Patent Law Practice Center

Interview Exclusive: USPTO Director David Kappos

Written by Gene Quinn (of IPWatchdog.com and Practice Center Contributor)

On Monday, July 19, 2010, I was granted behind the scenes access to the United States Patent and Trademark Office, and was allowed to follow USPTO Director David Kappos throughout the day as he went from meeting to meeting. I have already chronicled much of the events of the day in the previous article– Behind the Scenes:  A Day in the Life of David Kappos. At the end of the day I was granted a 30 minute interview with Director Kappos, which appears below.

In this interview Kappos discusses with me his management style, his famously long hours, how he manages to inspire the Office to work harder than ever before, his efforts to get funding for the Office, how the USPTO can help innovators create new businesses and new jobs, and how to inspire young people to do public service. We also learn that he and Judge Rader share the same favorite movie (see Judge Rader Interviewat the end), he likes Star Trek and Star Wars equally (an astute political answer no doubt) and the famous American inventor he would like to meet is a “Mount Rushmore” inventor.

In terms of interview mechanics, I was joined in Director Kappos’ office by Drew Hirshfeld, Chief of Staff, and Peter Pappas, Chief Communications Officer and Kappos’ Senior Advisor.

Now, I proudly present my interview with Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, David Kappos.

QUINN: Thank you very much Director for taking the time at the end of this day.

KAPPOS: You Bet!

QUINN: I appreciate your giving me the opportunity to get an inside view of the PTO. And one of the things I try to do whenever I sit down and chat with people is to get a behind the scenes look. I got a good look today but one of the things I’d like to ask you about, since you spent so many years in the private sector, is what management techniques have you brought from the private sector into the government? (more…)

Patent Office Releases Interim Bilski Guidelines

Written by Gene Quinn (of IPWatchdog.com and Patent Center Contributor)

This morning the United States Patent and Trademark Office published Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos. The Interim Bilski Guidance is effective July 27, 2010, and applies to all applications filed before, on or after the effective date. Most noteworthy is that the Patent Office is encouraging examiners to issue 101 rejection in only “extreme cases” and allow patentability to be decided by sections 102, 103 and 112.

These interim guidelines build upon the memo sent to the examining corps the day the Supreme Court issued its decision in Bilski v. Kappos, and is intended for use by Office personnel when determining subject matter eligibility under 35 U.S.C. 101. According to the Federal Register Notice, this guidance supersedes previous guidance on subject matter eligibility that conflicts with the Interim Bilski Guidance.

Significantly, the guidelines explain:

Therefore, examiners should avoid focusing on issues of patent eligibility under Sec. 101 to the detriment of considering an application for compliance with the requirements of Sec. Sec. 102, 103, and 112, and should avoid treating an application solely on the basis of patent eligibility under Sec. 101 except in the most extreme cases.

This should be music to the ears of the patent bar and applicants who were previously stopped dead in their tracks by a seemingly insurmountable 101 rejection. (more…)

Lots of Support at Patent Office Three Track Public Meeting

Written by Gene Quinn (of IPWatchdog.com and Practice Center Contributor)

[Tuesday] the United States Patent and Trademark Office held a public meeting on the so-called Three Track examination proposal, with everyone in agreement that the proposal is quite welcome, at least in principle.  On June 4, 2010, the USPTO published a Notice in the Federal Register setting out the preliminary Three Track proposal and setting Tuesday, July 20, 2010 as a date for the public to come to the Alexandria, Virginia campus to let PTO Officials hear their thoughts.  This public meeting proceeds the due date of written comments by a full month, and many of those who spoke explained they would continue to review the proposal and follow up with additional written comments.  For more information on the specifics of the proposal please see USPTO Announces New Examination Rules.

One thing can be said definitively: everyone thinks it is a good idea, no one has issues with accelerating applications (Track 1) or allowing them to remain on course as today (Track 2), but there were numerous concerns raised about applicants slowing applications down (Track 3).  The good news for the PTO, however, is that speaker after speaker highlighted the same or similar concerns, so it does appear as if there are a finite set of manageable considerations for the PTO to address.  In fact, the senior PTO Officials that I spoke with after the public meeting were extremely pleased and quite grateful.  I was told by one senior PTO Official that the points raised were all good and that the PTO intends to take them into consideration and address the concerns, along with whatever written feedback they receive.  What a refreshing change that will be! (more…)

On the Record with Former PTO Director Nick Godici – Part 1

Written by Gene Quinn (of IPWatchdog.com and Practice Center Contributor)

On Tuesday, June 29, 2010, I had the opportunity to sit down on the record with Nick Godici, the former Acting Director of the United States Patent and Trademark Office and Former Acting Undersecretary of Commerce for Intellectual Property. Godici is one of only a small handful of individuals to have seen the Patent Office on every level, from newest patent examiner to SPE to Group Director, Commissioner for Patents and ultimately to Director of the USPTO.  I have wanted to sit down with him for some time now, and some mutual friends of ours, who are mentioned in the interview in passing, made introductions.  I was put in touch with Godici and now the rest is history, as they say.

I thoroughly enjoyed my time with Godici, and we managed to get into a wide variety of issues that ranged from his early days as a patent examiner, his patent examination philosophy and approach, the role of the USPTO, the Patent Granting Authority versus the Patent Denial Authority, examiner training, building relationships between patent examiners and the patent bar, the PTO work from home initiative, inequitable conduct, the Bilski decision and what the USPTO is now likely doing to address that, the parallels between the Reagan Administration and the Obama Administration in terms of patent and innovation policy and exactly what it is like to be the Commissioner of Patents and the Director of the Patent Office, and much more. Oh yes, we also talked about his getting a call from Secretary of Commerce Gary Locke last summer and returning to the Patent Office for a few months as a special adviser at the request of the Obama Administration. (more…)

Supremes Decide Bilski: Machine or Transformation Not the Only Test, Bilski Not Patentable

Written by Gene Quinn (IPWatchdog and Practice Center Contributor)

Bilski v. Kappos has finally been handed down by the United States Supreme Court, in what has become the most highly anticipated patent decision of all time. The questions presented to the Court for consideration were: (1) whether the Federal Circuit erred by creating the so-called “machine or transformation” test, which requires a process to be tied to a particular machine or apparatus, or transform an article into a different state or thing, in order to be patentable subject matter; and (2) whether the machine or transformation test contradicts Congressional intent (pursuant to 35 U.S.C. 273) to allow for business methods to be patented.

The Supreme Court held that the machine-or-transformation test is not the sole test for patent eligibility under §101, and that the Federal Circuit erred when it ruled that it was the singular test to determine whether an invention is patentable subject matter. Delivering the opinion for the Court was Justice Kennedy.  There were no dissents, only concurring opinions, which is in and of itself a little surprising, at least at first glance until you realize that the Justices all agreed Bilski’s invention ought not to be patentable, but some, such as Justices Stevens and Breyer would have found all business methods unpatentable.  In any event, Kennedy explained that the Federal Circuit decision ignored well established rules of statutory interpretation, and further explained that there is no ordinary, contemporary common meaning of the word “process” that would require it to be tied to a machine or the transformation of an article. Nevertheless, the machine or transformation test may be useful as an investigative tool, but it cannot be the sole test. (more…)