The USPTO has been without a director since the end of
January. Its deputy director, Teresa Rea, who had been assuming
the duties of director, left the office last month. So one
would have thought yesterday's appointment of a deputy director
to fill one of those vacant slots would have been met with
But the appointment of Michelle Lee has caused
a stir, and no small amount of confusion.
Lee's involvement at the USPTO in any capacity is
controversial because she is a former Google employee, a firm
viewed as anti-patent by many.
With the director spot still open, there is speculation Lee
is now in pole position to take the top spot. Reactions to her
appointment included speculation she might eventually take the top
job, from IBM's chief patent counsel and this from a Reuters legal reporter.
Lee will leave her job as director of the USPTO's Silicon
Valley satellite office and begin her new role at the agency's
headquarters in Alexandria, Virginia, on January 13 2014. Lee
previously served two terms on the USPTO's Patent Public
Advisory Committee. Before that, she was deputy general counsel
for Google and the company's first head of patents and patent
Is it legal?
The appointment has also sparked another contentious debate.
Dennis Crouch, professor at the University of Missouri School
of Law and editor of the respected PatentlyO
blog, notes an interesting question thrown up by Lee's
appointment: can she be appointed to deputy director at all
given the lack of a director to nominate her?
In a blog post, Crouch wrote: "Lee's appointment does have
a genuine statutory problem. In particular,
the statute requires that a Deputy Director be appointed by the
Secretary of Commerce 'upon nomination by the [USPTO]
Director.' 35 USC § 3. Because there is no Director, there
could be no such nomination. One reason why there is no
Director is that position requires Senate approval (as required
by the Constitution), and the President's approach here appears
to be an attempted end-run around that process."
Crouch says that the USPTO told him that Peggy Focarino,
commissioner of patents at the agency and the highest ranking
employee until Lee's appointment today, had the power to
nominate under the statute because she has been handling all
the duties of the director. This has not convinced all. It was
branded by Hal Wegner, partner at Foley & Lardner, in his
well-read newsletter to the industry as "so bizarre, so
I put in a call to the USPTO and was assured that everything
was above board. The deputy director is nominated by the head
of the agency. That was in effect Focarino, and the secretary
of commerce then selected her.
What is the role?
Further confusion has been posed by Lee's role in the
absence of a permanent director. Lee will perform the functions
and duties of the USPTO director, a position that has been
vacant for almost a year. The USPTO's press release on the
appointment noted: "In accordance with statutory law, she will
assume the title of 'acting director' once President Obama
nominates a director."
It is far from clear when that will be, if ever, given the
director spot has been open since David Kappos left the USPTO
at the end of January.
So in effect, and as noted by Crouch, Lee will be acting as
the director but she will not be "acting director".
This may be nothing more than semantics. People were less
concerned that this was also the situation under part of Teresa
Rea's time as deputy director. Rea was in effect running the
USPTO after Kappos left but she stopped holding the title of
"acting director" after 210 days because this limited time
period is required by law. That did not stop her doing the same
The most important ramification from all of this is that Lee
is now running the USPTO, and could continue to do so for a
while even if she does not get the job of director.
The appointment of a deputy at all is to be applauded. The
AIPLA has previously warned that the USPTO "was becoming a crisis situation" with the
director and deputy roles vacant.
This will go some way to easing those fears. Indeed, the
AIPLA released a positive statement after Lee's appointment,
although it also expressed its hope that a nomination for
director would be forthcoming soon.
Lee will now be watched for any indications of being overly
sympathetic to the viewpoint of her former employer Google.
These concerns are probably overblown. On the issue of a Google
bias creeping into the USPTO as a result of the Lee's
appointment, Crouch is sceptical.
"There is some trepidation (or enthusiasm, depending upon
your perspective) that she will strongly advocate Google's
anti-patent stance. I suspect, however, that the result will be
pushing for higher quality examination that better ensures
clarity," he said.