Lawyers grappling with the broadest changes to the U.S. patent system in decades have yet another change to contend with: The man who helped usher in those reforms, David Kappos, will step down as director of the Patent and Trademark Office in February.
His departure comes at a transformative time for both patent law and the office that oversees it. Elements of the America Invents Act that was ratified last year are still being implemented, and some of the biggest changes are slated to take effect this spring.
The reforms include a switch to a first-to-file system that, in many cases, awards patents to inventors who submit their paperwork before others. Attorneys will also have new avenues to challenge the validity of those patents.
“Over the next five years there’s going to be a lot of uncertainty, a lot of rulemaking that’s going to be required to effectively implement the AIA, and David Kappos was such a great leader,” said Jack Barufka, who leads the intellectual property practice at Pillsbury Winthrop Shaw Pittman.
Kappos is widely credited by members of the legal community with improving the transparency and efficiency of the patent office, which at times has been opaque in its decision making and slow to respond to changes in industry, lawyers said.
Since Kappos took the helm in August 2009, the backlog of patent applications fell from 750,000 to roughly 605,000. In that time, the number of patent examiners climbed from 6,055 in 2008 to 7,935 this year.
Attorneys hope to see those trends continue. More patent examiners and a shorter backlog means the office requires less time to decide on a patent application, in turn minimizing uncertainty and headaches for businesses.
The changes have improved “the confidence and perception of the business community at large that the U.S. patent system is functioning in a way that’s both efficient and up to date as far as new technologies,” said Raymond Kruz, a leader in the intellectual property group at Hogan Lovells.
Kappos and others at the patent and trademark office have also toured the country speaking with attorneys, patent holders and others about the system’s shortcomings, a degree of engagement that some say was lacking before.
“They’ve had road shows and gone around the country and had face-to-face connections with more stakeholders,” said Eldora Ellison, an attorney at Sterne Kessler Goldstein & Fox who specializes in patent litigation. “I think that’s been well received and people will continue to look for that.”
But the biggest questions hang on the America Invents Act, and how the rules will be implemented when the man who helped shape them is no longer in charge. Teresa Stanek Rea, the organization’s deputy director, will serve as interim director.
“Some of the AIA provisions have already been challenged in court and for the foreseeable future we’ll see litigation surrounding the AI A because people will challenge particular provisions or things that are unclear that need to be resolved,” said Megan La Belle, an assistant professor at Catholic University of America’s Columbus College of Law.
“Certainly the individual who heads the [patent and trademark office] plays a more prominent role than in the past,” she added. “Part of what the AIA does is give the PTO more authority.”
Now that authority will fall in a new director’s hands.
“He’s leaving having set things up quite well for success,” Ellison said. “Is it an ideal time? Maybe not. But there probably is no such thing as an ideal time. If it’s not this, it’ll be something else.”