On July 19, 2012, I interviewed Bob Stoll, former Commissioner for Patents of the United States Patent and Trademark Office. The interview took place in a conference room at Drinker Biddle on K Street in Washington, D.C. After 29 years working for the USPTO and a total of 34 years working for the government, Stoll retired on December 31, 2011. He then started his new, second career as a private citizen and all-around patent specialist at Drinker Biddle in the firm’s Intellectual Property Group.
In his 29 years with the USPTO, Bob Stoll held several leadership posts, including training foreign officials on all aspects of intellectual property (IP), overseeing the Office of Enforcement, and directing federal legislative priorities for the Agency. In his tenure as Commissioner for Patents, Stoll was in charge of implementing initiatives to improve the speed and quality of the patent review process, was instrumental in reducing the patent application backlog, and undertook an initiative to clean out the oldest cases on the USPTO docket.
During our interview series, titled Patents, Politics and Life on K Street, published in total at IPWatchdog.com — see part 1, part 2 and part 3 — we talked about a number of different issues, ranging from the Supreme Court, to the Federal Circuit, to how to make patent prosecution better, to Presidential politics. Below are the highlights.
On the Federal Circuit need for Judges:
“I think that the number of CAFC cases are growing and I think with these new post-grant and inter-parties review procedures, they’re gonna grow even more and I think the CAFC is gonna need significant help and a pump up in resources in order to handle that increase.”
On who might be in line for an appointment to the CAFC: “Todd Dickinson [Ed. note: former Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO); current Executive Director of the American Intellectual Property Law Association (AIPLA)] is one name that I keep hearing…. I think he’s got a strong background in intellectual property. He’d be a good selection. He is the one I’m hearing the most about.”
On USPTO Resources and the Supreme Court:
“I actually think some of the interest in having the Supreme Court engage in so many of these patent cases, which they’ve never done to this extent before…the media being filled with patent issues… all flow from the fact that the examination and the filing have not been exactly what they should have been. I think that there’s a concern with the quality of some of these patents out there in how they’re being used and I think if we had better quality patents the system would work better. I highly respect the examiners and the management at the Patent and Trademark Office; they are doing the best that they can with the resources and the backlog they’ve got and I understand the attorneys are trying to put these cases competitively into the queue and into economy — as quickly and as economically as they can to make their money. I just think the system should be improved so that both are given a little bit more time to be able to do a better job in prosecuting the applications.”
On Therasense and Inequitable Conduct:
“I thought Therasense kind of put an end to inequitable conduct. I thought that was a very stringent test…”but for”…and the single most reasonable inference is that the attorney or the inventor intended to deceive the Patent and Trademark Office, those are pretty tight… And I have not looked at statistics recently to see if there has been a significant reduction but I have been talked to by several firms about being involved in those types of cases — I have a lot of people asking me to expert for them and I am reviewing each of the cases individually and I am on both sides. I represent folks on both sides of the issue. Sometimes defending the patent, sometimes not, based on the facts as I see it, and the facts as I see it either meet that Therasense standard or don’t and some of them do meet the Therasense standard and some of them don’t, and I evaluate it based upon what documents I have in front of me, and I thought it would all go away and it hasn’t.”
On pro hac vice practice at the USPTO:
“I think that there will be a limited pro hoc appearance for someone who is not registered at the Patent Office.. I think that’s the right decision and let me explain. Post Grant and Inter Partes review procedures are going to be extremely intense. There’s going to be a one-year period basically from the institution to the conclusion with an exception, under unusual circumstances, for an additional six months. That is really moving fast. I think you’ve got to have people who are doing this on a regular basis, understand the situation, have some obligation to the Patent Office, meaning there is a mechanism for the Patent Office handling practitioners, which is only through the registration practice, if there’s a problem, and I actually think the way for litigators to engage in these types of procedures is to pair up with registered practitioners because I think just as most of the litigators won’t have the familiarity with the patent prosecution and the ability to handle those actions in inter-parties review and post-grant review, a lot of the practitioners have no capabilities with respect to discovery techniques and what has to happen there. So I think teaming these folks together is probably the best way of working through the system and getting things done within that one-year period.”
Written by Gene Quinn of IPWatchdog.com