A Conversation with New UIA Executive Director John Calvert

John Calvert

Many within the independent inventor community are well acquainted with John Calvert. Calvert originally started out working for the United States Patent and Trademark Office as a patent examiner, but by the time he retired twenty-four years later he was in charge of the independent inventor outreach efforts of the USPTO. I have known him for a long time, he is a friend, and he has been a champion for the independent inventor community.

When Calvert retired in June 2014 I was saddened to see a him leave, but also saddened because I know how tirelessly he works to inform, educate and assist independent inventors. While he has no doubt earned a quite retirement I am extremely pleased to say that in retirement Calvert will continue to work with independent inventors; he was recently hired as the new Executive Director of the United Inventors Association (UIA). His energy, passion, knowledge and contacts should dramatically impact the UIA in a positive way. Good things are no doubt on the horizon.

Recently I had the opportunity to reprise a class I teach with Calvert at the Independent Inventors Conference held at the USPTO in August 2014. I asked if private citizen John Calvert would go on the record, and he immediately agreed. What follows is part 1 of our 2 part interview, which took place on August 28, 2014.


QUINN: Thanks a lot, John, for taking the time to chat with me today I really appreciate it. There’s a probably a number of things that we can talk about but I think maybe the first thing to talk about is to get an update of where you’re at now. I know you recently left the Patent Office and you more recently joined the United Inventors Association. So perhaps you can give us an idea about your plans and so forth. So, I guess that’s an open ended question that you can take in whatever direction you want to start.

CALVERT: Yeah, Gene, I appreciate the opportunity to talk with you. As I mentioned to you when we were doing our work together at the Patent Office a couple weeks ago, I have taken on the job as Executive Director at the United Inventors Association. I think this allows me to continue what I have been doing at the PTO. But doing it in a little different manner. I think that the big thing that the United Inventors Association offers for inventors is kind of a standardization across the board from club to club but with some guidance from one head organization. And I’ve talked to [UIA President] Warren Tuttle and a number of the Board members and what I would like to do this first year is to go around to the clubs and find out what their needs are from the United Inventors Association and try to implement those needs.

QUINN: I think that sounds like a great idea. But before we get down that path to talk about some of what the UIA may wind up doing and your hopes and dreams for coordinating with the local clubs, which I think is so essential, let’s take a step back. How did you even get involved in the UIA? I think it’s a great thing and I’ve known you for a long time and you’re a long-time USPTO employee and you’ve worked with independent inventors for a very long time at the USPTO. So when I heard that you were retiring my initial reaction was that it would be the industry’s loss to lose somebody like you. But then a few months later you’re now at the UIA and I think it’s great news. So how did that come about?

CALVERT: Well, it’s something that Warren and I had talked about for a couple months before I started. And he asked me if would I be interested in looking at coming onboard in some capacity at the UIA. And that intrigued me to the sense that I could actually continue to do the work that I had been doing at the USPTO and reaching out to the inventor community and staying involved still in that same niche area that I was working in for so long.


QUINN: I think that that’s great. And the UIA has been an organization that over the years has gone through many ups and downs, as you know. And it’s not to say anything bad about anybody who’s been involved with it at any given time. But it’s largely a volunteer organization led by an Executive Director. So there’s only so much that can be accomplished when you have to rely on so many volunteers. But I think that you are really going infuse a lot of energy into the organization. Have you already had people reaching out to you to talk about what they can do to help?

CALVERT: Yeah, I’ve had a number of people reach out to me. I’ve had people that I’ve known for a long time. Pam Byrd, for example, and a bunch of others that have come to me and said let me know what I can do to help with UIA. I’d like to get back involved with the UIA. That type of thing. Don Kelly made a remark. He said I’m glad you’re doing this because it brings life back into the UIA; he said that to me at my retirement party. So I feel like this is a good opportunity to revitalize the United Inventors Association so it’s something that has been needed for quite a while.

QUINN: And Don is really the person who started all this. I think he held a similar role to you when he was at the USPTO and then when he left he took over the UIA. Did he actually found the UIA?

CALVERT: I think he did. I think he started the whole idea of having a centralized club oversight kind of organization which is what the UIA is.

QUINN: So the UIA now has come full circle and it really isn’t surprising to me that people are reaching out to you already. I know I’ve reached out to you and told you I’m willing to help you however I can. And not to say anything bad about anybody who’s been involved with it so far, it’s just that in the independent inventor community you have played such a leading role on the government side for years. I think it’s great to see you getting involved on the private sector side as well.

So now let’s talk about some of the nitty-gritty. And I know you’re going to do a survey to see what the local groups want from the UIA, how the UIA can help. But I’m sure you’ve got some ideas on your own. And what do you think you may be trying to do with the UIA moving forward to help independent inventor?

CALVERT: Well, one of the things that came up and it was just a conversation I had with one of the Presidents of one of the clubs. And he mentioned that it would be really nice to have some training materials. And I know that every club, or most of the clubs have monthly meetings and they invariably have good speakers to come in. What I’d like to see is the clubs share those speakers, well, if they can’t do it personally maybe they can video it and allow the UIA to be the source of a library of videos that could be used by any club at any point in time. Or by any member at any point in time. I mean that’s one of the things. The other thing I think is the UIA needs to be a voice on the Hill. With what has happened in the last few pieces of legislation that went through the independent inventor voice was lost and I think that we need to have some way to put that forward especially with legislation that’s pending today.

