Change for the Better in U. S. Patent & Trademark Office

Under Secretary of Commerce and U. S. Patent & Trademark Office Director, David J. Kappos, recently visited San Diego to meet with the San Diego Inventors Forum and the San Diego Intellectual Property Law Association as part of his travels around the country to inform people of his mission to improve the U. S. Patent and Trademark Office (USPTO).

Independent inventors (individuals who are not part of corporations) are anxiously watching the outcome of the proposed Patent Reform Act of 2010, Senate Bill, S515, in which the new process would be a “First to File” system in contrast to the current “First to Invent” system.  The concern of independent inventors is that this bill would favor large companies who can afford to file applications for patents before vetting the new technology because it would alter patent law to effectively kill the grace period by conditioning it on early disclosure.  In other words, an inventor would have to publicly disclose the invention in order to trigger a grace period.  (

According to Director Kappos, the U. S. is already operating as a “first to file” patent system because in 2007, the total number of interference cases for all applications was seven, and only one interference claim involving a small or medium sized entity was decided based on priority alone – out of 441,637 patent granting decisions.  Interference cases are where two inventors file their patents nearly simultaneously and rely on the first to invent criteria during interference proceedings.

The proposed bill would create a new micro-entity category that would allow fees to be reduced by 75 percent for inventors with five or fewer employees and fewer than five prior patent applications.  The USPTO currently offers a 50 percent discount for small entities (under 500 employees) in virtually every fee category, which is further reduced by another 50 percent for small entities and independent inventors who use the electronic filing system.  The proposed legislation would also strengthen patent rights and lower litigation costs in patent disputes.

Since Mr. Kappos was appointed director last year, the USPTO added a 800 number “hot line” for inventors, and they are close to setting up a tracking “dash board” that will let inventors know when their application will have its first office action.  They changed hiring practices from hiring new college graduates to hiring people who have had some previous experience in industry.  They are hiring 300 more patent examiners this year and plan to hire 1,000 more in the next two years to help reduce the backlog of 750,000 patent applications.  They have also been aggressively providing training to the current 7,000 patent examiners.

An Ombudsman Pilot Program has been set up to assist applicants with issues that arise during the patent application process.  When there is a breakdown in the normal process, the ombudsman can assist in getting the process back on track.  Last fall, the Office instituted a pilot program designed specifically for the independent inventor, “Product Exchange,” which gives the opportunity to select one application of critical importance to an inventor that would receive expedited review of that application in exchange for permission to stop working on another application that is no longer important to the inventor.

One of the few concrete things the Obama administration has done in the last year to benefit the American economy is the appointment of David Kappos by Secretary of Commerce Gates.  Director Kappos is a former engineer and patent attorney who strongly believes that if our country is going to successfully compete in the global economy, it is going to be on the” back of innovation.”   Mr. Kappos said that the USPTO is committed to providing America’s innovators with the tools they need to put their ideas to work, which means providing high quality patents in a timely manner and giving inventions reliable Intellectual Property protection.  His goal is to help inventors bring their goods and services to market, to build economic opportunity, and maintain America’s place as the innovation capital of the world.  I share the same belief that ingenuity and innovation is the key to saving America’s manufacturing industry, and the changes already made and planned in the USPTO will help achieve this goal.

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