On January 17, 2012, I sat down with Terry Rea, the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office. We met in her office, which is on the 10th floor of the Madison Building adjacent to Director Kappos’ office and overlooking Dulany Street.
In part 1 of the interview we discussed USPTO hiring and Director Rea told me that the plan “this fiscal year was to hire approximately 1,500 examiners.” The Office, according to Rea, is also looking to hire another 80 Administrative Patent Judges during this fiscal year and the salary is approximately $165,300. With respect to APJs the Office is looking for “talented examiners to promote from within” but is “also interested in talented attorneys from outside of the agency,” said Rea.
Part 2 of my interview with Deputy Under Secretary Rea picks up with discussion of the America Invents Act. We generally discussed the rulemaking process, the fact that the post-grant proposed rules are a bit late in coming, comments and what the USPTO will do with them, as well as the upcoming Road Show the USPTO is taking across America for the purpose of discussing implementation of the America Invents Act.
Without further ado, here is part 2 of my interview with Terry Rea.
QUINN: Great. Now, shifting gears a little bit and to get into some of the America Invents Act.
REA: You couldn’t resist, could you?
QUINN: No, but I am going to try to the best of my ability not to hit any landmines. Because I know that there are some out there potentially and we’ll have to wait and see when the rules come about.
At the beginning of this month we had the four Federal Register Notices come out for the oaths and declarations, the third party submissions, the third party citations of prior art and the statue of limitations dealing with OED. And before I go into asking some questions about those, I was wondering, what else do we have in store? Because I believe I’ve heard that there’s more on the way before the end of January.
REA: That’s what we are hoping. What we anticipate, and unfortunately this can be somewhat out of our control due to all the clearances which must occur within the federal government, is that at the end of January or the first part of February the Federal register will print the Notice of Proposed Rule Making for the board rules. These rules will include inter partes review and post grant review. And we think that most practitioners are eagerly awaiting our proposed rules so that they could offer timely assistance and input.
QUINN: That might be one way that they would characterize it. How have the comments been so far? Are practitioners asking, “What are you guys doing? Why are you doing this? We like what you’re doing.” Are they good comments? Are they constructive?
REA: All the comments by the public are on the USPTO website under the American Invents Act. So our process has been and will continue to be completely transparent. We have not held any private meetings and when anyone offers comments those comments can be viewed by other parties. Most of the comments that we’ve received to date have been helpful. However, I don’t think everybody has had the time to really get into deep thought on the new rules. When the Federal Register notices issue people will be looking at them in depth and then we will get yet more comments to consider. Our job is to consider the various suggestions and balance those suggestions made by our user community because we want to come up with something that works for everyone and that benefits business. And, yes, we will modify our proposed rules if necessary. But we anticipate that it’s not going to be clear-cut easy process.
QUINN: Not dealing with any specific substance, can you kind of give me a behind the scenes look at the process of now that the comments have closed, what happens now? How do you go through the comments you received? I assume that probably the senior management folks have some kind of a meeting and dole out assignments and so forth. What does that look like?
REA: You’re entirely correct. Once the comment period has closed, then we have senior people here within the USPTO read the comments and vet them, identify suggestions and try to balance comments on differing ends of the spectrum because they’re not all consistent. Janet Gongola, who is our patent reform coordinator, or as I like to call her, our patent reform czarina, works here in the front office, is responsible for coordinating it all by making sure that we stay on time with our implementation progress and meet all of our statutory requirements with the proposed rule making so that we can be set and ready to go when required to by the statute. On one Sunday in particular we had a meeting for four and a half hours to consider submitted comments before completing our proposed rules. There have been a lot of in-depth meetings of different levels, different groups of people, and different numbers of people, so we can get a clear understanding of where we should go within the USPTO. And we want to make sure we actually understand our shareholder or user community’s position on these issues. Also, we have the Office of General Counsel who vets everything that we do to make sure that we are complying with the intent of Congress when they passed the America Invents Act.
QUINN: Okay. I think the comments are going to close in about mid-March timeframe. From that point in time, do you have any sense of how long it will be before we will get the final rules? And I know that that’s somewhat flexible because it depends upon the number of comments you get.
