Bits and Bytes No. 134: Personnel – Past and Present

  • Duke Law Professor Arti Rai has started work at the USPTO as the "Administrator for External Affairs." Although not a registered patent attorney, Rai had a focus on biochemistry at Harvard and attended one year of Harvard Medical School before heading to law school (again at Harvard). [cv] In addition to her extensive knowledge of the patent system, Rai is an expert on administrative law. In her writings, she typically argues that the PTO should be given more independence and power.
  • Professor Rai's new position will likely focus on PTO relations with other US governmental entities as well as with foreign governmental entities.
  • Professor Rai offered remarks at the Collegiate Inventors Competition in Chicago on Monday evening. Here are a few quotes:
  • "As I know from my research, and from my own sister’s experience with her biotech startup, inventors need this protection in order to attract research and development capital. The challenge we face at the USPTO is ensuring that inventors can always look to us for strong and speedy protection."
  • "Since taking office a little over two months ago, Director Kappos has moved aggressively to reform the office, expedite the way in which we examine patents, update our IT infrastructure, and reach out to stakeholders and members of Congress to provide a sustainable funding mechanism for the USPTO. We are committed to using all of the tools at our disposal to reduce the amount of time it takes for inventors to get the patents they need to bring products to the marketplace. You will be hearing more in the months to come, so stay tuned and keep believing in your ability to change the world with your inventions."
  • IP Hall of Fame Nominations: Nominations have opened for IAM Magazine's Annual Award to "honour those who have made an outstanding contribution to the development of IP law and practice." http://www.iphalloffame.com/
  • Call for Papers: Next Generation of Antitrust Scholarship Conference

36 thoughts on “Bits and Bytes No. 134: Personnel – Past and Present

  1. 36

    Little late to respond, but oh well.

    Bad Joke Ahead and Brian Fletcher,

    I am a registered patent attorney. I didn’t find the test difficult, but I guess the pass rates say otherwise. I won’t comment on that further.

    As for your other points, I think you misunderstand me. Of course we need experience patent law practitioners on the Federal Circuit. But that isn’t a requirement for every single judge, since at least a few should be experience in the other areas of its jurisdiction. Of course patent law is one of the biggest areas of its jurisdiction and docket and is exceptionally important.

  2. 35

    “You will be hearing more in the months to come, so stay tuned and keep believing in your ability to change the world with your inventions.”

    This is very encouraging and inspiring and is exactly what “Actual Inventors” want to hear!

  3. 34

    “I think the real question is why should we have to put up with Lemley or Rai? Why in the world are people like this even opening their mouths. Go out and practice real patent law for a while and then come back and we can all have a good laugh at how silly you were. ”

    I totally agree. Why are these people even opening their mouths (except to insert Twinkies)? I know many solid practitioners who could run circles around these two. We need fewer people like this in prominent positions. We need people who have accomplished (in the field), are capable of accomplishing more and who run their mouths far less, regardless of whether or not they went to Stanford or Harvard.

  4. 33

    “Although not a registered patent attorney, Rai had a focus on biochemistry at Harvard and attended one year of Harvard Medical School before heading to law school (again at Harvard). [cv] In addition to her extensive knowledge of the patent system, Rai is an expert on administrative law. ”

    zzzzzzzzzzzzzzzzzzzzzzz

    Although I don’t have a pilots license, my extensive knowledge of the theories of flight should allow me to be in charge of something related to flight.

    Yeah right.

  5. 32

    No, it wasn’t Doll either. He got up and gave a speech in the main conference hall on the first day of the meetings, but the fellow in the committee meeting was a long term PTO employee.

    I believe Mr. Whealan was one of the speakers last year, and he gave a pretty good, fairly conciliatory speech.

    TIme to move on to something else.

  6. 31

    Obama’s shadow government at work. This relegates Kappos to a ministerial position. He’ll spend his time twisting in the wind over meaty process issues associated with reducing the examination backlog and increasing revenues (i.e., raising fees). Meanwhile Rai will gut the patent system from within, like a parasitic tapeworm.

