Kappos Drops Out of the Chopper Shooting

david_kapposThe Virginia State Bar, Intellectual Property section, held its 21st Annual Fall Weekend Seminar this past weekend.  PTO Director David Kappos was one of the speakers.  He had a number of prepared remarks and then he took some questions.  I attended this meeting and this post is based on the notes I took during his talk.

He began by noting that many had asked if he planned to hit the ground running when he took over the office.  He said no.  Instead, he planned to “drop out of a chopper shooting” to begin work before he hit the ground.  Several of the questions addressed the issue of how he has so much energy for the number of initiatives he is working on at the PTO.  As one example of how he has begun with a bang, the administration must review all news items coming out of the PTO before their release.  He has been told that the number of news items coming out of the PTO is overwelming the administration’s ability to review them.

Below are some specific changes that he discussed.  He wants to get feedback from practitioners on the the changes soon after they take effect.  While at IBM, he had often complained that the PTO has gone deaf to input from the patent community.  He is seeking to change this attitude at the office.  The changes are meant to be an iterative process, i.e., they intend further changes based on feedback to the original changes, but these are a start.

Changes to the Count System

Regarding the recent news on the proposed update to the “count” system, he described the current system as “byzantine.”  The system is recognized by all parties as an impediment to productivity at the PTO, but the interested parties have never been able to reach agreement on how to reform the system.  He stressed that he recognizes that examiners need more time to do a proper examination and that more of the issues need to be addressed early in the process, rather than pushing them to RCEs. 

He does not plan to abolish RCE or continuation practice because he recognizes that these procedures are needed in practice.  He did note, however, that third, fourth, and subsequent RCE filings are rarely needed for any case.  The PTO plans to raise the fees for later-filed RCEs after the first or second in order to discourage such serial filings.  The changes to the count system still need to be ratified by the examiners’ union.

Data Availability

Kappos addressed several “open government” initiatives where he hopes to make a great deal of additional PTO information and data available to the public.  Unfortunately, the PTO’s IT system is “hamstrung” and they do not currently have the financial resources to update the system to permit such data disclosure at this time.  He has begun a blog at the PTO that he hopes to take public in the near future.  Again, the PTO’s IT system has not permitted him to do so to date.

Accelerated Examination

Kappos hopes to increase the availability of the accelerated examination procedure.  He wants to relaunch the program with less onerous applicant requirements.  He realizes that the requirement of an examination support document (ESD) has been an impediment to many applicants using the procedure.

Work Sharing

Kappos addressed the international work-sharing initiatives that the PTO has been undertaking.  Currently, many foreign jurisdictions allow applicants to defer examination.  Thus, the US is becoming an examination clearinghouse for the world.  This cannot continue.  He plans a procedure where if an applicant’s first patent application is filed outside the US, the applicant will need to wait for the office where the application was filed initially to examine the application before the US PTO will do so.

Patent Quality

Kappos then addressed patent quality.  He noted that the PTO needs to completely rethink how it measures quality.  The current practice of policing quality by reviewing only allowances and using a stick to punish examiners who make an error in allowing a case has created the current environment in the office where examiners are afraid to allow applications.  Quality review needs to be at an earlier stage in the examination and must review not only allowances, but also rejections.  Examiners must feel free to allow applications without the fear of negative consequences.

Other Issues

Kappos stated that the PTO plans to rethink the current patent classification system.  He is going to speak to CEOs and general counsels to encourage them to have their outside counsel seek early examiner interviews for their applications.  The early interview program really works for getting applications through the office and he wants to increase its use.

The PTO intends to increase the availability of teleworking to the examining corps so that it can have a truly nation-wide workforce.  This would permit examiners to work in California or Texas or anywhere.

Kappos is a strong proponent of patent reform.  He characterized it as a 50 year reform.  The Administration will be releasing a position paper on the bills currently pending in Congress in the near future.

Relationship with the Bar

The PTO has great people.  They simply need to restore their relationship with the bar.  Lack of trust by the bar is a significant problem after situations such as those that led to the Tafas case.  He realizes that the bar does not trust giving the PTO substantive rule-making authority or even the ability to set its own fees at this time.  Once trust is restored, he hopes this will change.  He is working to reset the tone from the “Rejection Office” back to the “Patent Office.”  He wants the bar to work with him on these issues and to participate in changes at the office.

He did not address the Tafas case in detail because it is pending litigation, but he reminded the audience that during the early stages of the proceedings he personally signed an affidavit at the district court where he came out strongly against the rules.  He hopes they can resolve the issues they need to resolve shortly.

When asked about the $118 proposed annual renewal fee for attorneys and agents, he said that this was one of the first rules that he killed when he became director.  He will revisit the issue later, but he will need to be convinced that there is a purpose to the fee beyond simply keeping the rolls up to date.  So far, he hasn’t been convinced.

Overall Impression

My impression of Kappos could hardly be more positive.  He is such a breath of fresh air.  In recent administrations, applicants and the bar usually felt like they were virtually always adverse to the PTO on issues of policy.  It’s great to have someone in management who understands that inventors and the bar are actually on the same side as the PTO.  We are the PTO’s customers.  It’s very helpful that he has actually worked on the other side of the table. 

He has many great plans for change at the PTO, many of which he has already implemented or is in the process of doing so.  Hopefully, he doesn’t undertake more than he can handle in such a short time.

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