Sara-Jayne Clover

“The patent system,” David Kappos told an attentive audience in London yesterday, “should be an accelerant to global commerce and not an impediment.” Harmonisation as the catalyst for a quicker, more cost-effective system for IP owners was the topic up for discussion at the Director’s Roundtable event hosted by University College’s Institute of Brand and Innovation Law, and clearly one dear to the USPTO director’s heart. Kappos, who is in Europe to meet with EPO and other national patent office officials, acknowledged that the road to harmonisation would be bumpy, but explained how the US is now “finally getting [its] act together” and taking some long-awaited steps forward in the shape of pending patent reform legislation.

Kappos is confident that the America Invents Act, as this year’s legislation has been dubbed, will be passed into law by the summer. However, there is no escaping the fact that there are still those who are vehemently opposed to its passage. Speaking with the director after the seminar, I asked him about one of the Act’s more contentious elements: the first-to-file provision. Moving away from first-to-invent would clearly be a huge step towards harmonising the US system with the rest of the world, and it is one which Kappos is firmly in favour of. When asked about claims that a change to first-to-file would disadvantage small businesses, the director was adamant that the argument doesn’t hold water. “I do meetings all over the US and I always ask the question of individual inventors and small business owners ‘how many of you care about first-to-file?’; people always reply ‘first-to-what?’,” he laughed. “Then I ask how many of them have ever been in an interference, which is the process which resolves this issue, and nobody has ever raised their hand.” What SMEs actually care about, claims Kappos, is that the USPTO processes applications faster and that costs are kept to a minimum.

Determined to battle what he calls “misinformation and distorted commentary” about first-to-invent, Kappos and his team turned to the data. What they found was that of the last three million patent filings the USPTO has received there was only one case in which a micro entity (a company with five employees or less) engaged in an interference as the second to file and actually prevailed. Conversely, they found that of the cases they looked at there were 10 micro entities that would have been better off if the US was already working under first-to-file. They also looked at the cost of going through the interference process and found that it amounted to around half a million dollars. “If you add up everything that we uncovered,” explained Kappos, “you’re statistically more likely to get bitten by a polar bear and a grizzly bear on the same day than you are of winning the interference process as an individual inventor.”

It is clear that the message that the first-to-invent system is the friend of the little guy frustrates the director, as all the information he has points in the opposite direction. However, those opposed to patent reform in its current guise are not going to sit quietly and let the House of Representatives pass the bill with the landslide vote that the Senate did. Kappos needs to keep meeting with the decision makers and getting his argument heard. Using first-to-invent as a lever to oppose reform is a smart move. For very good reason, small businesses and lone inventors are potent symbols in the US and no-one wants to be seen to be taking sides against them; least of all members of Congress, who have elections to fight on a regular basis. Kappos is going to have to use all his powers of persuasion to convince wavering legislators that a switch to first-to-file is not the problem others claim it to be. But with patent reform, and the end to USPTO fee diversion that will bring, now so close to being passed after years of near-misses, no doubt he will be only too happy to put in the necessary hours.