Exclusive Interview: USPTO Deputy Director Terry Rea
|Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: March 31, 2011 @ 7:09 pm
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On February 17, 2011, Teresa Stanek Rea was announced as the new Deputy Director at the USPTO. Rea, who is known both inside and outside the Office as “Terry,” took the mantle of U.S. government employee with the longest title; Rea’s full title being Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office. I recently had an opportunity to sit down with Terry for an interview in her office on the campus of the USPTO in Alexandria, Virginia.
Terry is no stranger to the intellectual property world. She is a former President of the American Intellectual Property Law Association (AIPLA), and a long time patent practitioner. As you will read in the interview she started her legal career in 1980 and obtained her Registration No. in 1982, which has temporarily taken away given she cannot represent others now that she is Deputy Director of the USPTO.
I found Terry to be extremely knowledgeable and very easy to talk to, which should probably read that I perceive her to be a patent geek just like me. A geek in a good way, of course. Those patent attorneys and agents reading know what I mean. We so enjoy what we do and so infrequently get to talk to anyone about it with anyone who really cares, so when we do the conversation is a blast. Terry Rea has been immersed in everything patents, from prosecution to opinions to interferences and litigation, and I get the sense that she loves patents and innovation. I thoroughly enjoyed my conversation with her.
Without further ado, below is part 1 of my 2 part interview with Terry Rea.
QUINN: Thank you very much for taking the time to chat with me today. I appreciate it. One of the things that I thought we might start with is just how are you enjoying working for the USPTO so far? I know this has probably been a pretty big change for you.
REA: The Patent Office is fascinating, it’s exciting. It exceeded my expectations. Today makes the start of my third week. So I haven’t been here all that long. The people are as talented as I had always imagined. They’re truly dedicated. I guess I didn’t appreciate how much goes on here at the patent office, though. I must say I was overwhelmed with the number of meetings. I still have only touched the tip of the iceberg in terms of what’s being handled here. But not only was patent reform going on, but Dave has a vision it’s about time for patent harmonization, and so we hosted some talks on that here two weeks ago. So I’ve already met many heads of offices that ideally, that Dave already knows well and that I’ll get to know better at future meetings. But I marvel at how dedicated these people are here. And how they’re all on task and they’re all focused. And there’s somebody who specializes in everything here. And I’m not new to this game. You know, I have a registration number of 30,427. I’m no longer on the website so that’s probably important information; it’s no longer publicly assessable, because I dropped from the rolls. But I’ve been doing this since early ’82.
QUINN: Now, let me ask you about that, dropping from the rolls. Is that something that when you’re no longer here as Deputy Director that you will automatically reappear on the rolls?
QUINN: Have you gone inactive?
REA: Correct. The rolls are for third parties, the Office of Enrollment and Discipline keeps a list of active patent agents and attorneys, and my name can’t appear on it because I can’t represent anyone before the Office. So I get obliterated. If you look up Dave [Kappos] he’s not there. If you look up me, I’m not there. It is a little bit disconcerting, though, I must tell you.
QUINN: Right. But they’ve assured you you’re getting it back?
REA: I think as long as I do a good job here they’ll do it. [Laughter]
QUINN: Okay. Now, you mentioned harmonization there. Now, I know that harmonization is not, well, not necessarily a four letter word.
QUINN: But when a lot of people hear harmonization, they hear a four letter word, or they hear conspiracy, or they hear global world. Can you give us an idea of what may be—is this just preliminary talk to see where it goes or is there maybe something that you’re trying to accomplish? I know work sharing is a big part of that, right?
REA: Correct. Because we’re all communicating and talking with PPH (Patent Prosecution Highway), so PPH is a big thing. Work sharing is a big thing. I don’t think that realistically Dave envisioned that we can have complete harmonization across the board with everything. But to the extent that we can harmonize our laws and make them a bit more consistent with other countries, that will make it easier for us to have that one unitary application concept and maybe easier ways for us to enforce our patents. But for instance with the U.S. right now with patent reform, for people outside the United States to see how close we are to potentially going to a first to file system, they are impressed. But at the same time we’re emphasizing that hand in hand with that goes grace period. So now people realize that we’re serious, we want a best practices approach so when you hear harmonization don’t hear four-letter word. What you should think of is best practices. And we’d like to think that with S. 23 and whatever bill comes out of the House that we’re developing the best system possible and we’d like to see other countries, everybody converge to the extent possible.
