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Director's Forum: A Blog from USPTO's Leadership

Tuesday Nov 10, 2009

Putting the USPTO to Work for Independent Inventors

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos

My first few months at the USPTO have been exciting and inspiring, and I feel privileged to be leading the USPTO at this critical time for the IP community, and the country as a whole. When I was sworn in 90 days ago, I came in with a clear mandate from Commerce Secretary Locke to fix our broken patent system and reduce the backlog that has hamstrung innovation and hindered job creation and economic growth. We have ambitious goals and, with your help, I feel confident that we can achieve them.   

I want to take this opportunity to salute the hard work and dedication of the USPTO’s highly capable staff.  As I've commented at various events the last several months, the USPTO team is every bit as smart, intense, thoughtful, passionate, and hard-working as any I have ever worked with in the private sector.  And I want to thank the IP community for its valued input and support these past few months.  In order to foster as active and open a dialogue as possible with our stakeholders, we are launching the Director's Forum public blog. I hope this will be a useful vehicle for sharing ideas and concerns on a regular basis.   

This past week, I had a chance to participate in the 14th Annual Independent Inventors Conference here at the USPTO campus in Alexandria. This conference, which brought together almost 200 members of the independent inventor community from around the country, was an opportunity to rededicate ourselves to serving the independent inventor community in the ways we already do and to finding new ways to be of service. It was also an opportunity to reflect on what we have accomplished thus far, and to elaborate on some of our priorities from the standpoint of the independent inventor community.

Thousands of independent inventors and small businesses do critical R&D every day and produce innovative goods and services that benefit the public in so many critical areas. Surgeons invent new tools to save lives right there in the operating room, young people find new ways to write software in a school computer lab, and independent inventors create solar chargers – and a short while later that solar charger has created 900 good jobs here in America.   Innovation generated by the independent inventor community will play an even more central role in the future of the American economy.  To make sure that happens, we must provide you with the incentives and protections of an effective, modern patent system – and we must have a functioning patent system that unlocks funding for start-ups and small businesses.

How can we best accomplish that?   We have already moved swiftly to implement much needed reforms in the patent examiner count system and have provided incentives that will improve the examination process and reduce pendency. We have rescinded the claims and continuations rules that would have penalized the innovation community. And we have just adopted an application exchange pilot program that is specifically designed for small entities. This program will allow independent inventors and qualifying entities to receive special status for one application in exchange for withdrawing another application that may no longer be needed. Since last year we have noticed a significant upturn in cases being abandoned after the first office action, without reply to the first office action. With this in mind, the program enables applicants to focus USPTO resources on what is important, rather than having examiners review applications that are no longer important to their owners. This allows our users to help us prioritize our workload and will help clear the backlog.  It is a win-win, and we will be actively looking for other such opportunities.   

In order to fully serve the needs of everyone in the innovation community, however, Congress must pass patent reform legislation.  The legislation being drafted in Congress will ensure that the USPTO gets the funding it desperately needs to operate efficiently and to protect the intellectual property rights of all innovators. And it will give the USPTO the fee-setting authority it needs to do business.
 
I know that many independent inventors, like most segments of the IP community, have concerns about some of the provisions in the bill, and I had the opportunity to address some of these concerns at last week’s conference. The legislation is the product of a series of compromises in the eyes of virtually every segment of the IP community.  But it is also a vast improvement over what we have now – and there is a strong consensus that the status quo is simply unsustainable.  It is therefore gratifying to have had such an open, vigorous and fact-based discussion on areas of particular concern to this community – namely, the proposed revisions in the post-grant review process and in the priority filing system.

As I said last week, we’re working with Congress to ensure a fair and balanced approach to post-grant review.  But it needs to be cost-effective and fast, and the bar has to be set high enough to protect against abuse and serial challenges.  Non-meritorious requests should be summarily denied.  And challenges should be quick and cost-effective, and ideally produce a virtually bullet-proof patent at the end of the process.  
 
With regard to the patent-priority system, the bill’s proposal to move to a first inventor to file system really represents only a minimal change to the process we use now.  The new system would not create a situation where someone could steal an idea and win a race to the patent office.  That person would not be an inventor and would not be eligible for a patent in the first place.  Keep in mind that there are stiff penalties in place to protect against that.  So the real issue involves the case of simultaneous non-collaborative invention that is currently resolved through the interference system.

The truth is that only .01 percent of all patent applications could be affected by a change to first inventor to file. The interference system is already biased in favor of the first inventor to file and 70 percent of the extremely small number of cases that get into the interference process are decided in favor of the first inventor to file.  For more on these and other issues, I would encourage you to read the text of the speech I gave at the Conference on our Web site.  

In closing, I want to hear from you. All of us at the USPTO know that we benefit immensely from your input.  We are here to serve all segments of the IP community better. And I am committed to doing what is good for every stakeholder group and every segment of the IP community. That is my pledge to all of you.
 
Thanks for reading, and I hope you’ll stay tuned.  
 

