Independent Inventors Conference
David Kappos
Independent Inventors Conference
November 5th, 2009
USPTO, Madison East Auditorium
Good morning ladies and gentlemen and welcome!
This is our 14th Annual Independent Inventors Conference and it’s my great privilege to address you today.
Thank you all for being here. Thanks to the National Inventors Hall of Fame, our great partner in so many endeavors, and co-sponsor of this event.
Thank you to Louis Foreman, Michael Lee, Thom Rhue, and Jay Hedley for their remarks this morning.
And finally, thanks to the AIPLA and IPO for sponsoring our networking reception this evening.
We, as an IP community, have recently suffered a major loss. Mr. Robert Rines, inventor, composer, teacher, and founder of the Franklin Pierce Law Center, was a great American innovator. Bob is survived by his wife Joanne Hayes Rines. As many of you know, Joanne is the founder and former publisher of Inventors Digest Magazine. She has always been a great supporter of, and advocate for, the independent inventor community. To Joanne, Bob’s family, and his many friends, let me express our deep sympathy on behalf of all of us at the USPTO.
A few weeks ago I had the opportunity to award the 600,000th Design Patent. The award marks a significant milestone for both the USPTO and the inventor community.
The design patent chosen for the ceremony represented a wonderful invention—the “go-be solar charger.” The charger is pretty cool—it is a briefcase-sized solar panel that produces energy which can be used to charge a wide range of electronic devices.
But it wasn’t just the invention that stuck with me. It was the man behind the machine.
Mr. Robert Workmen may not have known it, but for a moment, he personified everything the USPTO strives to be. Mr. Workmen had the idea for the “go-be solar charger” while doing aid work in the Democratic Republic of the Congo; the constant power shortages frustrated his teams’ ability to be productive.
His invention was born of necessity. But as Mr. Workmen reminded us, necessity alone does not beget sustainability. Only economic incentive can do that.
Mr. Workmen’s idea—and the company Mr. Workmen has built around it—are now responsible for 900 jobs right here in the United States.
Wherever American innovation occurs, its value can only be measured as a function of its sustainability, its impact on humanity, and its economic success.
That’s where we at the USPTO come in.
Our goal is to provide members of the innovation community with the tools they need to put their ideas to work, and to ensure that independent inventors receive strong IP protection for their inventions. Our goal is to help bring your innovative goods and services to market; to build economic opportunity; and to maintain America’s place as the innovation capitol of the world.
The USPTO is committed to providing the right, balanced incentives. Whether large or small, independent or corporate, flush with resources or searching for capital: We’ll provide it to all who are entitled to the protection of the law.
But the truth is; the USPTO is struggling; it’s not working efficiently for inventors—corporate or independent. When the USPTO doesn’t work, ideas—whether born on the high plains of Africa, a garage in Hoboken, a research facility in Raleigh or a dorm room in Berkeley—falter.
We need to – and we are going to fix the system. But to do so, we need your partnership, your patience, and your support. I can’t tell you we have a silver-bullet; but, what I can promise is we’re going to be open and honest with you and that you’ll have access to information and to the senior leadership at the USPTO -- including myself.
The ambitious reforms we envision won’t be possible without collaboration. We are here to work with you and to see to it that your needs are met.
I know many of you are concerned with the patent reform effort underway in Congress.
I’m here to address some of your concerns about patent reform – and I am here to listen to and consider your ideas on how to make the system work. And I want you to know that Secretary Locke has specifically asked me to arrange for him to hear from independent inventors and universities on a sustained basis and we are already working on doing that.
We are committed to ensuring a level playing field for all those who seek the protection the law provides as an incentive to foster and promote innovation.
The challenges ahead are extraordinary. And I know that many of you are concerned with the prospect of rising fees, pendency, and the potential changes to our post-grant review and 1st to invent systems.
I am grateful to our partners in this struggle—those of you in the room—and independent inventors like Robert Rines and Robert Workmen. It’s my mission to create a USPTO worthy of serving America’s greatest natural resource—inventors and innovators like you.
WHAT WE DO
To that end, I am committed to redoubling our efforts to reach out to independent inventors. But here are a few of the things we are already doing:
The Inventor Assistance Program fosters innovation and improves inventor access to Intellectual Property rights.