REA: We gave our user community the longest period of time for comment. Your 60 days is not what’s statutorily mandated. In order to get these rules out in 12 months and give our stakeholders a 60 day comment period, we’ve compressed our time period within the USPTO for reviews and for checks. We’ve also worked very closely with our sister agencies, DOC and OMB to try to get timely reviews from them. Normally, rule making can take anywhere from 14 to 18 months. We only had 12 months to implement some of the major provisions in AIA. So we actually all had to cut short our typical procedures for handling these things. We have gotten great buy in within the USPTO’s different business units and within the other sister agencies within the Administration. Thus, the 60 day comment window Gene, is one of the longest.
QUINN: Now, let me just play devil’s advocate if I could for a moment. This is not going to come as a shock to you but in our industry there are some conspiracy theorists. And occasionally they might look at that and say, well, that’s because they’ve already decided what they’re going to do.
REA: Oh, no. We are flexible. We are open-minded. We will listen. We want communication with our user community. We want to understand everybody’s perspective and consider their comments. Constructive recommendations would of course be the most helpful. But our job is to meet the requirements of the statute and ideally to facilitate the operation of businesses so that we get the correct investor confidence. So patents do for business what they are supposed to do.
QUINN: I have not gone through all of the different rule sets in the level of detail that I will be, primarily because when I started reading the OED rule set, I was a little alarmed.
REA: We try to be balanced and fair. And we’re getting the comments coming in right now on the USPTO website. We want people to have due process and to be fair and not to jump the gun too quickly. So that is why we wanted to make it clear when the one-year starts running and when the ten-year time period starts running.
QUINN: OK, I will leave that there for now, although I am anxious to see what the final rules look like. Let me ask you about one of the other rules packages not yet out. There has been a delay in the publishing of the post grant rule package and concerns have been expressed in the IP community about that. Can you comment?
REA: It’s a big package, Gene, some 3,000 pages. So it takes time to review a document of that magnitude. We worked closely with our colleagues in the administration and appreciate all the help and support we got from them. Our original deadline slipped by about a week. But Dave and I are fully committed to making up for the lost time internally as we proceed with the process of implementation.
QUINN: I understand. The timing is so tight, but everyone is tense I guess you could say. Not knowing what exactly to expect and waiting nervously. On that point, I know you have planned another road show that’s coming up that you’re going to start here in about the third week of February and crisscross around the country regarding the America Invents Act. Can you tell us a little bit about that? I have seen the road show here in DC so I have an idea of what to expect. But the road shows that you’ve done so far have really paled in comparison to what you probably have to do this time given the magnitude of the changes.
REA: We anticipate that the road shows on the America Invents Act will last a full day in most of these venues. We’re primarily there to educate the user community on the proposed rules. We want to package the material and communicate information to people, to our users. We’re talking about it internally right now as to the best way to handle those road shows and get the message out. We know members of the patent community will have a lot of questions. We haven’t finalized our approach in how we’re going to handle the road shows quite yet. I believe February 17th is our first road show and it’s going to be here at the USPTO. And that’s going to be the template which will be used on most of the road shows but we have not yet finalized the format.
QUINN: Is this going to be an opportunity to ask substantive questions? And the reason I ask is there are some substantive questions that need to be asked and answered. There is one question in particular that I am absolutely dying to get an answer to. As far as I can tell about half the people are interpreting something one way and the other half is interpreting the same thing a different way. Rights are going to be in play so how does one go about getting the patent office to help the user community and the patent bar understand which direction? And I can be a little more specific if you like. What I’m thinking about is the 102B grace period. There are some people who say that what this does is if you publish then you get an option to file a patent and anything that comes out after even if it was independently created or developed, can’t be used against you. I don’t read that section that way. If people were to advise that and it turns out that they’re wrong then those people who published would wind up not having the ability to get a patent in the first to file system. That will have relevance starting in March of this year because if you disclose, you will still have the year but then if you file after we switch to first to file, you could get caught up in the new law and what you did back then can come back to really hurt you.
REA: Gene, have you considered sending comments to the America Invents Act microsite? Either suggesting where clarity can be found or what we can do to give our user community that clarity?
QUINN: No. I am happy to do that and maybe this is something that would be worth chatting with you about, but I don’t know what role I play sometimes. I’m here interviewing you as a blogger and maybe this is a discussion about what a blogger really is. But how does the patent office treat people such as myself, the patent docs Kevin Noonan and Donald Zuhn and Dennis Crouch. We are not really journalists but more like commentators. Each of us does some kind of journalistic work but is it appropriate for the blogging community to do that? Would you be comfortable with us doing that?
