Statement of David J. Kappos, Nominee for Under Secretary of Commerce for Intellectual Property

Statement of David J. Kappos
Nominee for Under Secretary of Commerce for Intellectual Property
and Director of the United States Patent and Trademark Office
Nomination Hearing before the Senate Judiciary Committee
July 29,2009

Chairman Leahy, Ranking Member Sessions and distinguished members of the Senate Judiciary Committee, thank you for the opportunity to appear before you today. I am grateful to President Obama and to Secretary Locke for the trust they have placed in me and to you for considering my nomination to serve as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

… It is exceptional and humbling under any circumstance to have the chance to serve one's country. But it is particularly so for me as the son and grandson of immigrants – my father came to this country from Greece and my mother's parents came to the US from Italy. So, the opportunity to be here today is particularly poignant for me, as it is for my family.

If recommended by this Committee and confirmed by the Senate, I look forward to joining Secretary Locke and his team at Commerce in their mission as stewards of American economic growth, job creation and innovation.

I have spent nearly my entire professional career in the field of intellectual property law, and indeed my entire career around technology and innovation. After receiving my education from the University of California system, first in electrical and computer engineering and subsequently in law, I went to work for IBM as an intellectual property law attorney.

During my career at IBM, I have held intellectual property law positions in nearly all of its business units. I have written and prosecuted patent applications in many technical areas and I have searched the prior art files of the USPTO alongside other patent professionals, including examiners themselves. I have handled many trademark matters in the US and globally. I managed IBM's IP law interests across the Asia-Pacific region, and lived in Japan during that period. Currently and for the past six years, I have served as Vice President and Assistant General Counsel for intellectual property law at IBM's corporate headquarters. In that role, I am responsible for the management of intellectual property interests – patents, trademarks, trade secrets and copyrights – on a worldwide basis. Additionally, I have served in leadership positions in the major professional associations that represent the intellectual property law community in this country and globally, including the Intellectual Property Owners Association and the American Intellectual Property Law Association.

I care passionately about this field and the role intellectual property plays in advancing American innovation. So, it is particularly exciting for me to be considered for the position of Director of the USPTO, an organization that traces its roots to the founding fathers and their understanding that promoting and rewarding innovation is critical to our country's success.

The PTO faces many challenges. Most immediate are those resulting from the current economic downturn, the need for a stable and sustainable funding model, the need to address pendency concerns while preserving and enhancing patent quality, and the imperative to attract and retain skilled personnel at a time of fiscal constraint. Secretary Locke has personally asked me to make it my number one priority to refashion the patent examination process to meet these challenges. In carrying forward this direction, I will focus substantial personal attention within the USPTO. Additional challenges flow from a rapidly globalizing trade environment , impacting trademark and patent interests, as well as respect for intellectual property and the consequences where IP is not respected.

Longer term, the USPTO must keep abreast of the astounding pace of technological change across a broad range of scientific disciplines. It needs to understand new modes of innovation and their effect on its mission. And it will need to constantly rethink how to maintain and enhance the constitutional imperative to promote innovation and scientific advancement for the public good – both in terms of the technology confronting the Office and in terms of leveraging and applying the law to that technology.

I welcome this challenge and pledge to you all of my energy, creativity and intellect should I be confirmed. As I consider this challenge, I am mindful of several things.

I am mindful that the USPTO serves the interests of ALL innovators in this country, small and large, corporate and independent, academic and applied, and – most importantly — the public interest. While I have spent my career to date at a large corporate enterprise, I am familiar with the concerns and issues of all USPTO constituents – including small and independent inventors, the venture and start-up community, public interest groups, the patent bar and many others – and will reach out to all of them.

I am mindful of the incredible dedication of the thousands of USPTO employees, and the essential role they play to the success of the US innovation system. I will work every day with the USPTO employees and the unions that represent them to establish strong, positive relationships grounded in professional treatment for these workers producing work product based on professional judgment.

I am acutely mindful that innovation today is global and that IP policy is of paramount importance, not only in our country, but also in the EU and Japan, in China, India, Brazil and many other developing countries. I will use my international experience and my understanding of global IP trends to help this Administration represent, advance, and protect the interests of American innovators in the global arena and to lead the world in developing strong, balanced, inclusive intellectual property systems that advance the well-being of all participants.

Finally, I am mindful that the office for which I am being considered, working as part of Secretary Locke's team and within the Administration's agenda, must be intensely focused on how to serve the American people at this time of economic uncertainty. I believe the USPTO can play a significant role in enhancing economic growth, creating jobs and advancing American innovation. I hope to play a part in this important mission.

Again, I am grateful for the opportunity to address you today. I am honored by the opportunity to serve and I look forward to joining this Administration and Secretary Locke's team should I be confirmed.

I am pleased to answer any questions.

David J. Kappos

98 thoughts on “Statement of David J. Kappos, Nominee for Under Secretary of Commerce for Intellectual Property

  1. 98

    Interesting note in KSR (bottom of page 17 and into page 18) that the rigid TSM and the flexible TSM (circa 2006) are different tests and that the KSR ruling only affects the rigid TSM.

    A CAFC flexible TSM test (one that allows implicit motivation, may still be proper, and this avenue can be seized by the Office to provide that slightly lower standard.

    That is, if the Office chooses to revise its reject-reject-reject mentatlity.

  2. 97

    “Slightly lower the standards of patentability (perhaps start by going back to a rigid TSM standard)”

    How exactly do you propose to do that? Stand outside the Supreme Court and protest?

  3. 96

    Do you really, truly want to decrease pendency? Slightly lower the standards of patentability (perhaps start by going back to a rigid TSM standard), allow more patents, and let the market weed out the worthless patents and litigation resolve the close cases.

    Something tells me the bad economy will make the Patent Office much more desperate for those RCEs and CONs that they seemed so concerned about before Tafas v. Dudas.

  4. 95

    “my guess is that signal claims and Nuijten will be revisited after SupCt decides bilski”

    The delusion runs deep in this one.

