His operation is understaffed. He’s facing an unprecedented surge in customer demand. He’s under the gun to deliver higher-quality services faster than ever. But if Jon Dudas is worried, he doesn’t let it show.
Inside his tenth-story corner office, the director of the United States Patent and Trademark Office settles into a black sofa. Over his shoulder unfolds a view of the USPTO’s Silicon Valley-like campus, spread over some fifteen acres just outside Washington, D.C.
On a grassy knoll below, three jugglers whip bowling pins between them, while another group plays bocce ball. A mix of the agency’s 10,000 patent examiners, researchers and other employees shuttle among five brick-and-pane buildings. Still others grind it out on stationary bikes at the USPTO’s high-end fitness center.
Yet the sylvan scene belies a sense of urgency at the world’s largest patent operation.
“We have to get more productive,” says Dudas, a 38-year-old Beltway insider. He quickly notes that it’s a two-way street. “We have to get more (and) better information from applicants.”
And there’s the rub. The USPTO is a government agency struggling to keep pace amid rapidly changing technology and a hyper-global marketplace.
Its biggest challenge: Reducing a backlog of patent applications while maintaining examination quality.
Patents erect monopolies around original ideas for 20 years, giving inventors
time to profit from their products. They protect intellectual property and help fuel innovation. But they take a long time to get, about 31 months on average. There are 675,000 pending applications. The agency expects to hit a record 800,000 by year-end.
Under Dudas, the USPTO has launched a variety of initiatives to help deal with the unprecedented demand for patents. Among them:
• Embarked on a hiring spree, with a goal of luring about 1,200 new patent examiners a year over the next five years.
• Instituted a training academy to teach batches of new examiners at once, replacing the labor intensive and time consuming one-on-one mentor system in place for decades.
• Ramped up the agency’s electronic filing and processing system, a user-friendly and fast Web-based way to submit applications.
• Created an accelerated patent review regimen, designed to shave up to 75 percent of the time needed to grant a patent – in exchange for much more up-front disclosure from applicants.
“We have to change the system to have the highest efficiency,” Dudas says.
Part of that change includes patent reform. Among the more controversial proposals kicking around Capitol Hill are “first-to-file” provisions. Europe and Asia grant patents to the first applicants to file. Multinational corporations tend to like first-to-file. By aligning the system with Europe and Japan, these companies could cut costs with standardized, universal forms and procedures.
In the United States, it’s always been first-to-invent. The U.S. system gives inventors a codified way to challenge patents and make a case that they had the idea first. The United States remains the only major country to run things this way. The idea of changing to a Euro-style system generates hot debate. But it’s more than just an us vs. them thing.
Economist Pat Choate, author of Hot Property: The Stealing of Ideas in an Age of Globalization, and H. Ross Perot’s vice presidential running mate in 1996, pulls no punches when it comes to first-to-file.
“In the European system, they wind up quite literally with three times the number of challenges” compared with the U.S. system, Choate told Inventors Digest. “You have people rush to file and the application is not complete. You wind up with a tremendous amount of conflict.”
Such a system pits corporate interests against each other, as well as smaller inventors, who can’t afford to keep pace with corporate filers. First-to-invent, on the other hand, has served the nation – and the world – well, Choate argues, drawing an analogy to the auto industry. “It’s like being Toyota and saying, ‘I want to be like Fiat so we can harmonize.’”
Dudas says he hasn’t made up his mind whether changing to first-to-file is a good thing. The Administration hasn’t taken a formal position.
“We’re quite open to the arguments,” says the globetrotting Dudas. He believes first-to-file is “neutral” to small and large inventors, and changing the system could “harmonize” it with the rest of the developed world.
“We shouldn’t change our law because other countries do it that way,” he says. “But to the extent other country’s adopt first-to-file, it keeps things standardized.”
Moreover, he says in any system, some of the responsibility for quality
patents rests on those who file. The better the information from the applicant
up front, the less time an examiner spends researching prior art and determining whether the idea has overly broad claims. He grouses about some corporate seminars that show tricks on how to submit the least amount of information and other ways to game the system. “The patent system,” Dudas declares, “is geared for disclosure.”
