Exclusive Interview: USPTO Attorneys Bernie Knight & Ray Chen
|Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: September 27, 2012 @ 8:45 am
Knight is the General Counsel at the USPTO, and Chen is the Solicitor. I have known each for a few years now, and I can’t tell you how many times I have asked them to go on the record for an interview. Obviously, they were cautious; uncertain what I would want to talk about. It would have been great to get into a substantive discussion about rules, law and legislation. That, however, would simply not be appropriate.
So my philosophy going into this interview was this: It wouldn’t be right for me to place Knight and Chen in a position where they had to say, “sorry, I can’t answer that question.” There is no point asking a question to which an answer could not realistically be expected, and which could violate attorney-client privilege if given. I don’t play those types of games, period. Furthermore, that isn’t why I have wanted to interview Knight and Chen. Knight and Chen represent the United States government and work for the people of the United States, but are stationed at the USPTO. I suspected at times that might put them at odds with the Administration. It also means their job as attorneys is different than what most of us will ever experience. So even if I hadn’t agreed to steer clear of substantive legal questions there were just too many process, procedure and ethics questions I wanted to ask.
We talked about where these attorneys got their start, who they view the client as being, what it is like to represent the United States, ethical dilemmas that present, the structure of the General Counsel’s Office and the process for giving Federal Register guidance on a variety of matters.
Without further ado, here is part one of my two-part interview with Bernie Knight and Ray Chen.
QUINN: First I want to thank you guys for taking the time to sit down and chat with me. I’ve wanted to do this for a long time and I think it’s going to be a great conversation. So thanks, Bernie, thanks, Ray. Before we jump into any of the substantive stuff, I thought maybe it might be interesting to just lay some biographical foundation. Because, Bernie, I know you prior to coming to the General Counsel’s Office spent some time over at Treasury. And Ray, if you could also tell – how did you guys go from walking across the stage as the newest minted lawyer to working on the 10th floor at the Patent Office representing the U.S. government?
KNIGHT: Right, that’s a very good question. I never would have predicted that I would be here right now when I graduated law school, and a lot of it is luck and a lot of it is people having a lot of confidence in my abilities. Right after law school I worked for a firm in Houston, Texas by the name if Vinson and Elkins. It’s a very large firm in the U.S. and I was a tax lawyer. I also worked at the Justice Department as a litigator and tried many tax cases. Todd Dickinson was the Director of the USPTO in 2001 and hired me to be the first Deputy General Counsel of the USPTO. That was shortly after the AIPA was enacted, which created the USPTO as a separate agency within the Department of Commerce. Todd actually took a chance on me when he gave me the job because I really didn’t have at that point a lot of management experience. If I remember correctly, Todd wanted someone with litigation experience for the position. That was my first break. John Whealan, who’s now a Dean at GW in IP Law, was the first Deputy General Counsel for Intellectual Property Law and Solicitor. So John Whealan and I were colleagues and today we are good friends. John and I both left the USPTO about the same time. John went to work for Senator Leahy, and I left here and I went to work at the Treasury Department.
I applied for a job at the Treasury Department, which was kind of a little interesting story in and of itself. I applied to be a Deputy Assistant General Counsel. After I interviewed, the then General Counsel called me and said, you know we have an internal candidate for that job, but would you like a higher up job? And I have never, ever had that happen in my life. (Laughs) And I said, sure, I’d love a higher up job. Who wouldn’t. So I applied for a higher up job and I was one of the five senior lawyers for the entire Treasury Department. I was the Assistant General Counsel for General Law, Ethics, Litigation, and Regulations. I was responsible for clearing all the regulations, for example, of the Internal Revenue Service and all the Treasury bureaus. I also was in charge of ethics, procurement, personnel, and appropriations law. Near the end of the Bush administration, I worked on the financial markets crisis with Secretary Paulson and his team. When I was at Treasury, I met President Bush. He came over and thanked people working on the financial markets crisis. When the Bush Administration ended and President Obama took office Secretary Paulson had to pick one of the senior lawyers to be the Acting General Counsel of the Treasury Department until a new General Counsel could be selected by President Obama and confirmed by the Senate. Secretary Paulson picked me over more senior lawyers at the Department to run the Legal Division of Treasury during a critical period of the financial markets crisis. The Legal Division of Treasury has about 2,000 to 2,500 lawyers. All the lawyers at Treasury report up to the General Counsel including for example all of the IRS lawyers, the lawyers of the U.S. Mint, and the lawyers of the Bureau of Engraving and Printing. So it’s a pretty diverse set of issues that the General Counsel has to face.