  5. 94

    “If the Supreme Court ultimately declares that signal claims are patentable”

    BWAHAHAHHHAHHAHAHAHHAHAHAAHH!!!!!!

  6. 93

    really said: “How come we got this middle aged white guy instead of a wise latina who’d make better decisions?”

    If you can find a latina who is as knowledgeable about patents and patent policy as Judge Sotomayor is about judging and the law, then by all means sign her up. I could be wrong, but I think it was primarily middle-aged white guys who got us into the current mess.

    In the meantime, however, Mr. Kappos appears to be a decent choice.

  7. 92

    curious,

    then you will see the appeal rate skyrocket as well as the number of times that crappy rejections are withdrawn with the threat of appeal.

    oh wait,….

    …that’s what we have now isn’t it?

  8. 91

    If examiner’s get fined for issuing crappy rejections which they later withdraw, they will never withdraw them.

  9. 90

    “I’m a private citizen and I don’t expect a fee funded gov agency to do work for free, even if I can come back an make new arguments that are convincing. Seriously. Where do you think you live? Never never land?”

    The Examiner made a crappy rejection, which he later withdrew, and you want the Applicant to pay for it???????? How about if the Examiner withdraws a rejection, the USPTO pays the applicant the cost of the attorney fees for responding to the rejection?

    Tie the Examiner’s salary to how much the USPTO has to reimburse the Applicant for crappy rejections that should have never been issued, and we’ll get some real progress. The Examiners will produce a lot less actions, but those they do produce will be top notch.

    “I’m a private citizen and I don’t expect a fee funded gov agency to do work for free.”
    I’m a private citizen and I expect employees of the government to do the job right … THE FIRST TIME. None of this … “well … ya know … although I screwed up the first time … and I didn’t understand your arguments the first time … and although the second time, in which you held my hand like I was 8 years old and I finally understand why my rejection was a big pile of dung … I think you should pay some more …. because …. well, for being unlucky to have an incompetent examiner.”

  10. 89

    “Do you have written support for that single word?

    Thought not.”

    Dude … you have no freakin idea what you are talking about. All this language that includes signals or carrier wave also discusses hardware modules, CDs, DVDs, RAM, ROM, and so on and so forth … all examples of computer readable storage medium or computer readable tangible medium.

    Now go crawl back into your hole.

  11. 88

    “How about this. If a claim isn’t amended, you cannot cite a reference that you didn’t initially apply in the First Office Action?”

    I don’t think that he’s trying to say you should never be able to make a new argument. For instance, you should be able to make one if we make a new rejection, or if you file an RCE, or after the first action (of course). Patent prosecution is a reactionary game with the PTO taking the first swing every single time. Seems fair that if we have to reopen and start from a non-final, you guys could send in a measly 1k dollars for an RCE to make totally new arguments. Seriously, that’s a fraction of what they’re paying the attorney.

    I’m a private citizen and I don’t expect a fee funded gov agency to do work for free, even if I can come back an make new arguments that are convincing. Seriously. Where do you think you live? Never never land?

  12. 87

    “BTW … is it the USPTO’s position that they are turning their back on In re Beauregard?”

    I can’t speak for the PTO, but I turned my back on it long ago, it means nothing more than the printed matter doctrine doesn’t apply. Or that the PTO isn’t going to argue thus anyway.

  13. 86

    “Problem solved with the addition of a single word”

    Do you have written support for that single word?

    Thought not.

  14. 85

    “So how about this. If you don’t bring up the argument on the first response you can’t bring it up after final or at appeal?”

    How about this. If a claim isn’t amended, you cannot cite a reference that you didn’t initially apply in the First Office Action?

    If you want to see all of our cards upfront, we want to see all of your cards.

  15. 84

    “Theres still roughly over 4k applications filed in 2008/2009 that describe a computer readable medium as a signal or carrier wave.”

    Oooooo …. sooooo scary.

    How about “computer readable storage medium” or “computer readable tangible medium.” Problem solved with the addition of a single word … wake me up when an Examiner writes something interesting. This is assuming that it is necessary to do so in the future. If the Supreme Court ultimately declares that signal claims are patentable, there are some attorneys that are going to be sorry they didn’t include the language you are so concerned about. A lot can happen in 20 years.

    BTW … is it the USPTO’s position that they are turning their back on In re Beauregard?

  16. 83

    “my guess is that signal claims and Nuijten will be revisited after SupCt decides bilski”

    My guess is that they still won’t fall into a stat category. They won’t 1000 years from now either.

  17. 81

    Another examiner, another stoopid post,
    I read you post as “not counting a large portion of 112 rejections, some random figure I made up off the top of my head can be argued with the possibility of success”. Congratulations on saying a sentence that means absolutely nothing.

    101 changes sure, but don’t expect whats crap than to be golden in 3-5. Theres still roughly over 4k applications filed in 2008/2009 that describe a computer readable medium as a signal or carrier wave.

    My point was that quality could be improved on both sides.

  18. 80

    Given that the Examining Corps is made up of engineers, no matter what system you “rate” us with, we will figure out how to optimize the crap out of it.

  19. 79

    >>so perhaps this message may crack that defense >>of persistent ignorance you carry.

    I wonder if some of the posters here(read MM-trollbot and 6) realize that because of their persistent ignorance in some areas of patent law that their credibility is zero in all areas of patent law.

  20. 78

    How about this folks….remember the earlier post on examiner hours. Well, for all you attorneys who are looking for great work here are some gs-12 expectancies that are the basis for all other grades. In the mechanical arts for example, they get about 17.8 hours for two counts. You are talking about 1-9hr day to search and write up a full rejection. How is that for your money. GS-14 at this level is looking at about 6-7 hours for a full action. Now you wonder about quality. So for all you dopes sending in large claim cases…enjoy the quality of your rejection. Better numbers get about 35hr per 2 counts, but that is for the complex stuff.

