Bruce Kisliuk is a former Deputy Commissioner for Patent Administration at the United States Patent and Trademark Office (USPTO). He retired from the USPTO at the end of July 2015 after a 30 year career and has joined the Wilson Sonsini Goodrich & Rosati as a senior patent counselor.
In his last role at the Patent Office, Kisliuk oversaw all aspects of the Patent Organization’s information technology management, and oversaw customer outreach activities, specifically targeting intellectual property education and support for independent inventors, universities, and small businesses. But like so many other senior level managers at the USPTO, Kisliuk rose through the ranks over the years, having originally started out as the newest patent examiner.
Through attending events at the USPTO and at various venues around town I’ve gotten to know Kisliuk a little over the last several years, and I always wanted to interview him. The opportunity never presented itself while he was at the USPTO. Upon learning that he was leaving the Office I told him that I still wanted to interview him if he had interest. He expressed interested but asked for a little time to get settled in the private sector first, a very reasonable request. We eventually had a discussion on the record on November 24, 2015.
Without further ado, what follows is part 1 of my 3 part interview with Bruce Kisliuk.
QUINN: Thank you very much for taking the time to chat with me.
KISLIUK: It’s my pleasure. I’m glad we could take time to talk.
QUINN: Absolutely. Now I don’t know how many people know what role you played at the Patent Office before you moved out into the private sector so maybe we should start there. What was the last position that you held at the Patent Office and what were your day-to-day responsibilities?
KISLIUK: The last position I had was as the Deputy Commissioner for Patent Administration and I was in that position for about three years. I started in that position in early 2012 and the scope of that position included responsibilities for the information technology aspects of the Patents Group. We worked with the CIO on those developments in order them understand the business requirements of the Patents Organization. Another aspect, it was a fairly large one, was the budgeting and financial aspects of the Patents Group. The PTO has an Agency CFO for finance just like they have a CIO for the IT, however, the Patent Organization is about 80% of the budget so there are much deeper layers of accounting and numbers on the Patent-side that have to be worked through. And the last formal responsibility was the Office of Innovation Development, which is one of the outreach organizations for independent and small inventors and under-resourced groups, and that was one that I didn’t much experience with before this position. The PTO actually has a pretty long history supporting independent inventors and the scope of that group had been broadening to help a lot of others as well.
QUINN: So now that you’re in the private sector how would you compare your government experience to private sector? Is it what you expected?
KISLIUK: I think I’m still too new to know exactly what the full role and scope is going to be. Because I was an executive at the PTO I am barred from doing representational activities before the PTO for a year. So until then I’m doing a hodgepodge of things. A little bit of troubleshooting related to understanding how best to use the programs at the PTO. And I’m also helping out by getting involved in some of the firm’s business processes, business practices, some of the things they do in terms of managing their dockets and managing information. So it’s similar to some of the administrative things I spent some of my career on at the PTO. Another nice aspect about this firm for me is they have a few other past PTO employees and so they value people with knowledge of the PTO and appreciate that there is an insider’s perspective to a federal agency, particularly one as big as the PTO. So I can help with some of those aspects and allow them to focus on the technology and the clients, so that’s been a good fit so far.
QUINN: Now, I think a lot of people probably have this idea that when you leave government service and then you go into the private sector that you will work harder because, after all, it’s just government service, you know, it’s a 9:00 to 5:00 job, maybe 40 hours a week on a busy week, right? But I don’t think that was the reality that you had at the Patent Office, was it?
KISLIUK: No, that’s a good observation. You know, you’re right, Gene, it really wasn’t. I came all the way up from being an Examiner, and I was there for 30 years, so over time you get increasingly larger responsibility and you get involved in an increasing number of projects and I just found over the years that, you know, maybe as an Examiner I worked a certain number of hours. When I became a supervisor, became an SPE, I had to work a little bit — a few more hours, you know, reviewing people’s work, hitting deadlines. As I went up I found myself working more hours, up until a limit, but yeah, I think there is a misconception that federal employees are not necessarily working as hard. I’ll say that what I see is there are people in law firms that work really hard on this side as well but I think people look at the federal sector and think that it is not necessarily as hard working. I would like to dispel that and say that myself, for one, I can vouch for many of the people, in fact, most of the people working there work long hours, They work on call as needed, particularly when you’re dealing with projects with the political appointees and you have things going on with the Department of Commerce or you have things going on with Congressional aspects or OMB, for example. We had phone calls on the weekends, doing things in the evenings, and it is a pretty fast — surprisingly fast — pace.
QUINN: Is private practice what you expected it would be?
