The patent system will survive, but not thrive over the short term

Bruce Kisliuk at the USPTO 225th Anniversary Celebration, April 10, 2015.

Bruce Kisliuk at the USPTO 225th Anniversary Celebration, April 10, 2015.

Bruce Kisliuk retired from the United States Patent and Trademark Office last summer as the Deputy Commissioner for Patent Administration after a 30+ year career at the Office. He is now a senior patent counselor with Wilson Sonsini Goodrich & Rosati. I had always wanted to interview Kisliuk, but the opportunity never presented itself until recently.

During part 1 of our 3 part interview we discussed Kisliuk’s career at the USPTO, but also how he is a believer in the patent system, “a system that works” as he called it. In part 2 of our conversation, which appears below, we talk about whether and when USPTO employees understand the critical role they play in the innovation economy, we get into a philosophical conversation about prior art (which is really more of a therapeutic rant on my part) and then move into Kisliuk’s observations that uncertainty is not helping the patent system thrive, and that it may be some time before the system thrives the way that some wish it would.

Without further ado, here is part 2 of my interview with Bruce Kisliuk.

 

QUINN: Let me dial this back a little bit a go into something a little more concrete. You spent 30 years at the Patent Office in a variety of different roles from examiner all the way up to the 10th floor and I wonder whether along the way you think others at the PTO have this idea of the role that is being played in the innovation ecosystem. I guess what I’m asking is whether you think the people who work for the Patent Office really understand the role they play in the system?

KISLIUK: Hmm, that’s interesting.

QUINN: I know that the 10th floor people, like you, get it. I know you understand that the patent system is important, the job PTO employees play is a very big role, an important role in the whole infrastructure of the marketplace.

KISLIUK: That’s a really good question, Gene. I’ve talked a lot with my peers at the time when I was in the PTO in the executive levels about that issue and one of the things that strikes a lot of people who have been within the PTO for a number of years is — what makes it a great place? It has a very compelling mission and when you’re there you’re living the mission and even though you can get caught up in the day-to-day activities, from a broader perspective it’s all driven around trying to make everything work well. So from an executive or management perspective I can pretty safely say that every executive I’ve ever worked with at the PTO, and I’m not talking just not in the Patent Organization, but within Trademarks, PTAB, CFO, CIO, there is a compelling drive about the importance of the system and trying to get it right. Now when you go down deeper into the organization and you’re hiring new employees, it’s a good question how soon do they “get it” — get the importance of the mission and the impact of their job in the system? I’ll give you my own example. I kind of stumbled on to the PTO. It’s not like I grew up as a kid and said I wanted to be a patent examiner. I was trying to come back to the DC area, trying to get a job, came to the PTO — it was a good match, I took the job. It wasn’t until, I’d probably say a few years in, did I really start piecing it together. So I’m going to tell you that I think a lot of people do get it, many examiners get it, and I think early in their careers. And the way the PTO trains examiners early, I think it’s one of the things the PTO is working towards, giving them a better appreciation for the value of the work that they do. When you step off the treadmill of being an examiner or a first-line supervisor and look at the work you’re doing and the impacts of the decisions you make, it’s a very powerful thing. I can tell you that there’s a kind of esprit-de-corps in the PTO that is very strong. And I’m not sure that people who have not worked there can sense it but when you’re there it’s real. It was real to me.

QUINN: That’s interesting. Because I do think it’s real, I do think it is, I just wonder sometimes whether — hmm, how do I even want to say this? Maybe what I want to do is say that– I think that the people at the office that play the most direct role in the innovation ecosystem are the supervisors and maybe to some extent the people in Quality Review as well.

KISLIUK: Yes.

QUINN: Because those folks are really having the most influence over the day-to-day decisions of your average examiner and that’s the interface with the public on a day-to-day basis and that’s the decision maker who’s ultimately going to determine whether or not you get a patent and how broad it is and that sort of thing. It seems like their decisions are disproportionately influenced by who their supervisor is and whoever the Quality Assurance person is that is assigned to review their work. Because it’s hardly shocking that an examiner would give the work product that they’re being measured on, right?