    Also, not sure how you use the actions per disposal correctly: i.e. you get 1 for restriction mailed; 1 for foam; 1 for final; and 1 if there is AF response. That’s 4 actions per disposal on a case that fits this criteria. What do you set it at? Does it really mean an Examiner has done a poor job? NO.

    As for practitioners, I have many responses that are half assed. Then after final they are done like they should have been the first time. (worse yet on appeal) So how about this. If you don’t bring up the argument on the first response you can’t bring it up after final or at appeal?

  21. 77

    Hey Rob…up top? By the time he gets through the Union, Obama will be out of office. Hopefully so will Kappos. Fox in the henhouse, so much for not letting big business through the door.

    I can assure you Examiner’s, the change is coming on your side.

  22. 76

    Thanks for the encouragement, Malcolm. Politicians crave hecklers. When the hecklers themselves get heckled, we have the makings of a lively meeting. Which in a democracy, I would say, is a thing devoutly to be wished.

    6: I don’t follow all you write, but I loved the ascerbic offhand remark, just above, about the dates. Spot on, painfully close to home, and therefore prompted involuntary laughter. Carry on in that vein, do.

  23. 75

    “How much time and expense does it take to type “Aplicant’s arguments were not persuasive” and cut and paste the rejections from the first office action? ”

    Well, that’s the easy part, it only takes a few minutes, the hard part is making sure you changed all the dates.

    btw, how much time does it take to type: “Examiner 6’s wonderful stupendous examination of the present application is very much appreciated and applicant would like to extend his heartfelt thanks. Also, the present rejections are insufficient to render the present claims unpatentable”, type some bull and then sign your name?

    You know, all foolin around aside, I have actually noticed attorneys cutting and pasting. Both sides do it, you guys just overcharge.

  24. 74

    “Often Applicants do not take Examiner’s responses to the Applicants’ submissions seriously until Examiners have gone to the time and expense of finaling them.”

    How much time and expense does it take to type “Aplicant’s arguments were not persuasive” and cut and paste the rejections from the first office action?

  25. 73

    MaxDrei and Malcolm:

    Common Denominator: The steadfast use of persistent ignorance.

    personal troll? – lol – if it floats your boat to think that way, obviously, you don’t get what I write. Not a real surprise there.

  26. 72

    “How come attorneys can go through a full 3 years and practicing X number of years and still not understand 101,112 (and many more who don’t understand the basics of their art).”

    hahahahahahahahahahahahahahahaha

    Think much??

    Not counting 112 rejections based upon antecedent basis, which may or may not really amount to the claim being indefininte, about 90%-95% of the 112 second paragraph rejections I see are easily traversable without amendment. Most examiners just don’t understand 112.

    As for 101 issues, attorneys write claims based upon experience and what was previously acceptable. For example, you probably don’t know this, but “signal” claims were a result of a document prepared by the USPTO itself. The USPTO changes its policy on 101 on a quarterly basis (if not more frequently).

    When I write my claim today, tell me how the USPTO is going to interpret 101 in 3 years, when the claim gets first examined. If you cannot, with any certainty, then stop your btching.

  27. 71

    >>Max, I see you have your own personal troll now

    I see that the MM-trollbot has both a humor module and a self defense module installed.

  28. 69

    Max, I see you have your own personal troll now. I can empathize. But never fear! They eventually collapse under the weight of their own bile. Previous experience suggests that it will probably get uglier before it gets better. Unfortunately, this one is one of the least creative so you are unlikely to get many laughs out of it in the meantime. Hang in there, comrade!

  29. 68

    Thank you GratefullyExExaminer,

    Sounds like the production system was never truly aligned with any recognizable “quality” characteristic (except perhaps “time” in some global, averaged sense, which loses the pecular singularity of quality that the statute implicates.

    At least back in that day there was not a Presidential Directive that had to be ignored.

  30. 67

    Max,

    Did I say that you said the pen name was the cause?

    What I am telling you is that in whatever vein you are hinting that the pen name doesn’t help, the “name” is generally superfluous – it is the content that helps or not. Your consistent lack of content “because you can’t be bothered to think” taints the name you use – and will taint ANY name you use, as long as you continue to refuse to think before you post.

    Take as long as you need to think about this and other posts on the lack of credibility you generate with your preferred posting style. The point is the same.

  31. 66

    Noise did I say that my pen name was the cause? I only suggested that it wasn’t helping. Do you want to have a think, pause, and then try again to make whatever point it is that you want to get across? Take as long as you like. Please.

  32. 65

    Lurker, most interesting. Two questions:

    1. How often do ordinary EPO Examiners get chances to decide full disputed cases (inter partes oppositions), and do they resist participation in such cases, maintaining and revoking duly issued patents, or welcome it?

    2. Does participation in opposition cases help you to do a better job, when doing ex parte examination prior to issue.

  33. 64

    “I’ve come to the conclusion that my pen name doesn’t help.”

    Um, Max, it’s not the pen name – it’s the repeated disregard for thoughtful content associated with that pen name.

    Create a new pen name and post the same way and you will end up with the same result. It doesn’t even take much thinking to understand that, so perhaps this message may crack that defense of persistent ignorance you carry.

  34. 63

    About EPO Examiners and their count system:

    – Time for the package Search + FAOM (as the EPO now does) officially varies between about 12 and 28 hours. My own quick dirty estimate. Examiners may have different strategies and may choose to invest less at the start.
    – In my art I once discussed with my USPTO counterpart, and true enough was wondering how few times he got.
    – then I learned on patentlyO that he has RCE, I don’t
    – throw into the EPO mix some “doublures” (some national (F, NL, BE…)and EuroPCT or PCT applications coming back as European application ) which in some cases may constitute a sort of gravy for the examiner, on average maybe 5-8% time bonus. But their weight is very much art dependant and anyhow results from a strategic choice made by the applicant, the examiner has no influence on it.
    – No incentive or bonus or paid-overtime correlated to the production, short term (so far – the free marketers in the administrative council and some of our higher management have wet dreams about introducing performance (read quantity) correlated pay). Long term, the most productive get promoted quicker and/or higher, and get the non core fun assignments.

