One of the presentations I attended was the panel moderated by Todd Dickinson, who is the current Executive Director of the AIPLA and a former Director of the United States Patent and Trademark Office. Also on this panel were Judge Sharon Prost of the United States Court of Appeals for the Federal Circuit, USPTO Director David Kappos, Eli Lilly General Counsel Bob Armitage, Senior Counsel to the Senate Judiciary Committee Aaron Cooper and Oblon Spivak attorney W. Todd Baker.
Dickinson led an informative question and answer session centering on the expectations and early results from the various changes to the patent system implemented by the America Invents Act. The title of the panel discussion was simply – AIA – Will the New System Work? Not surprisingly, everyone was in agreement that the system will work, even if only because it has to work since now it is the law.
At the onset of the panel discussion Dickinson explained that what was billed as a Q&A session would not have questions from the audience. Unfortunately, the stage was supposed to be set in a talk-show scene but was set in a traditional head table with a podium. There was not a microphone available for roving among the crowd; so on the fly Dickinson used questions suggested previously via e-mail along with his own questions to direct the presentation.
Initially Dickinson asked a question of Aaron Cooper, who was Senator Leahy’s top staffer in charge of ushering through the AIA. The question related to how the legislation finally crossed the finish line. Dickinson remarked that this current Congress is perhaps the most “do nothing Congress” we have had due to partisan fighting, so how did they manage to come together so early in the Congressional term to get this accomplished. Cooper cited the fact that reform efforts had gone on for so long that early on in the session there was enough momentum to get something done. Later in the session Cooper would circle back and explain that the Federal Circuit taking certain issues off the table through resolution en banc, such as damages, was crucial with respect to getting patent reform done.
Dickinson next turned to Director Kappos and asked how he dealt with things behind the scenes once the bill passed and it fell to the USPTO to implement. Kappos explained that the USPTO identified the necessary internal committees inside the USPTO even in advance of passage so they could get a quick start off the line in the event that the bill did ultimately pass. This allowed the USPTO to hit the ground running without wasting any time, which was essential to allow the USPTO to meet the quick deadlines with respect to issuing proposed rules, giving the public time to comment and revising the rules where necessary prior to going final at least 30 days in advance of implementation.
Kappos explained that he put together a coordinator and brought her into the Director’s Office, which obviously streamlined communications. “You have to make it a priority, that is the simple truth of it. This has been and will be the top priority.”
Another thing the USPTO did was to start soliciting input from the user community before the rules even required. This allowed the USPTO to get fast off the line when it came to writing the proposed rules.
Kappos, obviously proud of the work product produced by the USPTO, cited the oaths and declarations rules as being important “not only a product of working with the bar, but listening… that was the real breakthrough in the implementation process.” Indeed it was, and is in stark contrast to how the USPTO operated in the years before Director Kappos took control of the Office.
Next up was Judge Prost. “I had a very cynical view of whether patent reform would ever get done,” she explained. Prost would go on to analogize to an experience she had while working on Capitol Hill before being appointed to the Federal Circuit. She explained that the Bankruptcy Reform Act was on the Hill for 7 to 9 years and it seemed that it was dragged out because there was so much money being raised by politicians through donations by the various constituents who wanted one reform or another. Prost expected it would take at least one my cycle to get patent reform done.
From this point in the presentation the questions and answers started coming fast and furious, and your humble correspondent started to become overwhelmed. A stenographer I am not! So here are the highlights of other things discussed.
Aaron Cooper: No one filed an amendment on first to file during the mark-up, when amendments could be freely made, because it wasn’t on anyone’s radar.
Judge Prost on Judicial resources: The Federal Circuit has 10 active judges and the number are dropping, so the Court is in a position of not increasing, but rather decreasing resources at a time when others are expanding resources, citing the more than doubling of the PTAB and Solicitor’s Office.
Director Kappos on CAFC workload: The Federal Circuit is seeing more work and it will continue to see more work. We are hiring more PTAB judges and in the solicitors Office, so there will be an increasing number of cases going to the Federal Circuit, including the issues ushered in by the AIA. “It is a foregone conclusion, the Federal Circuit is going to get a lot more work.”