I was acting General Counsel at Treasury for the first about eight months of the Obama Administration. I worked with Tim Geithner and his team. For example, I was General Counsel when the Government bought the auto manufacturers. At about the time that the political appointee General Counsel was selected by the President and confirmed by the Senate, Dave Kappos asked me if I would like to come back to the USPTO to be the General Counsel, managing the Office of the Solicitor, the Office of General Law and the Office of Enrollment and Discipline. Dave Kappos offered me the job and I accepted. It has been great being back at the USPTO and part of Dave’s team implementing the AIA.
QUINN: Well, that’s great. This is a nice office you have here by Patent Office standards, but it probably doesn’t quite compare.
KNIGHT: It’s very nice. I definitely enjoy being General Counsel and I have a great working relationship with my colleagues. I’ve worked with Peggy Focarino and Debbie Cohn back when they were Group Directors in Patents and Trademarks and I was Deputy General Counsel. They are good friends of mine in addition to work colleagues. That creates a great working environment.
QUINN: Okay, Ray, how about you? How did you go from new attorney to Solicitor?
CHEN: Well, just listening to Bernie’s story it makes me realize my pathway has not been nearly as diverse as Bernie’s. I’ve just been a little old patent lawyer from Day One. But—
QUINN: You say that like there’s something wrong with it. Be proud.
CHEN: No, I am proud. I’m comfortable.
KNIGHT: He’s not a little old patent lawyer. He’s an outstanding patent lawyer.
CHEN: Well, thanks, Bernie, but I guess I’ve had more of a niche type career path then Bernie, and let’s just leave it at that. But when I left law school I knew two things. One was I was going to be a patent lawyer. And the second thing I knew was I was going to spend the rest of my life in California. I grew up in California. I went to NYU for law school, and it was a great experience there and there were opportunities to be a patent lawyer in New York. But I wanted to go back home. And so I did that. I started out at Knobbe Martens Olson and Bear.
QUINN: Down in Orange County?
CHEN: Down in Orange County, which is where I’m from. So to me it was like going back home. I was an associate there for a couple years, doing prosecution and some patent litigation. And I think I could have been happy really for the span of my career just staying right there if they would have had me. But ultimately my girlfriend, now wife, from law school, she took her first job here in D.C. So we were kind of commuting back and forth and then we had to make a decision and in the end I decided to come, move to D.C. And so I took a job at the Federal Circuit. There is a little known staff attorney position there called technical assistant. It’s not a clerkship to a specific judge, although occasionally you will do a special project for one of the Federal Circuit judges. During my two years there I often would go watch oral arguments in front of the three judge panels at the court. I saw a number of young PTO attorneys coming down every month defending Patent Board decisions and Trademark Board decisions. I also noticed that among the appellate lawyers who were regularly arguing at the Federal Circuit, the PTO lawyers seemed to be among the youngest. Watching them made me realize that was something that I’d like to do. I thought that would be a great experience to have. So at the end of my two years at the court I interviewed with Nancy Linck who was then the Solicitor. This was back in 1998. INancy gave me an offer and I came onboard. It was terrific to have those experiences standing up in court, writing your own briefs, trying to construct persuasive legal arguments. I was an associate solicitor for ten years just trying to do the best job I could. And during the course of those ten years I realized that for me the job was not just about getting great experience but it became more and more like a calling to be a part of the PTO here. To do the work here, to try to do the best we can for the public, for the patent system overall, to create a fair and balanced patent system. In any event, after Nancy Linck, John Whealan was Solicitor for quite a long time. When he left to go become associate dean at GW Law School, the position opened for Solicitor and I applied. The then Director Jon Dudas and Deputy Director Margaret Peterlin selected me in late 2008. So I’ve been the Solicitor ever since. In the end it wasn’t a master plan here, it was just kind of staying open-minded and not being afraid to tackle new challenges.
QUINN: I guess one of the things that I know from my experience when I talk to successful people like you, some of the stuff that happens during our careers, you don’t always set out going down this path and have this work out that way. But the reccurring theme I always hear, and I’d like to get you guys to comment on this, is the harder you work the luckier you get. Because it seems like you can be in the right place at the right time but if you haven’t attracted some positive attention from people, then you just kind of stay there, or maybe you go off in a different direction. Thoughts? Comments?