  35. 62

    Evil, you say:it’s unreasonable to expect examiners to search for every possible claim limitation

    Please can you have a word with the management at the EPO and those who write the EPO Guidelines for Examination. They are all under the misapprehension that it is entirely reasonable. EPO Examiners BTW are most definitely not psychic, although some of them are quite free-thinking.

  36. 61

    Off-Topic: You know what I think, it doesn’t take much for somebody or other on this blog to find you “really offensive”. I take exception to your calling me “really offensive”. Indeed, I’m really offended by your remark.

    Like it or not F&R do fancy themselves, and have an easily remembered name. Wasn’t I being a bit sarcastic about them? Did that not come through? Sorry about that.

    I’ve come to the conclusion that my pen name doesn’t help. There, I’ve gone and said it. That remark too will now be found gratuitously offensive by somebody, I’m sure.

    And as for the contributer called “really”, well he is really really offensive.

  37. 60

    “I think if prior art is newly cited the action should not be made final.”

    If you didn’t amend your claims, and new art was cited, then it would not be made final. If you amended your claims, you changed the scope, and you may have changed which art is the most relevant. For example, the claim is rejected under 102, you amend, then the examiner brings in a new reference for a 103. Your argument seems to be that the new reference should have been used in the previous action. However, the flip side is that you could have had the new limitation in the claims to start with. Barring the development of psychic examiners, it’s unreasonable to expect examiners to search for every possible claim limitation that the specification could support. Average size specs have hundreds of details that could possibly be thrown into the claims.

  38. 59

    How come we got this middle aged white guy instead of a wise latina who’d make better decisions?

  39. 58

    MaxDrei: “a prosecution whizz from, say, Fish & Richardson?”

    This is really offensive to the excellent patent prosecutors at every other firm in the world.

  40. 57

    BV, beg pardon but I don’t understand your “annuity” point. I think it works in the opposite way to what you think. At issue, instead of paying one fee a year to the EPO, you have to pay one fee a year to each national Patent Office member of the EPC where you validate the patent. There are now 36 + 4 States involved. Wouldn’t you rather have your claims unresolved and your chances to file a divisional still open, while waiting indefinitely in the queue at the EPO. After all, if somebody starts infringing, branch off a GBM and ask for PACE, to crack on through to issue double quick.

    Or do you see it otherwise.

  41. 56

    – Having a fee upfront system coupled with “high quality” mantra is good for the prosecution business and small entities filers such as pro se, and independent inventor.

    – The reason why we get into this mess because of “high quality” demands from the patent prosecutors.

    – The situtation with “quality” is that the more money you spend on it, the more mistakes you are going to find, and thus that will go into the endless cycle of money/quality. The reasons we get into this mess because in repsonse to the demands from the patent bar, as vaguely as I remember, a comprehesive study was initiated and found that quality was not as good as they (the USPTO) wanted and they reported the findings to congress and ask for more money spent on “quality”. A few cycles like that we ended up with Dudas’s famous equation less allowance = quality

    – I dont’ think it is the count system that is the problem but rather the refusal of the uspto to acknowledge that the examiner need more time to write a decent office action and to conduct a decent search. Instead, the USPTO management pay for more managers to look over the shoulders of examiners. The end result are high attrition rate with experience examiners leaving and newbies coming in with new attidutes of less allowance = quality, thus reject, reject, reject.

    – I would think that the less fee upfront system with less rigorous quality will spur business for the patent prosecutors, especially in the less sensitive area of technology, more inventors will likely to file their ideas and once the patent is issued, they are less likely to engage in any litigation situation.

  42. 55

    The EPO doesn’t have a limit on the number of actions, but remember that renewal fees have to be paid while an application is pending, which is usually something of an incentive to the applicant to get the patent granted in as few actions as possible (although it’s also becoming a bit of an issue when the EPO takes a long time to issue an action).

    I agree with interloper though. It’s annoying and expensive to file an RCE when the examiner cites new prior art in a final action (which appears to be happening with increasing frequency) – it doesn’t really give you a fair chance to respond. I think if prior art is newly cited the action should not be made final.

  43. 54

    @~~Logan~~ : The production system actually predates that time period. It was in place when I entered the office in 1973. At that time I recall two primary uses for it: 1) production of at least 75% was “prima facie” evidence to warrant a within-grade increase (step increase), WIGI). 2) For promotion to the next grade in the GS-1224 career ladder production over a certain period (Might have been 6 mos, not sure) required at least 100% of a goal averaged between the curent grade and the promotion grade. The current application as a critical element (with, effectively controlling weight) in the PAP came in response to Carter’s Civil Service Reform Act. As for the expectancies there was one change, globally to them. Commissioner C. Marshall Dann added one hour to the office wide Expectancy ( which was rolled down through the Group, then Docket, then “Feldman Factor” (So called after a former Deputy Assistant Commissioner) that scales production for Grade and Signatory Authority.

    I remember the “short form” for first actions; I used it a few times, but decided it was inadequate and wrote out all my first actions thereafter. Never got any critcism from my SPE on that.

    @Intrerloper : Your suggestion is Back to the Future. Umlimited actions was how it was done until the 1960s. I wasn’t there but thanks to the archive of old MPEPs on the pro site( link to uspto.gov, a fantasic resourse for some of this stuff). In olden days the prosecution would volley back and forth until either the application was allowed or the examiner decided nothing more would be served bu further prosecution and made a final rejection (paraphrasing “An issue having been reached this action is Made Final”). This resulting long prosecutions were considered the primary issue back in the day, so the whole idea of “compact prosecution” arose: A second action would normally be made final and applican’t recourse were limited to appeal or file a continuation ( although an after final practive was developed to provide a little wiggle room). And to help stat adding incentives to encourage the crusty examining corps to follow this new thinking the production system as described above was implemented. Thus the current system is the metastasized heir of the compact prosecution program from decades ago.

    -GratefullyExExaminer

  44. 53

    Oh and What’s Up. I know of at least one technology company that evaluates prosecution work simply based on the number of office actions and whether or not you have gotten an allowance.