KISLIUK: It’s hard to say at this point yet. I didn’t really have huge expectations when I left. I was lucky enough to have served a full federal career and be retirement eligible and I had a strong desire to get to know some of the other aspects of the IP system, knowing that it’s not all USPTO-centric. So, I was lucky enough to be able to retire from federal service and get an opportunity to see some other aspects of IP. When I first decided a couple of years ago this was something I would like to do I didn’t necessarily want to go to a law firm. It just fell out that way after going through the interviews and looking at opportunities; it turned out that I felt it was a pretty good fit. Right now I’ve only been here for about three months, so I can’t tell you I have a full sense of the scope and scale of the efforts. When you are in a billable hour system there are people working extremely hard. You have clients and that’s a big part of the business, meeting and exceeding their expectations. So, for me personally, I think I’m still in my ramp-up phase in terms of the value that I hope to bring to the firm, but I think the effort is going to be similar in my mind. I will work at the similar pace as I probably did because it’s just what I’m used to and hope that fits in well with the group.
QUINN: Now that you’re in the private sector, and I know you’ve only been here for three months so maybe you don’t have a lot of time yet to reflect on this, but have you had time to think about the rules and the things that you were working towards promulgating while you were on the inside and the impact that they have on the outside? And is it what you thought it would be?
KISLIUK: Oh, that’s a really good question.
QUINN: And the reason I ask that is because, you know, sometimes — and I say in kind of a cheeky way — when I disagree with an opinion from the Federal Circuit, for example I have at times written that I wish this judge had to live a day in the private sector to have to deal with that decision. You know? How do you advise clients with this decision in mind? So I wonder if you’ve had that kind of reflection yet?
KISLIUK: I think that’s a really good question. I haven’t experienced it yet from outside the PTO, but I do reflect on it because I think honestly we had pretty open discussions about it while I was in the PTO. I think that it’s a very challenging job and I’ll describe it in some terms people might not necessarily think about. I think the PTO work is extremely challenging, and I think the area you’re asking about is one of the bigger challenges the PTO faces. Particularly now, and I’m going to say some of the 101 uncertainty is probably a flashpoint, but the PTO is challenged to try to — I’m going to use the word “translate” some court decisions into meaningful guidance, right? And what they’re working with isn’t necessarily the most clear, and there is a deference to the courts. So, I think there is an expectation by some that the PTO can just write the rule or write the guidance and make it clear. If only it was that simple, but it isn’t. It really isn’t. So I think that’s one of the challenges they face and it’s one that I think is an evolving one, so they take a first-cut at the guidance because the case law evolves. So when the groundbreaking decisions come out you have to set a bar, you’ve got to draw a line somewhere.
KISLIUK: And so that guidance usually starts broad and, of course, people are looking for more, they’re looking for examples, and we go through — the PTO — I keep saying “we.” That’s a natural instinct for ex-PTOers. The PTO goes through that process of waiting for the next decision, trying to get technology specific examples and it’s two-fold, it’s both to train their examiners who have to make these decisions, hundreds, thousands of them a day, as well as give some guidance to the public. And one of the good things they’re doing — and one of the things I now use on the outside and take advantage of is those USPTO training materials. There was a time they didn’t post them. Nowadays they post the training materials and the guidance materials so it’s very clear to the public and the users the standards that the Examiners are being trained on and again, it gets back to clarity, right? Everyone’s not going to agree. That’s kind of obvious. You don’t have to read many blogs to know that. But I think it’s clear that letting people know how the PTO is interpreting it, it lets you analyze what to argue, what to file, what decisions to make. So I think clarity is an important aspect and I think since we can’t necessarily predict what the next court decision is going to be or they can’t necessarily perfectly translate every vague decision into a clear guidance, the best they can do is put some clarity around the guidance that is given and let people try to work with that and then iterate as they go because, again, it’s a moving target.
QUINN: Yes. I get it, although I may not like it. I do get it. But let me ask you, and you may not even be dealing with this yet because of the ban on being able to do certain work with the PTO on behalf of clients, but do you get the sense that there are some examiners that just aren’t following those training materials or guidelines are telling them to do? I ask because there seems to be a real sense of frustration in the industry and particularly right now with respect to patent eligibility, it just seems as if examiners in some areas are just saying everything is an abstract idea.
KISLIUK: No, I have not experienced that first hand from the outside yet. But I can say just from a basic management concept, you’ve got over 8,000 examiners, you’ve got guidance and training materials and concepts that have changed and morphed over time and you’re going to have some percent of people that get it right away and some people that don’t get it right away. So it doesn’t surprise me that is the experience. I understand it’s frustrating and in a perfect world people would be able to it pick up right away — here’s the line, here’s the standard, everyone apply it. I think that is one of the things that the PTO is striving to do. I think it’s good to push more towards at least putting positions on the record. I know — the situation you’re mostly talking about is when they clearly get it wrong or they’re way on the other side of the line. As an applicant you have an opportunity to challenge those positions and there are procedures for doing that. I think over time those things will get better but it wouldn’t surprise me that people are experiencing some examiners not following it to the letter because I just think the nature of 8,500 people that you’re not going to always get it all right.