CHEN: Yes, I think hard work matters a great deal. You can’t just be a bright person, you have to be fully committed to the task at hand. And I agree with that, the harder you work the luckier you get in the sense that people will notice you or perhaps the opportunities will ultimately arise. I think that’s true probably in just about any endeavor, you know, whatever you’re doing, do it the best you can and ultimately there will be opportunities that spring from that down the road.
KNIGHT: I agree that hard work is important, yes. But equally important is the ability to lead people and to work under pressure. As a manager of a large organization, it’s important to have the respect of your team, which requires you to put an oar in the water on important issues and make significant contributions. My three most important management principles that I live by are to treat people with integrity, honesty and kindness. I appreciate the work that people do and their contributions to the success of the organization.
CHEN: Right. And just to follow up on that. There is also some luck involved. Whether it’s timing or anything else, I personally think there’s probably a lot of people that could be a great Solicitor for the PTO and just for whatever reason due to timing, circumstances and other things, and I guess hard work, it just happened to work out for me. And I’m very grateful for the opportunity to be the Solicitor. The other crucial factor that we haven’t quite mentioned yet is mentors. I’ve been fortunate to have some great bosses over the years, including John Whealan, as well as Mel Halpern, the former Senior Technical Assistant at the Federal Circuit. Mel knew patent law and the court inside out, and is also one of the most ethical people I’ve ever met. Without the mentorship and coaching from John, Mel, and others over my career, I wouldn’t be where I am today.
QUINN: Yes, mentors can make all the difference in the direction. I know like myself when I try and think about, sometimes I’ll sit back and say, how is it that I am a lawyer? What is it that I do? How did I get into this habit or that habit or why do I write like this? And I constantly look back to the people who mentored me when I first entered the legal profession. Mentors can make all the difference in the world. You both say John Whealan is a mentor. What’s the one thing that you look at how you lawyer today that you would attribute to John? Or more than one if there’s more than one that comes to mind?
CHEN: Well, for me, you know, it’s something that I think we all believe in but he definitely impressed it upon me, which is just a commitment to excellence. That every time we file a brief at the Federal Circuit, every time we appear at oral argument in front of that court, it is a significant event. And the reputation and the credibility of the office is on the line every single time. We take that seriously, because we have worked very hard over time to build up a reputation with that court. And it’s very easy to lose it very quickly. So it is this kind of consistent commitment to excellence that is ingrained in how we approach our work.
KNIGHT: The other thing, too, I would say is that there are many lawyers in the IP community who help Ray and me do a great job on a daily basis. You know, everyone wants us to be successful because it’s good for IP. That’s the great thing about our positions. So for example, Todd Dickinson at AIPLA often gives us his views on an issue and it helps us to get a broader perspective from our user community. I knew when I started this job I needed to reach out to the IP community to be successful. Marylee Jenkins at Arent Fox was chairman of the ABA IP Section when I started, and I called Marylee and I said, “I’m the new General Counsel, I’d like to get involved in the ABA.” Before I knew it, I was invited to ABA meetings and invited to speak. Without the help of people like Todd Dickinson, Herb Wamsley, Marylee Jenkins, and others, it’s very difficult to succeed in these jobs and I know that Ray and I are very appreciative to all these people for their help and support.
QUINN: See, now that’s interesting that you bring that up. Because, one, it raises the issue that you’re never really done being mentored. There’s always something you can learn from somebody or take away. And then, two, is that in the position that you all have there is an interesting two-way street representing the government, but the private sector has an interest in making sure that things run smoothly and that you understand their day-to-day lives. So they’re helping you as well. How do you walk that line? How would you characterize your job on a day-to-day basis?
KNIGHT: Well, I would say the first answer to that question is that we are very lucky because we work with Dave Kappos. Dave is a manager that consistently puts an oar in the water as I said earlier and mentors his staff on high level projects. He understands the private sector very well. He has a great practical approach and is very decisive. Ray and I wouldn’t be nearly as good as we are without Dave’s leadership and mentorship.
CHEN: Yeah, responding to your question really can go in a lot of different directions. On one level, my responsibility is to defend the decisions of this agency as zealously as I can in federal court. That’s one significant role the Solicitor’s Office plays. Beyond that, we’re also doing an incredible amount of outreach to the public, to the stakeholder community. That’s something that I’ve come to appreciate more over my time as the Solicitor. I think initially I wasn’t as inclined to go out and do a lot of public speaking because I felt like, well, that’s just not what government litigators do. That’s not our role. But the longer I’ve been here the more I’ve been able to appreciate that all of us, Bernie, me, and others, we have a leadership role in this agency and we do have an important responsibility to reach out to the public to share with the public what the PTO’s perspectives are on a whole host of different issues. For me it would be a lot of the legal issues that the agency’s wrestling with. But not only that, another critical component of public outreach is learning about their perspectives on issues and becoming sensitive to the types of problems they encounter. Then we can take that information back and incorporate it into our thinking in how we approach different issues, whether it’s in an amicus brief at the Supreme Court, or whether it’s through examination guidelines that we provide to our examiners.
