also trying to make a better way for the next generation.
WHITE: Well, my hope is that others will go through the same self reflection when that phone call comes. So when you get to the Patent Office, what were the impressions that you held before you got there that were the first to dissipate?
BARNER: I had this notion that it was organized, and that there was more strategic vision than there was, that there was a lot more cohesiveness. And so from the perspective of what I saw when I got there I saw a lot of activity and not enough focus, strategy and guidance. A lot of people moving around working on things that they thought would help pendency and backlog with no real empirical evidence that it would. And one of the things that I bring to the table is management skill and capability. And so when I got there after two week or three weeks I said to Director Kappos, we need a strategic plan. We need to get people focused on what our priorities are because I can tell you from talking to them they are willing to jump through fire. They just don’t know which fire to jump through.
WHITE: So the careerists that you encountered in the Patent Office, they were ready to jump in and make it better?
BARNER: Yes, and that’s why I think a lot of what happens is about leadership. Leadership is a critical aspect of getting the people you manage onboard with the direction. And so what I saw was again, you always have your outliers, but for the most part all the people, they were willing to follow us wherever we went. They just wanted to know that where we were going was where we needed to go.
WHITE: So they were prepared to follow the charge just where is the charge headed.
WHITE: Very good.
BARNER: The critical thing to me was that we needed to get people onboard. We needed to get them to be a part of setting the priorities, and not just dictate from on high. So we held lots of meetings with the PTO leadership including commissioner of patents and trademarks, and their deputies. And then we met with all of the TC directors, and all of the PTO employees, right?
BARNER: We had some roundtables to get stakeholder input. And a part of leadership is having people buy in to the strategy and to the path. So the strategic plan was not just a document that we sat down one night and came up with, we actually devised that document by many, many, meetings.
BARNER: And so getting the leadership at the PTO to believe, first of all, that we really had to throw the old stuff away if it didn’t work, and actually be honest about what’s working and what’s not working, and come up with new things if those things weren’t working, was a very tough process.
WHITE: Well, as just a bit of perspective there, I’ve chaired this program for a number of years, and every year the Patent Office has presented metrics that indicated they were entitled to successive gold medals and rewards. And that was always difficult to comprehend given that each year things seemed to be somewhat worse off than before, you wondered what were they measuring?
BARNER: Yes, and that was the first question I asked. I actually did a PowerPoint presentation to the PTO leadership and pointed out that if you looked at many of the measures where they said they succeeded, they’re worse than the year before. PTO is losing its credibility by telling people you are successful when you’re getting worse. So if something doesn’t succeed, it’s okay to say, you know, this didn’t work so we’re trying something else. And it’s a very hard thing in the government because no one can ever admit something didn’t work. And that’s just a part of the beast. And if you are going to say something didn’t work, you better damn well say something else worked instead. And those sorts of things surprise me because you’re in some instances, maybe not in every government organization, but at the patent office we were running a business. And if something’s not working, we should not keep doing it because we don’t have unlimited dollars or people resources to do those things.
WHITE: Speaking to dollars. In many of the presentations I’ve listened from the PTO funding always seems to be the touchstone of so many things that don’t go as they should at the patent office, what did you come to know about funding when you got to the Patent Office?
BARNER: I do think that the PTO should have full access to the dollars it collects. PTO’s charges including the maintenance fees are based upon what it costs to process an application through to a patent including the all of the fixed and variable costs associated with that. So if those dollars aren’t there, we aren’t actually don’t have the money to run the agency properly. But as you heard me say earlier today in my speech, funding alone is not going to fix the PTO. We need to create an agency that is more efficient, re-engineering critical processes, and an IT system that facilitates that. So I think that the USPTO needs it’s money, but I do think there needs to be continued oversight over how that money gets spent, and that it is being spent on the strategic priorities of the office.
WHITE: Is your notion at this point that that strategic plan will be an overarching commitment administration to administration at this point?
BARNER: Right now the 2010 plan goes to 2015. And so if we’re all lucky, there will be a second Obama Administration and we’ll make sure that that gets done. But, yes, the plan is broad and focused so that any administration should view those same priorities as the priorities of the office.
WHITE: Yeah, I was going to say that, I don’t know that patent policy is a particularly partisan issue. It would seem, to me anyway, it wouldn’t be.
BARNER: I agree. However, again, shocking to me because it was one of those things I discovered that there does tend to be some bunching up around partisanship issues sometimes.