QUINN: Yeah. It’s such a frustrating thing though, you know, because there’s so many examiners that issue patents and there seem to be a handful of examiners that just aren’t in the business of issuing patents and then you layer on all this post-grant review and, I mean, you can really see that it could take eight, ten, twelve years for certain types of innovations to result in a patent being issued and then you win the right to spend the rest of the time that you own the patent defending it from these challenges. And I wonder where we’re headed because sometimes I look at the system and I think to myself well, is it really possible that every patent that is commercially viable is invalid? And if it is then why do we have the system in the first place?
KISLIUK: Yeah, I don’t know. Those are — those are pretty far-stretching —
QUINN: Yeah, that’s a very broad question. I’m not sure I want to wade into that one but –Well, let me ask it this way, see if I can ask it in a way that maybe you could maybe put your foot in the water at least a little bit. Did you guys have these kinds of conversations on the inside and were you mindful of on the one hand where we have this big long cumbersome process to get the patents so we ought to be mindful of that process and we’re going through and creating additional rule-making and creating the post-granted processes?
KISLIUK: I’ll have to say I wasn’t involved close enough to the development of post-grant processes to weigh in on those discussions. I will say just from a general policy perspective there’s an awful lot of discussion around rule development. There’s an awful lot of time and attention paid during the rule-making process and consideration of public comments. Going back to some of the ways you said it, I’m not sure I’m willing to say it’s a broken system. It is a system that has pendulum swings, and right now when I look at the system one of the things that strikes me is some of the ‘anti-patent’ things that are going on — are they sustainable in the long term for the IP system? I would step back from that and look at the goal of the IP system. If you ask if the growth in technology and the economic impact is still a laudable goal, I don’t think anyone’s going to say no. If you just look at it historically I think many people recognize that the IP system plays a vital role — so are we throwing the whole IP system out, baby and the bathwater? I don’t think so. I don’t think people are going in that direction, but nowadays with some the short-term views, some of what I’m reading about regarding the lower patent valuation going on, my hope over time is the pendulum swings back and the value of the IP system comes back into where I think it more rightfully fits. That’s my hope.
QUINN: I certainly share that hope, but I wonder when it’s going happen. And sometimes I also wonder how could we have gotten this far out of phase? It seems like the very foundation of the system has been shaken.
KISLIUK: I have reflected a little bit on that, Gene, and actually I’m not sure — I certainly don’t have the answer but I have just a few thoughts and one is we’re in an era, some of it is driven by media access, you know, the instantaneousness of information is one of the aspects that drives some of it. If you think of the system — I’m not the only one to comment on this one, I have heard both Randy Rader and Dave Kappos say this; the system is really an investment, right? In the near term the public gives up a right in order to get the disclosure of the invention for the future. So it’s really an investment in the near-term for a gain in the long-term. We’re living in a fairly short-term world right now, so when you start throwing terms like “patent trolls” out there and, from just a general public perception, when people hear the words “right to exclude” they equate that to the term “monopoly”. I don’t think the general public necessarily has the type of appreciation of the IP system or is not IP-sophisticated enough to understand some of the subtleties. It takes a longer range view of the system to appreciate there is an investment that has to get made in a lot of these technologies and IP is a supporting policy behind that investment. It is true in the short-term there are some rights that are given. But a look at history will tell you that the American IP system, at least the strength of our technology development, is unchallengeable. So some of it is just the nature of the era we’re in. You know, so much is about “the now” — I think that weighs a bit on the type of issues we are facing. Hopefully we don’t get into changes of the law that don’t appreciate the longer-term view of what’s going on because I’m afraid those would be harmful to the protection of intellectual property rights.
QUINN: You know, and it’s funny that you say that it’s undeniable. There are people that deny it. There are people that think patents get in the way. There are people that think that parents should be virtually impossible to obtain and that patents harm innovation. They have no facts on their side whatsoever. All of the facts; 100% of the facts are on the pro-patent side. Yet they say these nonsensical things and then when you corner them and present the overwhelming evidence that backs up the statement that patents foster innovation they say “causation is not correlation,” which is as if to throw up their hands and say “I’m going to ignore all of your evidence and the fact that I have no evidence that backs me up is immaterial, I win.” It’s like this third grade argument with that little kid that you always wanted to grab by the collar.