Comments:

Director Kappos - Thanks for providing this forum. I believe that it will continue to foster a positive working relationship between the PTO, patent practitioners, patent applicants, and academics. I would challenge your statement that only 0.01 % of all patent applications could be affected by a change to a first-to-file system. The problem is that this figure does not take into account the frequency that patent applicants rely on their invention date avoid prior art by swearing behind a reference. My own studies find that about 1% of applicants attempt to swear-behind prior art. Further, applicants swear behind more often for what might be termed "valuable" inventions. While still small, that value almost 100x your 0.01% figure. Your data also ignores the frequency that invention date is relied upon during litigation. My preliminary studies show that invention date is more frequently at issue in litigation than at the PTO. All the best, Dennis Crouch

Posted by Dennis Crouch on November 10, 2009 at 03:03 PM EST #

[Trackback] To read the blog, click here . Also, the blog has been bookmarked on the 271 Blogroll, and may be conveniently

Posted by Intellectual Property News on November 10, 2009 at 04:42 PM EST #

Dear Director Kappos, I complement you for establishing this blog, and for taking an active, hands-on approach to patent reform. I believe that most of the Examiners are providing quality service, and I am optimistic that this will continue. With regard to your first posting, I think the "application exchange" proposal is a GREAT idea; I hope its implementation goes well. With regard to patent practice: I am always amazed when RESTRICTION PRACTICE is rarely raised as an area that needs reform. The set of reforms prepared a few years ago addressed the high number of continuations, yet reducing the number of Divisionals by keeping tighter reigns on the breadth of power that the Examiner has in this regard, and improving the avenues of recourse available when the restriction is traversed, was not addressed as a possible 'fix'. I prepare well over a hundred responses per year, and I find a strong correlation between Examiners who impose Restrictions, and Examiners who subsequently provide Office actions that are not up to par with respect to the quality provided by most other Examiners. With regard to Quality, I'd recommend establishing/reforming a Quality Review Board that solicits examples of poor quality, rather than, or in addition to, relying on random sampling. I find the number of Examiners who provide low-quality Office actions are few and far between, but those who consistently provide low-quality Office actions often continue to do so for years. Best of luck in your endeavors, Rob McDermott.

Posted by Robert M McDermott on November 10, 2009 at 04:52 PM EST #

I second Dennis' comment, that the last two paragraphs of your note (re first-to-file) do not reflect the full set of facts. IF the current proposal simply changed § 102(g) from "before such person's invention thereof" to "before such person's effective filing date," then your analysis would be correct. But that is not what's in the proposed legislation. The currently-pending legislation totally rewrites § 102(a), (b), (e) and (g). Unde the proposal, the one year grace period - while nominally present - becomes extremely delicate, easily lost by unforeseeable acts of others. As a practical matter, no business will be able to rely on such a tenuous grace period. All applicants will indeed be forced to race to the Patent Office - not a race with a competing applicant, but an even more intense and urgent race against <i>all</i> who might disclose or use the invention, even those who learned the invention from the inventor. Consider the practical reality. Suppose an inventor puts an invention out for shake-out testing, analogous to the testing permitted under today's § 102(b). It's a success! Magazine articles! Competitors! Improvements by others! As soon as the success is manifest (long before the year is up), the inventor files his application. The examiner finds dozens of magazine articles. Now the inventor is put to the burden of showing that <i>each and every one</i> was a derivation, a totally impractical burden to meet. Though the proposed statute has a nominal one year grace period, the practical reality is that no inventor can rely on it. The result will be many many more applications filed (Ron Katznelson estimates 20-30% more). Businesses will have to make very painful "file it or lose it" decisions far too early, with no practical ability to test or shake out bugs. The costs will put the patent system largely out of reach for small companies, startups, and individual inventors. Your estimate for the number of applications affected fails to reflect the full practical implications of what inventors will actually do. I don't have hard numbers at my fingertips, but I estimate (based on long experience representing small companies, and due diligence reviews of companies seeking funding) that the change affects a number of applications roughly equal to today's total number of small entity filings, the ballpark of 30% of all applications. The change affects the large majority of small entity applications filed today (the ones that are filed in reliance on the § 102(b) grace period late in the § 102(b) year), and will force about that same number (roughly half of today's small entity filings, perhaps more) to be filed under first-to-file that are not filed at all today. The costs to small entities of all those new applications are truly staggering. Further, the burdens on the PTO itself will be substantial. Becase of the race to the Patent Office, many applications will be hastily prepared, and therefore harder to examine. A high proportion will go abandoned after first action. Mr. Kappos, I have the greatest respect for you and what you've done so far. But the conclusions in your last two paragraphs reflect only sample bias based on the Patent Office's insulation from the invention ecosystem and from the commercial marketplace, not data. David Boundy

Posted by David Boundy on November 10, 2009 at 05:03 PM EST #

The smallest entity presently recognized by the PTO fails to recognize the real needs of most small start-ups and part-time inventors. With the costs of obtaining patents being driven up mercilessly in recent years (all costs- PTO fees and legal fees) while patent values have sunk we are in danger of losing that most American of things the independent inventor. As one myself I can assure the reader that I have seen our total patent costs (4 person operation) go up by three. We need the help of the PTO and Congress to redress this inequity and insure that core new technologies what some call Basic Patents keep flowing to grow new companies, industries and well paying jobs for all Americans. I propose the Individual as the smallest category of entity consisting of 9 or fewer people in an entity with an annual income of 1 million (2010) dollars or less. The Individual Entity pays 1/10th the fee established for the Small entity and no maintenance fees until such time when fees are cumulatively due when by success or sale a small or large entity owns or licenses the invention. Most truly new and disruptive inventions take five to ten years to bring to market and people struggling to bring a vision to life need help from the PTO.

