Kappos on the Hill,Testifies to Senate Judiciary Committee

By Gene Quinn
June 20, 2012

David Kappos, USPTO Director

Earlier today David Kappos, the Director of the United States Patent and Trademark Office, testified before the Senate Judiciary Committee at the Senate’s first oversight hearing of the America Invents Act.  Among other things, Director Kappos noted that the USPTO continues to move forward on AIA implementation, saying that the much anticipated new rules packages to implement the next round of AIA changes will be released on or before August 16, 2012, giving the Office time to train personnel prior to implementation on September 16, 2012.  Kappos also outlined how the USPTO, in the wake of the AIA’s passage, is now taking the lead internationally in creating a truly 21st Century global patent system.

The testimony of Director Kappos did not reveal much, if anything, new to those who have been following the USPTO, rather the testimony seemed more to keep the Senate Judiciary Committee in the loop.  Notwithstanding, some of Kappos’ prepared remarks did contain facts and figures that may be of interest.  Additionally, Kappos revealed that the USPTO received over 600 comments relative to the location of the additional Satellite Patent Offices called for in the AIA.  Kappos told the Senators that he expects to complete that review process and announce the next Satellite location something this summer.

Director Kappos also mentioned the Ombudsman Program to the Senators, but only very briefly.  He said: “Our Ombudsman Program, now in its second year, has enhanced the USPTO’s ability to assist applicants and their representatives in resolving breakdowns in the normal application process.”  I would have liked Director Kappos to spend more time talking about this because I think this program is a big success and more people need to know about it.

[International]

I had an occasion to use the Ombudsman program earlier this year when an inherited case was derailed due to a peculiar procedural matter.  In attempting to respond to the Office Action I amended claims to include previously unclaimed substance found in the specification.  The examiner said the material added so changed the claims that we ere not allowed to add these limitations in this case, having effectively elected to pursue a different invention with the original claim set.  We were given one month to correct or until the end of the six month statutory period to respond.  Unfortunately, there was no good faith argument that could be made that anything contained in the original claim set was patentable.  So I asked the examiner if we could just file an RCE to get the new claim limitations considered.  The examiner said that we could.  Unfortunately, others at the Patent Office thought no — given that no final rejection had been issued.  So now we had an Amendment and Response timely filed that was not entered and an RCE that was timely filed (i.e., within the six months) that was denied.  HELP!

Who are you going to call?  The Ombudsman.  It took less than a week to have the application back on track.  I am a big fan of the Ombudsman program.  It worked for me as it is advertised.  While not appropriate for substantive matters there are always going to be those procedural oddities that can easily derail an application given the bureaucracy that is the USPTO.  If you haven’t tried the Ombudsman Program give it a try.  We are now anticipate claims issued in the aforementioned case.

In any event, below are a few items in Director Kappos’ testimony that caught my eye and seemed more substantive in nature.  The first deals with Track One.  Why more people are not using Track One is beyond me.  I advise virtually all of my clients to use Track One and suspect that in Q3 and Q4 some will finally take up the recommendation.  Frankly, it seems like a no-brainer to me for those who need a patent quickly, whether it be for investors, because of ongoing activities that would be infringing or even just to prove to a significant other that all that time spent in the garage has amounted to something.

 

Track One

“The USPTO has launched the AIA-mandated prioritized examination program (Track One) that allows patent applications to be processed to completion in 12 months and offers small businesses a discount on this option. Since its inception, we have received more than 4,000 Track One patent applications, and more than 1,500 entrepreneurs have taken advantage of those 50 % discounts. We have completed more than 2,300 first actions on Track One examinations in an average of approximately 90 days, mailed over 500 allowances, and issued more than 200 patents.”

 

Satellite Offices

“[T]he USPTO is moving forward with opening satellite offices within three years of the AIA’s enactment. These offices will allow the USPTO to attract and retain qualified patent examiners and improve applicant-examiner interaction. The USPTO will open its first satellite office in Detroit next month. At the end of last year, the general public and city and state officials across the country were invited via a Federal Register notice to submit comments and suggestions regarding the selection of additional offices. We are in the process of reviewing and analyzing the more than 600 responses received and expect to announce the locations of additional offices this summer.”