The hard work of the USPTO employees who run the program has led to major successes in the past years.
The program reaches out to inventors through workshops and seminars at conferences and universities around the country. In fact, USPTO representatives have visited 74 universities and have conducted or been involved with 7 seminars during the past 12 months.
We’re also expanding the ways we reach out to the small and independent inventor community. We’ve revamped our website and are now offering a number of on-line services.
We offer on-line chats to troubleshoot and take questions about the patent process. A recent on-line chat session drew participation from over 300 independent inventors and small businesses.
We’re posting training videos on our website to help inventors through the sometimes complex patent process and to reduce their attorney’s fees.
We administer an independent inventor email box through which you can submit questions to USPTO experts.
We’re looking ahead to the future too.
We’re working on a program designed to assist qualifying independent inventors in finding attorneys to provide pro-bono legal services.
We’re also looking into beginning a similar program designed to leverage major university expertise in IP law to the benefit of independent inventors.
The attorneys and universities that will work on these projects understand. They get that the way forward for America centers on innovation. They get that the way forward for innovation features independent inventors. That’s how this great nation was built, and it’s how this great nation will lead in the 21st Century.
PATENT REFORM
I am well aware that some of you have reservations about the bill currently being crafted in Congress. This legislation, which the Administration supports, necessarily entails a series of compromises on many issues.
I know there is specific concern related to some provisions, particularly in the area of fees and fee setting, post-grant review, and first inventor to file.
FEES
Let’s start with fees.
We all know that the economy is struggling and I know many of you are worried about fee hikes. I’m not going to promise you that fees aren’t going to go up.
The USPTO is entirely funded by the fees it collects and with the recession has come a significant decline in revenue. We’re currently facing a 200 million dollar shortfall which means we’ve had to freeze hiring—which means our workforce is actually declining in size.
We’ll likely have to increase fees to make up for the shortfall. But, we’re going to do everything we can to deflect those costs from independent inventors.
As you know, we currently offer a 50% discount for independent inventors in virtually every fee category.
We offer another 50% reduction on top of that for independent inventors who make use of our electronic filing system.
We’re currently looking at ways of increasing those savings by granting further discounts to inventors that qualify as micro-entities.
PENDENCY
Still, when an independent inventor spends their hard earned money on filing a patent, that inventor should expect a return on that investment, and they should have it in a reasonable timeframe. Right now, with the backlog—of nearly 750,000 patent applications—the timeframe is unacceptable.
The backlog stifles innovation and restricts the growth of our economy.
President Obama and Commerce Secretary Locke understand this. That’s why Secretary Locke directed me and the USPTO to reduce patent pendency on an aggressive schedule.
We’re working to improve the pendency for independent inventors in several ways—
We launched a “pre-first action interview program”—the program allows inventors to discuss their invention with examiners at the very beginning of the patent application process. This allows our examiners an opportunity to better understand the prior art and the inventor to better understand the process right at the beginning.
Better understanding at the beginning of the process reduces the total time and cost it takes to approve a patent application. This is an applicant initiated procedure though; so if you want to save time and money, invest in these types of programs. If you do, we’ll invest in them as well.
For those of you who file applications internationally, The Patent Prosecution Highway program can be a key vehicle to cut costs and reduce pendency. This program is designed to increase information sharing between the USPTO and foreign patent offices and speed applications through the process. The PPH is another applicant initiated program and in that regard, we need your help; we need you to initiate! If we can work together to bring PPH to scale, we can reduce pendency across the board.
We’re working in other ways too.
We revamped the examiner credit system—known as the count system—to ensure that examiners receive more time for a first action on the merits, and time for examiner-initiated interviews. The new system will allow examiners to get it right the first time, helping all inventors, including independent inventors to get their patent applications processed more efficiently.
We are conducting a top down administrative review of all strategic priorities in order to reengineer the patent examination process High on our list of priorities are the protection and encouragement of innovation by independent inventors.
Pending funding, we will make a priority of modernizing our IT infrastructure to enable more rapid examination and ensure quicker and more effective prior art searches.
