MoneyWatch Tech

Kappos Gets USPTO Nod, But What Will He Do?

By Erik Sherman

Updated on: June 23, 2009 / 6:20 PM EDT / MoneyWatch

Barak Obama last week announced David Kappos as his choice to head the US Patent and Trademark Office. That wasn't completely unexpected -- in fact, back in May, I suggested that evidence indicated that Kappos would get the nod. The question now is what this means for high tech and other industries.

As I mentioned in May, the background of Kappos is big high tech personified. More accurately, he is probably IBM personified. Here's a bit from his official IBM bio:

He's currently vice president and assistant general counsel for IP law at IBM, and is responsible for managing the company's patent and trademark portfolios. (Filing all those certificates away alone could keep someone busy many hours a day.)
He got a bachelor's in electrical and computer engineering at UC Davis in 1983 and joined IBM as an engineer. In 1990, he got his law degree and worked his way up the company's legal department.
He's on the board of directors of several organizations, including the Intellectual Property Owners Association (one of the big IP lobbying groups) and is active in AIPLA (the other big IP lobbying group).

Putting that into some perspective, he's been an IBM lifer, spending his entire professional career at the company. He's also been active in IP circles. So we can make a few guesses and observations based on this. One is that he probably thinks of IP the Big Blue way. That might be friendly to the if-it-moves-patent-it-and-if-it-doesn't-move-poke-it camp, but there are only a handful of companies that have the resources to allow that kind of approach. On the positive side of the IBM affiliation, he's got to have management experience given his position, and the USPTO sorely needs that type of experience. He's a proponent of patent reform. Some of what he included in that are the following:

post patent review, which would allow parties to submit information that might bring into question whether the patent should have been allowed
pre-issuance submissions of information, meaning third parties would be able to offer information to challenge whether a patent should be issued before it's issued but after the application is made public
enhanced inter partes reexamination, so third parties could more challenge whether a patent should have been granted
greater restrictions on potential patent suit damages
reduced levels of patent litigation

According to an opinion piece in the Wall Street Journal, IBM is just one of the technology companies that actually want fewer patents because it is becoming so difficult to develop new technologies that don't infringe on some patent or other.

Pardon my disbelief, but in 2008 alone, under the guidance of Kappos, IBM received 4,169 patents. If you search on patents since 1989 (for the 20 year patent window), IBM has roughly 49,290 issued patents. That is out of 3,008,656 patents granted in that time, or about 1.6 percent of all patents issued. You could put immediate restrictions on patents in general and IBM would still have an arsenal to sink most any competition. Oh, and a good chunk of those patents were granted on his watch. IBM has also received some round criticism for the quality of some of its patents and the "inventions" they tried to protect.

The question is whether Kappos will be so tied to his singular background as to miss making decisions that might benefit industry as a whole. And that is something no guessing or prognostication can know. But in the end, he may find that the well-documented problems at the USPTO will take so much attention that partisanship will be impossible. It may be all he can do to keep the organization's head above water.