Posted by Horacio Gutierrez

Corporate Vice President and Deputy General Counsel

Yesterday President Obama announced he intends to nominate David Kappos, vice president and assistant general counsel for intellectual property at IBM, to serve as Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office.  This is a huge job, managing a workforce of 9,000 employees and directing a central part of an intellectual property system that drives American innovation, economic growth and job creation.

It would be difficult to envision a new USPTO director who understands the U.S. and global patent system better than Dave Kappos.  Dave’s nomination marks a return to the kind of experienced industry leadership that had often been tapped to head the agency in years past.  Dave’s extensive background in all aspects of patent law and policy, and his experience managing one of the world’s largest corporate patent departments, make him well suited to take on the parallel challenges of improving patent quality and agency efficiency.  We applaud his selection, and offer him our full support and commitment to work with him upon his appointment and with others in industry to tackle the challenges ahead.

The challenges the new Director will face are daunting.

Despite a recent decline in the number of new patent applications due to the economic downturn, the USPTO faces an enormous backlog.  In 2008, nearly 751,000 applications were awaiting review; almost triple the backlog in 1988. The average approval time increased to 32 months from 20 months over the same period. 

This is not just a domestic problem. Patent offices around the world are feeling similar strains, as all strive to maintain patent quality in the face of increasing global demand.

The USPTO has recognized that greater harmonization of patent search and examination procedures, and greater cooperation among national patent offices, is key to reducing backlogs and maintaining patent quality.  For example, the Patent Prosecution Highway, a joint project undertaken by the USPTO, Japan Patent Office, European Patent Office and several other national patent authorities, is designed to minimize duplication of effort by allowing examiners to draw on work conducted in other countries. While in its early stages, the program is the first real proof of concept for determining whether national patent offices can gain confidence in the work product of others.  

In addition, USPTO, JPO and EPO have been joined by the State Intellectual Property Office of China and the Korea Intellectual Property Office in the ‘IP5’ partnership.  Members of IP5 have committed to 10 projects aimed at harmonizing aspects of patent search and examination, and building confidence in the resulting work product.  The IP5 together process 80 percent of global patent applications. Their efforts to eliminate duplication of effort, increase work sharing and enhance efficiency will help build a global patent system that can keep pace with 21st century innovation. 

At bottom, efforts toward greater harmonization of patent office practices and procedures all recognize that today’s innovators -- whether large corporations, small and medium-sized enterprises, individual scientists or entrepreneurs – compete in a global marketplace of ideas.  In this environment, reducing costs to applicants and offices, eliminating duplication and promoting quality and consistency will benefit all involved.  We urge that these efforts be energized and expanded under Dave Kappos’ leadership.