Posted by Vic Kley on November 10, 2009 at 05:05 PM EST #

I estimate (based on long experience representing small companies, and due diligence reviews of companies seeking funding) that the change affects a number of applications roughly equal to today's total number of small entity filings, the ballpark of 30% of all applications. The change affects the large majority of small entity applications filed today (the ones that are filed in reliance on the § 102(b) grace period late in the § 102(b) year), and will force about that same number (roughly half of today's small entity filings, perhaps more) to be filed under first-to-file that are not filed at all today. The costs to small entities of all those new applications are truly staggering. Further, the burdens on the PTO itself will be substantial. Because of the race to the Patent Office, many applications will be hastily prepared, and therefore harder to examine. A high proportion will go abandoned after first action.

Posted by David Boundy on November 10, 2009 at 05:10 PM EST #

The patent system treats the struggling small inventor the same as a successful business with hundreds of employees and millions in revenues and profits. A lone inventor with no income pays the same fees as a company with $200,000,000.00 in revenue and 500 employees! Please correct this situation. Please create a new classification of inventor for USPTO fees- the Individual Entity. The Individual Entity is 1 to 9 persons with annual income less then $1,000,000.00 in 2010 US Dollars. The Individual Entity pays 1/10th the fees charged a Small Entity for any activity or service of the USPTO. As long as the Individual Entity has not licensed an issued patent to either a Small or Large Entity it shall pay no maintenance fees. To bring truly new and disruptive technology to market can take a decade or more, these special people and inventions need to be nurtured not taxed out of existence.

Posted by Vic Kley on November 10, 2009 at 05:10 PM EST #

In the past three years all patent applicants have seen a doubling or tripling of costs to prosecute inventions due in large measure to recent court decisions that have emboldened the USPTO to aggressively use obviousness arguments in rejections. These costs have fallen most heavily on the smallest entities of all, the Individual Inventor. Composed of a few people or in many cases one individual alone these costs along with the present severe recession promise to curtail or eliminate these small inventors. Yet these are the very inventors who create the Segways, Googles, Blackberrys and Velcros of the world. It is these smallest of entities that grow new jobs like no other sector of our economy. New inventions coupled with existing advanced technology form the bulk in dollars of our exported goods and services, and create solid jobs and productivity growth for all Americans.

Posted by Vic Kley on November 10, 2009 at 05:14 PM EST #

Director Kappos I hope you will join the individual inventors of America and second our request to the House and Senate to change HR 1260 and S 515 as below. Please change 35 U.S.C. 103 by adding “An invention may not be rejected as obvious if the purpose stated by the inventor is novel to the filing date and necessary as a motivation to assemble elements of prior art, such that no one skilled in the art would have had any reason to associate such elements without the stated purpose.”

Posted by Vic Kley on November 10, 2009 at 05:20 PM EST #

David, I have to commend you for starting a blog and opening yourself up to what is likely to become a forum of near-constant whining, begging, and pleading from scores of patent lawyers and related industry lobbyists. Keep your head up and good luck to you, sir!

Posted by Sara D. on November 10, 2009 at 08:30 PM EST #

Director Kappos, thank you for making this blog public and thank you for the reforms already initiated, including reforming the examiner count system and encouraging more communication and cooperation between examiners and applicants. Providing transparency and open communications with applicants and the public and removing incentives for disfunctional examination practices should dramatically improve US patent practice and relations between the USPTO and applicants. If you can also improve retention of talented examiners at the USPTO, I have no doubt that there will be continual improvement in the perception of quality and fairness in US patent examination. And seeing that your blog even has an RSS feed, I am encouraged to see the USPTO now finally communicating with this convenient modern tool. Please keep posting, and please keep up the good work. No doubt many more changes are in store, and I think it important for us to hear about these changes from you.

Posted by Robert J. Sayre on November 10, 2009 at 09:47 PM EST #

Director Kappos - I also want to add my thanks to you for establishing this forum. As I noted in my blog today (www.patentabilityblog.com), with all of this outreach - and with all of the additional "help" you will be receiving, it will also be interesting to see what roles the Patent Public Advisory Committee (PPAC) and the Trademark Public Advisory Committee (TPAC) will play under your leadership. I'm glad your first public post highlighted one example - solar chargers - of what independent inventors create and how such innovation recently created 900 good jobs here in America. This category of invention was mentioned during your Senate confirmation hearing. During the hearing, Senator Specter asked you about expediting applications directed to helping the environment (e.g., green/clean tech). Applicants formerly could use a petition to make special to expedite examination of such applications, but the environment category went away when the PTO started the accelerated examination program (the same happened with anti-terrorism-related inventions). You stated that you would like to do more to expedite applications that would help the environment, but would provide more details later. This would be an ideal time to expedite green/clean tech and anti-terrorism related patent applications. First, the independent inventor community is very active in these areas. Second, the need for products in these areas has never been stronger. Third, the government and private investors are injecting billions of dollars into new research and development in these areas. A missing piece here is a patent system that provides timely, strong and cost-effective patents that keep innovations flowing through the R & D pipelines to consumers. To accomplish this, I urge you - at a minimum - to please restore the former categories for petitions to make special for expedited examination so applicants won’t have to trudge through the claim-limiting and estoppel-producing process that is accelerated examination. This is not too much to ask to help applicants who develop inventions that help the environment, fix our energy problems and keep crazy people from blowing us up. I look forward to working with you to promote the progress of innovation at this critical time for the IP community and the country as a whole and I wish you all the best. Brian Fletcher

