Authored by Erika Harmon Arner and Jessica L.A. Marks
In January, David Kappos stepped down as director of the U.S. Patent and Trademark Office (USPTO), a role he has held since his 2009 appointment by President Obama. Kappos' time as USPTO director has been punctuated by many important changes in intellectual property law—from U.S. Supreme Court cases addressing fundamental principles in IP law to the passage of the Leahy-Smith America Invents Act, the most expansive IP legislation since 1952. Kappos strived to make the USPTO more efficient while also improving the quality of patent examination and moving the field of intellectual property forward as a whole. And, as detailed in the USPTO's 2012 Performance and Accountability Report showing that the USPTO met or exceeded its strategic goals, it appears that Kappos largely succeeded.
His success bore out the expectations of many in the intellectual property community, given his vast experience in intellectual property and reputation for hard work. Kappos has a degree in electrical and computer engineering and practiced intellectual property law for more than two decades before joining the USPTO, culminating in his post as vice president and assistant general counsel for intellectual property at International Business Machines Corp. Kappos also held leadership roles in many intellectual property organizations while in the private sector. Kappos served on the board of directors of the American Intellectual Property Law Association (AIPLA), the Intellectual Property Owners Association, and the International Intellectual Property Society.
His success was also likely a product of his ability to assemble a top-notch leadership team at the USPTO. He was able to bring in such talent as Teresa Stanek Rea—a former AIPLA president with more than 25 years of IP law experience—and Frederick Steckler—formerly a Booz Allen Hamilton consultant with experience in organizational strategy and human capital. Kappos also seemed to work well with long-time leaders inside the USPTO, including Peggy Focarino, whom Kappos promoted to commissioner for patents in January 2012. And, although the beginning of Kappos' USPTO tenure was marked by a hiring freeze, once the freeze lifted, he worked quickly to increase the number of patent examiners from 6,000 to 8,000 to deal with a growing backlog of patent applications.
With this support, Kappos focused on making the USPTO more efficient and improving patent quality. When Kappos began, the USPTO was notoriously slow in examining patent applications, and the process of obtaining a patent was often antagonistic. More than 750,000 applications awaited examination, and this backlog was growing as more applications were filed every year. Kappos and his team implemented several process changes and led a shift in attitude at the USPTO that resulted in an almost 20 percent decrease in the application backlog, despite continued increases in application filings.
For example, the USPTO implemented "compact prosecution" so that substantial progress was made with each action taken by a patent examiner. Examiners were encouraged to work with applicants to identify patentable subject matter and collaborate to complete examination efficiently. Interviews with examiners to discuss inventions were highly encouraged, and a First Action Interview Pilot Program provided applicants an opportunity for an interview with the examiner before the examiner issued a first action. An After Final Consideration Pilot Program provided an incentive for examiners to complete examination during the first round of examination instead of forcing applicants to request continued examination to start a second round of examination.
Implementation of compact prosecution has not been perfect, however. For example, when examination is continued because prosecution could not be completed in the first round of examination, applications may wait months or even more than a year to move forward, leading to a growing backlog of continued-examination cases. But most metrics show that the USPTO examination process improved during Kappos' administration.
To improve relations with applicants and the general public, transparency at the USPTO has increased. A set of user-friendly "PTO Dashboards" provides easy public access to information such as the average time between filing an application and a first office action, the average time to a patent, etc. And the USPTO has opened one satellite office in Detroit and will open three more in Denver, Dallas, and San Jose, Calif., making it easier for applicants across the country to access the USPTO.
With Kappos at the helm, the USPTO improved not only the speed of prosecution but also its quality. Although patent quality is more difficult to quantify, the USPTO created an internal scoring system to measure indicators such as the compliance of first office actions with best patent practices and the quality of a patent examiner's prior art search, and those ratings have consistently shown improvement. The USPTO also expanded its external surveys of applicants. These external surveys showed that, in 2007, approximately 20 percent of applicants thought the quality of examination was poor or very poor; in 2012, that figure has been cut in half. Additionally, by encouraging collaboration between examiners and applicants to identify patentable subject matter in applications, the patent allowance rate has risen from approximately 41 percent in November 2008 to more than 51 percent in September 2012.
In the process of making the USPTO better at issuing quality patents, Kappos also made the USPTO a better place to work. The USPTO continued to be a leader in the government's telework program, with more than 65 percent of USPTO employees teleworking at least one day per week. Under his leadership, the USPTO moved up 100 places in the federal ranking of the government's top places to work, rising from 105th to fifth place.
Perhaps Kappos will be most remembered for his role in advancing intellectual property law and policy. Kappos helped to shepherd the Leahy-Smith America Invents Act (AIA) through Congress and oversaw implementation of the most significant changes to patent law in a generation. Among its many provisions, the AIA introduced new post-grant proceedings for challenging issued patents and changed the United States from a "first-to-invent" to a "first-inventor-to-file" country. These sea changes in patent law and practice were implemented in stages set forth in the statute. Kappos' team developed AIA roadshows presented around the country educating practitioners and the public about proposed rule changes to implement the statutory changes. The USPTO also actively solicited feedback from the intellectual property community, which helped tailor the rules before implementation. Kappos' focus on working with applicants and providing transparency has been apparent throughout the implementation of the AIA.
Kappos has also been a proponent of technology-neutral patent laws. For example, although some have argued in recent years against the patenting of software, Kappos has championed the idea that the patent laws were designed to promote innovation in all technology areas and that patenting standards should be applied equally to all technologies. In his keynote address to the Center for American Progress in November 2012, for example, he emphasized the importance of software patents to the U.S. economy, noting that "[s]oftware patents, like all patents, are a form of innovation currency. They are also ecosystem enablers, and job creators . . . . All of it must remain eligible for protection."
Kappos was uniquely qualified to be director of the USPTO, and he took on the responsibility with an enthusiasm and strength that will be hard to follow. Kappos has not yet announced where he will be going now that his time at the USPTO is over, though most in the intellectual property community agree that he will be missed as USPTO director. Intellectual property practitioners are hopeful that his capable team and forward-thinking policies will guide the USPTO through continued implementation of the AIA and into the next advancements in intellectual property law.
Reprinted with permission from the Feb. 4, 2013 edition of the National Law Journal © 2013 ALM media Properties, LLC. All rights reserved. Further duplication without permission is prohibited. For information, contact 877-257-3382, email@example.com or visit www.almreprints.com. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.