QUINN: Okay. Well, let me take a little different approach. There’s a question that I’ve been dying to ask you guys because I think it will be a really interesting discussion and lead to a discussion that most attorneys in the private sector will never need to have. Who is the client? I mean, is Dave Kappos the client? Is the Patent Office the client? Is the U.S. government the client? I think I know what the answer is, but if I’m correct then that raises a whole other set of other questions and possibly some ethical issues or maybe they’re just practical issues. So who is the client?
KNIGHT: You know, whenever you are working for the United States the client is the United States whether that’s at the USPTO or another federal agency. And I think that’s probably true if you’re working at a private corporation. If you’re working at Dow Chemical I have to believe that your client is Dow Chemical, not your immediate supervisor. So the client really is the United States and we have an obligation to do what’s in the best interest of the United States. Now, we also do that keeping in mind that the PTO is completely user fee funded. So we have a much greater obligation to our user community than many other government agencies do who are funded by taxpayers generally. So we keep that in mind as well, and as Ray said we do a lot of outreach, we get the views of the user community on most of the things that we do because we want to have their input before we implement anything new. With respect to Dave Kappos, he is our supervisor and we definitely take direction from Dave. Dave, as I said, is very decisive, the clear leader of the agency. But that doesn’t mean he doesn’t listen to us because he values and listens to everyone’s input. And I can tell you honestly that we have changed Dave’s positions on many issues. Dave’s a very fair manager, has a lot of energy for the job and is fun to work with. He and Terry Rea make a great team and work well together.
CHEN: We’ve also lost a few times.
KNIGHT: Yes, we’ve lost a few times, too. [Laughs] But he does listen, and we have changed his mind. He is our supervisor and, you know, I have to tell you the dynamic of working with Dave Kappos is one of the best working relationships I’ve had my entire career.
CHEN: Right. So first of all, I agree with everything my boss just said. [Laughter] He’s crystallized my thoughts exactly. But—
QUINN: But it may be a little different for you because your job is to defend the decisions of the Board, for example.
CHEN: That’s true. There are plenty of times where I’ve, you know, my most immediate client is the Board. And we defend the Board vigorously and we enjoy a high affirmance rate at the Federal Circuit, which is terrific. But also at the same time there are those very rare occasions where we will work with the Board if we spot an issue in a particular appeal where in our view more work needs to be done before the case is ready for appellate review.
QUINN: But sometimes you take up some easy issues too, particularly from pro se folks who appeal. It seems a lot of the cases, and maybe it’s just the ones I tend to read, I don’t know, are rather easy. I read the decision from the Federal Circuit and it’s almost like they must be thinking, well, this guy doesn’t get it. Because it’s just clear that the Board was correct. So, how much time do those kinds of cases take? The cases where somebody continues to fight and won’t give up.
CHEN: We give all the time that each case deserves. So—
QUINN: Yes. And I didn’t mean to imply that. What I was trying to ask is whether my perception is correct? Are there a lot of those cases? Or is it a minority of cases and they’re just the ones I remember?
CHEN: Right. Those might stand out in your mind because they seem particularly peculiar. But I don’t think we get that many of those. In fact, you know, we deal with our fair share of close cases. But at the same time the Board, they are the experts and so they’re calling balls and strikes and when reasonable minds can differ there are times where applicants want to have their day in court.
Part II Preview: In the interview finale we discuss the heightened expectation of fairness placed on government attorneys, what it is like to work for USPTO Director David Kappos, how the USPTO determines when to give guidance to examiners to reconcile case law and the process for giving guidance, specifically using the KSR Guidelines as an example. Before Knight and Chen had to go I also managed to ask a few of those familiar “get to know you” questions at the end. Wait until you hear Knight’s answer for favorite pastime or hobby. Talk about a Renaissance man!- - - - - - - - - - On Wednesday August 1, 2012, I had the opportunity to do something I have wanted to do for quite a while. I sat down on the record with both
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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.