Posted by Brian Fletcher on November 10, 2009 at 09:58 PM EST #

Thank you for your willingness to use this blog to solicit feedback from the patent bar and inventor community. Like David, I concur with the sentiments expressed by Dennis Crouch in terms of the proposed FITF system. I have undertaken a hypothetical experiment of approximately 200 typical fact patterns between a pair of competing inventors to try and understand the potential impact of FITF. To my surprise, there are more differences in the proposed FITF system than you might expect and the proposed FITF does not produce the same "results" as either the exisitng US FTI system or the FTF system as generally used in the rest of the world. The most dramatic differences arise from what I refer to as the "springing public disclosure exception". Instead of measuring the 1 year grace period backward from the date of first filing as happens under 102(b) today, the proposed FITF system creates a 1 year grace period measured forward from the date of first public disclosure by or for the inventor. How inventors will try to use this new exception remains to be seen, but the results in terms of who is awarded a patent under the proposed FITF system are different than the current FTI system. For example, assuming independent invention by a first and second inventor who both file applications within one year of each other, if the second inventor who is second to file a patent application has published the invention before the first inventor files his/her patent application, the publication by the second inventor will destroy the ability of the first inventor to obtain a patent (just as it would in a FTF system), but the second inventor may still be able to obtain a patent under the proposed FITF system by invoking the springing public disclosure exception to remove not only his/her own publication, but also the earlier filed patent application of the first inventor. Whether this outcome if the "right" outcome or not, this is but one example of the differences in FITF that I believe are not yet fully appreciated.

Posted by Brad Pedersen on November 11, 2009 at 02:19 AM EST #

I concur with Dennis’ comments on FITF. I did a hypothetical experiment of approximately 200 typical fact patterns on the potential impact of FITF and there are significant differences. The most dramatic arise from the "springing public disclosure exception - SPDE". Instead of measuring the 102(b) 1-year grace period backward from the date of filing, SPDE creates a 1-year grace period measured forward from the date of first public disclosure by or for the inventor. Assuming independent invention by A and B who both file applications within one year, if B who is second to invent and second to file publishes the invention before A files, the publication by B destroys A’s ability to obtain a patent (just as it would in a FTF system), but B may still get a patent by invoking SPDE to remove not only B’s own publication, but also the earlier filed application of A. Whether this outcome is the "right" one or not, it is but one example of the differences in FITF.

Posted by Brad Pedersen on November 11, 2009 at 02:34 AM EST #

Director, Can we have an opposition procedure as in the EPO. Having worked in Germany for a few years and participate in about 25 oppositions, I learned to love the system. If I can help to set one up, I'm available. ---Greg Clements

Posted by Greg Clements on November 11, 2009 at 09:05 AM EST #

I write to echo Dennis Crouch's comments regarding problems with the proposed change to first-to-file. In layman's terms, the bill does NOT change the system to "first to file," but rather "first to disclose," because inventors can no longer swear behind NON-PATENT references unless those references are derived from the inventor--and the inventor must prove such derivation. I know the PTO would like to do away with interference proceedings. It would certainly be possible to do so with a true first-to-file system where third-party filing, rather than disclosure, operates as a bar to patentability, but that's not what the bill does in its current form.

Posted by Kevin Grierson on November 11, 2009 at 10:10 AM EST #

Dear Mr Kappos, In Europe we are most impressed by your contributions for making the USPTO more efficient by focusing on a dialogue between the inventor/attorney and the examiner. This electronic forum is a step in the same direction. Let us hope that these efforts will be an inspiration for the new president of the EPO (to be elected in December), thereby promoting the patent system as an incentive for technical development.

Posted by Stefan Hjelmqwist on November 11, 2009 at 10:17 AM EST #

Dear Director Kappos, I thank you for providing this blog, and for adding your own practical experience to the institutional knowledge of the PTO. I look forward to a fair consideration of the positions of all patent community members as the various reform proposals are discussed. Building on your recent comments at IPO and AIPLA, I note that many of the day to day frustrations we in the patent bar encounter seem to flow in part from a warping of Examiner behavior due to the count system and, perhaps, other pressures. In revamping the system, please consider allocating time/credit for the mundane yet necessary tasks the Examiners must perform. I’m certain that the examination process if comprehensively mapped, and that your office has identified the more productive techniques. I support a finer-grain approach to Examiner incentives that officially recognizes and encourages these techniques, and that rewards Examiners for extending the small courtesies that help get the job done efficiently. I do see significant positive changes of late, and I look forward to continued improvements in the process.

Posted by Eamon J. Wall on November 11, 2009 at 10:22 AM EST #

I would like to make a suggestion that may help the patent system accomplish our common goals. I think that everyone involved (inventor, attorney, examiner, …) should give an opinion on the invention. Is it useful? Is it new? Is it non-obvious? Is it well-disclosed? The opinion could be given on a simple form like an IDS, and could be relative to each of the other similar inventions listed on the IDS. The opinion could be reduced to a simple number (say +1 or +2 for positive answers).

Posted by Ray Grogan on November 11, 2009 at 11:14 AM EST #

If it is true that only .01% of applications would be affected by first to file, why even bother? There are then far more important issues for small entities to address: patents are too expensive, take to long to get, and are too expensive to enforce. FTF solves none of that. Let's focus on the most important things first and not get side tracked.

Posted by staff on November 11, 2009 at 11:56 AM EST #

In reply to David Boundy, that is what we have Provisional Patent Applications for. Most of the rest of the world has lived with an absolute novelty system and provisional filings for many years, and the sky has not fallen. From a constitutional point of view, provisional filing is preferable to the present first-to-invent system. Under the present system, third parties are usually given no notice of what date of invention the patentee may be able to prove, and thus cannot make an informed assessment of whether a competitor's patent is valid under ss 102(a) and (e). That violates the fundamental principle of the rule of law, that the law-abiding citizen is entitled to know in advance what he may and may not lawfully do.

