Bits and Bytes No. 122: Nominees

According to reports, David J. Kappos has now been confirmed by the US Senate as the Under Secretary of Commerce for Intellectual Property and Director of the US Patent and Trademark Office. Director Kappos was nominated in June and has received praise from many quarters because of his career-long experience in working with patents. Congratulations, now get to work!

It is likely in the first few weeks, DIrector Kappos will review the proposed rules being challenged in Tafas v. Dudas and somewhat alter the PTO’s course.

John Doll (Acting Director) and Peggy Focarino (Acting Commissioner of Patents) should both be commended for their proactive leadership over the past eight months during a difficult financial situation.

17 thoughts on “Bits and Bytes No. 122: Nominees

  1. The IBM brief [which Dave Kappos is not on, but presumably at least read?] could be additionally characterized [albiet still oversimplified] as supporting software related inventions patenting, and not supporting business methods patenting. Further, criticising the CAFC “machine or transformation” test as a sole test [akin to the rigid TSM test dissed in KSR] which is confusing courts as to software patenting and encouraging “form over substance” claim differentiation arguments instead of a fundamental technology versus non-technology test.

  2. “John Doll (Acting Director) … should … be commended for … proactive leadership over the past eight months during a difficult financial situation.”

    Will Rogers–I don’t know jokes. I just watch the government and report the facts.

  3. appealho says: “If the PTO did their examinations right the first time around”

    My response is that it takes the examiners an orginal filing fee, at least one RCE and either a second RCE or an appeal to do the examination right.

    So that is a lot of fees (and I forget what my point was)

  4. What is all this BS about raising fees? What is wrong with you people? We pay a lot for the examination. If the PTO did their examinations right the first time around, we wouldn’t have most of these darn problems.

    The PTO should only be in a position to raise the fees when they have shown it is necessary AND when they deserve it! I have not raised my billable rate for quite some time!

    God this makes me mad.

  5. “Raise high the roof-beams, carpenters!!” We are saved, we are saved, we are saved!!! IBM just bought the PTO!!

    (Ever notice how IBM’s stock has increased 44% since March? Watch it next week!!)

  6. Raise high the roof beams, carpenters!! We are saved, we are saved, we are saved!!! IBM has just bought the PTO!!

  7. “… a single anonymous competitor, for a very small cost, and invite and be successful in having the PTO reopen examination on the very same issues and art that was reviewed by the office 10 years ago.”

    With all due respect, Jon, that’s a sad story that I don’t believe. Are you sure your company didn’t lose an interference, rather than a re-examination?

  8. I felt encouraged after hearing Kappos (a) pledge to reach out to and serve all interested parties and to balance their interests and (b) to “completely remake the count system” for measuring examiner production during his hearing before the Senate Judiciary Committee in July. I posted a couple video clips of what I thought were the highlights (along with further commentary) at the link, below, if anyone missed hearing him speak:

    link to mxlegal.com

  9. Hopefully, Kappos can fix the mess that is now the PTO. Reexamination standards would be a nice first step. Currently, an entire company and product portfolio can be built on one or more patents and 10 years later, after substantial investment, a single anonymous competitor, for a very small cost, and invite and be successful in having the PTO reopen examination on the very same issues and art that was reviewed by the office 10 years ago (Me and my company are currently a victim of this insanity). If that does not strike you as odd, here is an analogy. Consider a life saving drug that was approved by the FDA 10 years ago and has become the standard of care. An anonymous competitor files a petition with the FDA that the drug is “not safe” and 91% of the time you can count on the FDA to reopen the NDA for reexamination of the drugs safety and efficacy. Prior precedent and decisions of the FDA are no longer recognized in any way, shape or form. No inequity there. Or better yet, imagine you have been paying your 30 year mortgage on time for 10 years, but suddenly a grumpy neighbor anonymously files a letter with the bank that you are not “credit worthy”. 91% of the time the bank will reopen your credit evaluation and determine you are not credit worthy and threaten to call your loan, thus causing you to lose your home. Our current Rexam system sounds a bit more onerous when applied to other common areas of business.

    Just venting and hoping for a change. Also hoping that unwritten edict that instructs Examiners to “do not allow” under any circumstances is revoked. I belive that memo has since been sent to the FDA, but I expect most posters here do not deal with the FDA regularly. Unfortunatly, you would think that there is where Dudas et al. is now currently employed, as they are adapting the culture the PTO has exhibited over the past 4 years.

  10. Increasing patent fees as well as providing more time for a better examination process would be a great start. The idea of the Office making its cash off of issued patents is great in theory, however, it is not a good system. Applicants need to get the service they pay for, and pay for the services that are required to examiner all of their claims. Charging the current fees for extra claims is grossly unrepresentative of the cost of search and examination.

  11. Would’ve preferred Dickinson, but after Dudas, I’m not going to complain. Here’s to hoping that Kappos can fix the engines in the drifting ship that is the PTO.

  12. Link to official announcement on PTO site:
    link to uspto.gov

    Kind of interesting paragraph from the announcement (in the section describing Kappos’ background):

    “He takes control of an office that provides incentives to encourage technological advancement and helps businesses protect their investments, promote their goods and safeguard against deception in the marketplace. The office continues to deal with a patent application backlog of more than 770,000, long waiting periods for patent review, information technology systems that are regarded as outdated and an application process in need of reform.”

  13. It’s done!!!!

    I was forwarded an email from AIPLA president Todd Dickinson announcing Kappos Confirmation.

  14. Cash infusion to follow – 118 per registered practicioner…

    …still time for the required “advanced” notice before the end of the current fiscal year?

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