Joff Wild

To say that everything at the US Patent and Trademark Office was transformed under the leadership of David Kappos would be an exaggeration. But it would not be a huge one. For there is absolutely no doubt that from the day he took his oath of office in August 2009, the former head of IP at IBM, who has today announced that he will be standing down in the new year, demonstrated a sureness of touch, a mastery of detail and a level of leadership that few of his predecessors – the illustrious as well as the mediocre – could match. As a result, a creaking agency that all too often was not fit for purpose has been re-energised, while Kappos’s advocacy of the need for a strong IP system to underpin job and wealth creation has won wide support from within the Obama administration and beyond.   

When he was originally nominated for the Director’s role, there were some who worried that Kappos would bring a big corporation, technology-focused perspective to the job. After all, you do not spend your career at IBM without picking up at least a few of its ways of seeing the world. Indeed, it was a point put to him by the late Arlen Specter at a Senate Judiciary Committee hearing to confirm his appointment. Kappos’s answer was succinct: “I will put my previous role behind me. I will do the right thing for the American people.” It is to Kappos’s credit that by the time he announced his resignation few doubted that was the case.

However, what his experiences at Big Blue did give Kappos was a clear perspective of where the office was going wrong, as well as an in-depth understanding of the general patent landscape – both in the US and internationally. This allowed him to hit the floor running on day one. And he did not let up. 

On Kappos’s watch the America Invents Act – the most far-reaching legislative reform of the US patent system in well over 50 years – was signed into law. The USPTO also opened its first satellite operation in over 200 years, when a new office in Detroit began operating in June; while plans to establish three more in Denver, Dallas and San Jose are also well underway. Each regional office will employ around 120 patent examiners, as well as a few administrative patent judges. Examiners in all USPTO offices have been allocated more time to go through each application in their dockets, while they have also been encouraged to be more interactive in their dealings with applicants.

On top of this, Kappos greatly expanded the Patent Prosecution Highway (PPH) programme, so that the USPTO now has agreements in place with more than 20 international patent offices, while at the same time working on enhancing other forms of work-sharing. On the IT front, the USPTO is in the middle of what Kappos described in the USPTO’s most recent annual report as “an aggressive multi-year plan to upgrade … infrastructure by stabilizing … aging data center and networks, updating automated IT systems, and migrating to “cloud” computing””.

Another welcome development has been a far greater level of transparency. Kappos not only started writing a regular blog, but also managed to avoid blandishments to instead provide valuable insights on issues that actually matter to people. He also made multiple statistics publicly available about subjects such as pendency times, grant rates, quality thresholds and the like, and ensured they were updated monthly; so allowing users to judge promises and pledges against the reality. 

And what the statistics are showing is that the grant rate has begun to inch upwards, the number of applications being dealt with each year has risen, while pendency times have come down. Writing in the 2012 annual report, Kappos stated: “We reduced our backlog to 608,283 applications from more than 750,000 applications at the start of our efforts in 2009. That is the lowest they have been in more than five years. We expect to reach our optimal inventory goal in the near future. We concurrently reduced total patent application pendency to 32.4 months, down from a peak of 34.3 months in August 2009.”

But the real prize for the Director, and for the vast majority of USPTO users as well as its wider community of stakeholders, has been improved quality. “I am maniacally focused on quality. I am prepared to put my money where my mouth is on this subject and will always put it ahead of everything else,” Kappos told IAM in April 2012. And it is in this area that he found the going hardest.

Quality, of course, is a subjective issue and means many things to many people, but to judge by the annual benchmarking survey conducted jointly by IAM and the IP Solutions business of Thomson Reuters, Kappos did not get to where he wanted to be. Each year both in-house and private practice practitioners are asked to rate the performance of major patent offices when it comes to quality and each year the European Patent Office comes comfortably on top, with the Japan Patent Office ranked in second place. Only then does the USPTO get a mention.

However, there are signs of improvement. In the latest survey, 30% of private practice respondents and 38% of in-house respondents stated that they believe that quality at the office has improved; this comes after rises of 31% and 30% respectively recorded in the 2011 survey. In 2010, by contrast, just 26% of those from in-house and 20% of private practitioners reported that things were getting better. In both 2011 and 2010, dissatisfaction rates were high with well over 15% of corporate and private practice respondents believing that the quality of USPTO-issued patents had deteriorated. In 2012, however, those figures have fallen back sharply to stand at 12% (private practice) and 8% (in-house).

Given the backlog and high pendency levels, it is only now that applications first submitted while Kappos has been in charge at the USPTO will be turning into grants; so it may actually be too early to judge whether his many quality initiatives made a difference. What they could well have done is put his successor, whoever that may be, in a far stronger position to make significant progress.  Should that turn out to be the case, then David Kappos will have earned his place in the pantheon.