QUINN: Yes. And that’s something the UIA has historically not wanted to get involved in all. I know when I was with the UIA I tried to push them in that direction many years ago and there still wasn’t much appetite for that. I know Warren has gotten involved and he goes to the Patent Office and will give the inventors’ perspective to whenever they do a roundtable event, or have a public meeting on various rules or legislation that may be of concern. And I know he’s also been involved in Washington D.C. trying to get the inventors’ perspective out there as well. I’d like to see that continue because I think there is far more money and interest on the side of strong patent rights but sometimes inside the beltway, in the bubble that is D.C., it seems the exact opposite because the people who have the money and that are making the rounds and promoting legislation and rule making would prefer the patent system to go the other direction. They want weak, if any, patent rights. So coordinating independent inventors to get that message through is a critically important role.

CALVERT: I totally agree. I think that that’s where we have to go if we want a strong patent system. Or continued strong patent system.

QUINN: So are you going to continue to travel? I know you’ve done a lot of travel when you were at the USPTO. Are you going to continue to travel the country talking to inventor groups and going to the shows? What do you have on the horizon?

CALVERT: Well, right now I have three clubs that I am going to visit. One in September, one in October, and one in November already lined up.

QUINN: This might be a trend. Do I sense you making one trip a month?

CALVERT: Yeah, I think that’s probably where it’s going to go for a while. But you know we’ve got other folks. I know Warren’s going to be reaching out and there are other folks on the Board of the UIA that will be reaching out as well. Paul Niemann, who is the director of operations, is going to also reach out and try to talk with some of these clubs. We had a 3-way call yesterday between Warren, Paul, and me and I mentioned that I was putting together a questionnaire that we could use when we go to the clubs to kind of gather information. So that’s coming hopefully today or early next week I’ll have that questionnaire completed and forwarded on to Warren and to Paul. So, yeah, I think that once a month will probably be my goal. I don’t think that the UIA has deep pockets so I don’t want to spend money that’s not there.

QUINN: I hear you. It’s an organization is always run on a shoe-string budget so you have to try and do what you can. That’s another reason why I think trying to reach out and get the message out in D.C. and at the Patent Office would be a very productive use of the UIA time because there is a center of gravity that you can get to. Now, along those lines, what type of issues do you think are of the greatest concern to independent inventors in terms of rulemaking and legislation? I know you’ve followed this all along as a government employee but now that you’re in the private sector so you can you actually tell us what you really think?

CALVERT: Well, I think that there’s still a lot to be learned about the American Invents Act. I think there’s still a lot that nobody really understands about that and the ramifications that are going to come along with that. And the piece of legislation that just didn’t move forward last year in the Senate, thankfully. It could be a killer to many independent inventors and I think that’s a concern that I have and I think it’s a concern a lot of member of the board of the UIA have as well.

QUINN: And what in particular? You’re talking about fee shifting I suppose, right?

CALVERT: Fee shifting and all the other little things that could come into play that would devastate an independent inventor, a small business person or an entrepreneur that are trying to get protection and just don’t have any financial wherewithal in order to protect themselves. They’re relying on the patent system to help them but this piece of legislation would really devastate them I think.

QUINN: Yes. And I also think some of the cases that have been coming out lately both from the Supreme Court and the Federal Circuit seems to think everything is obvious anymore and they just seem to totally disregard jury findings to the contrary. And the PTAB at the Patent Office seems to be openly hostile to patents. And I don’t really understand where this climate has come from. I guess it came from these patent trolls are evil. And yeah there are a lot of bad actors out there doing a lot of things but the truth is I think the district courts have got all the tools they could ever want in order to address that if they really wanted to. And in the meantime we just seem to be dismantling the patent system and making it harder and harder for that next new innovation to gain traction so that the person could whether it be license it or form their own company and to me that’s what’s missing. That’s one of the big reasons why this recession has languished. We haven’t seen the next great thing that will catch fire and build an empire industry for quite some time.

CALVERT: I agree. The last real change was in the cellphone industry when Apple came out with the iPhone. And that really pushed all the other companies to go on that same route and I haven’t seen anything since. And I agree with you. I think there are other things on the horizon but we just haven’t gotten there yet.



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One comment so far.

  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    September 14, 2014 11:50 am

    As Gene has pointed out several times, a major educational problem with independed inventors is getting them to understand that a bare conception [an idea for an invention], no matter how well documented, is NOT an “invention date.” Even before the new AIA patent statute [for new patent applications], filing a patent application on something AFTER someone else had filed a patent application on it almost never won a invention date contest [an interference] unless the second to file had a well documented prior actual reduction to practice of the invention, and even the latter cases had low odds of success. Less than about 25 a year out of hundreds of thousands of patent applications per year. Furthermore, interferences are costly and complex, and studies showed they were sometimes used by major companies to take patent claims away from individual inventors, far more often than they protected small inventors from the delayed filing of their patent applications. It the second to file was a large company they could even defeat first to file claims by prior art attacks, better interference expert attorneys, and the costs, So that, in spite of all the misinformation about the AIA “first inventor to file” system versus the widely missunderstood supposedly “first to invent” system, individual inventors who file first under the AIA are actually better off, because their claims can no longer be attacked in an interference by a large company with a later filing date. Yet proof of truely stolen invention is still possible under the two new AIA “derrivation” systems. But the myths perpetuated by those with no interference expertise continue.
    Of course the AIA does provide a new PTO system, IPRs, for challenging patents with PRIOR pubication or patent prior art. Almost always it is only on prior art that is better than prior art ever considered by the examiner in the original examination of the application. But an IPR is fairly expensive, and in almost all cases patents are only being challenged in an IPR by companies being sued on, or seriously legally threatened with, such patents. However, those purchasing or licensing new patents from now on will be taking the potential of an APJ for previously missed prior art into consideration.