KISLIUK: Yes.

QUINN: So if you have somebody who is not all that favorable to patents that’s reviewing your work and you want to keep your job then that’s going to slant you in one direction, I suppose. And I don’t know that there’s a question here as much as I have seen for a very long time a disconnect between what the people on the 10th floor want to have happen and say and what we see day-to-day coming from certain areas of the Patent Office and that’s real frustrating.

KISLIUK: Yeah, I appreciate it. Since we are talking about the job of examining I sometimes think about the complexities of that job and how the job has changed. When I was retiring from the PTO I thought back a bit to when I was an examiner. There wasn’t any significant IT or automation, it was a paper application file and paper search files. I was searching in some wooden shoe cases like they did back in the1800s. When I think about searching, searching is somewhat of an imperfect science. Just think about the volume of data that is accessible on the Internet nowadays. It’s one thing to search patent documents, the 40-50 million world-wide patents and patent publications. Examiners are used to reading patents and patent publications. But now think about the non-patent literature and the volume of data that is growing, it is just enormous. I know search systems have gotten better, and the PTO is working towards getting better search tools. It’s a challenge getting the best references in front of an examiner when facing just the sheer volume of information. So there’s a lot going on in the development and improvement of search for both examiners and the public. One of the other aspects I’m supportive of is the direction the PTO is moving on in clarity of the record – it is really important. I like the initiatives that the PTO is working to put in place. A clearer record will be a plus and I think any improved search systems are going to be good as well. I’ve heard stories about the “rogue reference” that is uncovered after a patent issues. So finding the best prior art, particularly non-patent literature, those are things that are ripe for improvements and will go towards I think, I hope, a better system.

QUINN: Well, maybe. Are you up for a little philosophical discussion on prior art here?

KISLIUK: Sure.

QUINN: I ask because one of the things that strikes me as just fundamentally unfair is that this reference that really could never have been found in a real way is used as prior art against those who have come up with an innovation, you know? I understand that if it publishes in Chinese the fact that you don’t read Chinese is your fault, apparently, because we operate under this myth that you have complete and total knowledge and ability to find everything and that document will be used to prevent you from getting a patent. And, yeah, I’m being a little bit sarcastic here when —

KISLIUK: A little, Gene?

QUINN: But, you know, it bothers me, you know, because if this stuff — the whole idea of the patent system is to spur innovation, right? It is to get people to come up and contribute to the knowledge base and if something is so difficult to find, if you have to spend millions and millions of dollars in a search to find it shouldn’t that really say something about how inaccessible it really was?

KISLIUK: That’s interesting. Now you’re getting into high-policy discussion. This is good, but I probably need a beer to have this discussion. I understand the concept, but I think in a system that has to be applied uniformly, and we’re not even talking just the US patent system but internationally as well, the clear the standard the better. Any discussion about what is prior art, what is novelty, what is an inventive concept? I think you have to have clear lines. I won’t argue with you that it may seem in certain situations unfair that a rogue document or reference that is hidden and never has been used could knock out something. I don’t know how often it happens and haven’t seen statistics on that. But to have a workable system you need some clear standards – and I’m not sure where to draw the line on a publicly accessible document that shouldn’t be a reference. And please don’t tell me that it could be as clear as obviousness, because then we’re in trouble. So I’m okay with the current prior art standard. I’ve heard people say that the references found through prosecution there’s 80 or 90% chance that you’ve got the best art. So maybe there’s up to a10% chance if you spend another $10,000 or $20,000 — or much more — searching you may find something? I don’t know how true that is. It does concern me, which is one of the reasons why I’m looking forward to more robust search systems. One of the aspects I was involved in at the PTO was the IT systems, and looking at the evolution of IT at the PTO versus what’s going on outside the PTO. When you start talking about some of the big data tools I think they are well applicable to the patent system. I’m just not sure when progress will be made on that. As long as we’re talking high level here, I’m not sure the PTO per se or the government overall, is in the best position to invest in extensive IT infrastructure and research for Patent search systems. However, I think maybe a public/private partnership to develop tools to find the best prior art is something that could be explored. I expect there are improvements in that arena that could make the system better for everybody.

