As has been widely reported, President Obama has finally announced the nomination of David Kappos, vice president and assistant general counsel of IBM, to be the next Director of the PTO.
The nomination comes as no surprise, as Kappos has been thought to be the nominee for some time, especially once James Pooley was selected for a leadership role at WIPO. I reviewed his biography in a previous post on the potential nominees.
I believe that this nomination is a good choice to fix the PTO that, quite frankly, is in dire need of leadership with management experience and strong knowledge of patents and patent law and their implications on the business world. There are a couple of areas in Kappos’ record, however, that are concerning.
Kappos is strongly against business method patents. IBM filed an amicus brief in Bilski where it argued in favor of the Federal Circuit’s new machine-or-transformation test. While the patentability of such methods is left for the Supreme Court to decide, the newly appointed director of the PTO could have a strong influence on developing policy against such patents, especially if Congress gets involved with them legislatively.
Kappos is also a strong proponent of the peer-to-patent experiment where competitors and the public can submit prior art to patent examiners on pending patent applications. While this program sounds good in theory, in reality the participation in the program has been low. There is not a strong incentive for companies or individuals to spend a lot of time researching prior art for pending applications, given the uncertain nature and outcome of the examination and litigation processes.
On patent reform issues, Kappos is generally in favor of reforms that improve patent quality, but not in favor of those that reduce patent protection. Thus, Kappos favors enhanced post-grant opposition and inter partes reexamination provisions, while being opposed to initiatives restricting damage awards for infringement. The post-grant review procedures could be problematic for the PTO unless it is given a significant increase in resources to deal with it.
Reaction to Kappos’ nomination has been generally positive. Patent reform rivals, the Biotechnology Industry Organization (BIO) and the Coalition for Patent Fairness (CPF), both issued statements supporting the nomination. The BIO statement called the nomination a “strong choice,” while CPF “applauds” the choice.
The nomination must next be confirmed by the Senate. It is not known when the Senate will conduct hearings on the nomination. While the position of Director of the PTO is certainly less contentious than that of Supreme Court justice, given the schedule for Judge Sotomayor’s confirmation hearings and the Senate’s August recess, it is unclear when Kappos will be confirmed. The sooner, the better to be sure.