  45. 52

    What’s up said:

    >>”2600examiner: We are pentalized. The real >>world takes care to motivate us.

    >>We lose clients or other attorneys won’t refer >>cases to us if we lose. Or, the client may not >>pay their bill. Or, the next client asked how >>have you done in previous appeals and we have >>to give them a win/lose tally.”

    >>Maybe some of this is your own fault for not >>properly managing client expectations.

    I know how to manage expectations and do. But, the bottom line is that clients want excellent performance. I have done work for the A-list of tech companies (name one and I have probably done some work for them) and have been evaluated side-by-side with attorneys from Fish, Finnegan, etc. Don’t kid yourself, What’s up. You can get away with managing expectations with some clients, but in the end what counts is excellent work product and RESULTS.

  46. 51

    to “an examiner”, your posting of Jul 30, 2009 at 01:17 PM

    You said “..you learned nothing from the financial crisis. If you allow applicants to choose their examination authorities (i.e. regulators), they’ll choose those who allow the most applications and the broadest claims…”

    My experience is different than yours. With no exceptions, all the people I have worked with prefer examination that finds relevant art and want claims of reasonable scope they deserve.

    I suspect that Kappos, who has run a business and as international patent experience, has an experience similar to mine and will soon start outsourcing examination.

  47. 50

    Good thought from the Interloper. Japanese corporations have long rated European law firms on measures including “How many Actions did it take”. The EPO itself has no limit on the number of Actions but Applicants get only one shot at amendment after the FAOM. Any other amendments are admissible only with the “consent” of the Examining Division. See Rule 137(3). Thus, both sides have a personal interest in getting to closure in the smallest number of rounds of amendment.

    The other thing about the EPO, of course, is that it separates “search” and “examination”. Ordinarily, the EPO doesn’t re-search after each set of claim amendments come in. That, in turn, only works because Art 132(2) keeps a tight rein on the admissibility of claim amendments. That only works, of course, because of the presence in the EPC of Art 69 and the Protocol. At the end of the day, Europe rewards those who do good quality original drafting. I should have thought that all proud patent attorneys would be in favour of a law that rewards high professional standards.

    Just a thought.

  48. 49

    “Response fee to be waived if examiner cites new prior art which could have been previously cited. ”

    What art could not have been previously cited?

    “and number of additional prior-art citations.”

    All that does is reduce willingness to make much needed rejections.

    Other than that, as long as appeal was available after 2nd action, then it seems perfectly fine.

  49. 48

    I would encourage you all to think more broadly. Why this system of final/non-final office actions at all? You could simply adopt a system where there was no limit to the number of office action/responses, provided that progress was being made. Put on a (reasonable) fee for each response, in addition to an initial search fee. Response fee to be waived if examiner cites new prior art which could have been previously cited. Assess examiners’ performance on number of cases, number of reports, and number of additional prior-art citations.

  50. 47

    Afterthought: if anybody quotes EPO stats back at me, about numbers of disposals per examiner, please keep in mind that at the EPO each case is handled by an examining division of 3 members, who all sign the allowance or refusal. All that has to be paid for, somehow.

  51. 46

    Contributer Cree at 12.33 comes up with the figure of 30 hours for writing a first action.

    Remind me, how much money does the PTO get from Applicant up to that point, and how much money would it have to pay, to get 30 hours of work out of a patent practitioner who is good enough to go eye to eye with a prosecution whizz from, say, Fish & Richardson?

    Do the numbers match? I suspect not.

    I must say, I am sceptical that it takes an EPO Examiner anything like 30 hours to issue a first action. Are all the 30 hours absolutely necessary, to get to a FAOM that provides everything an intelligent lawyer prosecutor needs.

    I had thought that what Applicant needs most is a top quality search report. From then on, Applicant is (out of pure self-interest) tailoring claims to what will survive scrutiny by the CAFC, a subject on which he/she needs no help from a mere PTO Exr.

    Does it really take 30 hours to do the search?

  52. 44

    “4. Examiners should get no time for a second non-final, second final, reopening after appeal brief, or reopening after appeal (same as now).”

    Not necessarily technically true. Time for that might be built in currently. We don’t know. Your avg examiner will have to do a few of those per year, so it probably is built in. They should probably build in a small amount for that in your suggestion, same as they probably did “now”.

    Change 6, to “promote 6” and I think overall your suggestions are pretty decent.

    One other thing though, perhaps consider a retroactive fee increase for applications pending, but not yet published, if a fee increase is made in 8.

  53. 43

    “Examiners should not get any time for activities on which they spend no time, such as RCEs.”

    Wait wait wait, we spend no time on RCE’s? Huh? I personally spend a f ton of time on RCE’s.

  54. 41

    Random recommendations for Kappos

    1. Reexamine the GS-12 expectancies for every art unit. Also reexamine the scaling factors for the other GS levels. Get a realistic expectancy for each examiner activity: first action, non-final, final, advisory, examiner’s answer, transfer, election, restriction, interview, etc.

    2. Give the examiner the proper amount of time when they do a particular activity. That is, if the expectancy is 30 hours to do a first action, 10 hours to do a final, and 4 hours to do an advisory, then the examiner should get 30 hours when they do the first action, 10 hours when they do the final, and 4 hours when they do the advisory, not 20 hours when they do the first action, nothing for the final, nothing for the advisory, and 20 hours when they get an RCE. Examiners should not get any time for activities on which they spend no time, such as RCEs. Examiners should get an hour for an abandonment.

    3. Add a small amount of bonus time to the types of activities the office wants to encourage. That is, add maybe 5 or 10% to the expectancies for first actions and allowances. This would further entice examiners to work new applications to reduce the backlog and to get already examined applications to allowance as soon as possible.

    4. Examiners should get no time for a second non-final, second final, reopening after appeal brief, or reopening after appeal (same as now).

    5. Examiners should be able to reopen after an appeal brief without repercussions. However, reopening a second time after an appeal brief should require director approval. Reopening after losing an appeal should require director approval (I think it already does).