Posted by Henry White on November 11, 2009 at 12:00 PM EST #

Dear Director Kappos, I commend you for supplying this public forum for the critical issue of patent reform. The two main issues that are said to necessitate a patent reform are the huge backlog of patent applications overwhelming the USPTO and the inconsistent quality of issued patents. A few evolutionary, straight forward measures can reduce the paralyzing, patent application backlog and improve the quality of issued patents with out throwing the baby (IP enforcement > IP value > a crucial element of the US economy…) with the water (structural and policy inefficiencies that could be relatively easy to fix) The USPTO can improve patent quality and diminish the backlog of existing patent applications by: - Hiring more, better trained patent examiners and paying them a better salary (this could be achieved by making sure all patent fee funds remain under the control of the USPTO and by receiving more federal [“stimulus”?] money) - introduce an escalating patent maintenance fee that will create a disincentive to maintain “bad” patents (that will also be controlled by more stringent examiner guidelines) and low value patents. - Additional tweaks to the patent system (like the ‘application exchange’ pilot that seems like an excellent efficiency enhancing measure) that can streamline the process of innovation with out intensifying the already imbalanced business landscape (manufacturers v. independent inventors/NME’s, post eBay, KSR & Quanta) Most of the suggested measures (besides better USPTO funding) in the patent reform act of 2009 have little to do with solving the two issues above and much more to do with the special interests of several multinational corporations that naturally (albeit shortsightedly and hypocritically) prefer a legal framework that will make the enforcement of patents ever more difficult thus effectively promoting wanton infringement, or to put it more bluntly, facilitate patent piracy. As a deeply concerned US citizen I am sad to be witnessing what will probably soon be the successful hijacking of one of the last pillars of strength supporting our once great nation. Our relatively effective (historically and in comparison to other patent systems) and balanced patent system is on the verge of deconstruction by the relentless efforts (since 2005) of several multinational corporations that are in the midst of literally buying a patent revolution a.k.a the “much needed patent reform”… The irony in this colossal battle (power grab) taking place between armies of lobbyists in DC is that some of the worlds biggest, iconic companies that enjoyed the robust protections of the US patent system in their earlier more vulnerable start up years, are now hypocritically trying to deconstruct that same system for their own one sided advantage by this extremely over reaching and one sided patent reform they are trying to push down our throats. Please read an illuminating and sobering text in this short document authored by Mark Blaxill and Ralph Eckardt of 3LP Advisors. http://www.patenthawk.com/blog_docs/The%20Innovation%20Imperative.pdf Yours truly, Ari A.

Posted by Ari Aronson on November 11, 2009 at 07:05 PM EST #

I am opposed to the first to file initiative because it does not reflect the reality of the first to conceive. It would be like saying you did not exist until you were delivered at the hospital, or in this case the patent office, when the truth is you existed since conception. Independent inventors have been under attack for some time now. They have been tricked by the publication requirement, which discloses their ideas, and charges them for it, under the auspices of scolding those who charge inventors and disclose their ideas without obtaining patents for them. They are harassed by salami-slicing divisional applications, and their fees are multiplied along with delays. They are subjected to issue and maintenance fees before they even have a chance to earn money from their inventions. Fees have been skyrocketing. Pro se inventors cannot make use of the accelerated application program because they do not have online access to the patent office search system, and would instead need to hire someone, unlike with applications to make special, which are no longer allowed. The courts allow assignees to have the rights of inventors, when the Constitution only guarantees exclusive rights to inventors. Employers are being allowed to "claim" assignment from inventors. Bureaucratic technicalities disfavor pro se inventors, and may cheat them of patents or thorough patent protection. The truth is that while independent inventors account for half of the most significant advancements, they account for only 8% of the patent applications. This means the patent office has to weed through 11.5 times more applications from non-independent inventors to patent the same number of significant advancements as for independent inventors. Thus, it is clear that the backlog is being cause by non-significant applications coming from non-independent inventors. Yet, this embarrassment is not being addressed because it impugns the reputations of academic and corporate worlds. The patent office needs to stop shining the outside of the cup when it comes to supporting independent inventors, and start scooping out all the junk that is on the inside. To reduce the backlog: 1) Scold assignees for the insignificance of the applications they are pursuing for their inventors. 2) A lot of the backlog would be reduced simply by allowing applicants to introduce new matter after a first office action. This could be called a continuation-in-progress application. The application would be assigned the effective filing date of the addition, yet the application would automatically retain the priority of the original matter. Incentives should exist for new matter additions that result in allowance. 3) Stop salami-slicing applications into divisionals.

Posted by Eurica Califorrniaa on November 11, 2009 at 08:33 PM EST #

If it is true that only .01% of applications would be affected by first to file, why even bother? There are then far more important issues for small entities to address: patents are too expensive, take to long to get, and are too expensive to enforce. FTF solves none of that. Let's focus on the most important things first and not get side tracked.

