Category: Konnect

Romulo (Rom) Delmendo is a KAIPO member who retired in Dec 2020 after serving at the USPTO for 30 years. He is now a partner at Davidson Berquist Jackson & Gowdey, LLP.

Q: Tell us about your background.

I was born and raised mostly in Seoul, Korea (but our family lived in Daegu for a short while when I was about 3-4 years old because my father was stationed there). My father, who is from the Philippines, had been transferred from Japan to Korea (after the 1953 cease-fire Armistice) as an engineer in the US Army Corps of Engineers. There, he met my Korean mother, who spoke English and was working as a secretary for one of the US Army officers. I attended American schools in Korea, graduating from Seoul Foreign School in 1979, and then went on to engineering school in the United States, graduating from Stevens Institute of Technology in 1983.

Q: How did you get interested in the IP field?

When I was working as an engineer in the NY/NJ area, a colleague told me that most engineering jobs have limits and that I should consider becoming a patent lawyer. I asked him how I can become one, and he answered that the best way to accomplish this was to join the PTO, which, according to him, paid at least some tuition money for law school. The career change possibility was intriguing, although based on information I had previously gathered when the PTO recruiters came to our college campus, I knew the PTO did not pay a competitive starting salary. It was this advice from my colleague that planted the seed for my eventual decision to apply to the PTO. (The last time I checked, my colleague, who had looked into the PTO himself, stayed on in the same engineering career. After joining the PTO, however, I did convince another colleague to move down from NJ to join the PTO, and he still works as a Primary Examiner.

Q: When did you join the USPTO and how did you learn about the careers as a patent examiner and/or an administrative patent judge?

I was hired in the early part of 1989 to help in the PTO’s “18 by ‘89” campaign (reduce pendency to 18 months by 1989). I have to tell you an interesting anecdote when my SPE called me during the hiring process. He called to ask me whether I was still interested in the job. I answered: “Yes.” Next, he asked: “When can you start?” I was confused—I asked him: “Aren’t we going to have a personal interview?” He answered: “This is the interview. Do you want the job or not?” Again, I answered in the affirmative. Then, he told me what my salary was going to be—and, disappointingly, it was going to be a huge pay cut. I politely thanked him for his interest in me but told him that I could not move my family to Virginia for that kind of pay. He then mumbled something about how he could not understand why I would want to work anywhere else. We ended the conversation, but the very next day, he left a message for me through my wife. He told my wife: “Tell your husband we will meet his price.” Although he could have conveniently moved on to the next applicant, he thought enough of me to take the time to talk to the Group Director about me so that I could start at step 10 instead of step 1. While the step 10 salary was still a pay cut, we could live with it, so my wife and I decided that I should accept the offer. Indeed, but for my SPE’s interest in me and his persistence, I would have had a different career path. He is truly an 은인, and I owe him everything for what I am today.

As for the APJ job, a former mentor in one of my detail assignments and Judge Pak were already on the Board. They kept me apprised of any job announcements.

Q: How did you decide to transition from being a Patent Examiner to an Administrative Patent Judge (APJ)?

By GS-11, I was an established examiner and would have been satisfied to spend the rest of my career examining olefin polymerization cases. But my SPE, who was a lawyer and Judge Chung Pak, who was also an examiner at the time, encouraged me to apply to law school. In our examining group, the Director and most of the SPEs had law degrees, and many young examiners in the art unit either had law degrees or went to law school in the evenings. In fact, two of my fellow art unit members later joined me at the Board. As an examiner, I wrote numerous answers (about one or two every month), and enjoyed reading the decisions I got back from the Board, imagining that I might have the opportunity someday to write such well-written decisions. To get to the Board, however, I needed legal experience. So, after passing the bar, I applied for and accepted a GS-15 Legal Advisor position in the Office of the Deputy Assistant Commissioner for Patent Policy and Projects. There, I had the opportunity to study the rules in depth by working on the 1997 Patent Practice and Procedures Rules package. But because my ultimate goal was to get on the Board as an Examiner-In-Chief (EIC, now APJ), I needed more diverse experience and briefly left the Office to work as a patent attorney on the outside. Subsequently, I applied for and was fortunate to be selected as an EIC.

Q: Do you have any memorable cases that you’ve presided over?

I am so fortunate to have been APJ#1 (authoring APJ) on numerous significant cases that matured into important legal precedents—In re Bigio (BRI and same field of endeavor test), In re Klopfenstein (printed publication/public accessibility), In re ICON Health and Fitness (BRI and same or similar purpose test), In re Basell Poliolefine (double patenting), In re Baxter Int’l (PTO operates under a different mode of claim construction and different standard of proof than in district courts)—to name a few. The dissents by Judge Newman in at least a couple of these cases are interesting. Of the cases listed above, my favorite is Bigio (hair brush obvious over toothbrush).