QUINN: Yeah. And I find it frustrating if you can’t already tell.

KISLIUK: I can.

QUINN: And one of the reasons is I don’t like hypocrisy, and I’m not saying I’m not above that. When I find that I’m being hypocritical myself it bothers me personally. But during this whole AIA debate you had a lot of these companies coming out and saying oh, well, we have to have post-grant review and we have to have third party submissions so if you knew something you could notify the Patent Office before a patent issues, number one, and number two, right after the patent issues you can knock them out and everything’s on the table, 101, everything, 112. And now you have these same companies saying that they have absolutely no intention of ever filing a post-grant review and why would they ever file a third party submission when that’s just giving the patent applicant a chance to claim around the prior art? They say they will just hold that prior art back for later and that really bothers me.

KISLIUK: Yeah.

QUINN: Because if you know what the universe of prior art is and you really are trying to do your job you can write an application and you can write a claim — and now I’m going to cascade a little bit here because ultimately I think this rogue reference or saying that everything no matter how bizarre it is, once you do get a patent if it’s valuable you’re going to be hung up in post-grant challenges for years and spend a million dollars or more just to preserve the patent. Then you win there, then you still have to go in litigation. You still have an appeal to the Federal Circuit. At what point in time does this thing that is supposed to be a property right ever quiet? When does the title ever quite? When do you ever really own anything?

KISLIUK: Right. I get it. I appreciate your frustration and thankfully I don’t share it yet — but I appreciate it.

QUINN: You will share the frustration I’m sure!

KISLIUK: The AIA in a many ways was a pretty significant change. And we’re really not that far out from when it started. So in some ways changes to the system move at a glacial pace. In the long run the post-grant proceedings, maybe not as they’re currently structured, will be appropriately fine-tuned. The original intent of the post-grant proceedings was sound and like many new proceedings people look for ways to use it to their advantage. The way some are using it today — some are calling it “reverse patent trolling” — using those post-grant systems as an offensive tool, for financial gain — people are creative. While it’s nice to have people who are creative, that’s more reason to continue to monitor and fine-tune the system. Before the AIA it was a fairly long time between big changes to the patent system — about 60 years from the 1952 Act, less from the GATT and AIPA changes in the 1990’s. A long length of time between law changes may not be the norm anymore. I think we may see more frequent adjustments, more continuing public discussions. Any changes bring another layer of uncertainty and I think uncertainty for the Patent system is difficult.

QUINN: Yeah. The uncertainty —

KISLIUK: I’m not making you feel any better, am I?

QUINN: This is what the new reality is, right? I mean —

KISLIUK: Well, right now it is, yes.

QUINN: And it stinks! But at the same time we’re not doing anybody any good if we try and sugarcoat it and say it’s not that bad, which is another problem that I’ve dealt with. Some of the lawyers in the industry tell me that I overreact and things are so bad. They look at me like I’m crazy. But you get this decision in Mayo, which is just one of the worst decisions you could possibly ever read, because they just ignored the statute and they intentionally said they’re ignoring the statute and when Justice Breyer said we decline the invitation of the government to use 102, 103 and 112, and that 101 is much better suited. Well, no, it’s not, it’s just not. Up until then the Supreme Court had said let the various sections of the statute do the work they were intended to do. I’m not saying that that those claim should have been allowed. I think everybody agrees that those claims were bad and shouldn’t have been issued but you have that kind of mischief there with that ­­decision and it’s easy to see how it’s going to be applied. Then you have the Myriad case where they say human intervention is no longer now not enough and that was the fundamental holding in Chakrabarty, but now the Supreme Court says human intervention isn’t enough and they even acknowledged that the DNA was isolated and it didn’t exist in nature but yet the law of nature doctrine somehow still applied. And they said in Myriad that if CDNA, which is completely manmade, if that were identical to DNA then it would be un-patentable as well, yet you have the attorneys looking at all these cases, and then in Alice too, the Alice decision I heard all kinds of attorneys say “oh, you’re just wrong. You’re saying the world’s coming to an end and it’s not coming to an end. The decision’s not that bad.” Well, I guess we know who turned out to be correct in each of those instances. There is tremendous denial in the industry when the Supreme Court issues these horrible decisions. I understand there’s a difference between what the Supreme Court writes and how others interpret it, but if you are paying attention it is incredibly predictable how the careless and sweeping statements of the Supreme Court will be interpreted.