    6. Fire 6.

    7. The 95% fully successful bar should be lowered. Considering a 10 hour workday, that only allows 30 minutes per day for an employee to do non-examining tasks, like reading and responding to email, filling out their timesheet, answering the phone, etc.

    8. Fees should be adjusted based on the realistic examination costs. Obviously, a scheme wherein examination costs are heavily subsidized by maintenance fees only works when cases are being allowed in significant numbers and patent holders are actually paying the maintenance fees.

  55. 40

    Ok ok. You got me.

    Often Applicants do not take Examiner’s responses to the Applicants’ submissions seriously until Examiners have gone to the time and expense of finaling them.

    This was the case 10 or 20 years ago.

  56. 38

    Often Applicants do not take Examiner’s responses to the Applicants’ submissions seriously until Examiners have gone to the time and expense of finaling them.

    This was not the case 10 or 20 years ago.

  57. 37

    Often examiners do not take Applicant’s responses to the examiners’ rejections seriously until Applicants have gone to the time and expense of appealing them.

    This was not the case 10 or 20 years ago.

  58. 36

    “Any Examiner who quits because he doesn’t like a system where he gets rewarded being right on appeal and penalized for being wrong – is a senior count chaser and we’re better off without him.”

    Ok then, you’re for 50% attrition. I win this argument. Your “plan” is a disaster.

    “I file a case.
    First Action, crappy art.
    I send in a Reply. No Amendment.
    Final, same crappy art.

    I appeal the case.
    Examiner pulls from Appeal and cites less crappy art, but still crappy.

    That needs to end.”

    I understand you’re frustrated. Bottom line, get congress to amend 151 to recite:

    “If it appears that applicant is entitled to a patent under the law, OR IF AN EXAMINER HAS PREVIOUSLY MADE A WEAK REJECTION AND IS NOW REPLACING IT WITH A STRONGER REJECTION, a written notice of allowance of the application shall be given or mailed to the applicant.”

    And you’ll be ripe as rain. Until then, it most certainly does not need to end and you need to be glad that you were blessed with a slightly less cra ppy rejection.

    Ther rest of your mess is the standard qq and I knew from the outset that what you were basing your nonsense on.

    It always is.

    “Some form of monitoring actions per disposal is the key to the PTO’s success. It is the answer to all problems regarding quality, and requires practically no review of work by PTO personnel.”

    That last part is true. However, the first part isn’t necessarily true, depending on where they set the bar. Sometimes cases need to be reopened. Simple as that. Attorneys can come in AF and present better arguments, etc. etc. etc. And those kinds of situations aren’t necessarily “one a year” or anything near it.

    I write a shty action.

    You write a shty response.

    I say: your response is shty, final.

    You say omfg wtf final!?!?!?!?!!?!!? U are srs about this rejection?!?!?!?!?!

    You write a decent response AF, I say, ok, fine, decent response, reopened.

    Bottom line, actions per disposal isn’t a silver bullet.

  59. 35

    A better solution (which I have seen posted before, & am repeating it) is to change the PAP such that the examiner is rated in large part on the total number of actions per disposal (a number readily available on our reports). Using this would reflect the regular reopening & not penalize the infrequent mistake.
    ————–
    Mr. Logan, that is what I referred to above (@ Jul 30, 2009 at 12:09 PM). Some form of monitoring actions per disposal is the key to the PTO’s success. It is the answer to all problems regarding quality, and requires practically no review of work by PTO personnel. Now go and spread the word brother. We have work to do!

  60. 34

    “”””Your suggestion won’t fix it and will lead to increased time in the time pending. Examiners will simply quit their job. 50% attrition solves nothing you mor on.”””””

    About as compelling as most Office Actions I get, but instead of saying, “it’s obvious because it is,” you went with “you’re wrong because you’re a m-r-n.”

    Any Examiner who quits because he doesn’t like a system where he gets rewarded being right on appeal and penalized for being wrong – is a senior count chaser and we’re better off without him.

    I file a case.
    First Action, crappy art.
    I send in a Reply. No Amendment.
    Final, same crappy art.

    I appeal the case.
    Examiner pulls from Appeal and cites less crappy art, but still crappy.

    That needs to end.

    I file a case.
    1st action crappy art, horrid 112 indef.
    I file reply, with amendment.
    Examiner withdraws the art rejection, leaves 112.
    I appeal the case.
    Examiner adds several art rejections in the Answer.

    That needs to end.

    If the Examiner is willing to give me crappy rejections, he needs to be willing to take a beating when his crappy rejections get punted by the board.

    Without this, Examiners have tremendous incentive to keep cases on the RCE merri-go-round.

    We all know that this is the problem.

    Many of the senior examiners at the PTO got there because they have perfected the RCE merry go round, and they hardly ever have to examine a new case once they get their dockets good and fat.

    And I’d also guess that if you really wanted to open the door and see the ugly wench hiding behind it, you could find a very strong correlation with some senior examiners between liklihood of getting put on the RCE merri go round and perceived ability to fund the ride.

    Dennis – your auto-delete profanity filter is really unfriendly.

  61. 33

    The job of Patent Examiner is what it is: extremely boring (to most) and it leads to nothing but more of the same. From this all else follows.

  62. 32

    “what’s up bi****s?” and “old retired attorney”,

    YES, the way examiners are evaluated badly needs to be re-evaluated. However, I think the suggestion is not only too extreme but not reasonable. Occasionally, we ALL (you too) mess up & need to redo work. I am not condoning it & I DO agree that there needs to be incentive not to continue to do non-finals & reopen after appeals are filed. However, there should be some distinction made between someone who makes a regular habit of doing it & someone who winds up doing it because it is appropriate maybe one a year.

    A better solution (which I have seen posted before, & am repeating it) is to change the PAP such that the examiner is rated in large part on the total number of actions per disposal (a number readily available on our reports). Using this would reflect the regular reopening & not penalize the infrequent mistake.