    A quick review of her writings should cause anybody in the biotech/biomed/pharma practice to start pondering your next career. Good luck raising capital when your patent protection is subject to an evaluation by an “innovation regulator agency” equipped to evaluate the “social utility” of patent rights in the technology, as Rai proposes. (Translation: if the current administration finds it politically expedient to deny patent rights in your field, they will do so.)

    Dennis, I have always enjoyed your writing because it is informed by your experience practicing patent law. Your apparent admiration for Rai is flabbergasting.

  7. 30

    Again with the emphasis on speed in examination. I’d much rather the emphasis was on quality.

  8. 29

    Hopefully, Rai will meet often and periodically with groups of practitioners and listen to their comments, ideas and complaints (and not just lecture them).

  9. 28

    Paul, Another AnonPatent Atty, and Brian F – the other descriptions (condescending and smug) also fit Doll to a “T”.

  10. 26

    Another AnonPatent Atty: maybe it was John Whealan? I remember him giving a smarmy talk at Duke about the rules that sounds similar to the one you described. But probably there’s more than one such person. Whealan (who used to have a ponytail, and didn’t seem short to me) has of course already moved on to better things, at GWU: link to law.gwu.edu

  11. 25

    “… is a state of affairs where significant numbers of patents and/or patent applications are necessary for a business to secure investment a desirable one?”

    Clever. MM-trollbot is always illustrating to us all that he is an examiner.

  12. 24

    MM I loved your:

    “… is a state of affairs where significant numbers of patents and/or patent applications are necessary for a business to secure investment a desirable one?”

    Do clients still choose law firms on the basis of how many tomes are on the shelves of the firm’s library? No, I guess not. Do you not think this “Look Wall Street, how many apps I have filed, and how many issued’s I have got” will soon be a bit passe? Aren’t they getting past that stage already?

  13. 23

    Dear Paul:

    No, it wasn’t James Toupin. I can’t say I care for him either, but he is not smarmy. The fellow at the committee meeting was relatively short, and, I seem to recall, balding.

  14. 22

    Just sounds scarey to me, frankly. An Admin Law academic comes into the PTO to do what? Sounds like her mission is to get the PTO the authority to do whatever they want. At least with the Republicans they were too st**pid to get things done. Now we have eggheads that know nothing about the real world that are going to change the world to work like their ridiculous textbooks based on a mandate that is coming from the public after dealing slash and burn Republicans.

    Oh boy, wave two of destruction on the way…

  15. 21

    If Rai is good at Admin law, then surely the PTO will not completely ignore the comments of the public during future rulemaking.

    Admin law empowers agencies based on the theory that the agency has expertise in the subject matter. However, how can these folks claim to be experts when they aren’t even held to a minimal requirement of passing the patent bar exam?

  16. 20

    Rai: “The challenge we face at the USPTO is ensuring that inventors can always look to us for strong and speedy protection.”

    Perhaps Rai should use her Administrative Law expertise and ask an important quality question: is a state of affairs where significant numbers of patents and/or patent applications are necessary for a business to secure investment a desirable one? If so, for whom is it desirable and why?

    Remember that one of the more disturbing bits of propaganda promulgated by past administrations was the idea that we lived in an “ownership society” and therefore everyone should be able to secure a “speedy” loan so they could “invest” in a house and “share” in the glorious and neverending housing market. Remember how that turned out? Something to think about next time someone asserts that patents are “more important now than ever before” and “essential” for “any business” to survive.

  17. 19

    Professor Rai strikes me as a purely political creature beginning what she undoubtedly hopes will be a steady climb up the ladder. She may turn out to be a legitimate leader with a consistent vision and ideas, or she may turn into a Romney/Lieberman/Spector-type windsock that exists solely to suck up whatever power it can obtain at any moment, purely for its own pleasure.

