Patent Reform Law Will Benefit Tech Sector

As the U.S. Patent and Trademark Office (PTO) moves to implement the landmark patent reform act signed into law last year, businesses in industries highly reliant on intellectual property such as IT and biotech can look forward to expedited reviews of their patent applications conducted by better-trained examiners, the head of the agency told members of a Senate committee on Wednesday.

Appearing before the Senate Judiciary Committee, David Kappos, director of the U.S. PTO and undersecretary of commerce for intellectual property, offered a uniformly positive assessment of his office’s work in implementing the America Invents Act, the first major overhaul of the nation’s patent system in more than half a century.

The bill aimed to help the office work through its substantial backlog of patent applications, seeking to speed up the review process and improve the overall quality of patents awarded.

This kind of policy priority is crucial in an industry such as high tech.

“I can tell you that in discussions with Silicon Valley CEOs like Apple, their number one concern is the length of time it takes to obtain a patent,” Sen. Dianne Feinstein (D-Calif.) said to Kappos at this morning’s hearing. “How long can a company like Apple or Google expect for patent processing?”

Kappos, who served as a senior executive with IBM before heading up the patent office, emphasized that the agency has already begun to chip away at the backlog of applications, which he said was down to around 627,000, the lowest level in many years.

“As someone who came from the tech industry, in fact from Silicon Valley, I’m extremely attuned to the need for rapid processing by the tech sector. We do have very explicit, very clear goals in this regard,” Kappos said.

He explained that the U.S. PTO has set the goal of responding to the initial patent application within 10 months, with a final action coming in an average of 20 months, well below the turnaround time of roughly three years that has been a more commonplace timeframe. Kappos said the agency is on track to reach its new goal by 2015 or 2016.

The patent office has hired hundreds of additional examiners to help with the backlog, funding the expansion through increased fees charged for patent services. The agency published its initial proposal for a new fee structure in February, accepting comments from the public, which Kappos said were generally positive. Once the final fee changes take effect next year, he said the agency will be better positioned to work through the backlog of applications as it inches closer to the goal it has set for turnaround time.

“We’re continuing to whittle away and make progress,” Kappos said. “What I’m finding is that the amount of money that we need and therefore the amount we need to increase the fees is by no means astronomical, is by no means mind-boggling, and so we will raise the fees as we need to. We’re getting great support on that, but I don’t think we need to do anything that anyone would consider outlandish.”

The patent office has also set up an expedited review process, known as Track One, that filers can select for a higher fee. The agency has set up a program to provide small businesses or individual inventors pro bono legal help in preparing their patent application. The first patent under that program was awarded earlier this month, Kappos said. Additionally, the agency is planning to set up a satellite office in Detroit later this year, and is evaluating other sites around the country for additional locations.

All told, the patent office has implemented seven provisions of the reform law, with plans for nine more set to take effect by Sept. 16. The agency plans to publish those remaining provisions in August, at least a month ahead of their implementation to give examiners, patent filers and others time to learn the new rules.

The agency is planning to conduct a series of “road shows” around the country this summer to reach out to the patent community before the new rules take effect, reprising a program the patent office undertook earlier this year before the first wave of changes were put in place.

“[The roadshows offer] an opportunity for people who don’t often interact with the U.S. PTO to get in a room and spend an entire day with our leadership team and understand the legislation, understand our implementation and tell us how we can improve it,” Kappos said.

Asked about the challenge of retaining a staff of knowledgeable patent examiners suited to evaluate the merits of applications in high tech and other rapidly evolving, highly technical fields, Kappos described two initiatives that he has implemented at the U.S. PTO. Under one program, experts from industry are invited to visit the patent office — either in person or virtually — and deliver lectures about emerging areas of intellectual property in an effort to keep patent evaluators up to speed with the leading edge of research. That program has resulted in thousands of hours of annual education, Kappos said.

Similarly, the patent office has reinstated a program that sends examiners out to spend short stints visiting with companies in IT, biotech and similar industries.

Kappos is also hoping to channel some funding within the patent office to cover tuition for examiners to pursue relevant post-graduate coursework in their field of expertise.

Kenneth Corbin is a Washington, D.C.-based writer who covers government and regulatory issues for CIO.com.

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