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Kappos heading the PTO in the right direction

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The new head of the patent office is taking steps to reduce the backlog and improve the efficiency of the government agency, according to local intellectual property attorneys.

He's also reaching out to both examiners and petitioners in hopes that increased communication will lead to better results.

David Kappos, who became director the U.S. Patent & Trademark Office last August, has more than 20 years of experience in the industry as a former assistant general counsel for IBM (NYSE: IBM).

"I'm actually very optimistic about him, given his practical experience before taking this new opportunity," said Mitchell Brook, a San Diego patent attorney and partner with Luce, Forward, Hamilton & Scripps. "It looks like he wants to address the core problem, which is the backlog at the office, in a practical way."

Shortly after he started, Kappos dropped the patent office's proposed rule changes, which would have limited the number of claims in a patent application and the number of continuations allowed. The proposed changes were very unpopular and were the subject of litigation.

"You can see the dichotomy between the rules they tried to force through a few years ago and now the reforms that Kappos is doing," said Shane Hunter, a partner and IP adviser with Townsend and Townsend and Crew in San Diego. "Before it was essentially the patent office (saying), 'Okay, you can do our job now. We're forcing everything to you.'

"Now he's finally looking internally, and saying, 'I'm going to run this more like a business."

One of the noteworthy reforms Kappos has implemented is a new "count" system, which is the patent office's way of objectively measuring the productivity of its examiners. Examiners are given a certain amount of points -- or counts -- for each case they review.

Previously, examiners were given the same amount of credit for reviewing old cases -- applicants that make a request for continued examination (RCE) -- as they were for starting new ones. Now, under Kappos' system, examiners are given more credit for reviewing new cases, creating an incentive for examiners to move applications through the process.

"I think he's a real 'out of the box' thinker on these things," said Tom Franklin, a San Diego IP partner with Townsend and Townsend and Crew. "He's trying to think through the issues and come up with administrative solutions because of the gridlock in the patent reform legislation.

"I think he's a real problem solver."

Additionally, Kappos has initiated a program where petitioners can expressly abandon a patent application in order to expedite another one of their applications. The idea is to reduce the number of "bad" applications.

Sometimes companies will continue to pursue a patent application, no matter its chances of success, simply because they've spent a lot of money on it.

"Now you've got some incentive to take that off the docket," said Bruce Greenhaus, vice president and chief patent counsel for Entropic Communications. "It's not anything that's going to give you an advantage by being on the docket, but you've already spent the bulk (of your money)."

Kappos is pursuing a program set up in the prior administration called the first office action interview program. In it, the examiner takes a quick look at the case and poses a couple of relevant questions prior to the official exam. It's designed to get to the heart of the issue quicker. He's also giving examiners credit for conducting interviews, encouraging an ongoing dialogue between applicant and examiner.

Kappos has reached out to both the practitioners and the patent examiners union.

"There had been a growing divide between practitioners and the previous administration," Townsend's Franklin said.

The PTO director has become very accessible and savvy at using the new media. He has his own blog, in which he lets people know what he's thinking.

"He's really engaging the stakeholders in a new way," Franklin said.

Kappos' biggest challenge might be reducing the number of pending patents while simultaneously increasing patent quality, said Joe Mallon, a patent attorney with Knobbe, Martens, Olson & Bear in San Diego.

"So far he seems quite pragmatic," Mallon said. "IBM is a well-run company, and he wouldn't be in the position he's in without a sense of how to run a big organization. He brings a good sense of management skills to a big organization."

Luce Forward's Brook said Kappos' background at IBM, one of the largest filers of patent applications in the United States, should be beneficial.

"They have a very efficient IP operation there," Brook said, "and coming from that background, he certainly has developed an appreciation for the process as well as the importance of providing patent protection for innovation."

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