Q: What are some things that you wish you had done differently if you were able to wind the clock back? Any particular time you would like to go back to?

I sometimes wish I had finished my Master’s degree work. I had taken all the courses but never submitted my thesis, although the laboratory research work had been completed. Had I completed the work, I probably would have applied to get on the PhD program, which could have led to other opportunities. Two of my best high school friends from Seoul Foreign School took that path. I just wonder what that alternate universe, which my late mother had wanted me to take, would have turned out to be. Overall, however, I am satisfied with the choices I have made.

Q: After your retirement from the USPTO as a PTAB judge, you have been a partner at a private law firm. How did you decide to retire and start a new chapter as a partner?

I had always planned to retire from the PTAB after 30 years of federal service. For years, my partners at the firm, who are close friends, had tried to persuade me to join them, but I had refused, arguing that I needed to put in my 30 years so that I can get my pension. (They snickered at me when I had told them what my pension would be.) I just thought the 30-years point was a good time to go out and do other things. I am proud and honored to have served as an APJ at the Board.

As a side note, it will be interesting what the Supreme Court will do with the Board in Arthrex. To my knowledge, and as Justice Kavanaugh pointed out, the PTAB is the only tribunal in which judges within an agency exercise significant decision-making authority without oversight as to the decision.

Q: Do you have any advice for anyone who may be considering or transitioning into a new position or career? Particularly in their later years?

Keep doing what you are doing if you are completely satisfied in your job. The PTO offers unparalleled benefits, flexibility, and security. In these uncertain times, it would be unwise to make a career change or transition unless you have something lined up and have put in enough years to survive on a pension and your savings in case things go sour.

Q: Do you remember how you first met a Korean American colleague at the USPTO? Can you share your memory of any Korean-American community at the USPTO when you first joined?

Yes, the first Korean American I met was Mr. Christopher Shin, now a senior examiner who had been hired by an SPE who later became my Chief at the Board. Mr. Shin and I were in the same PEIT class. Mr. Shin came to our condo for dinner at least a couple of times, and we even attended his wedding in Long Island. I think we leaned on each other at the time because we had both moved down from the NY/NJ area. Then, I met Ms. Kay Kim, who later became Director of Quality Review when it operated independently from the examining corps. She was a superstar biotech examiner. Around the same time, I also met Mr. Yong Lee (who has left the PTO) in Crystal Plaza 2. Mr. Lee introduced me to Mr. Tae Ho Yoon, who is a Primary Examiner in TC1700. Mr. Shin introduced me to Mr. Do Hyun Yoo, who is now in Quality Review. I have had monthly/quarterly lunches/dinners with Mr. Yoon and Mr. Yoo for nearly 30 years (and more recently also Mr. Jung Ho Kim of TC 2800), although this tradition has been suspended since Covid. Later, I met Judge Pak when he was an examiner. Judge Pak and I served on the Board together for 18 years. I have also had the pleasure of working with another outstanding Korean American APJ—APJ Daniel Song on many important appeals (including an inter partes appeal involving a Callaway golf ball).
Also, I had the pleasure of working with Mr. Patrick Lee (formerly an examiner in TC 2800) when he served on a detail at the Board.

Q: What is something that the KAIPO members may not know about you?

My favorite food is kimchee chiggae. Of course, having been influenced by my mom’s Jeonju style cooking, I am partial to Korean food compared to my father’s Filipino adobo, which is good but not as good as my mom’s kimchee chiggae.

Q: What is one of your mottos or principles that you abided by in order to stay focused and motivated every day and out?

I reminded myself that what I did at the PTO was important. I tried to be fair in my decision-making, always placing myself in the applicant’s, the appellant’s, or examiner’s shoes. The most satisfying compliment I ever received in my career was a phone call from an inventor many years after I had rejected most of his claims—it had even gone up to the Board at one point. He called to thank me for what I had done, because his patent had held up in litigation and licensing. He told me that all the issues that I had raised during examination made everything proceed smoothly.

At the Board, I was humbled and overjoyed whenever the Court said that we did a nice job or when a colleague thanked me for providing a case citation that fit the situation. It was these little things—not money or high performance ratings—that motivated me to give the best in every case. I failed many times, but overall, I think my approach worked. By giving your best, your colleagues take note and that is how respect is earned.

Q: Do you have any words of wisdom for your colleagues at the USPTO?

What you are doing makes a difference, and you are the public’s gatekeeper. As Judge Newman said in Blacklight v. Rogan, the issuance of sound patents is critical to our Nation. I wish you continued success in your future endeavors.