Since the Trump Administration has come into office, those of us in the patent community have had to engage in a bit of Soviet-style Kremlinology: there’s been no word on who the USPTO Director or acting director is, the USPTO isn’t commenting, and we’re all-but reading tea leaves. Unfortunately for patent applicants, it matters.
The Director and Deputy Director of the USPTO are both political appointees who serve at the pleasure of the President. Michelle K. Lee was President Obama’s last USPTO Director, and some sources indicated that she resigned effective at noon on January 20th, as would be typical of all presidential appointees when a new president is inaugurated. The incoming administration sometimes asks those at the Under Secretary level (the Director is formally also the Under Secretary of Commerce for Intellectual Property) to stay on in order to ensure a smooth transition. However, it’s unclear exactly what’s happening at the USPTO. The Department of Commerce website lists the USPTO Director position as vacant, and the USPTO itself has refused to comment. The situation is so unusual that it’s received notice throughout the industry. The only definitive clue: 35 U.S.C. § 153 requires the Director’s signature on the official grant of all issued patents, and Michelle Lee’s signature has been on the last few weeks’ patents. Thus, by law, she must still be Director.
Why does this matter? While the USPTO does not issue regulations that have the force of law like some government agencies and departments do, the policy positions that the USPTO takes, the initiatives it sponsors, and the internal work rules it establishes have a profound effect on who gets patents, how quickly patents are issued, how court decisions on patent matters are implemented, and how proceedings to invalidate or curtail existing patents are handled. Simply put, if you’re trying to get patents, if you or your company own patents, or if others have accused you of infringing patents, it matters very much who the Director is.
As one example, in 2010, President Obama’s first USPTO director, David Kappos, worked with the unions at the USPTO to dramatically change how patent examiners receive credit for their work. The changes spread the “counts” or credit that the examiners receive over more of the process, thereby giving patent examiners more incentive to be attentive throughout the examination process. Director Kappos also pioneered new rules by which patent applicants could pay more to put their patent applications at the head of the line for examination. These changes made it easier for a number of inventors to get patents. Since the Supreme Court decided Alice v. CLS Bank in 2014, which vastly altered the basic analysis for what sorts of things are patentable, the USPTO under Director Lee has worked hard to provide consistent analysis and direction for applicants against a shifting and uncertain scene in the courts.
Ultimately, while the USPTO is staffed with thousands of dedicated, smart public servants, and patents and trademarks will continue to be issued regardless of who runs the Office, good leadership can move the Office in a direction that helps applicants and provides clear rules and direction for those who own and use patents and trademarks.
35 U.S.C. § 3 requires the USPTO director to have “a professional background and experience in patent or trademark law,” but that phrase has been interpreted in a number of different ways. Directors generally fall into one of two categories: patent and/or trademark attorneys, or attorney-politicians drawn from elsewhere in government. President Obama’s preference was for patent attorneys — Directors Kappos and Lee were both senior patent attorneys in industry when they were tapped to serve, Director Kappos from IBM and Director Lee from Google. President George W. Bush’s two directors were attorney-politicians, Director Rogan a former U.S. Representative, and Director Dudas a former Congressional staffer.
Who’s going to be the new USPTO Director? Your guess is as good as mine…