Posted by Bill Robinson on November 12, 2009 at 12:44 PM EST #

There should be a procedure that allows anyone (regardless of any litigation they may be involved in or even whether they may be using the patent) to file for a patent re-examination if they believe they have evidence that the patent should be invalidated (prior-art etc). When this happens, the re-exam would happen right away and would only examine the patent in the context of the submitted evidence (so if someone submits prior art for a patent, the re-exam only examines whether that prior art does or does not invalidate the patent) If the evidence is valid, the patent is immediately invalidated (meaning any ongoing litigation can be dropped) and the filer of the patent must pay money to the PTO for the re-exam. If the evidence is invalid, the filer of the evidence must pay money to the PTO. There should also be a "use it or loose it" clause for patents similar to that for trademarks. Any patent holder who has evidence that someone is violating their patent has to sue (or grant an explicit license). This would eliminate the situation that has happened in the past where patent holders sit on their hands and only sue after the product containing the violation has become popular/profitable/successful (the Unisys LZW patent issue that affected the GIF image format is an example of this). Such a restriction also eliminates the situation with such things as MPEG (where there is a lot of software out there that uses various MPEG patents but where the holders of those patents neither sue the creators of this software nor grant any kind of license for the patent (leaving it in limbo with the risk of being sued at anytime if the patent holder decides they want to)

Posted by Jonathan Wilson on November 13, 2009 at 12:54 AM EST #

The examiner work at home (hotel) program is hurting the quality of examination. Examiner's ability to confer with each other on key aspects of examination is reduced. Collaboration on areas of search, understanding of the invention, understanding of the rules, MPEP provisions, laws, case law, etc. occurs when examiners in similar art areas are nearby and available for discussion. Isolating examiners removes the ability and incentive to collaborate on these aspects and reduces quality. What is the future of this program? And how do you promote an examiner to supervisor when there has been little opportunity to observe their demeanor with others? How can one assess their management potential? Is hoteling good for their career?

Posted by Richard B. Lazarus on November 13, 2009 at 08:37 AM EST #

Hello Mr. Director, I am concerned that the post grant review of patents could be used by corporations to force new intellectual property into the public domain. The independent inventor does not have the resources to counter the big corporations that are challenging his new patent. This would bias the system against the independent inventor. Also, the USPTO should consider establishing an agreement with the U.S. Environmental Protection Agency where the EPA would pay some of the patent fees for independent inventors of green technologies. There also needs to be a study of the patent enforcement realities for independent inventors. Many independents cannot enforce their patents due to legal costs. Please establish better navigation for people wanting to make comments. I found out how accidentally after trying many ideas. Thank you for your attention and good luck with your work. Nickolaus E. Leggett, Inventor holding three U.S. Patents.

Posted by Nickolaus Leggett on November 13, 2009 at 09:32 AM EST #

Director Kappos - I also want to add my thanks to you for establishing this forum. As I noted in my blog today (www.patentabilityblog.com), with all of this outreach - and with all of the additional "help" you will be receiving, it will also be interesting to see what roles the Patent Public Advisory Committee (PPAC) and the Trademark Public Advisory Committee (TPAC) will play under your leadership. I'm glad your first public post highlighted one example - solar chargers - of what independent inventors create and how such innovation recently created 900 good jobs here in America. This category of invention was mentioned during your Senate confirmation hearing. During the hearing, Senator Specter asked you about expediting applications directed to helping the environment (e.g., green/clean tech). Applicants formerly could use a petition to make special to expedite examination of such applications, but the environment category went away when the PTO started the accelerated examination program (the same happened with anti-terrorism-related inventions). You stated that you would like to do more to expedite applications that would help the environment, but would provide more details later. This would be an ideal time to expedite green/clean tech and anti-terrorism related patent applications. First, the independent inventor community is very active in these areas. Second, the need for products in these areas has never been stronger. Third, the government and private investors are injecting billions of dollars into new research and development in these areas. A missing piece here is a patent system that provides timely, strong and cost-effective patents that keep innovations flowing through the R & D pipelines to consumers. To accomplish this, I urge you - at a minimum - to please restore the former categories for petitions to make special for expedited examination so applicants won’t have to trudge through the claim-limiting and estoppel-producing process that is accelerated examination. This is not too much to ask to help applicants who develop inventions that help the environment, fix our energy problems and keep crazy people from blowing us up. I look forward to working with you to promote the progress of innovation at this critical time for the IP community and the country as a whole and I wish you all the best. Brian Fletcher

Posted by Brian Fletcher on November 13, 2009 at 04:08 PM EST #

The UK has a new system that some of us would like. Opinions that are not binding, but cheap and quick. And these earn a little money for the patent office. Source: patnews@ns1.patenting-art.com 11/16/09 “…a recent initiative of the UK Intellectual Property Office (the new name of the Patent Office). For only 200 pounds (about US300) anyone can obtain a considered view on an infringement dispute from a senior Examiner within 3 months….” Above I suggested asking inventors, attorneys, and examiners to give an opinion of prior art being cited in an application. Taking the UK approach, we could make it something the inventor could request and pay for, at a price (say $100) per reference. And like the UK system, these opinions would not be binding relative to patentability. So the examiner could opine that the current invention was overall new relevant to reference A. In spite of this there could still be the usual small problems with novelty.

