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Thursday, August 22, 2019

Attorneys pushing for more face time with patent examiners

By Jessica M. Karmasek | Sep 26, 2014

MENLO PARK, Calif. (Legal Newsline) - All Arrienne “Angel” Lezak wants is to meet with a patent examiner, in person.

Lezak, a former patent examiner-turned-patent attorney, is downright frustrated with the lack of face time with examiners these days.

And so are her clients.

“When I was an examiner, I had about 10 people in that three or four years that came in and talked to me in person (about their applications),” said Lezak, who is a partner at the California office of Kilpatrick Townsend & Stockton LLP.

She specializes in the procurement of intellectual property rights in the fields of 3D computer graphics, computer animation, 2D image processing, game systems, musical notation software, virtual machine architecture, business analytics software, audio technology and web-based technologies.

When Lezak was an examiner at the U.S. Patent and Trademark Office, she focused on computer/electrical arts.

“When people came in and talked to me, I got through their cases very quickly,” she said. “For the people who called, or even did video conferencing, it was often much more difficult to help them.”

Meeting with examiners allows innovators to show how an invention or product works, first hand.

Often, Lezak found, seeing the item or technology up-close -- and having the inventor and attorney on-hand to demonstrate or answer questions -- better served her as an examiner.

But things have changed, and Lezak said examiners don’t want to meet with her, or colleague Thomas Franklin.

“It’s so frustrating,” she said. “They don’t want to meet with you anymore. They’re working from home, and they don’t want to come into the office. They just don’t want to do it.”

Franklin, a partner at Kilpatrick Townsend’s Denver office, said examiners often “take an attitude with you.”

“It’s like, no, I’m not willing to drive the 20 minutes it takes to come into the office,” he said.

Franklin, who previously worked as an engineer at Lockheed Martin and also worked in semiconductor fabrication facilities at the Naval Ocean Systems Center, specializes in the areas of software, Internet technology, content delivery, business methods, clean technology, circuit design, imaging arrays, cryptographic design, telecommunications, electronic design tools, wireless communications, networking and telemetry systems.

He said in the last three to four years he has noticed a significant drop-off in examiners’ willingness to meet in person.

And he knows -- he’s been keeping track.

“It was about 80 to 85 percent in 2011 (to get an in-person interview with an examiner),” Franklin said. “Then, it fell to 70 percent the following year. Then, to 60 percent last year. I think this year, it’s running at about 40 percent.

“It’s falling like a knife.”

The Washington Post reported in August that an internal investigation by the PTO revealed that its work-from-home program -- a business model designed to save on costs and help attract and retain examiners -- was resulting in fraud.

According to the Post’s report, the investigation -- prompted by complaints from a group of whistleblowers -- found that a number of examiners repeatedly lied about the hours they were working and, in some cases, were paid overtime and bonuses for work they didn’t do.

Last week, Michelle K. Lee, the PTO’s deputy director, told employees in an email that time and attendance fraud is “unacceptable” and will be “met with appropriate disciplinary action.”

The U.S. House Oversight and Government Reform Committee now is looking into the investigation’s findings.

While the alleged fraud and lack of in-person meetings with examiners are disconcerting, Franklin and Lezak said what is even more troubling is that there is no sense of urgency at the PTO.

“It’s not a hyperbole,” Franklin said. “What if someone has developed a drug that could potentially save 10,000 lives -- but if they don’t get a patent for it, they’re not going to get the money they need to spend on human trials?

“Sure, a lot of patents are just for usability things -- you know, things that make life a little easier. But there are quite a few of them that have some big-time implications when it comes to saving lives, saving jobs, really big issues.”

Franklin said he doesn’t know of any other area of government that a person can’t meet, in person, with his or her decision maker.

“I can meet with my IRS agent. I can meet with an EPA official. I can go to the DMV and meet with a manager. I could probably get in to see someone with my U.S. senator,” he said.

“Basically, everyone except for someone at the patent office.”

Lezak said the problem with the PTO’s work-from-home, or telework, program is there’s no accountability.

“They really have no idea where (examiners) are,” she said.

“And all they’re really tracking is production. Is the examiner making his or her count? But you can’t track quality that way.”

Both Lezak and Franklin said they have taken their concerns directly to the PTO -- and weeks ahead of the Post’s report, they noted -- but not much has come of it.

One of their suggestions: provide an attorney with a satisfaction survey each time he or she has an interaction with an examiner.

“They liked that, that seemed to resonant with them,” Franklin said, but added that the agency’s union most likely would oppose it.

Lezak pointed out that the survey could work both ways -- examiners could review attorneys, too.

“They’re are ‘bad egg’ examiners, but they’re are ‘bad egg’ attorneys, too,” she said. “There are some attorneys out there who could write a bad review of an examiner just to be a jerk.”

The bottom line, they said: face time is a must.

“(Examiners) need to start meeting with us,” Franklin said. “They have to stop fighting us on this.

“These are really, really big issues. The patent system is really the core to capitalism. If you take that away, I don’t know what happens.”

From Legal Newsline: Reach Jessica Karmasek by email at patents@legalnewsline.com.

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