Kappos Stepping Down at USPTO


With no notice to the public, and after the Senate was reported to have adjourned for their August recess, on Friday, August 7, 2009, David Kappos was confirmed as Undersecretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.  It was with that inauspicious start that Director Kappos came to power at the USPTO.  At the time of Kappos’ confirmation I wrote:  “I think getting him in place sooner rather than later is exactly the right thing to do.  Nevertheless, I am not a fan of government rushing so fast that they forget basic principles of open government.” See Kappos Confirmed as USPTO Director. I’m still not a fan of what I have at times referred to as “government by ambush,” but over the years since Kappos’s confirmation, it became exceptionally clear that President Obama made exactly the right pick for the USPTO.

Early in the day on Monday, November 26, 2012, Kappos announced internally at the USPTO that he has decided to step down and leave the agency. The end of the Kappos era will take place sometime at the end of January 2013.

“I am honored to have served this administration by leading the USPTO,” said Kappos. “I believe we have made great progress in reducing the patent backlog, increasing operational efficiency, and exerting leadership in IP policy domestically and internationally. Thanks to the entire USPTO staff for their dedication and hard work. I wish them the very best as they continue their efforts to support the U.S. economy by promoting and protecting innovation.”

Director Kappos has made great progress indeed! It is almost difficult to remember the animosity that existed between the patent bar and the Patent Office prior to Kappos’ appointment and eventual confirmation. Under the Bush Administration, for whatever the reason, the Patent Office routinely ignored the concerns of the patent bar and stakeholder community. This culminated in a showdown between the patent community and the Patent Office over the claims and continuations rules, which frankly would have been an unmitigated disaster had they ever taken effect.  The claims and continuations rules were enjoined, then that injunction was overturned on appeal to the Federal Circuit.  Ultimately, the entire Federal Circuit decided to hear the case and vacated the original panel ruling.  In the interim, after Chief Judge Michel announced that an en banc Federal Circuit would hear the case and vacated the panel decision, Director Kappos stepped in.

In one of his first public pronouncements, Director Kappos made the executive decision to rescind the much-criticized claims and continuations rules.  Here is an excerpt from the press release issued by the USPTO announcing the rescinding of the claims and continuations rules, which the press release itself acknowledged to be “highly controversial regulations”:

Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos has signed a new Final Rule rescinding highly controversial regulations, proposed by the previous administration, that patent applicants felt unduly restricted their capacity to protect intellectual property. The regulations, which addressed the number of continuation applications as well as the number of claims that could be included within each application, were published in the Federal Register in August 2007, but were enjoined and never came into effect.

The USPTO also announced that it will file a motion to dismiss and vacate the federal district-court decision in a lawsuit filed against the USPTO that sought to prevent the rules from taking effect. GlaxoSmithKline – one of two plaintiffs in the Tafas v. Kappos lawsuit – will join the USPTO’s motion for dismissal and vacatur.

“The USPTO should incentivize innovation, develop rules that are responsive to its applicants’ needs and help bring their products and services to market,” Kappos said. “These regulations have been highly unpopular from the outset and were not well received by the applicant community. In taking the actions we are announcing today, we hope to engage the applicant community more effectively on improvements that will help make the USPTO more efficient, responsive, and transparent to the public.”

“We are grateful to GlaxoSmithKline for working with us to file this joint motion to both dismiss the rules and vacate the district court’s decision. This course of action represents the most efficient way to formally and permanently move on from these regulations and work with the IP community on new ways to take on the challenges these regulations were originally designed to address.”

This is something that I and other commentators had been suggesting for many months.  It was the earliest sign that not only was there a new sheriff in town, but that sheriff wanted strong relations with the industry.

Indeed, in direct opposition to the way that the USPTO was run during the Bush Administration, Director Kappos routinely sought input from the patent bar and stakeholder community.  When proposed rules were issued the comments, suggestions and feedback were taken to heart with many changes occurring based on the insights of the industry. Perhaps most famously, the USPTO completely re-wrote the rules relative to Oaths and Declarations based upon the thoughtful feedback received from the industry.

I suspect Director Kappos will be sorely missed by many.  I know I will miss him and his steady leadership.  I hope President Obama gets his second appointment as correct as his first, although I suspect whoever takes over as boss at the USPTO will have uncomfortably large shoes to fill.

For more on this story see: David Kappos to Leave the USPTO.

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