KISLIUK: I’m kind of with you on that. I actually just read the Wright Brothers book by Dave McCullough — I was struck by what they invented and how they did it. In many ways its classic inventor story with an IP component. Their invention was in the late 1800s, early 1900s. The Wright Brothers were very protective of their technology when they were demonstrating it early in the development, the book talks about them shooing away photographers. There was a subsequent patent dispute or “patent war” over some of the technology between the Wright Brothers and Curtiss. According to the book there were multiple years of patent wars and the Wright Brothers mostly prevailed. So the hallmarks of the IP system were in place, and led to incredible growth of the airline industry. Looking at history, which had many famous patent wars — the sewing machine, barb wire, television — you can point to those as problems with system or as competition that helped drive the breakthroughs and that’s part of the system that allows the technology to go public and grow. So it just depends on, I guess, on which side of that fence you’re on.
QUINN: Yeah, I mean, I guess that is exactly right. It depends on which side of the fence that you’re on– Look, I don’t begrudge anybody lobbying for what they perceive to be in their own best interest. I think it’s pretty undeniable that those tech companies that are lobbying to weaken the patent system and the patent right itself are going regret that decision at some point in time, particularly once Chinese companies come marching over and none of their patents are worth anything and can’t be used to stop that. But if they want to destroy their own company then they should have the right to lobby for policies and rules that will ultimately lead to their own demise. I just wish that there were some independent thought being put into action, someone asking whether this is good for the system, whether it’s good for the country. And maybe for the first time it is now because it seems that patent reform is stalled and at least some in Congress are asking the right questions.
KISLIUK: I get that sense too. I read the news — and I read your blog — it sounds like at least there are some balanced questions being asked where I’m not sure that balance was always in play before. I think there are good questions being asked right now and there is some caution to both do the right thing in patent reform, trying not to throw the baby out with the bath water and more of a discussion about the role of patent rights and I think that’s a good one.
QUINN: What do you think the outcome is going to be? I mean, if you were going to try and predict the future do you think that over the short term we’re still in for a bumpy ride? What do you think might happen over the longer term?
KISLIUK: I wouldn’t bet your money on my prediction, Gene. I’m a strong believer the patent system in the long term works. Even though it’s a little odd nowadays that, in some ways, the US has taken a couple of steps backwards compared to some other countries that followed our path in expanding eligible subject matter and looked at us as the model. It’s strange to see some of the policies where we’re actually not as progressive IP-wise as some of the countries that we led to get there. But I think over time that pendulum will swing back. I think the nature of the business is that it’s likely going to come by successive case law decisions, I think we’re going slowly see things come back. I think clarity on where the line is on eligibility will get firmer, and I think there will be a stronger appreciation of patent value. It might take some time, maybe by an example — and I hate to think this –because I don’t necessarily want something like this to happen, but government often reacts to disasters. They don’t necessarily see the subtleties. They wait until there’s a disaster and then they react to the disaster and I’d rather not see a true crisis, I’d rather see some course-correction.
QUINN: It’s funny you say that. I just heard that put to me in a different way at an event in DC last week. Somebody said that they’re not really sure that we’ve had that capitulation event, you know, where everybody realizes that oh my, this is a catastrophe. This is the bottom. And it takes that event, at least when you’re dealing with markets, and that’s the context that this came up in was the patent market and the value of patents, which are incredibly important to startup companies who are trying to get money from investors. But when you look at it in the market sense you really need to have that capitulation event that slaps people in the face. Maybe we haven’t had that yet in the way that it could happen because sure, those of us in the industry I think know that things are not good, that a whole lot less is patent eligible and that we are really running the risk of saying that software and biotech and medical diagnostics, which are critical areas of innovation and critical areas of economic development, are no longer available to be patented, but then the next step is well, what does that all mean? To get the attention of Congress you really you do have to have that catastrophe and it’s sad that it has to be that way.
KISLIUK: I want to say I certainly hope that isn’t the case but just from observation, I agree with you, I think those that are IP sophisticated understand much more about the inner workings and what a critical time we’re in right now. I’m not sure others do. And to me an economic example would be a strong one but I’m certainly not looking for a failure or a catastrophe, I’m just looking for something that shows people that it’s a system that needs to flourish and a system that needs clarity and it’s a system that works.
QUINN: Exactly. And like you I don’t get how people can’t really see that and they come up with all kinds of ways to explain themselves and justify themselves and information should be free and, innovation should be available to everybody and well, it is. It is free forever more once the patent expires, they just don’t see that, or better to say they just don’t choose to see that. They seem to want to live in this world, almost like a communist or socialist way of thinking, which is that we should all just be doing this for the public good, and that companies should, regardless of profit motive, spend billions of dollars to innovate to give us all the stuff that we really want and boy, that’s just la la land as far as the real world goes, you know?
QUINN: And it’s frustrating to get that point across.
CLICK HERE to CONTINUE READING… In part two of the interview we pick up our conversation discussing when patent office employees start to really understand the critical role they are playing in the overall innovation economy. We also discuss the uncertainty in the law, and why Kisliuk is not a fan of opening up the statute to rewrite 101 to address narrowing patent eligibility.