    Her statement that “from my research, and from my own sister’s experience with her biotech startup, inventors need this protection in order to attract research and development capital,” is a bit much and simply underscores the fact that she has little real-world experience. But since the statement is hardly controversial (at least in the biotech area), it baffles as to why she’d bring up her dubious “personal” experiences in this context.

    Anyway, I wish her luck in her efforts to improve the USPTO and I hope she doesn’t pull a QToddDick move and promote the issuance of whatever garbage keeps the “customers” happy.

  18. 18

    Anyone, and for emphasis I repeat “anyone”, supposedly versed in Administrative Law should clearly realize that the US Code (and associated caselaw) is not the sole determinant of what is deemed “law”.

    Title 35 is a starting point, followed by 37 CFR (which does, of course, implicate the APA set forth in Title 5), followed by the MPEP (which specifies the agency’s procedures for implementing the forgoing), and then followed by policies internal to the agency. While the first is certainly accorded the status of binding law, and while certainly a significant portion of 37 CFR is likewise so entitled, the latter two are certainly relevant in setting forth an agency’s determination of how the law “will be applied”.

    As for Ms. Rai having a technical background, this is perhaps relevant at the micro level in dealing with the contents of applications and issued patents. At the macro level, however, it is virtually meaningless, and the post above suggests that her involvement will be limited specifically to the macro level.

    One commenter above expressed an opinion that Ms. Rai’s familiarity with patent law would likely enable her to become a member of the PTO bar with only minimal effort. I mention this only because I am always amused by patently ludicrous and meritless statements.

    Quite frankly, I believe the patent, trademark and copyright systems are best served by those who have repeatedly gotten their hands “dirty” by working within the system such that the systems almost express themselves within the DNA of those who do so.

    I do have to wonder how many times persons not steeped in patent law from the macro to micro level would quickly discover that many of their pronouncements “the system is broken and in bad need of fixing” would reconsider and change their positions if they had a firm mastery of the entire process by which the system actually works? Certainly I am not suggesting that the systems are without fault. Quite the contrary. I am, however, suggesting that many in academia clammoring for reform haven’t the slightest clue what type of reform would be appropriate to ameliorate seemingly intractable problems.

  19. 17

    Dear anony: methinks thou dost protest too much

    1. There wasn’t any “bashing people without reg. nos.” Having a reg. no., however, is an indicator that someone may have actually applied the PTO’s rules of practice in real-world situations, such as counseling inventors and companies with finite resources about patent prosecution strategy (before real examiners) and portfolio development. I didn’t see any of that in Prof. Rai’s very lengthy CV. (As an aside, since 2000, the paper-based exam passage rate ranged from a low of 37% to a high of 70%. Computer-based exam rates were in the high-50% range a couple of years ago. The exam obviously performs a screening function regarding baseline knowledge of the rules of practice at the PTO, so conclusory statements about who would or would not pass are of questionable value.)

    2. Regarding Fed. Cir. qualifications, there was no statement that being a prosecutor was a requirement, but thank you for enlightening me on the court’s jurisdiction. I may have missed all of the other cases it hears during my semester-long class on the Fed. Cir. taught by the next Chief Judge, Judge Rader. Judge Rader was not a patent prosecutor, but at least his opinions and other writings show that he “gets it” that patent practice is not some ivory tower thought game that is at best tolerant of the concept of patents.

    I agree that Chief Judge Michel has advocated adding non-patent experience to the Fed. Cir., but that appears to be very limited. Back in March, Chief Judge Michel stated that that some of the positions on the Federal Circuit could be filled by judges from other tribunals covered by the court’s jurisdiction, such as veterans’ law, but that at least some future judges should have extensive experience trying patent cases as district court judges. He also stated that candidates with experience as chief patent counsel from corporations should be considered, noting that both Judge Newman and Judge Lourie – two judges eligible for senior status or retirement now – have that background. Thus, even Chief Judge Michel recognizes that a not-insignificant number of the court should have real-world patent experience.

