Our Locations

Media Office
For meetings and deliveries:
12 Veterans Square
1st Floor Left
Media, PA 19063 U.S.A.

Click here for directions

Mailing Address
P.O. Box 209
Swarthmore, PA 19081-0209 U.S.A.

Phone: (610) 892-9942
Twitter: @TechLaw_Elman and @ElmanTechNews
eFax: (925) 226-4995

Contact Us

Your Name:
Your Email:
Your Location (City/State):
Phone (optional):

Your Message:

Please note that using this form does not create an attorney-client relationship. It does help us begin a conversation with you so that you can decide whether to engage us as your attorneys. We look forward to being in touch.

Elman on Tech News via Twitter
Find us on Facebook

Posts Tagged ‘David Kappos’

PTO Director Kappos supports “compact prosecution”

Back in the mid-1960s, the Patent Office introduced the practice of “compact prosecution.” These days it’s entombed in MPEP § 2106(II). Says that section of the Manual of Patent Examining Procedure:

It is essential that patent applicants obtain a prompt yet complete examination of their applications. Under the principles of compact prosecution, each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to some statutory requirement. Thus, USPTO personnel should state all reasons and bases for rejecting claims in the first Office action. Deficiencies should be explained clearly, particularly when they serve as a basis for a rejection. Whenever practicable, USPTO personnel should indicate how rejections may be overcome and how problems may be resolved. A failure to follow this approach can lead to unnecessary delays in the prosecution of the application.

But in our experience and according to reports we’ve read and heard from other practitioners, in the past few years, “compact prosecution” has been more honored in the breach than the observance. You can read about a bad example from two years ago. We’ve had similar experiences recently.

But hopefully, it looks like the winds of change are blowing back to the future. Today Dennis Crouch’s renowned and authoritative Patently-O blog reports that the PTO’s new director, David Kappos, has sent an email to examiners reading in part:

One key is to expeditiously identify and resolve issues of patentability—that is getting efficiently to the issues that matter to patentability in each case, and working with applicants to find the patentable subject matter and get it clearly expressed in claims that can be allowed. The examiner and the applicant share the responsibility for the success of this process.

On the subject of quality, there has been speculation in the IP community that examiners are being encouraged to reject applications because a lower allowance rate equals higher quality. Let’s be clear: patent quality does not equal rejection. In some cases this requires us to reject all the claims when no patentable subject matter has been presented. It is our duty to be candid with the applicant and protect the interests of the public. In other cases this means granting broad claims when they present allowable subject matter. In all cases it means engaging with the applicant to get to the real issues efficiently—what we all know as compact prosecution.

When a claimed invention meets all patentability requirements, the application should be allowed expeditiously. … [B]y engaging with applicants early on, we certainly can get to the point more quickly, and efficiently allow those claims that are entitled to patent protection.

Hear, hear!!!

David Kappos swearing in as Under Secretary of Commerce and US PTO Director on Thursday, August 13 at 12:30 PM

Tomorrow, U.S. Commerce Secretary Locke will deliver remarks and administer the oath of office to David Kappos, new Under Secretary of Commerce for Intellectual Property and Director of the U.S Patent and Trademark Office (USPTO). Confirmed by the U.S. Senate on August 7, Kappos will take control of an office that provides incentives to encourage technological advancement and helps businesses protect their investments, promote their goods and safeguard against deception in the marketplace. The ceremony will occur at USPTO headquarters and will highlight Kappos’ leadership role and recognize the vital role that the USPTO plays in promoting American innovation.

Kappos Background

Over a 20-year career, David Kappos has accrued deep knowledge of the patent system and broad respect from professionals across the field – including the biotech, life sciences and high tech sectors. Most recently, he was the vice president and assistant general counsel for intellectual property at IBM. Specifically, Kappos managed IBM’s patent and trademark portfolios – protecting and licensing intellectual property worldwide.

Recently, Kappos has served on the Board of Directors of the American Intellectual Property Law Association, the Intellectual Property Owners Association, and the International Intellectual Property Society. He also has been the Vice President of the Intellectual Property Owners Association. He has held various leadership positions in intellectual property law associations in Asia and the U.S. and has spoken widely in Asia, Europe and the U.S. on intellectual property topics.