BARNER: And I think that from an overall perspective the USPTO is a decidedly nonpartisan agency. I think both parties believe in the value of intellectual property protection and policy. I think some differences on how that—is how that gets implemented.
WHITE: Okay. And just one last question about your time there. Any frustrations that you found hard to deal with at the patent office?
BARNER: Well there were opportunities that were incredible and we’re trying to get things done, like the strategic plan. That was an incredible opportunity to make a difference for the agency. A lot of our international IP policy engagement On the other hand, like any bureaucracy, things get tied up in the bureaucratic process. For example, I would say things like getting the Board of Patent Appeals rules approved and out. That to me is frustrating because when everyone agrees, it nonetheless takes a long time to get things done. And I know those checks and balances are there for a reason, it’s just when you come from private industry, and everybody agrees on something you think it should then get done in a much more efficient way. And it could be a lot more efficient. So I agree with the President when he says things like we have too many rules and regulations that are getting in the way of things. And these don’t necessarily relate to the actual process of getting a patent reviewed and out, but the way in which the organization operates to get that done. The number of reports. So here is one of the things that I did with the strategic plan. We knew that we would be reporting on it to the Office of Management and Budget and the Department of Commerce as well as using it as a management tool. So knowing all those reports were going on, I created one reporting system so that everybody could have what they needed without us having to create 17 different reports. So I looked at it from a broader perspective going in. And that was unheard of, okay? It’s like tell me what report OMB needs, tell me what report DOC needs, and we will devise a report that we can also use.
WHITE: That meets the requirements of all those agencies.
BARNER: That meets all their requirements. Because otherwise different numbers get different places and it leads to inefficiency. So I found that the frustrating part was that there could be a lot more efficiency in our processes and procedures if we just step back and thought about what we needed to get done. So I think to me that was one of the more frustrating aspects of government because you just don’t have a lot of time.
WHITE: Right. Okay. Well, now you have been released from your engagement. You’re back in private practice. How are you going to stay engaged and contribute now that you’re back in private practice? Where can you see that now on the outside that you can have good contributions to the inside?
BARNER: So I think that for me, I’m going to continue to push on the strategic plan as a measure of having the office be successful and holding the office accountable to the strategic priorities that they set forth. And utilizing those measurements to ensure that they stay focused on actually reducing pendency and backlog. The stakeholders have to look behind and understand what is being reported and hold the USPTO accountable for actions and results.
WHITE: So a question of focus then—
BARNER: And accountability. We have way too many agencies where they get tasked with assignments that no one follows up on. And I just think we need to do better about holding the USPTO accountable for actually accomplishing this task. It can be accomplished, This it not a task that needs to take ten years to get to. It takes real focus on the real issues from both the efficiency perspective and the funding perspective. And I think Director Kappos is a person who can get that done, but I do think that the stakeholders have to hold accountable the Office and the management and leaders, including Director Kappos, to actually achieve what’s in that strategic plan. So I intend to stay involved in that way. And I intend to stay involved on trying to figure out how we can achieve the National IP Policy, that its in the strategic plan, which takes into account a broader range of issues than just those that come up through the court system.
WHITE: You’d like to see some statutory language that—
BARNER: You know, you have to look at—this is why I say about policy issues and strategy implementation, I believe that it’s damaging competitiveness. And I believe that companies big and small are adversely impacted by having to go to court on patents who’s claims are read so broadly they cover everything. Or who can’t get their day in court without spending $2 million. So I think from a public policy and competitiveness issue we need to look at that. And I don’t know that it’s been adequately looked at with empirical evidence so that we can make good policy decisions. That’s my concern. I do think that some issues are created by the courts and they can resolve them by the right decisions. But I do think that when it comes down to it, I’m in awe of the intelligence on the Federal Circuit. However, they are looking at this from a different perspective than business does. And the businesses are looking at it from a different perspective than the nation as a whole. And the nation as a whole may be looking at it differently from universities. And we need all of those in a good policy discussion and decision. And that’s my concern about having so many issues that impact such a broad range of businesses and people come up primarily through the court system.
WHITE: You know, that’s interesting. That’s kind of an historic characterization of our patent system, it’s been court driven, really, for 200 and some years, you know. These statutes more or less are rewritten to reflect what happened in the courthouse.
BARNER: Right. With a backwards look.
WHITE: With a backward glance as opposed to a forward glance. All right, well, as I say, thank you very much for taking the time. And here is hoping that more people like yourself step forward over the years and jump into public service.