International-2]

PCT Processing

“The Patent Cooperation Treaty (PCT) enables U.S. applicants to file a single international application in a standardized format, which is then received by PCT contracting foreign states. The USPTO has been working to raise its PCT processing techniques to world-best levels to aid U.S. technology owners to obtain early and fair IP protection internationally. We have taken concrete steps to improve our quality and timeliness. For instance, we modified the quality measures of PCT work products to be more aligned with those of U.S. national applications to maximize the potential for re-use of the international search and patentability opinion in the national phase. On timeliness, in 2011 our efforts resulted in issuance of 81% of international (PCT) search reports within 16 months from priority, and 92% within 18 months from priority. This represents a threefold improvement over our performance on these metrics three years ago.”

 

Patent Prosecution Highway

“From its inception in 2006 to the end of May 2012, the USPTO has received 11,056 PPH requests. In each of the past two years, the USPTO has received double the number of requests of all previous years combined, and is on pace to do the same by the end of CY 2012. Other key PPH metrics include:

  • Processing efficiency—applications filed under the PPH require 20% fewer office actions to complete prosecution than the overall USPTO average (2.1 office actions/disposal for PPH vs. 2.6 overall); and
  • Higher allowance rates—as compared to overall USPTO averages, PPH applications are allowed at a much higher rate at first action (24% vs. 14%) and at final disposition (88% vs. 49%).

The USPTO is currently partnering with 22 other patent offices around the world on the PPH, and is in discussions with several others about developing PPH pilot projects in the near future.”

 

Pro Bono Programs

“Consistent with the directives in the AIA, we are working with intellectual property law associations across the country to expand the availability of pro bono patent services for under-resourced independent inventors and small businesses. Programs have been launched in Minneapolis/St. Paul and Denver, and we anticipate adding three more programs this year and an additional 11 programs in 2013. We intend to have regional coverage across the entire U.S. completed by 2014.”

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 10 Comments comments.

  1. Stan E. Delo June 21, 2012 8:29 am

    Gene-

    I couldn’t agree more about the Track One option, especially since they lowered the price to $4000 from the earlier $4800 full bore price. When they finally get the micro-entity fee schedule enacted, it might allow me to get a valid patent granted in a year, for only a thousand extra bucks. Otherwise it might take 3 years, which is not a good thing in my particular situation. Time is money in many situations, and even $2000 would be a great deal and a bargain.

    The compact prosecution inherent with the fast track program would also seem to me to be much more efficient of the patent office’s time, as the examiner can focus on the concept in just a few months, instead of things dragging out over 3 or 4 years.

    Also, I heard from someone that a Seattle patent office looks like it is going to happen, probably due to the technical expertise available here, or maybe just the attractiveness of the living situations and the availability of large office facilities at a reasonable price. Imagine being an examiner that could *work* from his home on Orcas Island, for intance, and just take the Ferry down to *the Office* every few weeks or so to dot the I’s or cross the T’s.

    SD~

  2. Blind Dogma June 21, 2012 11:56 am

    Stan,

    Keep in mind the limitations of micro-entity status, specifically the meager sum total of applications allowed in one’s lifetime.

    Far better to start exploring an arrangement to become affiliated with a University.

  3. Stan E. Delo June 21, 2012 1:17 pm

    BD-

    If I haven’t succeeded in being ineligible for micro status by my 4th use of that option, I am probably just wasting my time and money to acquire extremely expensive wallpaper. If I can manage to get a licensing deal for one of them, I might be able to see $80K per year, so who cares about an extra $1000 to file as a small entity instead of a micro? Certainly not me at least.

    The University gambit is also a very real option for me, as the University of Washington has a world class wind tunnel to investigate things aero-spatial, and I happen to have gotten to know the Tech transfer expert there pretty well. He invited me to call him once, and we had a great chat about my currently pending idea, and he suggested a European group that is investigating wind turbine technology based ostensibly in Holland.

    Since I hadn’t filed formally at the time, and declined to allow the application to be published at 18 months, it seemed unwise to go there until my patent issues in probably another year and a half. Next up is a new type of boat propeller, and I hope to go the PCT route with that one, so that I might be able to acquire patents in New Zealand and Australia, and maybe Germany as well, as the latter has the largest economy in Europe last I heard.