KISLIUK: Yeah.

QUINN: And you’re seeing it in the PTAB where these patents are going down and you’re seeing it in the district courts and in the Federal Circuit where all kinds of things that are being called into question and at what point in time do we actually stand up and say enough is enough and it’s time to really call it like it is?

KISLIUK: That’s a good question. You know, there are two basic vehicles for change – the court’s interpretation or changing the law. So we can expect the courts themselves to continue issue some refinements. I’m not necessarily looking to hearing more from the Supreme Court — not sure what could come out — but that’s one vehicle and there are some issues already teed up. And the Federal Circuit’s made some interesting statements about basically their hands being tied. That’s not necessarily comforting either. There’s been some discussion, and some people suggesting, possible changes in the statute regarding eligibility. I get a little worried when I hear that — you know, the joke about making law is like making sausage, right? I worry because even with all the best intentions of “fixing” the law, then after that you have to draft the implementing rules, and then you have to put it all into practice. Those are three pretty big steps which may not necessarily come out in the end aligned with the original intentions. So I worry some that we take a system that is fundamentally sound and we start chipping away at the foundation. So from a long-range view, I’m more comfortable not seeing changes to the statute right now, at least regarding eligibility, and working through the court’s to bring it back some clarity.

QUINN: So what do you think attorneys representing clients should be doing right now?

KISLIUK: Because of my current situation I probably shouldn’t be commenting on that.

QUINN: I don’t want to get you in trouble. I always tell people what we’ve seen is that the law has been changing and particularly in the software area, it changes every couple years, whether there’s a new obviousness decision or a new software case.

KISLIUK: Right.

QUINN: Or a new 112 standard, one of the algorithm cases and that sort of thing. The only thing I know is the application you file now is going to be governed by law that’s different than as it exists today so if you want to get a patent you have to try to get one now because if you wait you’re never going to get it.

KISLIUK: Right.

QUINN: I think that’s true but that’s not the most heartening advice, you know?

KISLIUK: I can only make broad generalizations on it, because I just don’t have enough experience on the outside to know. I recall you’ve had some articles about what’s the difference between an invention and an innovation. Without using those labels, if you have a new concept and your disclosure is solid and it is a novel and/or unobvious concept, there should be ways to claim it and succeed in challenges. I fundamentally believe that. And regarding the eligibility standard, at least that is the same for everyone — although many, including me, would rather see more inventions eligible not less. Regarding litigation, I think that playing field may not always be as level. To me that’s more a factor of litigation in general, not just patent litigation. Those with more resources have some advantages in any litigation. That’s one reason a patent right is important, it can level that playing field a bit. Which is why I think the system will survive, maybe not thrive as some may wish but will survive, because you will still be able to protect. Technological progress marches forward and people aren’t going to sit and wait. So if you need patent protection you’re going to get what you can and you’re going to make sure you have a solid disclosure and work through the system as it stands when you’re working through it. To the extent you can try to put yourself in a position to be able to move left or right should the sea change. That’s the best, I think, anyone can do.

QUINN: You know, on that rosy note —

CLICK to CONTINUE… Up next are the “get to know you” questions, with a heavy emphasis on music and history.

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One comment so far.

  • [Avatar for Benny]
    Benny
    December 16, 2015 05:51 am

    Allow me a couple of observations-
    The question “do examiners understand their role in system” is one I’ve asked two patent attorneys who previously worked as examiners. Their answers condensed to “we do, now.”
    Regarding the USPTOs tools for searching prior art and Kisliuks’ justified optimism in improvement in that field- well, thats going to make it harder to obtain patents (at least, harder to obtain defensible patents) which in my opinion is all for the best