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Somebody once told Jon Dudas that the shorter your title, the more important you are. Dudas has two: acting undersecretary of commerce for intellectual property and acting director of the U.S. Patent and Trademark Office. The 17-word label would indicate that Dudas’ job is inconsequential, but reality may say otherwise. For an interview with Legal Times last month, Dudas rushed in a few minutes late and apologized for his tardiness. He had been meeting with Commerce Secretary Donald Evans to discuss their upcoming trip to China. Dudas’ task would be to convince Chinese officials to enforce their IP laws with greater vigor. Back at home, the acting PTO director has more work awaiting him. He heads a 7,000-employee agency facing an overhaul in nearly every aspect of its operations at a time when its work is considered key to the U.S. economy. So scratch that theory. You need 17 words just to explain what Dudas does. In March, President George W. Bush formally nominated Dudas to head the PTO. The 35-year-old Illinois native first joined the office in 2001 as second in command to then-Director James Rogan. When Rogan left in early 2004, Dudas took over temporary leadership. Easily approved by the Senate Judiciary Committee, the “uncontroversial” candidate, as Dudas is often described, is awaiting official confirmation as of this writing. In his conversation with Legal Times, Dudas talked about some of the challenges he faces under both his titles. The primary goal of the 21st Century Strategic Plan, a blueprint for change written under his predecessor, is improving patent quality, says Dudas. Critics within the patent bar have complained for some time now that the PTO has not kept up with complex new technologies. Dudas rejects that suggestion, but says there is always room for improvement. And “we can improve quality just by improving our system,” he says. One step is to change the way the PTO hires and trains employees, he says. This spring the agency implemented a new certification exam and more periodic training for patent examiners. While examiners received training before in their specific technology areas, they now take additional classes for the certification exam. Another effort to address quality is a proposal to institute a formal administrative process by which third parties can oppose issued patents. Opposition proceedings would expand on the current, more-limited process for third parties to request patent re-examinations. “There is a need to have something short of litigation, but more expansive [than re-examinations],” says Dudas. The House Judiciary Subcommittee on Courts, the Internet, and Intellectual Property held a hearing last month to discuss post-grant oppositions. Chairman Lamar Smith (R-Texas) noted that the witnesses — who included PTO General Counsel James Toupin — were unusually unified in their testimony. All agreed that an expanded post-grant review process would likely improve the patent system. Besides the quality debate, the PTO is struggling with a flood of applications. The office received about 1.6 million applications and issued about 900,000 patents over the past five years. To alleviate the backlog, Dudas says he needs outside help. He advocates outsourcing prior art searches to private firms. Under a bill pending in Congress, the PTO would create an outsourcing pilot program. Not everyone likes this plan. PTO employees question whether outsourcing is right for the agency and for them, Dudas admits. The Patent Office Professional Association, worried that outsourcing could threaten examiners’ jobs, warns on its Web site that outsourcing could negatively “affect the nature and integrity of patent examination.” Before the agency can improve patent quality or alleviate its workload, however, it needs more money. Dudas is hopeful that a proposal in Congress addressing that need will soon become law. The United States Patent and Trademark Fee Modernization Act, approved by the House of Representatives and the Senate Judiciary Committee, sets out fee increases for PTO services. Last month, the House Appropriations Committee approved a bill that would give the PTO $1.5 billion in fiscal 2005, assuming the fee bill passes. Dudas knows he is not the only one with plans to change the PTO. Private lawyers, trade associations, and other federal agencies have had a lot to say. In the last year, the Federal Trade Commission and the National Research Council of the National Academies have released comprehensive reports with detailed recommendations for improvement. Dudas is accepting in theory. “We welcome any and all views,” he says. But he does not rush to embrace all recommendations. The FTC made “good suggestions,” he says, but adds that a number of issues may not have been “fully vetted.” For example, he questions the FTC’s proposal that the burden of proof for challenging patent validity be lowered to a “preponderance of the evidence.” Currently, challengers must prove invalidity by “clear and convincing evidence.” While running the PTO keeps him busy, Dudas must still find time for his policy-making duties. As deputy undersecretary of commerce, he advises the Bush administration on IP policy. Protecting IP overseas has become a top priority for the administration. Dudas and Commerce Secretary Evans have visited China twice this year — in March and June. Dudas is also actively engaged in advising the U.S. Trade Representative on free trade agreements and other treaty negotiations. Dudas identifies “geographical indications” as one of the more significant international issues. The European Union and other countries seek to restrict use of a range of words that might suggest geographic origin to goods from those specific locations. Yet many of these words — such as “parmesan” and “feta” — have come to been viewed as generic in the United States. So the PTO generally opposes the EU’s effort. At the same time, Dudas is working with the EU and Japanese patent offices to harmonize application processes. The offices already exchange the results of prior art searches, notes Dudas. Ultimately, the idea is to accept each other’s search results and thereby to share the workload. Right now, the governments are considering setting up a pilot system. But “to exactly implement it is a further step,” says Dudas. With all the issues on his plate, Dudas knows he can’t run the PTO alone. His role is to give “clear guidance and direction but to trust the experts at the PTO.” Says Dudas: “I don’t intend to somehow advance my thoughts without their experiences.” Christine Hines is a reporter at Legal Times . She can be reached at [email protected].

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