Christian Laforgia fully appreciates where Dudas is coming from. As a patent
examiner for more than four years,Laforgia sees first-hand how failure to fully disclose information or submitting wildly broad claims bogs down the process. In all, examiners reject about 83 percent of patents at the first stage of the application process.
On large, dual-monitors, Laforgia calls up a patent application for a digital rights management technology. He stifles a laugh when asked if the application
will get the green light at this stage.
“Very few get passed the first time around,” he says.
Inside his modern, spartan office – a small New York Yankees photo is the only thing adorning the walls – Laforgia will read the application, check for mistakes, absorb the invention’s scope and nuance, and evaluate whether the proposed idea is worthy of a patent. As an examiner, he employs a blend of skills, including engineer, editor, and investigator. The Web has armed him with what amounts to a digital magnifying glass. From his desk he has access to a vast arsenal of databases from which to cull information, including those from Europe and Japan. “And I definitely Google,” he says.
Some complain that the USPTO grants too many bogus patents. Others say the agency takes too long to grant them.
“We’re not rejection officers,” Laforgia says. “We want to grant patents that are worthy. But we also have to protect existing patents.”
This sort of damned-if-you-do, damned-if-you-don’t conundrum played out in April when the U.S. Supreme Court ruled in an obscure dispute between KSR International and Teleflex over vehicle gas-pedal designs. The court sided with KSR, ruling that Peter Jones Teleflex’s pedals were obvious and unworthy of patent status.
Here’s Supreme Court Justice Anthony Kennedy:
“We build and create by bringing to the tangible and palpable reality around us new works based on instinct, simple logic, ordinary inferences, extraordinary ideas, and sometimes even genius. These advances, once part of our shared knowledge, define a new threshold from which innovation starts once more. And as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise, patents might stifle, rather than promote, the progress of useful arts.”
The court’s ruling in KSR v. Teleflex creates new uncertainty about whether existing patents covering a broad range of technologies might be invalidated as being too similar to previous inventions, Rachel Krevans, intellectual property lawyer and partner at the San Francisco office of Morrison & Foerster LLP, said in a press release.
The ruling was among the latest in a string of recent decisions overturning Federal Circuit patent decisions, and a rejection of the Federal Circuit’s longstanding obviousness test in favor of a broader standard.
The Business Software Alliance, which includes Adobe Systems, Cisco Systems and Microsoft, said in a news release: “There will be a better opportunity for examiners to weed out patents or applications that are not worthy of getting patents, and it will go a long way toward re-establishing patent quality.”
Others were wary.
Robert Greene Sterne, founding director of the patent law firm Sterne Kessler Goldstein & Fox, said in a conference call with reporters: “I think it’s very fair to say that it’s going to be harder, more costly and more time-consuming for inventors to obtain U.S. patents in all areas of technology, and particularly in areas with predictable art, as we call them, such as mechanical inventions and software and methods of doing business.”
Dudas has his own take. “The decision gives our examiners more flexibility to use their considerable technical skills to reject obvious changes to existing technology.”
It’s unclear exactly how the KSR v. Teleflex ruling will impact the USPTO and its backlog of applications. As Dudas’s team digests the court’s decision, the director remains committed to the staffing, training and technological initiatives he’s launched, as well as to patent reform.
“Patents need to be strong,” he says. “Strong patents have benefited society and preserved the nation’s strength.”
That’s a position on which even his critics agree. Yes, there’s a backlog of patent applications. To be sure, many technology patents may be of dubious quality. Nonetheless, U.S. patents offer the world’s strongest legal protection of intellectual property. They’re the easiest to enforce. And they’re cheaper to get and keep than patents in Europe or Japan.
Economist, author and USPTO gadfly Choate doesn’t hesitate when asked about the U.S. patent system.
“It’s flawed,” he says. “But it’s the best there is. The very best.”