Director Kappos on PTAB Judges in response to question from Dickinson about whether they are up to the task, and time limitations, set forth by the AIA: Yes they are. “We are getting on top of our backlog and it is starting to come down, and we will continue on that.” Getting it right is a matter of not only due process but also of appropriate, streamlined rules. “We are going to get it done within a year, with due process and with high quality.”
W. Todd Baker: At least 12 to 15 of the new members of the PTAB have significant experience handling post grant matters. Confident the new hires will be ready to take on the ex parte appeals, but are they ready to take on the inter partes appeals?
Bob Armitage on speed of post grant processes: Armitage explained that it is his view that if one cannot obtain a decision within a year then we should rethink the whole idea of patents. “If we cannot get Administrative Patent Judges… to conduct these proceedings in a year… the patent system will never work.” “From my point of view I have great confidence in these proceedings.” Saying that in the appropriate cases “we are going to use them.” The “we” refers to Eli Lilly.
Cooper on bad patents and post grant processes: “We need to have a system that cleans up those [bad] patents in an efficient manner at the earliest time possible.”
Kappos on final rules to implement the AIA: “We put together a good set of rules, but they are by no means a perfect set of rules.” Kappos explained that typically in Washington administrative rules are written and may be changed some time in the future, but not very quickly. That was not the USPTO approach. “Our approach was different,” he explained. The USPTO approach is one of continuing improvement. “We are already talking about convening the state holder community again after a few months when there is data to discuss.” The goal is to get feedback and make any necessary changes to continually improve the rules.
Prost on her approach to legislative history: I don’t have a singular approach, but I first look at the statute. Prost explained that in her experience on the Hill “everyone thinks they know what the statute means because they wrote it, ” she said. “But they don’t get to testify in the Courts as to what it means, so we are left with the statute.”
Armitage on 102 and legislative history: With respect to the 1952 Act you couldn’t know what prior art was without reading the legislative history. He went on to explain that under the AIA “either something becomes public or its not prior art.”
Kappos on AIA textual clarity: “You do get a sense that there are many ways to interpret the statute. Some more wishful than textual.” He explained that the PTO interpretation won’t make everyone happy, but they will be faithful to the language used by Congress.
Kappos on fees: The proposed fees are tied to Congressional intent. “The fees we have put in place for the post grant processes… are fees we were required to put into place under our old fee setting authority… which requires the USPTO to relate each fee to the cost recovery process… We do not have authority to charge less… We are still in the process of setting Section 10 fees.” Thus, Kappos explained, the only discussion to have on where the fees were initially set was whether the USPTO was adding everything up correctly. “We went through the process and set the fees to where they are.” Kappos would go on to explain that the USPTO anticipated 450 post review processes being filed in the first year and with 51 filed already, so the USPTO is on pace to be at or about that number anticipated. Kappos suggested that the price of the fee must be about right and price is not causing people to not file. “The reality of the world is that if you ever want us to catch up on the backlog people are going to have to pay more for a while.”
Armitage on fees: “At least for the foreseeable future [the PTO] has the ability to manage its own finances rather than being chronically starved…”
Kappos on micro-entity post grant fees: In the post-grant processes Congress explicitly told the USPTO that micro-entity fees could not be give for the various post grant proceedings. Congress didn’t want a cottage industry of low fee challenges.
Baker on fees: For inter partes proceedings the fees will be accepted, but for the ex parte proceedings there will be significant push-back on the fees.
Kappos on ensuring uniform jurisprudence with PTAB judges located in different cities across the country: “Well on our way to having 20 Judges in Detroit and 100 examiners.” Will have 100 examiners in Detroit by Q2 or Q3. “There is not going to be any forum shopping because all incoming matters come into the same group of Judges who will decide who gets cases based on technology areas and docket sizes of the Judges.” Kappos would go on to say: “It is quite possible, if not likely, that a Judge in Detroit will be matched with a Judge in Alexandria and perhaps one in Denver.”
Armitage on an AIA technical corrections bill: “The are a few minor errors in the bill and one major error in the bill.” The major error is the estoppel in post grant review, which should have been limited to issues raised, not that could have been raised.
Cooper on technical corrections: “There are mistakes in the bill where commas should be and they aren’t, there are effective date problems… there will continue to be new issues that will come up…”