Innovation is Sprouting in US Patent Office: A Plea for Flexibility from Patent Practitioners and Interested Parties to Allow the Necessary Changes

This blogger is keeping her fingers crossed that necessary changes will be allowed to occur in the US Patent Office.

Anyone who has practiced IP law for a few years can attest to the transformations happening in the US Patent Office over the last year.  In my opinion, Director Kappos is more than a breathe of fresh air over his predecessors, he actually knows what he is doing!  Also, regardless of what one may think of President Obama’s other policies and actions, one cannot question that his leadership is resulting in real attempts at innovation in the arguably previously moribund Patent Office.

As a experienced patent practitioner, the last several years have been very demoralizing.  I actually made the decision to stop working as a patent prosecutor because, quite simply, I became weary trying to educate junior examiners about the deeply nuanced intricacies of patent law.  Worse was trying to explain to clients why their patent application covering an important commercial innovation could not get approved in the Kafkaesque environment of the circa 2000’s US Patent Office or why their competitors were seemingly able to get ridiculously broad patents covering the prior art.

From my vantage point as a 15+ year patent professional, it is clear that the absence of experienced leadership in the Patent Office in recent years served as a primary cause of the problems that we face today.  Those thinking I am overstating this point would do well to remember that the first Director of Patent under President George W. Bush brought to the job the stellar credentials of having been the Chief Prosecutor of the Clinton impeachment trial, who needed a safe place to land after losing his Arkansas reelection bid.  (One must wonder whether he knew what a patent was before he took the lead role in Patent Office.)  The second Director, Jon Dudas, was only slightly more qualified:  as a former legislative aide, he had probably seen a patent before being appointed to head of the Patent Office, but not much more.   And, the appalling lack of competent leadership in the Patent Office occurred at the time the number of patent filings was increasing markedly:  in 2000 there were approximately 330K patent filings versus about 435K in 2006.  In my opinion, things went to Hell in Hand-basket in the Patent Office from 2000 to 2008.

At the risk of being called a cheerleader for Director Kappos (which I am not), I am heartened by what is coming out of the Patent Office.  In the past several months, we have seen remarkable changes in its operations.  As one example, currently allowance are at an all-time high, which I have written about here.  More recently, the Patent Office has announced a program to advance pending applications by abandoning another application and a 3-tiered application speed track.  These ideas have not yet been adopted, but they show an attempt by Director Kappos and his team to try new things to address the horrendous application backlog.  Also, Director Kappos is reaching out directly to the interested public by speaking about policy and blogging about the Patent Office, unlike his predecessors who seemed more interested in photo-opps.  (As to the last point, there was a running joke in the practitioner ranks in recent years that the only thing undergoing an upgrade on the Patent Office website from 2004-08 was the picture of Jon Dudas shaking hands that changed every week–sometimes more.)

There has and will be much push-back from the practitioner corps about some of the ideas floated to improve the operation of the Patent Office.  Of course none of these ideas are perfect and, indeed, might cause adverse effects to some patent filers.   Historically, this sort of thing has typically resulted in loud arguments from a relatively small group of affected people, such as a the often-exalted “independent inventor.”   In the past, these strong voices have been enough to stop changes in the Patent Office rules, but often those against changes were woefully bereft of facts supporting their positions.

Indeed, with regard to re-vamping of the first to file rule, to which the US is the only country in the world to adhere to, Director Kappos has stated that far less than 1% of inventors (actually 0.01%) could be affected by the first to file .  The fact that the first to file rule is really not important at all of to the workings of the US patent system or, more importantly to the rights of the vast majority of inventors should mean that we will be looking at legislation in the near term that brings this country into conformance with the laws of other countries.

The refreshing thing to me today is that under the direction of Mr. Kappos, the Patent Office is looking at facts upon which to base its rule-making, as opposed to hypotheticals about how proposed rules might effect certain types of inventors who, in reality, might not even exist.   (Of course, there are many in the patent business who don’t let facts get in the way of their opinions, but every business has folks like these.)

Many of my colleagues, some of whom I consider friends, seem to exhibit an almost knee-jerk response to proposed changes in Patent Office rules, and those being proposed today are no exception.  For non-practitioners, it may seem like such arguments from experts serve as substantive proof that proposed Patent Office rule changes are wrong-headed or, at a minimum, half-baked.  Those on the outside would be well-advised to realize that we lawyers like to argue and find fault as a matter of our natures.  Also, we tend to argue on the margins–that is, find exceptions that to prove the error in the rule because, quite simply, that is what we get paid to do.  Too often, we get hung up on hypothetical situations that demonstrate that a proposed Patent Office rule is not perfect in its application.  This lack of perfection has served to prevent needed changes in the past, and likely will prevent improvements in the future, especially when they can be stopped by competent (and expensive) lobbying to ill-informed Congressmen and their staffers.

So, to my colleagues who think the best way to react to proposed rule changes by the Patent Office–back off for once!  Director Kappos and his team are trying innovative ideas in an attempt to fix the highly dysfunctional operations of the Patent Office.  Such innovations reflect what most people say is the biggest problem with government: that it fails to act like a business.  Innovation is what businesses do.  And, like in business, not all of these innovations will work and some people will be negatively affected, but if we let perfection be the enemy of the pretty good, we will never see any improvement in the Patent Office.

Of course, the Patent Office can’t be allowed carte blanche to innovate, as its administration has been known to make some pretty boneheaded decisions–the 2007 continuation rules are a prime example of such stupidity in the name of supposed “efficiency.”  But, significantly, those rules were enacted under the previous Patent Office bosses who, as indicated, were put in charge not because of their expertise but instead for their political connections.

Also, as with any government rule-making applied in a monolithic manner to an entire class (here we are talking about all patent filers), there will be some who get the short end of the deal.  To ensure that those with the most to lose have their interests protected, we definitely need experts advocating on their behalf.  However, those voices should not be allowed to prevent improvements from occurring that will benefit the system in the aggregate.  At the end of the day, the rules may apply to entity size or some other delineating feature that can serve to protect the “little guy,” while still allowing improvements to occur for most.  (This wouldn’t be unheard of:  the US patent rules and laws expressly address entity size when collecting fees.)

So, in conclusion, I am hopeful that Director Kappos and his team will be given the latitude to experiment (at least within the bounds of their rule making authority under the APA) by the practitioner community and Congress, as well as the courts.  Change is never easy, but there can be no doubt that change in the Patent Office is critically necessary.   Given the importance of the patent system to the success of the US as a major industrial power, we can’t afford to stick to the broken way of operating that has been proven to be a failure–even if it is more comfortable for patent practitioners.

One thought on “Innovation is Sprouting in US Patent Office: A Plea for Flexibility from Patent Practitioners and Interested Parties to Allow the Necessary Changes

  1. Gena777

    Like you, I continue to be impressed by Kappos’s pragmatism, savvy, and efforts at public outreach. I also have a favorable view of his proposed Project Exchange and 3-track processing programs. These proposals indicate that Director Kappos understands that different patent applications should be treated differently; implementing this concept could contribute to increased efficiency at the USPTO. I believe that the USPTO needs to start reviewing several different types of multi-tiered approaches to patent examination, because the traditional one-size-fits-all approach doesn’t meet the needs of today’s environment. If Congress ever actually passes a patent reform bill with teeth, then maybe we’ll see significant change for the better in patent law someday.

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