On Wednesday August 1, 2012, I had the opportunity to do something I have wanted to do for quite a while. I sat down on the record with both General Counsel Bernie Knight (left) and Solicitor Ray Chen (right), the top two attorneys who represent the United States government at the United States Patent and Trademark Office.
I bet you didn’t know that Knight, who is General Counsel at the USPTO, is a painter; has a Master’s degree in psychology that allows him to do pro bono counseling at a center for homeless women in Washington, DC; and has an English Setter show dog that is a champion.
The interview as quite enlightening on many issues. For those who are interested in reading the interview in its entirety, please visit Exclusive Interview: USPTO Attorneys Bernie Knight & Ray Chen. For those who might want a more condensed presentation, here are a few of the more interesting items to come up during our discussion.
REPRESENTING THE FEDERAL GOVERNMENT
KNIGHT: [W]henever you are working for the United States, the client is the United States, whether that’s at the USPTO or another federal agency… we have an obligation to do what’s in the best interest of the United States. Now, we also do that keeping in mind that the PTO is completely user-fee funded. So we have a much greater obligation to our user community than many other government agencies do who are funded by taxpayers generally…
CHEN: On one level, my responsibility is to defend the decisions of this agency as zealously as I can in federal court. That’s one significant role the Solicitor’s Office plays. Beyond that, we’re also doing an incredible amount of outreach to the public, to the stakeholder community. That’s something that I’ve come to appreciate more over my time as the Solicitor. I think initially I wasn’t as inclined to go out and do a lot of public speaking because I felt like, well, that’s just not what government litigators do…that’s not our role. But the longer I’ve been here the more I’ve been able to appreciate that all of us, Bernie, me, and others, we have a leadership role in this agency and we do have an important responsibility to reach out to the public to share with the public what the PTO’s perspectives are on a whole host of different issues.
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KNIGHT: Right. When you’re representing the United States, you have a very high obligation to make certain that all citizens are treated equally and fairly. And as Ray stated, we don’t take positions that are not supportable. We shouldn’t win a case where the facts and the law are not in our favor.
CHEN: And in some ways I consider that one of the privileges and advantages of being an attorney in the government is that you get to wear the white hat, you get to sit there and make a call based on your conception of the law…is this a defensible position to take? If it’s not, then you have the ability to go back to the decision makers within the government to try to see if the government ought to be taking a different position on a certain issue. So we’re not just trying to win a particular case. We’re also focused more broadly on the overall arc of the law, and making sure it’s heading in the right direction.
KAPPOS INVOLVEMENT WITH RULES
KNIGHT: Dave definitely edits the rules. I wouldn’t say that he edits them heavily or lightly. But he edits them on things he is concerned about. He reads them very carefully, and if he thinks there’s an approach that we need to take that we haven’t taken, he lets us know and we edit the rule. He doesn’t waste time with wording choices like changing “that” to “which.”
CHEN: I think it is worth noting that he’s not the kind of decision maker that’s just saying yes or no to various different issues in a rule package. In many ways he’s his own idea lab providing additional thoughts, and thereby adds value in a lot of different ways in any given rule package. He also provides specific policy direction before a rule package gets started.
GIVING GUIDANCE TO EXAMINERS
CHEN: Any time the Supreme Court issues an opinion that touches on the work that we do, like a Bilski, like a Prometheus, Dave has made it very clear he wants something out, some kind of guidance out to the examiners immediately. Because we have over 7,000 patent examiners now. There are over a million applications pending somewhere in the system at any given moment. And examiners need to know what has happened to the law, immediately. So at least as a stop gap provision we need to send out something very quick. Because almost immediately after the Supreme Court issues a decision, whether it’s a KSR or Prometheus, there’s going to be examiners with questions and there’s going to be applicants with questions. We need to at least provide some first level response….
Then of course that first level of response is not deep enough. There needs to be some time to kind of reflect and understand the consequences of any given Supreme Court opinion. That takes at least a few weeks to digest. We in OGC work with the Patents leadership to try to help craft a new set of guidelines to instruct examiners and to let them know where the law is still the same and where have there been adjustments to the law given what the Supreme Court has said. Whether we agree or disagree with what the Supreme Court does, we’re going to follow it. We’re going to be faithful to it. But as with any opinion, there can be different conceptions of what really is the message to take from the opinion. And so we have to try to iron that out.
FUTURE KSR & 101 GUIDANCE
CHEN: We’re continuing to monitor the KSR landscape to see whether or not there’s enough additional teaching moments and personally I’m searching for more guidance on the whole question of objective evidence. And to what extent can objective evidence in combination with a prima facie rejection lead ultimately to a conclusion of nonobviousness.
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CHEN: We understand that we have to implement 101; we hamine all of our applications for every condition of patentability, including Section 101. My expectation is we will come out with some training slides in view of Prometheus, and as for what I’ll call the computer implemented inventions where there’s been a handful, or even more than a handful, of Federal Circuit opinions on that, we’ve been monitoring that like a hawk, watching the data points getting collected and I guess we’re still trying to figure out to what degree we can reconcile all those opinions and give sound guidance that we can feel comfortable is going to actually be upheld.
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