    Now, as to attorneys getting penalized, maybe there is some mechanism where clients quit going to them, but it doesn’t seem to improve the quality of much we see.

    Just in the last month I have seen 3 (THREE) different cases from different attorneys/firms where they have cancelled claims & did not change the dependencies of the various dependent claims. Another case I saw where the attorney argued a rejection from a previous action and did not at all address the rejection made in the current action (a 1st action after an RCE). And I often see where the attorney does not argue an error that the examiner made (e.g., rejecting an original claim on 112, 1st, new matter) but just amends or cancels the claims (a lot of other examples; this was just off the top of my head).

    Just very sloppy work. Does anyone actually proofread this stuff before filing??

  63. 31

    No One in Particular,

    The production system goes back to the late 70’s. The numbers of hours/count have not been changed since then. Back then, the rejection were the old “short form” which literally consisted of a single form where the examiner just filled in the reference (Smith) or combination of reference (Smith v Jones). NO explanation or limitation mapping, etc. was necessary. It was assumed at that point (b4 even me :) that the applicant would & could read the references & determine what was taught by them.

    So, the amount of prior art has gone from around 3.5 million patents to nearly 8 million patents & all the PG-pubs PLUS all the foreign databases & the rest of the Internet. And the amount of writing has gone from a couple of entries on a form to pages of writing with every claim limitation explained (or is supposed to be, anyhow. Let’s leave the argument there).

    However, there has been NO change in the hours/case since they were implemented. You can get a lot more info from the POPA website (not a fan or member, but they have the info available).

    Back when it was implemented, around 70% (I think; close enough for now) was satisfactory. That has gone up to now 95% to be satisfactory (personally, I always thought we get paid to do 100% & should do at least that).

    Hope this explains some of the history & some of why things need to change.

  64. 30

    “We lose clients or other attorneys won’t refer cases to us if we lose. Or, the client may not pay their bill. Or, the next client asked how have you done in previous appeals and we have to give them a win/lose tally.”

    What is your point? Examiners aren’t attorneys and your plan will not fly irl.

    “Examiners have no such incentive.”

    We do have a small incentive. Time. And that is carefully balanced against the retention rate. Upset the balance at your own, and the system’s risk.

  65. 29

    You missed the point, bitches. The point being made is that a practitioner would have an incentive to avoid acting rash or incorrectly because he/she does not want to lose clients and/or his/her job. Examiners have no such incentive.

  66. 28

    “2600examiner: We are pentalized. The real world takes care to motivate us.

    We lose clients or other attorneys won’t refer cases to us if we lose. Or, the client may not pay their bill. Or, the next client asked how have you done in previous appeals and we have to give them a win/lose tally.”

    Maybe some of this is your own fault for not properly managing client expectations. Before telling the client he should appeal, you should also be explaining what the OVERALL (not just your own or your firm’s) affirmance rate is at the Board and then let *your client* make an informed decision whether they think it’s work *their* money to keep fighting. No attorney can guarantee a specific result. The only thing that you can guarantee is that you’ll be a zealous advocate. If you’re leading your clients to believe that they will “no doubt” win on appeal, then they’re right to take their business elsewhere. Do you think Fish & Richardson has a 100% reversal rate at the Board?? No, but that doesn’t change the fact that they’ve got plenty of loyal clients. It’s all about managing expectations . . .

  67. 27

    Hi David,

    If the PTO charged fees based on a free market rate (what the typical patent practitioner would charge plus USPTO office service fee) and used ALL that money internally, the US Patent Office once again could continue to move the United States forward as the leader of the free market world.

  68. 25

    Yes number six, they scheme. Everything is about the web … getting the fly into the web. Dreaming about eating the fly. Scummy spiders scheme.

  69. 24

    “And wait so I suffer no detriment if I continually make non-finals that I get no credit for?”

    Who said anything about non-finals?

  70. 23

    1. When was the Count System started and how were things done before the Count System?

    2. Ask some of the old, great retired/forced-out Examiners how to fix the Examiner evaluation system.

  71. 21

    “You want to reduce pendency?

    Do this – any time an Applicant files an Appeal Brief and the Examiner does anything other than write an Answer with no new rejections, dock the Examiner about 4 cases worth of credit.

    If the Examiner then loses on Appeal – dock 4 cases more.

    If the Examiner wins on appeal – add 4 cases worth of credit.

    The system of reward is set up to reward mechanical volume production, and is not connected to the actual quality of the Examination, for the most part.

    Start by fixing that.”

    Your suggestion won’t fix it and will lead to increased time in the time pending. Examiners will simply quit their job. 50% attrition solves nothing you mor on.

  72. 20

    “He sounds good, but living and working inside the Beltway does something to peoples’ brains and moral compass.”

    Like what?

    I guess those of us that live and work inside the beltway are not part of the “real America” that certain politicians like to praise so much.

    If you’re from Dog Patch Junction you’re naturally more honest, hard working, trust worthy, and God-fearing than somebody from inside the beltway? Right?

    Don’t worry, Dave, Sarah’s coming to rescue you and the rest of “real America” from us “inside the beltway” types. Hang in there just a little longer.

  73. 19

    Jimbo,

    How come attorneys can go through a full 3 years and practicing X number of years and still not understand 101,112 (and many more who don’t understand the basics of their art). Disheartening as it is neither side rewards quality as much as it should.

    And wait so I suffer no detriment if I continually make non-finals that I get no credit for? Clearly wasted time is not a detriment. A greater punishment without greater time allotment would only decrease employee retention rates.

    Kappos is right, first you fix the billing struture.

  74. 18

    Jimmy writes; “A major issue with the USPTO is that Examiners suffer no detriment for making bad rejections and giving applicants the run-around. In the eyes of the PTO, if an applicant abandons a case because they can no longer afford to pay an attorney to respond to a never ending string of meritless rejections, that is a non-issue.”

    I agree.

  75. 17

    A major issue with the USPTO is that Examiners suffer no detriment for making bad rejections and giving applicants the run-around. In the eyes of the PTO, if an applicant abandons a case because they can no longer afford to pay an attorney to respond to a never ending string of meritless rejections, that is a non-issue.