Kappos received his bachelor’s degree in electrical and computer engineering from the University of California-Davis in 1983, and his law degree from the University of California Berkeley in 1990. He joined IBM in 1983 as a development engineer and has served in a variety of roles before taking his current position, including intellectual property law attorney in IBM’s Storage Division and Litigation group, IP Law Counsel in IBM’s Software Group, assistant general counsel for IBM Asia/Pacific, IBM Corporate Counsel and assistant general counsel.

UPDATE: View US PTO video of Kappos’ Swearing-in and Speech of August 13, 2009

Commerce Secretary Locke’s Statement on Kappos’ Confirmation as PTO Director

Press Release: U.S. Department of Commerce

Friday, August 7, 2009

Locke Statement on Confirmation of David Kappos as Patent and Trade[mark] Director

WASHINGTON—The U.S. Senate today confirmed David Kappos as the new Under Secretary of Commerce for Intellectual Property and Director of the U.S Patent and Trademark Office (USPTO).

U.S. Commerce Secretary Gary Locke issued the following statement:

“We are grateful to the Senate for its swift confirmation of David Kappos to lead the U.S. Patent and Trademark Office. It’s no secret that the agency currently faces significant and persistent challenges, but David is the right person to meet them and carry out my top priority for the USPTO—dramatically reducing the unacceptably long time it takes to process patent applications.”

Kappos Background

Over a 20-year career, David Kappos has accrued deep knowledge of the patent system and broad respect from professionals across the field—including the biotech, life sciences and high tech sectors. Most recently, he was the vice president and assistant general counsel for intellectual property at IBM. Specifically, Kappos managed IBM’s patent and trademark portfolios—protecting and licensing intellectual property worldwide.

He takes control of an office that provides incentives to encourage technological advancement and helps businesses protect their investments, promote their goods and safeguard against deception in the marketplace. The office continues to deal with a patent application backlog of more than 770,000, long waiting periods for patent review, information technology systems that are regarded as outdated and an application process in need of reform.
Recently, Kappos has served on the Board of Directors of the American Intellectual Property Law Association, the Intellectual Property Owners Association, and the International Intellectual Property Society. He also has been the Vice President of the Intellectual Property Owners Association. He has held various leadership positions in intellectual property law associations in Asia and the U.S. and has spoken widely in Asia, Europe and the U.S. on intellectual property topics.

Kappos received his bachelor’s degree in electrical and computer engineering from the University of California-Davis in 1983, and his law degree from the University of California Berkeley in 1990. He joined IBM in 1983 as a development engineer and has served in a variety of roles before taking his current position, including intellectual property law attorney in IBM’s Storage Division and Litigation group, IP Law Counsel in IBM’s Software Group, assistant general counsel for IBM Asia/Pacific, IBM Corporate Counsel and assistant general counsel.

Use AIPLA’s Web Tool to Urge the Senate to Confirm David Kappos NOW as Director of the US PTO

This is an American Intellectual Property Law Ass’n (AIPLA) Action Alert: Help Confirm David Kappos as Director of the U.S. Patent and Trademark Office

“As an IP professional, you know that we need consistent and stable leadership at the USPTO.  The Senate Judiciary Committee is set to consider the nomination tomorrow and the entire U.S. Senate will hopefully be voting on David Kappos’ nomination as the next USPTO Director this week, but they may not.  We’re reaching out to you to contact your Senator to urge the Senate to vote THIS WEEK on the nomination before they recess for the summer.

“We’re also using our new grassroots advocacy tool for the first time to reach out to you and ask you to participate in this important appointment process.  We’ll likely come back to you in the near future, when we need your help communicating with Congress on other issues, such as patent reform.  This service, powered by CapWiz [, makes it easy for you to communicate with your representatives in Congress on important issues facing the IP profession.
We urge you to reach out today and voice your support for having the Senate vote THIS WEEK to approve Dave Kappos’ nomination.  The IP system can’t afford to wait another month!”
2018 Martindale-Hubbell® Peer Review Rating of AV Preeminent® Gerry Elman has received a 2018 Martindale-Hubbell® Peer Review Rating of AV Preeminent®
Clients’ Patents
Click here to see patents we’ve filed for various companies and inventors.
Sign up for free

Register here to receive email notifications of podcasts, blog posts and other informative material from Elman Technology Law.

Archive of Our Postings
Make a Payment
Elman Technology Law clients can quickly and securely make a payment using LawPay. Click on the LawPay box below.

Pay Your Invoice with LawPay