As a part of this all-access look behind the scenes I interviewed Q. Todd Dickinson, the AIPLA Executive Director who is also a former Under Secretary of Commerce and Director of the U.S. Patent and Trademark Office. This interview took place at the conclusion of our day together.
In this segment of my two-part interview with Todd Dickinson we start by discussing how the AIPLA manages the daunting task of taking positions in virtually every IP issue that arises. We then transition into discussing first-to-file and the American Invents Act.
Without further ado, here is Part 1 of my exclusive interview with Todd Dickinson.
QUINN: How do you manage to stay on top of absolutely everything? Because it seems to me that AIPLA is the only group that does.
DICKINSON: The short answer is that we try . We start with a premise that part of our strategic view of ourselves is that we will try to cover the waterfront. And hopefully we will have the resources and the capacity and the talent that lets us do that, certainly at the staff level, but also at the volunteer level. And so we have a very elaborate set of committees that feed up into groups, and then come to the Board in various ways. As I said when a big topic comes up like the AIA rules, we have to create a new task force. Ours is headed by Alan Kasper a Past President, and contains several topical subcommittees. They, in turn, include senior leaders from the various substantive committees, so there is significant and broad-based involvement in our review and decision making.. But we do try to, you’re absolutely right; we do try to be on top of everything if we can.
QUINN: Now that seems to be a bit of a philosophical shift. Maybe it’s not. But before you came on, and not to say anything negative about anyone previous to you, but there were some situations, where AIPLA seemed to shy away from taking certain positions, or perhaps wanted to walk the middle line. So it seems like now, since you’ve been onboard, there’s been a conscious decision that the AIPLA is going to be involved in everything, even if you just have to say, you know, there’s a split among our members and here’s the split. So you articulate what the membership is thinking.
DICKINSON: I think that’s a relatively fair assessment of our current policy. However, I’m not so sure it’s so much tied to me or a criticism of the past, as that it’s a function of our strategic planning process and the goals that flow from that.. And I think it may also be a function of leadership. I think that we have a very experienced and knowledgeable leadership group both at the staff level and at the volunteer level, and their view of the organization is that we are a preeminent or senior organization in IP, and that our views are ones that opinion makers tell us are important, whether it’s the staff level in Congress, the members of Congress themselves, or the courts. For example, since I’ve been here our amicus briefs have been cited from the bench of the Supreme Court twice. And CAFC judges have said that our briefs are often helpful or important in shaping their eventual opinions. And that’s how we see ourselves, what we’ve committed to. It’s not that we have all the answers; to the contrary. We feel that we take a balanced and measured approach that helps lead policy formation and implementation.
QUINN: Yes. And it’s interesting, you’ve been talking about the briefs, because when I read an AIPLA brief I always find it very interesting and informative, and I almost always agree with it. It’s well written. And that’s all volunteers?
DICKINSON: It absolutely is all volunteer, with one key exception. I think you know Jim Crowne who’s our Director of Legal Affairs. His most important responsibility by far is overseeing the amicus process. And the number of amicus briefs just since I’ve been here almost doubled, which represents an enormous amount of work. Keeping track of that at the staff level and making sure that it’s moving through the process is by and large a full-time job. Also, much of the talent in terms of writing the briefs are volunteers who stick their hand up and, you know, we are very fortunate that some of the most senior practitioners, or skilled practitioners, people like Barbara Rudolph and Ed Reines , who volunteer to write the briefs. Now, there’s a benefit to them, too, of course. It’s not an inconsequential thing to be asked to be the author of a brief like ours. But I think it’s important, and we’re very fortunate that it happens that way.
QUINN: Yes. I get the idea.
