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When USPTO Director David Kappos was in London recently I had the chance to sit down with him for an hour and talk through a variety of issues. Some of those I have already discussed in a previous piece on this blog, but we got through a lot, so following are a few more highlights.
One of the major developments during the time in which Kappos has been in charge at Arlington came last year with the signing of the America Invents Act - the most far-reaching reform of the US patent system in generations and one which took many years to achieve. Among the significant changes that the act brings about are the introduction of a first-to-file system and the creation of a post-grant oppositions procedure. Both have been heavily criticised, especially by those who believe they will harm lone inventors and SMEs. But Kappos was having none of it.
Critics made their voices heard, Kappos conceded, but they were in a minority. “When I went on the road, from rural Vermont to southern California and everywhere in between, and I spoke to real individuals, they could not have cared less about either issue. What mattered to them was having a low cost entry point into the patent system and getting through it quickly. The America Invents Act delivers these.” To back this claim up, he cited the success of the fast track application process introduced just after the legislation came into force. Since then over 3,000 applications have been submitted, he said, one-third of which have come from small entities. “It is a statistically significant figure,” Kappos stated, “as overall SMEs and individuals represent 16% of users of the system.”
But hasn’t the office announced proposals for a series of pretty hefty fee increases? Yes, Kappos stated, but consultations about these are on-going and nothing is set in stone. “We have had a lot of input and we are in the process of modifying our plans and reducing the scope of some of the rises. We take the suggestions we have had very seriously, are amenable to changes and are making some. It’s all part of the process,” he said. Kappos also observed that for what he called “the happy pack” – applications which do not contain a large number of claims and which are not subject to multiple continuations requests – the cost of patenting would actually go down.
In the end, Kappos explained, it’s about setting fees “to get good policy”. He has been asked by the global IP community, he stated, to show leadership by reducing the backlog, bringing down pendency times and improving quality. The aim is to cut down the average wait to a first office action to 10 months by 2015 and to have final actions down to 20 months in the same time frame. “These plans require fixing the IT structure, hiring more staff, investing in training and many other things too,” Kappos said. “You get what you pay for. I am saying to the global community that we will do what you want us to do. If you want us to fix the office on the trajectory we have set out then what you see in our fee proposals is what it is going to cost; if you want to pay less, it will take a longer time.” That said, he made clear that he does understand that it is important not to over-push. “We need to be careful about setting a course that is reasonable. This is an issue we will be careful about as we do not want to disrupt people unnecessarily,” he said.
But ask Kappos what his number one priority is and he is absolutely clear: “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.” He recalled a difficult conversation he had had with the-then Commerce Secretary Gary Locke in which he had said that he wanted to give all examiners an additional hour to consider every application that they handle, knowing full well that this would send the backlog up in the short term. “The Secretary accepted that and it has resulted in a step function increase in our quality,“ Kappos claimed. However, he said it is important for people to understand that the office operates within a system where it does not make the laws. “Supreme Court rulings can lead to fundamental changes, while you also need to see things within the context of what the US constitution says is patentable,” he explained. But, he continued, his aim is to ensure that patent owners can have as much confidence as possible in their estates, so that they have certainty when deciding whether to build on the property that they have: “When we put it all together what we are after is a 21st century patent system that can produce really good results.”
We finished off by moving back onto the international stage and with what is a perennial policy plea from the US. “I believe that there is only one sin greater that a patent office can commit than granting a patent that should not have been granted,” Kappos said. “And that is not granting one that should have been granted.” To minimise the chances of this happening, he continued, it is essential that Europe looks once again at introducing some form of grace period. It is a key feature of US law and can also be found in both Korea and Japan, as well as Australia and Canada. “It is all about recognising that in the 21st century innovation and invention often have to co-exist with private equity and communication activities that build the IP marketplace. When you create an invention you are often out there seeking funding at the same time – which means showing investors what you have and putting out information while also preparing an application,” Kappos explained. “An IP market that is effective recognises that you have to have a grace period. They really need to come to grips with this in Europe.”
It’s something that has been rejected on this side of the Atlantic time and again, but Kappos says he is optimistic that things may be changing: “I was over here recently and visited six countries where I spoke to owners, national office heads and lawyers. All across the board people were saying that it is time.”
Kappos has already proven himself to be a very capable manager, as well as an artful politician, but this could be one area where he ends up disappointed. Getting the Europeans to agree to anything with regards to patents is difficult enough, let alone something as controversial as the grace period. However, if he can combine getting first-to-file on the statute books in the US with improving the quality of USPTO patents and getting a grace period introduced into Europe, then he will truly earn his place in history. We shall see.
IP management, IP politics, Patents, IP business