Director Kappos Testimony to Congress

On May 5, 2010, Director Kappos testified to the House Judiciary Committee. The prepared testimony included three specific USPTO goals:

  • By the year 2014, reduce the average time to first office action on the merits for patent applications to 10 months;
  • By the year 2015, reduce total average pendency for patent applications to 20 months; and
  • Create an IT infrastructure that permits end-to end electronic processing in patent and trademark IT systems. 

To reach these goals, the PTO is focusing on several specific initiatives:

International worksharing: The USPTO, EPO and JPO have agreed to use PCT search and examination results in their worksharing approach.  Director Kappos sees that option as having “the potential to dramatically increase the number of applications eligible for [Prosecution Highway] processing.”  The prosecution highway “concept is fairly straightforward.”

[W]hen an office determines that one or more claims are patentable in one application, the applicant may request fast-track examination of the same or similar claims in the second, related application filed with the second office. To have the request for fast-tracking accepted, the applicant must make available to the second office the relevant work of the first office as well as any necessary translations. By restricting the scope of claims presented to the second office, and by requiring the applicant to make the relevant work from the first office available to the second office, the PPH promotes a high degree of reutilization of first office work. The PPH also respects the principle of sovereignty noted above because each office maintains responsibility for the final determination of patentability in accordance with applicable law.

Hiring: The USPTO is looking to hire 1000 additional patent examiners over the next two years. The bulk of these examiners would preferably be experienced IP professionals but could be part of a “nationwide workforce.”   With the absence of funding, the PTO has hired only nine (9) examiners during FY2010 and 127 examiners have left their positions.

Funding: Director Kappos would hope for fee setting authority to allow for an “interim fee adjustment on patent fees to provide resources in the intermediate term; and an operating reserve to ensure adequate reserves to address multi-year budget plans and fluctuations in revenues.”

In his testimony, Damon Matteo, Chairman of the PPAC also indicated that “temporary” administrative fee-setting authority may well be the best first-step in patent office reform. 

We believe that to assure adequate funding levels for the long term, the USPTO needs authority to set and adjust fees administratively, so that it can properly establish and align fees in a timely, fair and consistent manner to recover the actual costs of USPTO operations and without going through the inherently long delays in the legislative process. This will afford the USPTO the opportunity to reform its funding model holistically to operate in a more businesslike fashion. After a period of time, or once the USPTO is on firmer fiscal footing, the fee-setting authority can be revisited.

Documents:

25 thoughts on “Director Kappos Testimony to Congress

  1. It seems that the reality of the USPTO’s dire situation has muted those voices that used to scream that efforts at harmonization meant surrendering to the Europeans, or something. International worksharing is sorely needed, and is merely a reality of our increasingly global economy. It has the potential to improve every aspect of patent law, from filing to patent enforcement. I’m glad to see that common sense is prevailing. And I’m also glad to see Kappos being so conscientious and capable.

  2. I remember the term FAOM on my production reports- I started in 1986 and the term had been around long before then…

    Anyway, what happened to the 4000 applicants for Examiner positions that they keep touting on the PTO website? Could they only find 9 qualified people in that group?

  3. Incidentally, FAOM did not come out of the PTO during the Dudas years. I think it is far older than that.

  4. Babel Boy must be one of those west coast practitioners (which includes pretty much anyone west of Fairfax County) who like to make stuff up.

    Anyone who is anyone uses FAOM.

  5. Actually, my comment was not directed solely to Kappos, who I agree has been doing a pretty good job getting things moving in the right direction.

    But while I will admit that some of the securing funding and the like is important. The main “job” is to see to it that the successful accomplishment of the day to day mission can be sustained. That takes a little more time in the office.

    Sometimes, when you are doing your job correctly, you can keep a fairly low profile.

  6. –>Anagrams< -- should make life easier because you can say them in place of all the words.

    dissect it into –>it’s< -- component words

    You’re hardly in a position to be nitpicking someone else’s choice of acronym in the interests of the English Language, are you?

    Besides, how does “FOAM” point your brain in the right direction? Do you immediately think of something both dense and full of holes, and with no clear path through it to the other side? Is that your impression of a First Action On the Merits?

  7. Please review this quote; “By the year 2014, reduce the average time to first office action on the merits for patent applications to 10 months;”

    First Office Action on the Merits = FOAM. Not FAOM.

    FOAM is a word, FAOM is not. Mnemonic devices are words or phrases that are easy to remember themselves and point you to whatever it is you’re trying to get to. Anagrams should make life easier because you can say them in place of all the words.

    Every time I see you guys using FAOM — which came out of the PTO during the Dudas years — I have to stop, however briefly, and dissect it into it’s component words. I think that’s because it has no impact on my verbal cortex. There is no way to say it. You can’t hear anything recognizable in your head with FAOM.