  20. 16

    As to “focus” on biochemistry, a bio states: ” Rai graduated from Harvard College, magna cum laude, with a B.A. in biochemistry and history (history and science), attended Harvard Medical School for the 1987-1988 academic year, and received her J.D., cum laude, from Harvard Law School in 1991. ”
    Presuming the degree is “in” biochemistry, she likely could take the patent bar exam if she wished, unlike the situation with Mark Lemley.

  21. 15

    anony, do you know how I can tell that you’re not a registered patent attorney?

    1) You’re attempting the point that practicing patent law isn’t relevant to understanding how it currently works and what changes are needed.

    2) You fail to recognize that you can get experience on either side of a case, you pretend that judges that have never been in patents can understand what’s going on, and you referenced the ABA in the context of them possibly understanding anything.

  22. 14

    Couple of comments:

    (1) What’s the deal with bashing people without reg. nos? Does Professor Rai qualify? The test is not difficult. She could probably study for a week and pass it.

    (2) Being a prosecutor is not a requirement to being on the Fed. Cir., nor should it be. Let me explain why. The Federal Circuit does not only hear patent cases. A fairly large percentage of its docket involves government contract cases and veteran affairs. In the recent ABA Landslide, Chief Judge Michel stated that he would like to see one of the next vacancies filled by someone with expertise in these areas. Don’t get too narrow-sighted.

  23. 13

    Thanks A N Other for that illuminating report on the performance of the EPO contingent at AIPLA. Colin Philpott, was it? Like many Englishmen, he does tend to come across as a bit condescending, but don’t let that fool you. Underestimate him at your peril. Still, after your rant, you probably feel much better. I’m happy for you.

    Do you have any idea how many hundred patent trials there are, per year, in Germany, and how many thousand inter partes patent trials there are, per year, at the EPO? You should, because so many of them involve clients of US patent attorneys (although perhaps not yours, I suppose).

    Have you any idea how much of current USPTO practice is taken from the EPO? No, I thought not.

    But on one thing you’re right. All this loose talk about “the US patent system is broken”. It does tend to embolden the aliens. Which is a real pain, I’m sure. Never mind. See it as an opportunity, to learn from it and get even further ahead of all the rest of the world.

    As it happens, I’m just today opposing an issued EPO patent. Can’t imagine what got into the Examiners, to allow such claims. At least the USPTO Examiner, in the corresponding US patent application, had good background knowledge and made the right objections. Three cheers for that (female) PTO Examiner and her supervisor.

  24. 12

    Re the comment above that the EPO AIPLA speaker “was highly reminiscent of the committee meeting two or three years ago where some condescending, smug, smarmy representative of the Dudas regime at the PTO got up to “explain” the proposed new rules and treated questioners like ignorant children who would just have to do as they were told. I believe that guy is now looking for a job, or will be soon enough.”
    I assume you were referring to PTO General Counsul Toupin appointed by Dudas? Do you have any information that he really leaving the PTO?

  25. 11

    Rai is amazingly good – at Admin law! We now know that the PTO will get the next rules package correct from the admin law side, but she also almost assures they will get it wrong from the patent law side (if she has input).

  26. 10

    I think the real question is why should we have to put up with Lemley or Rai? Why in the world are people like this even opening their mouths. Go out and practice real patent law for a while and then come back and we can all have a good laugh at how silly you were.

  27. 9

    Makes perfect sense: she’s now in the position to advocate for legislation to give the PTO the substantive rule making power to implement the continuation rules that she applauded in her (and Lemley’s) amicus brief in Tafas. (Once again, people without reg. nos. thinking they know better).

    And it wouldn’t surprise me to see her joining the anti-continuation Kimberly Moore on the Federal Circuit in a few years.

    Perhaps it’s time to step back from the Kappos coronation festivities and adopt a “trust but verify” attitude toward the new folks at the PTO.