REA: I think if the blogging community has a recommendation that would lend clarity it will be most appreciated. And as I indicated we’re using a very transparent process in developing these rules. For you to submit a comment using our microsite, on the USPTO website would be what I recommend. Your thoughts, comments and input are appreciated. You as well as the other patent and IP bloggers that you identified are all very intelligent and very talented people. Yours and their input is valuable to us, because even we at the USPTOpay attention to what is in the blogs.
QUINN: That is good to know. I will give my input then because I think that this is an important issue. This has happened so fast and the timelines are so compressed that you obviously cannot say something unless you have given it due consideration. But one of the things I have heard so far, which is not necessarily a criticism, is that people in the community have wanted to get some insight and some of the meetings so far have been more process oriented. That was why I was wondering if the road show may be the opportunity to address some of the questions substantively.
REA: That’s correct, Gene. We will answer questions during the road shows. However, there are so many topics and we anticipate so many questions that the opportunity to get in-depth in any one issue may be somewhat limited. So if it could be teed up on our micro site that probably would make our road shows more productive.
QUINN: So if people have a particular issue that they would like to have some discussion about, they should send that in, give you guys a heads up and advance notice and then you will consider those issues?
REA: Absolutely. So make this public as quickly as possible, Gene.
QUINN: Oh, we will. I will definitely do that, that’s for sure. Now one of the things that you probably know I do is I teach a patent bar review course. That was actually where I was last week which was the reason I was not able to get into all four of these federal register notices quite as in-depth as I had wanted to, already. The patent bar announcement came out about the board rules only days after the board rules were set to go final. I do not think the board rules have gone final yet, but are you going to start testing the new board rules at the end of this month?
REA: I believe its February 1st we start.
QUINN: I’m all in favor of this because what got hard for me was teaching the patent bar review course and having to stop and think, “What am I doing today and is that actually what the MPEP that they’re being tested on says?” So I am a fan of having it. Is that something that you think we’re going to be seeing throughout these changes, that the patent bar will continue to chase the new rules like that?
REA: I’d like to think that we would give you sufficient notice of any change in the rules so that if you’re teaching the course to students there was predictability as to what would be on the exam. We do hope to revise the MPEP more frequently than what we’ve done in the past. We haven’t decided on a quarterly update, but that very well might end up what’s happening. So then you will know when the MPEP will be updated and when the exam will be updated. And so it will give some predictability and transparency for you to teach your students.
QUINN: Okay. The exam, as you know, felt a little stale under previous administrations. After Director Kappos brought it back up, the question became, was it going to stay that way? I think we had that question answered for the large part when the board rules came out and then when the exam gets updated. It seems like there is not any corner of this patent office that is beyond reform, doing a better job and being held accountable. Is that fair to say?
REA: That is entirely fair to say. Each business unit here has to perform at the highest level possible and they are given the tools and the resources that they need to do the sufficient hiring, to try and perform at the highest level possible. I think everyone has noticed changes in the agency with each one of our business units improving performance continually. I do not think that’s going to make things unduly complex for you as well as your students and the user community. We want to try and communicate and to give you a heads up when we change the test as early as possible and for your students that means keeping you and them informed on the material to be tested.
PREVIEW — In the final installment of my interview with Deputy Director Rea we discuss quality review and whether first action allowances are given greater scrutiny. We also discuss the benefits of streamlining patent prosecution under Track 1, and how the Office works to keep 7,000 patent examiners on the same page.
COMING ATTRACTIONS —
On Tuesday, January 24, 2012, I sat down on the record with Chief of Staff Peter Pappas. The interview is being transcribed, so stay tuned. I contemplate a profile article similar to my conversation with Gary Michelson, likely to be published later in February 2012.
On Friday, January 27, 2012, I sat down on the record with Commissioner for Patents Peggy Focarino. The interview is being transcribed, so stay tuned. The Focarino series is tentatively scheduled to run the week of February 13, 2012.
On Friday, February 3, 2012, I will be sitting down with Commissioner for Trademarks Deborah Cohn, with publication anticipated for the week of February 20, 2012.