Joff Wild

After six – often highly controversial – years as the head of the world’s biggest patent and trademark office, you might expect Jon Dudas to be enjoying some extended down time before taking on his next role. But less than four weeks after stepping down as the Director of the USPTO, Dudas is in the thick of client work at Foley & Lardner – the law firm where he is now a partner. “Friends advised me to take a few months off after I left the office, but I have four kids and I have been working for the government for 10 years. I didn’t have that luxury,” he laughs.

But what Dudas does have the luxury of doing is taking a look back at his USPTO years. And in an exclusive interview with IAM that took place last week this is exactly what he did. I am going to do a couple of blogs about the conversation I had with him. The first one will deal with the domestic agenda in the States. So here goes …

What is absolutely clear is that Dudas has no regrets, although he does recognise that relations with the office’s user community were often strained during his time in charge. “People care deeply about the patent system and there is a passion in the way that they talk about it. Almost everyone agreed that there has to be change, for example, but the debate always begins at what the changes should be. Different industries and different sectors always have different priorities, and that is where disagreements occur,” he says.

When asked about the claims and continuations rules that eventually saw the office in court fighting a case brought by GlaxoSmithKline with the open and tacit support of great swathes of the USPTO user community, Dudas denies charges that the office’s senior leadership did not pay heed to the many concerns that were raised about the rules during the consultation process. “We were very interested in what the user community had to say and there was a long discussion period; as a result dramatic changes were made to the package,” he says. “Any change is open to criticism because it will mean people have to alter the way they do things,” he adds. But whatever the eventual outcome of the GSK litigation, Dudas believes he did the right thing. “Policy changes have to occur in order to make the system more efficient – and these rules change proposals came almost directly from the examining corps, which was worried that people were gaming the system.”

Another complaint from a number of USPTO users is that over recent years the quality of issued patents has declined. Dudas rejects this charge out of hand. “We always had the same way of measuring quality and that was to ask if the patents we were granting were new, useful and non-obvious. The numbers we got indicated that under these criteria quality actually increased dramatically,” he says. “I don’t know how to argue with people who say that quality has gone down because the numbers just do not support this.” However, if there are doubts, he continues, people need to explain what they mean by quality and where they feel the office is going wrong in measuring it. “They have to remember that the USPTO’s job is to grant patents under US law, it cannot decide any more than that; these are issues for applicants.”

Dudas is also puzzled by demands that the USPTO Director should have extensive patent prosecution and/or litigation credentials. “Why don’t they ever say the Director should have examination experience? The one thing I was really aware of when I started was that I lacked this background and it was something I had to understand, but no-one ever seems to think this is an issue,” he says. The task of the USPTO Director, Dudas states, is not to listen to the views of one set of stakeholders, but to all of them. “There has to be a balance,” he explains. “You have to think of all constituencies – applicants, the public at large, the examiner corps, Congress, the administration, foreign patent offices and so on. I imagine that any group you ask would want the person in charge to have a background like theirs, but it’s just not possible.”

His predecessors may not be too impressed, but Dudas believes that the last six years saw the USPTO re-establish itself as a federal office that law makers take seriously. “It does not matter how right the USPTO is if the Congress and the Administration does not agree,” he states. Dudas claims that one of the reasons why an end to diversion had proved so difficult to achieve before he took the reins was that there were no metrics by which legislators could judge that the office was doing an effective job. “We had to demonstrate to them that we were a performance-based organisation, but that we needed the tools with which to perform. So by setting targets and then showing that we had hit them, we were able to persuade Congress that ending diversion was worthwhile,” Dudas says. Having done that, he explains, the extra money could be used to recruit more examiners and put in place more extensive training; which in turn improved quality levels and which, in time, will help to tackle the backlog the office faces.

The respect that the USPTO has won from Congress, Dudas says, also manifested itself in the way the office was consulted during the debate over the Patent Reform Act last year: “I spoke to scores of senators and congressmen, and to what seemed like hundreds of staffers. We did a lot of explaining and people came to us because they felt we could offer a fully-rounded picture.” Going forward Dudas believes that there is a chance patent reform could be fast-tracked into the current Congress’s programme. “Anything is possible if people are motivated, we certainly got close several times last year. However, we are talking about fundamental issues like innovation and the economy here, so it is likely that a broad consensus is going to be necessary. As things stand that will be hard because there are still major issues to resolve.”

In the last weeks of his tenure, Dudas spent a lot of time with representatives of the Obama transition team, including several IP professionals. They came into the USPTO soon after Obama’s victory and even had an office there. Dudas was impressed by what he saw and heard. “They were intelligent and asked all the right questions. It was clear they had given a lot of thought to what is currently happening in IP. They knew the issues well and had taken the time to understand things from all perspectives,” he explains. That said, while he believes that because the USPTO is “largely non-political” it would be able to offer opinions and advice should patent reform reappear as a Congressional debate, “having a presidential appointment in charge will make it easier for the USPTO’s voice to be heard”. And if Dudas has any inside information on what the Obama administration’s views on patent reform might be, he is not saying; nor will he offer an opinion as to who the new director might be.

But whoever takes charge, it is the importance of listening to all sides in a debate that Dudas believes will be his or her most important skill. “It sounds obvious, but it is so important: listen to everyone who has an interest and work to find the right balance,” he says. It is his confidence that he did this while at the office that makes the criticism he has received relatively easy to deal with: “I found the USPTO a great place to represent because I believed so strongly in its mission. Being criticised is never nice, but it did not bother me too much because I knew that I had listened before I took the decisions I did.”

In the second blog based on the interview, I’ll report on Jon Dudas’s views concerning international developments and why issues such as patent quality and patent pendency will only be solved through international co-operation. The blog will run some time later in the week.