August 03, 2009

Looking in the Crystal Ball: The Potential Reign of David Kappos

4 min

On June 18, 2009, President Obama announced his nomination of David Kappos as the Under Secretary of Commerce (Director of the U.S. Patent and Trademark Office). Kappos must be confirmed by the Senate before he can take the reins—which may be  delayed by Judge Sotomayor’s confirmation hearings and the Senate’s August recess. Until then, Acting Under Secretary John Doll will continue to lead the PTO.

Kappos serves on the Board of Directors of the American Intellectual Property Law Association (AIPLA), the Intellectual Property Owners (IPO) Association, and the International Intellectual Property Society. He’s also the Vice President of IPO. But —

Who is David Kappos and what does this mean for patent law ?
Kappos is the current Vice President and Assistant General Counsel of  Intellectual Property for IBM Corporation. Kappos has been working at IBM since his college graduation from the University of California at Davis in 1983.  IBM has taken several positions under Kappos with respect to patent reform and court decisions, and these positions, listed below, may foreshadow initiatives Kappos will take at the U.S. Patent and Trademark Office.

  1. USPTO’s Proposed Changes: Representative Claims
    IBM has publicly announced its support for the examination of “representative claims” to limit the number of claims that are initially examined.  IBM recommends allowing the applicant to segregate the claims as representative claims or corresponding claims, which would not be examined until their related representative claims are allowed.  Kappos may likely be in support of a rule providing for applicants’ bifurcation of claims.

  2. USPTO’s Proposed Changes: Claims Continuation Practice
    The PTO has proposed requiring each applicant to submit a showing as to why amendments, arguments, or evidence presented in a continuation application could not have been previously submitted in a parent application. In general, IBM supports the proposition provided certain issues can be resolved.  IBM does not recommend per se limits on the number of continuation applications that may be filed, but IBM suggests requiring a higher standard for subsequent continuation applications. It will be interesting if Kappos, as Director, agrees.

  3. USPTO’s Proposed Changes: Information Disclosure Statements
    The PTO has proposed requiring additional explanation in IDSs for lengthy, voluminous, or foreign language prior art.  IBM has commented that the proposal is  “unnecessarily complex” and  “a burdensome proposal will discourage applicants from searching for prior art at all because there is no duty or requirement to search.” IBM suggests that the PTO should clearly advise the public and examiners what constitutes a sufficient explanation.

  4. IBM Positions on Court Decisions

    A. Bilski:
    IBM is strongly opposed to business method patents.  IBM filed an amicus brief in Bilski arguing in favor of the Federal Circuit’s new machine-or-transformation test. 

    B. KSR:  Because IBM is both a patent holder and a manufacturer, IBM filed an amicus brief in KSR in which it presented arguments in favor of and against both sides.

    C. Quanta: Damages calculations under Quanta allow the court to accommodate various business models by deciding which of three methods should be applied and furthermore allows the jury to determine patent damages. In contrast, IBM has said damages calculations should be based on the economic value of the essential features of the subject invention, district courts should more precisely apply the Entire Market Value Rule and Convoyed Sales determinations, and district courts should better exercise their gatekeeper powers to ensure rigorous expert analysis of damages calculations.

  5. IBM Positions on US Congress’s Proposed Changes to Patent Laws
    IBM supports the following programs:  (a) new enhanced “first window” post-grant opposition; (b) enhanced inter partes reexamination; (c) pre-grant procedures to enable anyone to submit prior art to the PTO with a written argument; (d) pre-issuance submission of information; (e) publication of all patent applications after 18 months (this is no longer in current congressional bill); and (f) clarification and simplification of what constitutes prior art (however, this is no longer in current congressional bill).
    Kappos has also stated that IBM favors International Collaboration Examination (ICE), which would allow Patent Examiners in multiple offices (i.e., JPO, EPO, US PTO, etc) to examine the same application at the same time, the Peer to Patent (P2P) Program, which enables the public to comment on published patent applications and submit prior art, Open Sources as Prior Art (OSPA), which grants Examiner access to live open source code as potential prior art, and Patent Quality Index, an index which scores patents on their strength and quality.

Given the positions of IBM, one might assume that Kappos may be personally aligned with the opinions of IBM. But as Director of the PTO, Kappos will have to weigh the competing interests of many different groups—some of them sharply at odds with IBM’s historic and current positions.  It will be interesting to see what lies in the future for the U.S. Patent and Trademark Office if, as expected, David Kappos is confirmed. A decision is expected August 7, 2009.