Kappos sketches out plans for patent office

Who moved my cheese?
Separately, Kappos pledged to rewrite the incentives driving compensation for the agency's 6,300 patent examiners.

The so-called Count system currently does not give examiners credit for evaluating a patent with many claims, even if applicants had to pay more to have those claims assessed. However, the system does give examiners two credits if they agree to re-examine a previously rejected patent, something requested by as many as 20 percent of applicants, said Rich Belgard, a patent consultant in Saratoga, Calif.

"One of the things I would do is work immediately to completely remake the Count system, and Secretary Locke has personally asked me to do that," said Kappos. "That will help morale tremendously and get to [application] disposals more quickly.

"The Count system has been in place since 1970's, and my understanding is examiners hate the system and [applicants] hate it," he added.

"Changing the count system is critically important," said Lemley of Stanford. But "it will also be hard, because the examiner's union is likely to resist changes in how they are evaluated," he said.

In his testimony, Kappos reiterated several times he would serve all stakeholders in the patent system ranging from large companies to startups and individual inventors. Kappos spent his entire 19-year career to date as a patent attorney at IBM, rising to be the top intellectual property attorney at Big Blue.

"I think he genuinely wants to tackle these big problems and do the right thing," said Grzelak of the IEEE-USA. "My impression is he has given up a lot for this position," he added.

Indeed, statements provided to the Senate committee indicate Kappos may be giving up more than a million dollars in IBM stock to take on the government post.

One issue not addressed at the hearing was a proposal for deferred exams Kappos made in a paper he co-authored with an IBM colleague. Deferred exams are essentially a pay-as-you-go system that lets companies make multiple filings and then decide which ones they want to pay to have examined first, potentially letting some applications be abandoned later.

"Deferred examination is a promising idea, but at lot will depend on what procedures are put in place to prevent submarine patenting--applicants waiting for years and then writing claims that cover intervening developments in the industry," said Lemley of Stanford.

"I believe that the technology community is split on this issue," said patent consultant Belgard.

Large companies say the system helps prioritize patents, potentially reducing the need to examine minor patents, said Belgard. But "smaller tech companies and individual technologists argue deferred examination simply gives the larger, more affluent companies more time and opportunity to misuse the patent system," he added.

"Deferred examination is used here in Canada, and it's advantageous for organizations with large number of filings," said Mclean of Semiconductor Insights. But "I'm not sure of the impact it would have on the overall backlog at the patent office," he added.

Kappos is expected to gain confirmation for the job of be Undersecretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. The Senate committee has not scheduled an official vote yet, pending responses to written questions.