QUINN: So more on a process level, not a substantive—
REA: Even on a substantive level. Because a lot of countries don’t have the grace period, for instance. And we’re also looking at the potential of prior user rights. Concepts that a lot of people in other countries don’t have. So those are substantive type issues that we’re trying to—if we’re going to do best practices with our legislation here in the U.S. and that we really believe what we say, which is what we’re implementing right now, that we actually have the attention from people outside the U.S.
QUINN: Right. I just get a little panicky because from a patent eligibility standpoint the U.S. has always had the broadest idea of what is patentable.
REA: Chakrabarty, “anything under the sun.”
QUINN: Exactly. And now we can thank Bilski, too, because business methods, at least some, although we may not know what they are, but at least some are patentable and software continues to remain patentable. Whereas business methods and software are just flat out not patentable in many other places. Or they say it’s patentable but then never find that innovation that actually qualifies.
REA: Yes. And even in my world, biotechnology, for instance, a lot of that is statutorily not considered to be patentable subject matter, and some it’s more judicial. But we might not be able to get perfect, precise harmonization, so there might still be some anomalies as certain technologies advance. And not everyone might be on the same page at the same time, but to the extent that we can get everybody agreeing on a basic framework and then we can build from that. But I don’t think we’re talking about perfect harmonization; there are too many stray cats, United States included.
QUINN: Right. And so you then you don’t envision that a curtailing of what is patent eligible—
REA: In the United States?
REA: Definitely not.
QUINN: Okay, good, good. Well, I don’t want to get too bogged down at the moment. I know we can circle back and talk about patent reform. But one of the things I like to try and do is get to know the people who I interview, because so many of the folks in the industry are never going to get a chance to meet you or really know you. So I can probably guess why you might have found this position attractive and why you might have left a very successful private sector career. But can you tell us in your own words why did you make the leap into the government?
REA: As I indicated I’ve been doing this since 1980. And I was corporate from 80 to ’84, and I’ve been in private practice since ’84 both with a patent boutique and a large general practice firm. And because I used to be president of AIPLA from 2008 to 2009, I was exposed to an awful lot. I have a vague idea of what was going on there at the PTO and internationally. And it just seemed like a good transition time when this position became available to segue into this because so much is happening with IP. I mean, I don’t think you’d disagree with me.
REA: Who would have thought it would have gotten even hotter? I thought this was hot ten years ago. And what’s the epicenter of IP? Right here, Alexandria, Virginia, the USPTO.
QUINN: Yes, I feel that this is going to be, when we are all at our retirement parties and recalling the stories, this is going to be a hotter time period than 1952, do you agree?
REA: Yes, completely. Completely. 1952 was an amazing time. And those were visionaries with guts when they created the ’52 Act. The ’52 Patent Act allowed us to get to where we are now. So those people were probably even greater leaders than what we have now. But certainly they gave us a wonderful foundation upon which an incredible system has been built, and Dave Kappos has been able to improve even further.
QUINN: Now, how exactly did your appointment come into being? Everybody that I’ve interviewed that has gotten appointed, I’ve asked them this because it’s always fascinating.
REA: I expressed a subtle interest. No lobbying. It was not an aggressive type demeanor, because I was already somewhat visible, because I’m in this area. Because I had visibility from AIPLA, I was president of the National Inventors Hall of Fame, I was the chair of the BADC, Bar Association of District of Columbia, patent trademark and copyright section. I was already a little bit visible in the profession, so I already knew a lot of people. And a couple people behind my back, I guess, dropped my name. And if something like that happens, you just kind of say, all right.
QUINN: All right. I know you touched on this a little bit earlier. But is the job what you expected it to be?
REA: I was fairly naive coming in here. And I’d have to say that this job is far bigger, much more challenging, and much more important than what I had imagined. But there are a lot of talented people here, and for that I am grateful.
QUINN: So when you talk about the meeting after meeting. Now, that’s not something typically you would experience in most law firms.