    Aufwiedersehen and G’Day mate-
    Stan~

  4. MaxDrei June 22, 2012 2:58 am

    You report “Kappos also outlined how the USPTO, in the wake of the AIA’s passage, is now taking the lead internationally in creating a truly 21st Century global patent system.” I m sure his audience was deeply impressed and felt very good about that. But I looked in vain for what is meant by “how”. How is the USPTO, post-AIA, taking “the lead” internationally, and who is it “taking” the lead away from? I bet you it’s a reference to the PPH, right?

    Or perhaps I have been gulled. Could it be that “taking the lead” just a more palatable way to convey the thought of “biting the bullet”?

    Stan who has spent the most on wind energy? Do you know? Is it the USA, China or Germany? Google should be able to count up all the installations, no?

    Stan who will buy your boat propellers? Shipyards in South Korea, perhaps? Afterwards, will you be able to see which ships are fitted with your patented propellers?

  5. Stan E. Delo June 22, 2012 4:56 am

    Max-

    Have you heard about the efforts to create a brand new type of universal classification system? China and Japan and Korea seem to willing to assent it seems, but then again that doesn’t actually get noticed until it actually happens. It will make patent searches truly international in nature, right from the get-go. No surprises from Whereizitstan from 1897 or whenever.

    The US is currently the largest producer of new wind energy resources, with China not very far behind, and South America is coming along very quickly these days. Why so suddenly cynical Max? Here in the US, Congress has historically not gotten around to doing nearly anything, let alone approve a Production Tax Credit of about 4% for the produced power that the oil industry has been enjoying for several decades at the very least.

    When I have managed to get a patent issued for my new boat propeller, I will send you a copy of the patent. But wait! I don’t know where to send it to! I guess you will just have to search for it whenever. The real beauty of a PCT application is that it gives you some time to deal with various cowboys or at least keep them guessing. Tit for tat, and quid pro quo and all like that. That’s the deal, so either take it or leave it in a legal sense.

    SD~

  6. MaxDrei June 22, 2012 8:37 am

    Thanks Stan. Yes, I had heard of the efforts to harmonise on classification. It will do away with the possibility that, if you don’t find what you are looking for under the EPO system, you might find it under the US system (and vice versa). That would be a pity, I think.

    China has huge arid unpopulated desert areas where the wind blows all the time. It has one in every 5 human mouths to feed, and very little oil and gas. I expect the greatest pressure for change away from oil, coal and gas to be suffered by China.

    Am I cynical? Perhaps a bit. Is that not sensible?

  7. Stan E. Delo June 22, 2012 2:45 pm

    Maybe sensible unless it becomes a bad habit. But we digress and have moved off topic. A free round of Ruby Red kewl-aid to all, in memory of losing my best friend and kitty Ruby, who will be sorely missed here.

  8. Randy Landreneau June 30, 2012 8:39 pm

    Stan – I was not aware that the Micro Entity status would apply to Track One fees. Are you pretty sure about this?

  9. Stan E. Delo June 30, 2012 9:20 pm

    Randy-
    Yes, I am about 90% certain that it will happen. It will not happen though, until Congress approves the USPTO’s proposed new fee schedule. Even in the preliminary stages of the fast track option, they discovered that they could do it for $4000 instead of their original price tag of $4800. Small entities in the latest edition pay $2000, and when or if the final fee proposal is approved in March of 2013, the micro entity rate of $1000 per application would seem to be enabled. You only get 4 tries at a bite of the apple though, and then you will magically morph into a small entity.

    More important than that though, is that the PTO hopefully presents a *technical amendment* to change some of the confusing language included in the America Invents Act as originally written. I have witnessed several very clever patent attorneys try to figure out what the AIA actually means, and have heard no convincing evidence that is anything less than confused and incomplete.

  10. Stan E. Delo June 30, 2012 9:36 pm

    Randy-
    Mostly the 101, 112, 102 and 103 sections are problematic just for starters. Patent eligible, new and novel, and unobvious. Pretty scary when Congress gets things so wrong, and tries to laud their actions as a great success. They failed to get it even close to right. And then the Supreme Court comes along soon after and makes things even more confusing by making clueless judgements about the metes and bounds of the patent right here in the US in landmark cases.