DICKINSON: Another function of how big we are, almost 14,000 members, and we have people on all sides of every issue. And so by the time the process filters up to the Board level and we’ve committed to write a brief, or we’ve committed to a series of resolutions or we’ve written comments on rules, they are well, well vetted throughout a fairly elaborate process, and we’d like to hope that they reflect what’s best for the system. Because one’s client, or another guy’s client doesn’t tend to win out at all in that process. We really feel it represents, eventually, what’s best for the system. Now, sometimes do we come to a place where we say it’s kind of a watered down or right down the middle view? Sure, but we’re very sensitive to that. The Board in particular is very, very sensitive to that and wants to make sure we’re reflecting the right view as opposed to just some kind of centrist view that happens to bubble up.
QUINN: In listening to you answer that question, maybe that’s one of the reasons why when I read your briefs I almost always seem to agree with it because it seems like it’s a foundational approach to the system. And when you have a whole bunch of different constituencies that you have to keep pleased who may or may not agree on what the central issue is in a particular case, when you keep it to its foundational elements, then you can get all of us onboard and say, oh, yeah, that makes a lot of sense.
DICKINSON: Right. I think that’s what’s strived for. That is the principal goal. Now, again, do we always keep all members happy? That’s almost impossible. For instance, the First Inventor to File, was a tough policy call, shifted views for a lot of people over time. It’s been a mainstay of our position for a long time, however, but there are plenty of members for whom there was a lot of concern about it. Did we lose a few members over it? Sure , we did. But by and large I think our members understand that it is a consensus view that gets developed, it is for the best of the system, it is a globalized view, but is also a best practice, frankly, and we needed to move towards harmonization. Because of the recent USPTO roundtable on first-inventor-to-file,, this happens to be on my mind today.
QUINN: Yes. Now, how do you approach getting ready for something like that? Because when I sit there at these types of things, I see you talk on this issue, and that issue. And is it almost like you’re it as if it is an oral argument, which is quite different than how many seem to approach offering public comments. Do you approach it like a litigator, you know, a binge and purge mentality? I mean, how do you do all this?
DICKINSON: Well, on an issue like this, it is an issue that I’ve lived with, and the organization’s lived with, for a long time. We helped develop the policies that led to advocacy, which hopefully found their way into aspects of the statutes and the rules. So at a basic level we know a lot of what we’re going to be talking about. But what we commented on at the roundtable, for example, was the first draft of the rules to implement for first-inventor-to-file at the USPTO, which the office just put out. And more so than perhaps some of the other rule packages by far, there’s a lot of philosophy involved, there’s a lot of what we just talked about, there’s a lot of where should the system go. There’s also a lot more complexity, significantly more than on other issues, and there are some open questions that aren’t addressed. This is an area which looks simple, but has a lot of moving pieces, or threads in the cloth, to pick a metaphor, and this one’s tricky.
So to prepare for it, first of all, we get the input from the relevant committees, from our AIA Task Force in this case. The taskforce on this issue is headed by Greg Allen, who is a senior attorney at 3M. And our senior staff, Vince Garlock, Al Tramposch and I, take those comments and sat together yesterday for maybe for two hours, two and a half hours just going through our draft. We have a draft of our written comments, and then culling from that draft, we work on what I get to say in the ten minutes allotted to witnesses. So it’s a combination of trying to figure some things out that are at this point not clear at all, and also figure out how to condense it down in our oral comments.
QUINN: Do you think that first to file is evolving the way that a lot of people thought it would?
DICKINSON: By and large, yes. We still don’t have, for example, the European first to file system. We don’t even have the Canadian first to file system. We have our own first-inventor-to-file system which in many ways is heavily influenced, by this issue of publication, and what constitutes a public disclosure.
QUINN: What is your position on that? Because the legislative history says one thing extremely clearly, and I think the statute says the exact opposite, and I agree with the way that the Patent Office came out in the rules on that issue. But that is an enormous question. It leads to a lot of sub questions.
