Lee's USPTO appointment causes a stir

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 relief.

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 strategy.

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 bizarre!"

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 fine job.

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.

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