It was three months ago that David Kappos, director of the United States Patent and Trademark Office (USPTO), announced the Trademark Next Generation project, with the ultimate goal of complete end-to-end electronic processing, both internally and externally. Such a move necessitates a fundamental overhaul of the current trademarks IT system, and this week WTR sat down with Kappos to find out how the agency intends to build a system that will remain relevant in the years to come.

When announcing the project Kappos outlined the possibility of users being able to manage applications and registrations online, as well as benefit from an automated ‘watch’ service to notify requestors of status changes in applications and registrations. Speaking to him at the IP Business Congress in Munich, a more ambitious picture emerged. He explained: “What we are trying to accomplish is to enable trademark owners to interact so extensively with their trademarks via the USPTO that they can actually manage their portfolios via our capabilities. So they can do everything they need to do relative to filing, prosecuting and, following grant, maintaining and leveraging their portfolio through the USPTO. In terms of the infrastructure, then, we want to move the system to a virtual environment, which enables the system to work in a more scalable manner and handle dramatic changes in workload.”

Earlier this month the USPTO teamed up with Google to offer bulk trademark data free to the public, recognizing that it just didn’t have the capability to offer this service itself, so there is clearly significant work needed to achieve this overhaul. As anyone with experience of IT projects knows, the path will be a bumpy one. Kappos acknowledges this, telling WTR: “I worked in the IT industry for about 25 years and know these projects are never smooth. It’s like a marriage – things will go wrong and you have to have a relationship that is stable, can weather some storms and involves good communication. So I’m not planning on everything going right – in fact, my experience tells me to plan on plenty of things going wrong, no matter how hard we try. So we won’t cry when there are problems. What we will do is use an approach that allows us to correct things that go wrong quickly, rather than address them way down the road when it becomes even harder to correct them.”

To achieve this, the agency is moving towards the 'agile procurement' style: “Instead of using traditional federal procurement technique where you write a long specification list, consisting of hundreds of pages with thousands of requirements, and give that to a vendor, then wait for three or four years and hope that they produce what you want them to (and more often than not they don’t), the agile approach uses a series of iterations, very closely spaced. So we expect to be developing individual functions and components on a monthly basis, and that way if something goes wrong or we get a deliverable that was not what we expected, it is not a big deal. We don’t need to resort to blows over it, because it is only one month lost. By working together and iterating it you take a relationship that was almost bound to be contentious and you translate it into a functional one.”

Happily for users, reliability will be a core requirement. Kappos notes: “It will be much more fault tolerant, meaning that if a particular piece of hardware or software goes down somewhere, the system does what it needs to do to correct that and continues running, so that no member of the trademark user community sees any change in their interface as the system adapts to changing environments.”

In terms of timeframes, Kappos gives a ballpark estimate of two years to launch, depending on the federal procurement process. By its very nature, technology never stands still, meaning there is the risk that, come launch, the system could already be dated or at least quickly become so. To overcome this, Kappos reassures: “It will be a requirement to bid successfully for our IT projects that the vendor be able to show that the architecture they have selected will be able to quickly add new functions and features. The reason for this is that, unlike the IT requirement of many businesses, the trademark environment in which the USPTO operates is subject to frequent change – change because of court decisions and new statutes, change because we altered the code of federal regulations that govern trademark practice, change because of treaties. So you have to get used to the notion that the system will be an ever-evolving organism and, when you start from that premise, you are comfortable with the notion that the architecture has to be able to adapt at every level.”

So a user-led system that adapts to change and offers a seamless service through which trademark owners can effectively manage and leverage their portfolios. An ambitious goal perhaps, and one that will no doubt create a few headaches along the way, but given his background at IBM it is one that Kappos is well-positioned to deliver.

The full interview with David Kappos will appear in the next issue of World Trademark Review.