DICKINSON: It’s a very formal matter. We supported the Leahy-Smith America Invents Act, and the way first-inventor-to-file was constructed in that Act. We are now working through both the rules and the statutes as they are meant to work together, and I think we’ve figured out where the USPTO is headed for their part. There are still aspects of the statute that people will say, oh, what about this, what about that? And so we’re still working through that. And don’t forget, many of these things will need to be worked out in the courts. Not everything gets answered, that’s the way our system is set up. Congress doesn’t answer every single question; the rules don’t answer every single question. There will be situations in which the courts have to figure out on the statutory construction or rule interpretation, and that’s yet to come. That’s the way our system’s set up and I think everybody understands that.
QUINN: Yes. I think a lot of people thought this was going to be a very easy transition. And looking back at it maybe five or ten years from now it won’t be hard as we thought it was. Right now there’s just so much uncertainty, and any time there’s uncertainty there’s anxiety.
DICKINSON: Well, I think that where the potential to go wrong here for folks is if they try to game the system. If they try to play it too cute, for whatever reason. I think they increase the risk to their client not insignificantly. I think they should play it straightforward. While obviously there are certainly going to always be situations where you’re in a complicated situation and you can’t help but try and figure it out. But if in your planning process going forward, if you try to play it too cute, I think you’re going to run a risk.
QUINN: I agree with that. Are you at the AIPLA putting together any kind of materials or presentations to the membership? Particularly the law firm membership about how to stay out of trouble? On an ethical or malpractice level?
DICKINSON: Well, hopefully we’ll talk more about it, but one of our most important member services comes to the fore during times like this when there are new rules. And that’s member education. By hopefully bringing to our members the best experts we can find, both in government and in the private sector. For example, participated in three road shows with the PTO where we provided CLE credit and we’ve had several online programs already. We’ve had at our last three major meetings a full track on the AIA, on the statute. Our upcoming annual meeting has a complete track on it, much of it now devoted to the rules, but following into that phase, we’re now we’re looking at how do the rules affect day-to-day practice? What are the tactics, what are the strategies that the practitioners need to help their clients get through? Particularly this first phase where a lot of things might remain unclear. Twenty years from now a lot of these questions will be answered, but now, you’re in a transition phase which has its own problems and you’ve got some unanswered questions.
DICKINSON: So we’re trying to answer the best we can.
QUINN: Well, what about like best practice? Because you know, you walk into a patent attorney’s office today and they take your case and they may say okay, well, it’s going to be four months before we’re going to be able to start working on the application. And in a first to file error that’s really a non-starter from the client’s perspective. And that’s just the way business goes, and we can’t change that, but I think we’ve got to move to an informed consent model.
DICKINSON: Well, I think there’s a lot of speculation about that. I practiced in private practice at different times for a chunk of my career, and while many of my clients were just of the size and caliber that they did this naturally, almost all of them operated in a first to file world anyway. Because they weren’t ready to give up their foreign rights without some very concerted review of it, they had to operate in that environment anyway. They were used to doing things in a timely manner, trying to promptly use tools like provisional applications when they had to. Now, for small inventors who weren’t, or folks that are new to the system, there’s going to be a little more learning involved. But I think by and large, it will turn out to be good even for the small inventor, making it much simpler and clearer who is entitled to priority, because, frankly, they just couldn’t afford to prove they were the first inventor when they were the second to file. To spend $500,000 and hope your records are good enough to prevail in an interference when you’re the junior party, it’s gives false hope in most instances.
QUINN: It’s not going to happen. We’ve had a first to file system in practice, but I guess my question is with the laws of nature and the laws of physics and chemistry in any given time funnel solutions into a narrow window. And now that we are in a first to file, the word is out and everybody is going to understand what that means. It is far better than what they understood first to invent meant.
QUINN: I think we’re probably going to get a lot more filings in rapid fire sequences, things are being developed. And then the question becomes is, yeah, well, you didn’t disclose it yourself, but maybe you weren’t winding up being the first to file and did you wind up filing the provisional or did you wind up staying on the lawyer’s desk too long?
DICKINSON: Two of the big key questions I raised at the USPTO roundtable were what constitutes the parameters of the grace period implications and what constitutes “on sale” for purposes of the new 102.