    As part of our attempts to suppress all communal memory of Dudas and his reign of terror, I plead with you all to go with FOAM. It’s even pronounceable.

    Trite, trite, trite. I know. I’m just trying to build a better patent system one wee step at a time. Obviousness is next.

  8. Nice litmus paper test developing here, to sort out sheep from goats on this blog. Who agrees passionately with GettoWork about what Mr Kappos should be doing with his precious time, and who disagrees with him (and thinks the while that GettoWork is a complete pillock).

  9. This means staying away from conferences meetings and other jerk-off sessions designed to avoid just doing the hard work of accomplishing something.

    All that stuff is his job, actually. If he were back at the PTO he wouldn’t be examining applications. His job is to secure funding, regulatory authority, and other resources so he can set PTO policy.

    He’s doing it reasonably well, I think.

  10. This is the real (one and only) MaxDrei writing. Just to say, I’m thrilled that somebody (even if that persona calls itself “anon”) finds thrilling what I have written on this blog.

    I’ll keep going then. There is nothing irreconcilable or contradictory, between what I just wrote above, and the aggregate of all my earlier writings.

    Or is there, anon. Perhaps you know better?

  11. Best post related to the PTO ever GetToWork. I am not being sarcastic. I couldn’t be in more agreement.

  12. Maxie, I’m thrilled that you are yawning. You even say the right thing with the substantive differences. Just one question – what have you done with the real MaxDrei?

  13. I suggest an immediate return to the time tested concept of shutting the f@#$ up and doing your f#@$%ing job. This means staying away from conferences meetings and other jerk-off sessions designed to avoid just doing the hard work of accomplishing something.

  14. Let’s hurry up and allow poorly examined applications that can later be caught up in endless post grant opposition. What a great idea – NOT!!!

  15. As with so many issues (like the stability of the Euro currency unit) the onward flow of events is too quick for conferring sovereign governments. EPO Examiners already routinely read the file history at the USPTO, and vice versa, via the internet. My sense is that the JPO Exr reads my EPO file history before writing me a FAOM. There is a very good reason why Examiners take the time to do this.

    Meanwhile, these so-called prosecution “highways” are a sop to the pols, and useless for professionals. Applicant has to give a lot away and gets nothing of value in return. No wonder nobody is using them. Nor will anybody, so long as the provisions of substantive law are so wildly different, in the co-operating jurisdictions.

    Have you any idea what opinion inside the EPO is, on the “quality” of the WO-ISA produced by other Patent Offices. How valid in the USA is a WO-ISA created in the EPO? Kappos cannot be serious, can he?

    By the way, how is Peer-to-Patent going. Anybody using that?

    ping, you think I’m “thrilled”. You didn’t mean that, did you? I’m yawning actually.

  16. Dear U.S. Government: this is unacceptable:

    “With the absence of funding, the PTO has hired only nine (9) examiners during FY2010 and 127 examiners have left their positions.”

  17. Pipe dreams. More like pipe bomb dreams.

    The USPTO, EPO and JPO have agreed to use PCT search and examination results

    Let me check that – “and examination results” Yep he done said that.

    Maxie will be thrilled, except don’t you need the same law applied when you do the examination? Is the rest of the world already going to join the US gold standard? Or did I ruin the surprise announcement?

    the applicant must make available to the second office the relevant work of the first office…By restricting the scope of claims…

    Now I knows we be talking about this on another thread, but don’t applicants already have to make avaialable the relevant work? So, for doing something applicants already supposed to do, they get to restrict the scope of the claims. Wow, tell me how many applicants how going to jump for a chance at this?

    It’s May right, so let’s be generous and give the Office the benefit of the doubt and say they get that 10th by June. So in a half year they got ten, which if they keep up that same vigorous pace, they will have 40 in two years. I knows the Office is good at spinning “Best Eva Quality” no matta the real situation, but hitting only 4% is goin to be some incredible redefining. And they better not mean 1000 more net, cause they be goin backwards on that.

    adequate reserves

    lol that – like Congress will let free money stand around in the Office reserve (slush) fund. Talk about dreamin.

    best first-step in patent office reform.

    Except Kappos already said no first step – only one step. Someone better tell Matteo what Kappos be telling Congress.

  18. He already blew 1/8 of his term (thereabouts) and one of these two things:

    “By the year 2014, reduce the average time to first office action on the merits for patent applications to 10 months;
    By the year 2015, reduce total average pendency for patent applications to 20 months; and”

    already went up according to D just the other day.

    Good luck K man.

  19. How many of the 127 who left:

    1) retired
    2) moved to other federal government positions,
    3) availed themselves of disability benefits?

  20. Govn’t lackeys are so transparent.

    Damon Matteo, “blah blah blah, temporarily give the PTO permanent authority to set fees.”

    Just say no to drugs kids.

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