Posted by Ray Grogan on November 16, 2009 at 09:09 PM EST #

Regarding director Kappos’ references to the reform bills minimal changes to the process for inventorship determination that we now use, the reality is that the system is in a state of awarding patents into the incorrect name 100% of the time or nearly 100% of the time in instances where valuable patents are at issue. These patents of course are the only ones that are worth filing and the only ones that will result in new products coming onto the market. The fairly tale of simultaneous non-collaborative invention needs to be realized and be the subject of necessary legislation changes in addition to the 30 or 40 other methods that inventors are cheated out of their inventions and that are not dealt with in the present legislation. See our website to see all of the needed changes and why the present proposals are absolutely despicable. The fear of losing an invention to the deficiencies of the present and proposed system of inventorship determination represent an extreme detriment to human advancement through innovation and needs to be corrected immediately. Also civil rights violations of inventors must be corrected so they can breathe free as our other citizens do. http://inventingconsultantcreator.net/MRTPatentLegislationChanges.htm

Posted by Michael R. Thomas on November 17, 2009 at 09:47 AM EST #

Thanks to everyone who has commented so far. I really appreciate everyone's thoughtful feedback and opinions on these issues. I wanted to respond to the major themes I've seen emerging in the comments so far. I won't be able to respond to every comment made on the blog, but I’ll try to address topics and themes that generate the most discussion. One issue that was raised was whether we were correctly assessing the impact of a switch from first to invent to first to file. First, we are firmly committed to ensuring a twelve month grace period for inventors to swear behind both their publications and works derived from their disclosures. Many first to file countries already have grace periods and the US would be counted among those providing the longest, thereby retaining a fair and flexible patent system. Also, while we agree that 131 affidavit practice merits consideration, we feel that interference practice most directly maps the adjudication of first to invent issues. 1.131 affidavits are filed for a number of reasons. In some cases, swearing behind a reference is a strategic prosecution decision, preferable to arguing the merits of novelty or obviousness. As another example, the reference may have been derived from the applicant's own work or publication. Moreover, under the proposed FITF system, where a first filed applicant derived his invention from a later-filed applicant, a derivation proceeding may be used to avoid granting the patent to the deriving first filer. As currently presented in patent reform, the first inventor to file system will impact very few applicants and applications and will be a critical step toward global patent law harmonization.

Posted by David Kappos on November 19, 2009 at 11:37 AM EST #

Director Kappos, I also would like to thank you for providing this forum. Please consider implementing procedures for accelerating ex parte reexamination proceedings. In some ex parte proceedings, the time from a patentee's response to a non-final action to the issuance of a final rejection is 5-6 months, and sometimes longer. Since ex parte reexamination proceedings are handled with special dispatch, I suggest that the Office aim to reduce this period to 3 months. Also, due to the backlog at the Board of Patent Appeals & Interferences, decisions in an appeal in an ex parte reexamination proceeding may take 1-2 years. I suggest that the Office aim to have a Board decision within one year of the filing of a notice of appeal. Thank you for your consideration.

Posted by Anonymous on November 27, 2009 at 11:06 AM EST #

Dear Director Kappos, thanks for providing this informational blog, and for adding your own practical experience to the institutional knowledge of the PTO. I look forward to a fair consideration of the positions of all patent community members as the various reform proposals are discussed.

Posted by Jennifer Hartland on December 02, 2009 at 03:01 PM EST #

If it is factual that only .01% of applications would be affected by first to file, why even bother and take it as a problem? There are then far more important issues for small entities to address: patents are too expensive, take to long to get, and are too expensive to enforce. FTF solves none of that. Let's focus on the most important things first and not get side tracked.

Posted by Jessica Sherman on December 02, 2009 at 03:26 PM EST #

In regards to the backlog, one can either pass poor patents quickly or return poor patents quickly. Writing is often not the inventor's strong point, but some patents are, frankly, irreadable. It is hard to believe the Examiner actually understood what s/he has passed. Patents that are knock-offs of Japanese patents, for example, can read like "mock English". It is impossible to determine what has been patented. Perhaps examiners are reluctanct to admit they don't understand a patent. A Japanese knock-off may be passed by assuming the Japanese Office did the hard part. Whatever the origin of a patent, it does no one a favor to pass a patent unless it is clear what has been patented. If after x minutes/hours Examiner A can't figure it out, pass it to a co-worker and perhaps y minutes/hours later, pass it back to the inventor. Require quality in the first instance.

Posted by Robert A. Baker on December 07, 2009 at 07:40 PM EST #

Director Kappos states that there is no risk of someone who learns of your invention beating you the patent office because they’re not an inventor. This of course is another fairy tale. All off the valuable patents are actually stolen using a large variety of methods including these ones and the only way to change these dismal statistics is to implement new inventorship determination methods as I have proposed in my new legislation. Obviously the one year grace period must go in a first-to-file system. It’s an unreasonable fairy tale to believe that someone is going to start a project in their garage and expect to maintain secrecy indefinitely without filing first before beginning R&D. This is the only creditable way of expecting patent granting on either a garage project or an industrial product. Everything else is a patent theft granting. The only way a non-first filer claim should be granted is in the instance of espionage or accidental divulgement and in this instance, the initial disclosure document program needs to be reinstated. This filing should be allowed in hand writing and be required to be recorded or post marked within three days of each other in order to establish the inventorship dispute. Also, the cost should only be $65.00 and allowed to be used with the existing EFS system.