  28. 8

    I hope that Prof. Rai will soon appreciate why Prof. Lemley’s academic proposal for a PTO “gold plated patents” system (which she has previously supported) is not practical, and no substitute for much fast effective patent reexaminations, [for reasons not readily apparent to non PTO practioners]. I have explained why in correspondence with Prof. Lemley which is too long for a comment post here. However, I would be happy to share and discuss it with anyone seriously interested.

  29. 7

    Did not see the good professor at the AIPLA annual meetings. Where was she?

    Certainly she has a good deal of work to do on the foreign harmonization front. Some jerk from the EPO got up and tried to explain that “patent quality”, at least in EPO-speak, is all about following EPO procedures consistently. Sort of the equivalent of saying that USPTO quality can be measured by seeing if all 35 USC 112 rejections are made correctly.

    The EPO, (like SIPO really) is for all practical purposes not democratically accountable to anybody. So they send this unprepared, smug, condescending, arrogant [[noun deleted in the interests of decorum]] who blows off the announced topic of his speech (“I can do that in 20 seconds” he says, of an important topic that the attendees might have been interested in hearing addressed substantively).

    It was highly reminiscent of the committee meeting two or three years ago where some condescending, smug, smarmy representative of the Dudas regime at the PTO got up to “explain” the proposed new rules and treated questioners like ignorant children who would just have to do as they were told. I believe that guy is now looking for a job, or will be soon enough. In the case of the EPO representative one can only hope that history repeats itself.

    The thing about it is that it was crystal clear that the question of whether the Examiner actually got it right in terms of allowing claims of appropriate scope for the subject matter invented, and only refusing a grant where there is substantive prior art, is of no importance whatsoever to the EPO.

    In the EPO mindset, inventors are to be treated like criminals, so it is ok to deny them protection for their invention on any technical ground that can be imagined.

    And the other EPO representative had the gall to suggest that the problem was that Americans were too hung up on their history, and were able to approach the problem logically and dispassionately the way the EPO had done. Again, the condescension.

    It clearly never occurred to her that what American inventors are concerned about is having their property rights confiscated notwithstanding the fact that their disclosure is enabling and there is no substantive prior art upon which to base a substantive rejection.

    It also, apparently, didn’t occur to either one of them that the US has the most sophisticated patent system in the world. The US has perhaps 100 times as much patent litigation as the rest of the world combined. It has an enormous body of caselaw that dwarfs all other jurisdictions combined. That case law has gone much farther that any other comparable body of jurisprudence to converge on economically efficient results. The EPO cannot get its head around the idea that maybe, just maybe, Americans are the leaders in IP, and that sometimes Americans know what they are talking about. But these people look down their noses at American patent law.

    At a really profound philosophical level, the EPO just does not get it.

    Yes, Professor Rai has her work cut out for her. She might want to seek the help of some of the senior AIPLA practitioner members who were present on the panel. They may be able to help her understand the real lay of the land.

  30. 6

    Judge Rich was so good on the bench and so good at what he did because he actually was a patent attorney before being appointed to the bench. J. Rich’s background should be a model for future appointees to the PTO and to the Fed. Cir.

    Moore should be the model for what to avoid when making an appointment to the Fed. Cir.

  31. 5

    keep your friends close and your enemies closer. better in the Office than on the bench.

  32. 4

    It is very disturbing that academics get so much respect when the reality is that they know very little, but have spent a great deal of time learning to blow smoke.

  33. 3

    While in law school I wrote a paper proposing that the USPTO be given rule making authority to solve some of the problems. After graduating from law school, and practicing litigation, transactional, and prep and pros, I am sure that this is the wrong way to go.

  34. 1

    “As I know from my research, and from my own sister’s experience with her biotech startup, inventors need this protection in order to attract research and development capital. The challenge we face at the USPTO is ensuring that inventors can always look to us for strong and speedy protection.”

    Gimme a break. Rai is going to have to work long and hard to shake the image ingrained in our minds of her as a proponent of “the rules.”

    But I suppose I’m willing to give her a chance to redeem herself.

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