Bruce Kisliuk retired from the United States Patent and Trademark Office last summer as the Deputy Commissioner for Patent Administration after a 30+ year career at the Office. He is now a senior patent counselor with Wilson Sonsini Goodrich & Rosati. I had always wanted to interview Kisliuk, but the opportunity never presented itself until recently. I interviewed Kisliuk on November 24, 2015, in a wide ranging conversation that lasted nearly 90 minutes.
In addition to a prolonged and detailed “get to know you” conversation where we dive into his musical tastes, that he is a history buff, and not at all into either Star Trek or Star Wars, we talked substantive patent law for an hour. What follows are the highlights of our conversation.
During our conversation, Kisliuk surprised me a bit by saying he is not in favor of a legislative fix to the patent eligibility issues created by the Supreme Court. Many who share Kisliuk’s view will cite to the real possibility that an attempt will fail, which could be used as some evidence that Congress somehow intended to ratify the chaos. From Kisliuk’s vantage point as a recently departed USPTO official, he knows well how rulemaking can sometimes take unexpected twists and turns when it comes time to implementing legislation.
KISLIUK: There’s been some discussion, and some people suggesting, possible changes in the statute regarding eligibility. I get a little worried when I hear that — you know, the joke about making law is like making sausage, right? I worry because even with all the best intentions of “fixing” the law, then after that you have to draft the implementing rules, and then you have to put it all into practice. Those are three pretty big steps which may not necessarily come out in the end aligned with the original intentions. So I worry some that we take a system that is fundamentally sound and we start chipping away at the foundation. So from a long-range view, I’m more comfortable not seeing changes to the statute right now, at least regarding eligibility, and working through the court’s to bring it back some clarity.
During the interview, I also asked about the perception that there are some patent examiners not following the 101 guidance set forth by the Patent Office.
KISLIUK: I can say just from a basic management concept, you’ve got over 8,000 examiners, you’ve got guidance and training materials and concepts that have changed and morphed over time and you’re going to have some percent of people that get it right away and some people that don’t get it right away. So it doesn’t surprise me that is the experience. I understand it’s frustrating and, in a perfect world, people would be able to it pick up right away — here’s the line, here’s the standard, everyone apply it. I think that is one of the things that the PTO is striving to do. I think it’s good to push more towards at least putting positions on the record. I know — the situation you’re mostly talking about is when they clearly get it wrong or they’re way on the other side of the line. As an applicant, you have an opportunity to challenge those positions and there are procedures for doing that. I think over time those things will get better, but it wouldn’t surprise me that people are experiencing some examiners not following it to the letter, because I just think the nature of 8,500 people [is] that you’re not going to always get it all right.
I also asked Kisliuk whether he thinks it will take some kind of catastrophe within the industry, or industry collapse, for Congress to start to really pay attention to what is truly wrong with the patent system.
KISLIUK: I want to say I certainly hope that isn’t the case, but just from observation, I agree with you. I think those that are IP sophisticated understand much more about the inner workings and what a critical time we’re in right now. I’m not sure others do. And to me an economic example would be a strong one, but I’m certainly not looking for a failure or a catastrophe, I’m just looking for something that shows people that it’s a system that needs to flourish and a system that needs clarity and it’s a system that works.
To read the entire interview from the beginning please see Patents, a system that works, On the record with Bruce Kisliuk.
Tags: Bruce Kisliuk, interview, interviews, patent, Patent eligibility, patentability, patentable subject matter, patents
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