Posted by Michael R. Thomas Inventing Consultant on December 14, 2009 at 11:00 AM EST #

Obviously the one year grace period must go in a first-to-file system. It’s an unreasonable fairy tale to believe that someone is going to start a project in their garage and expect to maintain secrecy indefinitely without filing first before beginning R&D. This is the only creditable way of expecting patent granting on either a garage project or an industrial product. Everything else is a patent theft granting. The only way a non-first filer claim should be granted is in the instance of espionage or accidental divulgement and in this instance, http://www.usa-jordan.com

Posted by Air Jordan Shoes on January 08, 2010 at 10:27 PM EST #

Director Kappos, I am very pleased to observe from the actions you have taken that the problems that exist in the prosecution of a patent application are being addressed. It is obvious that you recognize that the system has flaws which must be corrected in order to restore the entruprenurial spirit of inventors, so necessary to the future of our economy. I sincerely hope that you are able to implement regulations and procedures that will incent the processor to clearly identify the mandates sufficient to result in resolution and/or issuance - rejection of the application. My observation has been that peacemeal comments that could be resolved with a telephone call are stretched out 90 or more days creating expensive fees and delaying the process of conclusion. I am watching the actions you take with much optimism and hope. Ken Schena

Posted by Kenneth R. Schena on January 23, 2010 at 12:53 PM EST #

Sir: please be advised independent inventor(s?) such as myself, who produce new inventions/technology that is of high value respecting military usefuleness are not being notified or paid for the taking of such when governmental entites utilize such for the benefit of involved contractors and us gov benefit; expecially as relates to the taking of classified level work product. Ie, civ 06 114, us dist ct ed dist of ok-- one instance of 30 yr taking/monitoring/control/cover-up of theft of inventor's work product for use in secret us gov programs. s. carl r. martin

Posted by carl r martin on February 02, 2010 at 02:26 PM EST #

Director Kappos, With the renewed interest in increasing the Patent Examiner Corps, is there serious consideration being given to what the Office calls "Hoteling", and in particular extending this option to new hires with patent prosecution experience? Also, is the Office considering establishing satellites in one or more locations around the country? I believe the pool of candidates will increase significantly if either or both of the above were adopted.

Posted by Dipak Shah on February 18, 2010 at 02:29 PM EST #

Director Kappos. Regarding backlog, has PTO considered: 1. Establishing quasi-governmental institutions to provide examination functions. 2. Extending offers to qualified (experienced!!) US patent attorneys able to work from anywhere in the world. 3. Partnering with small boutique patent firms to assist with examination functions, in exchange for agreeing to not represent clients before the PTO. 4. Opening offices in more desirable cities, or even overseas, to attract experienced (potentially retired) US patent attorneys.

Posted by Retired Patent Attorney on March 15, 2010 at 09:39 AM EDT #

director kappos to get to the simple point your fine efforts and hard work in expediting patents for individuals and small businesses will not improve the conditions or economy of the usa. all of these wonderful new inventions who have acquired patents will be made in china or some other place but unfortunately not in the usa .there will be no increase in jobs no opening of the abandonded factories no made in the usa .what are you going to say on thursday that will give the citizens of the usa hope for the future? right now it does not look too good we're going downhill. bob logan someone who believes in mr david kappos

Posted by robert logan on May 24, 2010 at 08:01 PM EDT #

Thanks for giving this informative and useful article which relate to the jobs and the entire team,it USPTO team is every bit as smart, intense, thoughtful, passionate, and hard-working ,Thanks.

Posted by speed reading on June 19, 2010 at 04:57 AM EDT #

If it is at all possible for an invention to be stolen, one would think that the marketing, publishing, and selling of the product one year before applying for a patent should be of no good as a rule. I continue to invent because it is a talent, I do not want to give that up. With using a computer to keep order of my inventions, I am now at a point where I wonder if I am going to be a slave to my work due to hackers.

Posted by David Kostuch on August 09, 2010 at 01:26 PM EDT #

Director Kappos, I just wanted to express my appreciation for your obvious ongoing efforts and the beaucratic nightmare you face. What a challenge! Keep leaning forward, sir! Very Respectfully, William B. Doyle, http://www.wbdoyle.com/

Posted by William B. Doyle on August 22, 2010 at 09:08 AM EDT #

Director Kappos, what you and your staff do for entrepreneurs is much appreciated. I find myself going to the Uspto.gov site a lot more these days. Now that we are living in a society where ideas and intellectual property often times have far greater value than "hard assets", an office such as yours and a user-friendly site such as that of Uspto.gov increases greatly in importance. Regards, Paul Morin http://www.companyfounder.com.

Posted by Paul Morin on September 19, 2010 at 03:46 PM EDT #

Director, Thanks for giving us the opportunity to comment. We are plant breeders who fiile 15-20 pro sea plant patents each year. The forms for the applications perplex us. Many of the forms that we can download as pdfs from the USPTO have very short duration. For instance, PTO/SB/03 (05-08) Approved for use through 09/30/2010. OMB 0651-0032 is already expired. This form is the PLANT PATENT APPLICATION (35 U.S.C.DECLARATION (37 CFR 1.63) form. The previous version of this form wasPTO/SB/03 (07-07)Approved for use through 06/30/2010. OMB 0651-0032. Usually, we can see a difference between an older form and its replacement. It may seem like a small matter, however we often need to update a number of the forms each time we make an application, as part of the forms have expired. We understand that if we use an outdated form, we might have a portion or all of our application rejected. Please have the persons responsible for these forms make them with longer durations.

Posted by Gary Pellett on November 27, 2010 at 05:40 PM EST #

Director Kappos, As what you have said, you and your staff are working to ensure the balance and fairness of post-grant review. I would just like to add that your ongoing efforts are much appreciated. Thank you for this very informative forum that you have provided. Best regards, Philip Anderson, http://www.jaspercontractorsinc.com

Posted by Philip Anderson on November 30, 2010 at 07:30 AM EST #

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