    Here is another issue: please explain to me how Examiners can go through two full months of lecture in a training academy and still not understand the basics of claim construction such as functional language and means-plus-function?

  76. 16

    “Set up two or three private examination authorities and very quickly you will get high-quality work at fair prices.”

    Clearly you learned nothing from the financial crisis. If you allow applicants to choose their examination authorities (i.e. regulators), they’ll choose those who allow the most applications and the broadest claims (i.e. those who regulate least).

  77. 15

    He sounds good, but living and working inside the Beltway does something to peoples’ brains and moral compass.

  78. 14

    O.R.A., another answer to your question is to introduce competition in the examination process.

    Set up two or three private examination authorities and very quickly you will get high-quality work at fair prices.

  79. 13

    Old retired attorney wrote:
    >>That would be a start.

    Without being able to objectively measure the quality of an office action, it is very hard.

    I know that Kappos has spoken of software to measure the objective quality of a patent. I wonder if software that measures the objective quality of an office action might be in the works. I bet it is.

    Ignore this unless you are MM:
    [But wait, would that be eligible under 101: let’s see, the output would only be a quality measure. That seems abstract and couldn’t possible be useful. And what sort of pansy technology is that of building a machine that processes information. My brain afterall is useless.]

  80. 12

    NWPA, you mentioned a point that is the mother lode of all motivators: losing compensation after performing bad work. This is a harsh reality in all things not governmental. The big question to be answered is how do you motivate individuals who would be paid no matter how bad their work?

    Take SPE’s, for example. There are a few good ones, but most of these individuals are a major drain on PTO funds, and are major contributors to the backlog. And major bad guys all around. GS-15’s doing nothing but scheming, like spiders, about how they will screw those under them unless they produce at 130%.

    How do you motivate an examiner working for scum like this? First, get rid of the SPE position and make everyone examine pending patent applications. Divide available time and dole it out to primaries for mentoring/training juniors. Give raises to those who perform exceptionally (e.g., low actions per disposal, high ratings from juniors working with them, not peers)

    That would be a start.

  81. 10

    >>”If the Examiner wins on appeal – add 4 cases >>worth of credit.”
    >>Attorney loses an appeal, registration number >>suspended for one month

    2600examiner: We are pentalized. The real world takes care to motivate us.
    We lose clients or other attorneys won’t refer cases to us if we lose. Or, the client may not pay their bill. Or, the next client asked how have you done in previous appeals and we have to give them a win/lose tally.

  82. 9

    Yes, the agency is in a crisis and we need a comprehensive review and develop long-term plans! Focus on quality and pendency! The patent system is crucial for innovation!

    Oh, wait, that’s all from Jon Dudas’s nomination speech.
    link to bulk.resource.org

    Meet the new boss, same as the old boss.

  83. 8

    MaxDrei wrote:

    I await with some degree of curiosity, but a greater degree of apprehension (perhaps cynicism), what negative comments will now appear on this thread.

    ,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,

    …and now observes that the first such comment, at 10.55, didn’t take long to raise its ugly head. Does anybody think such comments are “insightful” or, like me, do you think they are pathetic?

  84. 6

    “Do this – any time an Applicant files an Appeal Brief and the Examiner does anything other than write an Answer with no new rejections, dock the Examiner about 4 cases worth of credit.”

    I’m a few weeks from GS-13 and I have only done this one time and the case wasn’t docketed to me until after the appeal brief was filed (previous examiner left the office). I really doubt this practice is a serious contributor to pendency. I’m not really that opposed to what you’re suggesting with respect to primaries, but don’t think junior examiners should be penalized (they may just be following orders). If anything the penalty for juniors re-opening should be transferred to the SPE’s rating.

    I think a system that gives examiners more credit for allowances/abandonments early in prosecution is a better option for reducing pendency.

    “If the Examiner wins on appeal – add 4 cases worth of credit.”
    Attorney loses an appeal, registration number suspended for one month.

  85. 5

    Fuddy Dud, Kappos answers your concern regarding the count system on the webcast at minute 81:40. He notes that everyone “hates the count system” and that reform is “priority one.” In the interest of time, though, no details offered.

    link to judiciary.senate.gov

  86. 3

    “””””Most immediate are those resulting from the current economic downturn, the need for a stable and sustainable funding model, the need to address pendency concerns while preserving and enhancing patent quality, and the imperative to attract and retain skilled personnel at a time of fiscal constraint.”””””

    Oh well. At least I had hope.

    Here’s the most pressing issue at the PTO –

    The system of rewarding Examiners is based on performance that is unrelated to the quality of their Office Actions.

    If you don’t understand that this is the main issue at the Patent Office, then you are going to waste a lot of time and money treating symptoms without treating the disease.

    The reason the attrition rate at the PTO is 50% or so over the first few years is . . .

    . . . because the system for rewarding Examiners is not based on how well they Examine applications, and so the PTO eats its young by burdening them with unrealistic count requirements and the PTO fattens its elders by allowing them to game the system to get their counts, regardless of how well they examine.

    You want to reduce pendency?

    Do this – any time an Applicant files an Appeal Brief and the Examiner does anything other than write an Answer with no new rejections, dock the Examiner about 4 cases worth of credit.

    If the Examiner then loses on Appeal – dock 4 cases more.

    If the Examiner wins on appeal – add 4 cases worth of credit.

    The system of reward is set up to reward mechanical volume production, and is not connected to the actual quality of the Examination, for the most part.

    Start by fixing that.

  87. 2

    Good luck Mr. Kappos. Pull that speech out and read it from time to time for inspiration.

    JohnG

  88. 1

    Well, what an uplifting statement. The guy seems to be peculiarly well-qualified to do the job. And it’s impressive to be able to observe the Congressional checking mechanism. I await with some degree of curiosity, but a greater degree of apprehension (perhaps cynicism), what negative comments will now appear on this thread.

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