David Kappos Nominated As Under Secretary Of Commerce For Intellectual Property And Director Of The USPTO

Author:Mr Mark Ungerman
Profession:Morrison & Foerster LLP

The Obama Administration's nominee to head the patent

office, David J. Kappos, will face an array of challenges if

confirmed by the Senate. As PTO Director, Kappos will have a

significant role in a variety of critical patent issues, including

the PTO's substantive rulemaking authority, patent reform

legislation, and management of internal operations. As he heads

into Senate confirmation, his statements made on behalf of IBM, and

as a leader of a number of professional intellectual property

organizations, will be scrutinized by the patent community. As

described below, these statements shed light on how he may deal

with important issues as PTO Director.

The Nominee

Kappos is well known in the patent and trademark communities. As

the vice president and assistant general counsel of IBM, he is in

charge of managing IBM's extensive intellectual property

portfolios. In that role, Kappos has championed IBM's positions

in favor of:

1) the Patent Reform Act of 2009 (U.S. Senate Bill 515); 2)

striking down new PTO rules that would increase the administrative

costs incurred by patent applicants; and 3) tightening the

inventive step standard to make it more difficult to obtain

business method and software patents. Although these may give some

insight into the positions Kappos may take as the PTO Director, it

is difficult to gauge whether these positions were his own or

simply reflecting IBM's interests.

In addition to his work at IBM, Kappos has been active as a

senior leader in a number of professional IP organizations,

including the American Intellectual Property Law Association

("AIPLA"), the Intellectual Property Owners Association,

and the International Intellectual Property Society. His experience

managing IBM's worldwide patent portfolio coupled with his

leadership roles in outside IP organizations provides him with a

unique level of insight into international issues involving IP. He

is a recognized authority on international IP issues and has spoken

on various IP topics throughout Asia, Europe and the U.S.

Kappos has also developed close ties to the PTO's management

and staff through his work promoting the Peer-to-Patent program at

the PTO. This program seeks to enlist the public to help find and

interpret prior art references for pending patent applications. The

program's goals are to lessen the burden on the PTO to find

relevant prior art, and to increase the quality of patents being

issued by the PTO.

The PTO is presently facing several...

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