On August 7, 2009, President Obama's nominee David Kappos was sworn in as the new Director of the United States Patent and Trademark Office. Mr. Kappos has a long and distinguished career in intellectual property, having once served as Vice President and Assistant General Counsel for IBM, where he was responsible for management of that company's extensive global patent and trademark portfolio. He takes over management of an Office that had become well-known for a significant backlog and is also the center of much controversy and litigation regarding various rules issued by the former Director.
At the time of Mr. Kappos's confirmation, the USPTO was defending the validity of a number of controversial and sweeping changes to the Office's patent practice which were ostensibly meant to streamline and simplify patent practice. Though the rules at issue were never fully enacted (since enactment was stayed during litigation over same), one of Mr. Kappos's first major acts as Director was to issue a new rule withdrawing the highly-controversial rule changes that were in litigation. This action cleared the way for the USPTO to refocus resources and efforts toward management of the Office and to work on development of new rules that would be more acceptable to the users of USPTO services, namely inventors and trademark owners, and that would streamline the process of obtaining intellectual property protection and bring goods and services to the market.
Though the final form of many new rules is still on the horizon, Mr. Kappos recently outlined some of the items the Office intends to focus on with respect to trademark practice. Mr. Kappos indicated that the USPTO will continue its trademark IT system modernization project. Ultimately, the Office hopes to provide applicants, registrants and their counsel with real-time access to trademark files and even the ability to manage USPTO dockets online. Such functionality could considerably ease trademark practice before the USPTO.
In addition, since Mr. Kappos took the helm, the USPTO has redesigned and revamped its website, including many of the document and application-filing interfaces. Though the changes to date have been rather minor, the Director stressed that the Office will work closely with the Trademark Public Advisory Committee to further develop and refine USPTO website functionality.
On the substantive side of trademark practice, Mr. Kappos indicated the Office may likely issue new rules in response to the recent decision in Bose Corp. v. Hexwave Inc. addressing the question of fraud on the Trademark Office and may also review how that ruling would apply to use-based trademark applications and declarations of use. The Director also indicated the Office may likely re-evaluate statement of use requirements and sufficiency of specimens in the context of intent-to-use applications identifying multiple goods within a single class. As with the website issues, the Director has pledged to work with the parties most impacted by any new rules or decisions in this area—trademark registrants, owners and practitioners.
Finally, in August, President Obama signed legislation authorizing the Director of the USPTO to shift revenues received from trademark application filings to fund internal patent practice operations. Though Director Kappos has indicated he would "prefer not to use" such funds for internal costs, the ability of the Director to tap this source of revenue to fund operations could minimize or eliminate potential PTO down-sizing which, in the end, would aid in the overall streamlining of the Office, since decreases in staff and examiners could be held to a minimum.
It appears that Mr. Kappos intends to shake things up at the USPTO. By rescinding the sweeping rules instituted by his predecessor and committing to re-evaluate and revamp both patent and trademark practices before the Office, a new era may be near and the Office may be able to create policies and practices that better mirror the market realities faced by inventors and trademark owners and to embrace available technologies to streamline the process. The Office appears on the verge of shifting from an agent of delay and expense to a catalyst in the process of obtaining patent and trademark rights.
Vol. 53, June 2010