Joff Wild

The US Chamber of Commerce has now officially released Recommendations for Consideration by the Incoming Administration Regarding the US Patent and Trademark Office. This blog first revealed that a group of senior figures was working on the publication back in October at which stage it was being framed for consideration by both the Obama and McCain camps. Now that we know who the new president is going to be, however, the recommendations are aimed directly at Barack Obama.

On a quick skim through, the draft that I saw and the final version are pretty much the same. Basically what the new president has been given is a blueprint from users of the office for improving its functioning and for ensuring that it is fit for purpose in the 21st century.

The report’s authors identify the appointment of the new USPTO director as being of major importance:

The PTO cannot achieve organizational excellence without the strong leadership and executive management capabilities of the incoming under secretary and director. Accordingly, that individual must be an experienced, highly respected leader in whom the Congress and the intellectual property, business, and international communities can place their full confidence.

Equally important, the appointment of a top-caliber, knowledgeable intellectual property executive offers the potential to reinvigorate the public/private partnership that has worked well in the past.

The capabilities the new director should possess are pretty much as they were in the draft, namely:

Experience in patent prosecution or litigation

• Experience in trademark prosecution or litigation

• Working knowledge of copyright issues

• A proven track record of successfully managing and leading a large (several thousand employee) enterprise

• Demonstrated capabilities in the areas of strategic planning, budgeting, and financial management

• Hands-on experience in congressional and international intellectual property policy issues

• Working knowledge of the benefi ts and risks of information technology

• A track record of working with constituencies that have conflicting goals and achieving meaningful operational improvements

• A track record of building or participating in coalitions that have produced positive outcomes

Interestingly, however, following these bullet points, the draft version of the recommendations then went on to say: “We believe that the single most important way to establish the incoming administration’s credibility is through the appointment of a skilled leader who possesses these qualifications. Additionally, given the present state of the PTO and the lengthy appointment/confirmation processes, the identification of a suitable candidate should be one of the highest priorities of the new administration.” By contrast, the final version says this: “Given the current state of the PTO and the lengthy appointment and confirmation processes, it is recommended that a well-qualified candidate be identified as promptly as possible.”

In other words the final version is much less forthright about the significance of Jon Dudas’s successor than was the draft. I wonder why this is. It is worth remembering that the authors of the report are all very high-profile members of the patent community. Two of them – Todd Dickinson and Herb Wamsley – though contributing in a personal capacity are the executive heads of the organisations that represent US IP practitioners and owners, the AIPLA and the IPO respectively. Clearly, it would be slightly uncomfortable, to say the least, if the new director of the office did not tick all the qualification boxes the report identifies and the two of them were on the record stating: “We believe that the single most important way to establish the incoming administration’s credibility is through the appointment of a skilled leader who possesses these qualifications … .” Do they possess some inside knowledge about the identity of the new director, or is it just a case of not wanting to leave a hostage to fortune?

Whichever way you look at it, however, this is a pretty clear document. When it is read next to the recent PPAC report, Obama and his advisers can be in no doubt that there is considerable disquiet about the USPTO’s recent performance and a strong groundswell of opinion inside the US patent communities that major changes have to be made. If after all this, Obama does not appoint someone with a strong track record in patents to the director’s job and significant reform at the office does not take place over the next four years, that will tell us more than words ever can the real importance the new administration attaches to intellectual property and the part that it plays in the innovation process.