I’m also pleased to announce a new initiative today. In the past few weeks, we’ve worked with our patent examiner union, POPA, to design a program that is specifically designed to accelerate the patent process for independent inventors. This backlog reduction pilot project will be made available only to small and medium-seized entities and will give you the opportunity to receive special, accelerated status for a new application if you abandon a pending, unexamined application.
The program allows independent inventors and innovators to advance an application in the queue by swapping out one they are willing to abandon. You are in a better position to help prioritize our workload—so we want you to tell us what matters most to you. We believe this gives you the option to accelerate protection for your innovation—while also reducing the overall backlog.
PATENT REFORM II
Moving again to patent reform legislation. I understand the concerns many independent inventors have about certain provisions in Senate bill S. 515. And I understand your concerns about the potential for additional cost and additional delay in the post-grant review process. Nobody likes post-grant challenges – not IBM, not Microsoft, not the garage inventor, not you. But I want to take this opportunity to engage you in a discussion about those changes – - and to share with you the work I and my USPTO colleagues have been doing with our colleagues in the House and Senate to attempt to modify those provisions to address some of your concerns.
Right now, as you know, the threshold to begin an action challenging the validity of a patent is too low. That opens the process to possible abuse, with challenges lodged to tie patents up rather than to challenge improperly granted patents.
But, by the same token, there needs to be some process for challenging patents that are overly broad or allowed without considering all of the relevant prior art.
So we’re working with Congress to promote a fair, balanced, timely and cost-effective post-grant process—and to ensure the legislation will not permit serial challenges or harassment by any one party. The bar has to be high to get into the system.
I agree that an estoppel standard that allows an applicant for post-grant review to raise issues serially is too low. We are working with congressional leaders to put a burden on the applicant to raise issues in the first round while keeping post-grant review as simple and efficient as possible.
Please bear in mind that we already have a post-grant review process – it’s called litigation. It is expensive and it is time-consuming and if your patent is challenged in court, you know what that means for your ability to secure capital and bring your product to market.
The advantage of the post-grant review process being advanced in the legislation is that it is designed to be an alternative to litigation. Nobody likes post-grant challenges to their inventions – but you should take some comfort in the fact that a short post-grant review process will give you a rock solid blue-ribbon patent that will be very difficult to challenge in court.
So hopefully the new process will keep you out of the courts and prevent lengthy and costly litigation, while actually increasing the value and enforceability of your patents.
1ST to FILE
I’d like to address first inventor to file changes as well. The independent inventor community will benefit from a first inventor to file system. There is a big misconception regarding first inventor to file and I want to clear it up.
The new process isn’t a “first to file” system, it’s the “first inventor to file” system.
So there is no risk of someone who learns about your invention being able to beat you to the patent office; because they’re not an inventor. As you know, any filer has to sign an oath and declaration under penalty of criminal sanctions.
This leaves only the issue of simultaneous, non-collaborative invention…what we call interferences.
The chances that a patent will be subject to an interference based on a 1st to invent claim—that’s our current system—is .01%. In 2007—the most recent year for which we have statistics—the total number of interference cases for all applicants, of all sizes that were decided based on a priority claim was 7!
That means we already essentially have a first inventor to file system.
Moreover, of those 7 cases, only one case involved a small or medium sized entity; your chances of being impacted by this change are 1 in 441,637. Those are lightning strike level odds, folks!
So summing up here, I want you to know that I support the patent reform efforts underway in Congress because I believe they will improve the patent system for everyone’s benefit – and that means biotech firms and large tech firms; and independent inventors like you.
CONCLUSION
We can move forward together, and someday maybe one of you sitting here will join such independent inventors as Thomas Edison, Alexander Graham Bell, Steve Wozniak and Les Paul in the National Inventors Hall of Fame.
Our vision for the USPTO prominently features the innovation of the independent inventor community. Ideas born from the community and cultivated under the protection of the USPTO represent the future of the American economy.
Today, someone in this room—an American on a lonely continent—or maybe a couple of kids in a garage in Alexandria will have an idea.
We at the USPTO will be here working with everything we have to protect that idea, to foster innovation, to build the US economy and to create American jobs.
Thank you all for being here today. Thank you for making my job the best job in America. Thank you for your ingenuity and your leadership. Thank you also for being engines of our economy and the vanguard of American economic competitiveness and growth.