REA: No. But Dave manages the offices as if he’s a corporate CEO. And he wants to keep all the moving parts moving and advancing toward his vision. Thus far I’ve sat in with him on a lot of his business unit meetings, and I’m coming in 18 months into his tenure, a bit late in the game. And so he has meetings where he’s advancing the ball. And I think you’re going to see a lot of new things being implemented in the future in the way of track one accelerated examination. And e-petitions—we just announced that eight types of petitions can now be filed electronically and will be processed electronically. This is good news for applicants and for the office.
Now some of these petitions can be filed in 45 seconds or less. I mean, it’s incredibly quick, it’s very efficient. I saw the web, they went through it. Marti [Hearst, Chief IT Strategist for the USPTO] actually came up with ways that would be a little bit more user friendly. One thing we’re trying to do is to make the PTO website more user friendly. It’s going to be redone. It’s still a little bit awkward to use. But the e-petitions I think is something that applicants will appreciate.
REA: I certainly would have when I was on the outside.
QUINN: Yes. Okay, so now I know you’ve been in the public eye, as you mentioned before with being president of AIPLA and so forth, but for those who haven’t been around here in Alexandria and D.C., can you give us a nutshell version of how you went about your career? Maybe where you went to law school. It may be interesting to learn why you went into science and then into law, and that sort of thing.
REA: I probably wanted to be an English major early high school. By late high school I decided I wanted to do some form of science. I ended up getting a BS in pharmacy from the University of Michigan. I was a hospital pharmacist after that for one year and then I decided the English major thing still appealed to me so I went to law school, perhaps not for the right reasons. I didn’t necessarily want to be a lawyer. The hospital, I was in Detroit, and back then they actually paid, the hospital subsidized when I went to law school in the evening. So that’s the reason I went primarily. And then almost every law school catalog identified patent law. This is back when I graduated, I graduated December of ’80, and I got my degree in February of ’81. By the time it was given to me it was February of ’81. And all the law schools had advertised, there was at least a paragraph in their college brochure that said you could do patent, trademark, and copyright law. But very few had any courses. I had one course. Patents, trademarks, copyrights and trade secrets, one course coving all four. But Professor Martin J. Adelman, who eventually headed the GW program, was my professor. And I had an easy time, frankly, getting a job. My first job was corporate, and it was fairly easy and straightforward to get jobs. And I had no interest in doing anything other than patent law. And that was pre-Federal Circuit though when I started doing it. So I was corporate. So the first thing you asked is, should we maintain this as a trade secret. Because back then the patent system wasn’t quite as strong as it is now. But the Federal Circuit created that more consistency with appeals and then people were more confident to use patents to protect their ideas. But just one thing led to another. I just segued and took each opportunity that came my way.
QUINN: Now, when you said that maybe you didn’t intend to be a lawyer, so to speak. Were you thinking maybe like the way that a lot of folks go get an MBA, you know, it’s a good credential for the business world in whatever you may do afterwards that it’s going to be useful?
REA: I truly didn’t appreciate the value of a law degree and being a lawyer, so when I first embarked on it you’re totally correct. I think all education is valuable. And so, and I liked school, and I did well at it. So that was exactly—I didn’t really appreciate what it was like to be a lawyer. But I also wouldn’t have known that with patent law we have so many options. You’ve got patent prosecution, you’ve got litigation, you’ve got other business, you could be corporate and work for a corporation and protect product lines. We have a lot of variety in terms of how we can use our law degree. And if I had known that, I would have done it a year sooner. I wouldn’t have taken a year off.
QUINN: Right. And now I’m hearing more and more people talking about patent engineering positions. Either a young attorney or a patent agent who’s an engineer. You do a little bit of engineering and a little bit of patent work and you’re really working, interfacing with the people in the labs, right as they’re creating.
REA: Yes, because you can tell them to how to avoid the prior art. How to do a design around, help to find where opportunities are for them to patent and develop something. That’s correct.- - - - - - - - - -
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About the Author
Gene Quinn is a Patent Attorney and the founder of the popular blog IPWatchdog.com, which has for three of the last four years (i.e., 2010, 2012 and 2103) been recognized as the top intellectual property blog by the American Bar Association. He is also a principal lecturer in the PLI Patent Bar Review Course. As an electrical engineer with a computer engineering focus his specialty is electronic and computer devices, Internet applications, software and business methods.