Michelle Lee announces major patent quality initiative at Brookings event

By Gene Quinn
January 22, 2015

michelle-lee-brookings-01-22-2015aEarlier today the Brookings Institution hosted a discussion with Michelle Lee, the current Deputy Director for the United States Patent and Trademark Office and also the current nominee for the position of Director of the Office. The moderator of the event was Darrell West, Vice President and Director of Governance Studies for Brookings.

At the outset Lee explained that the USPTO recognizes “the extreme importance of issuing patents in a timely manner.” She then went on to recognize why it is important to obtain patent protection, “if you are entering a market that is highly competitive you need the assurance that you will have protection as you go up against very steep and often times well funded competition.” Lee would again go on to then say that it is critically important for the USPTO to issue patents promptly.

She then pivoted to address the other side of the issue, which relates to issuing patents that should never have been issued in the first place. Lee explained: “I’ve see the effect of patents that should not have issued, or that have issued with a scope that is too broad. There is a also a cost associated with that as well… On average a start-up may get between $10 to $15 million to last over a number of years, and there are statistics that indicate that patent litigation can cost cost well over $1 million. So you can see if there is abusive litigation or a patent that should not have issued, there is a cost to our businesses.”

Lee also explained that the USPTO is in a much better position financially as the result of the America Invents Act (AIA), which created a reserve fund and in conjunction with working closely with appropriators the Patent Office is able to keep the fees it collects. “For the first time the PTO is now able to more than make due,” Lee explained.

Lee also previewed a new USPTO quality initiative, built on 3 prongs: (1) excellence in prosecution services, (2) excellence in customer service; and (3) excellence in patent quality. Lee explained that the Office will specifically evaluate the value of interviews, what other Patent Offices are doing that the USPTO can adopt, and also working better with “big data,” so that the USPTO can take that information back to examiners and produce better training modules based on what the Office is specifically seeing. Lee also said there will soon be a new Federal Register Notice on patent quality, and the USPTO will hold a two-day conference on quality.


Lee also unveiled a new senior executive position in the agency that will be solely dedicated to coordinating all of the agency’s efforts to ensure patent quality and to guide new initiatives, including both short term and long term initiatives. “I wanted one person who’s one job, day in and day out, is to focus on quality,” Lee explained. Toward that end, Valencia Martin-Wallace has been named to the newly created position of Deputy Commissioner for Patent Quality.

valenciamartin_wallaceMartin-Wallace (pictured right) is a graduate of Howard University, where she earned a BS in Electrical Engineering and The George Washington University, where she earned a JD. She has been with the USPTO for over 22 years, first joining the Office as a patent examiner. In 1999, she went on to become a Supervisory Patent Examiner (SPE) the area of electronic gaming devices and electronic educational devices and then later as a SPE in the networking technologies. Martin-Wallace has also served on details at the Office of Human Resources (OHR) as the Deputy Director and Acting Director of OHR and the Office of Patent Training as a Class Manager. In 2008 she was promoted to the position of Technology Center Director and has also served as the Executive Lead over the Patents Ombudsman Program. In 2011, Martin-Wallace was promoted to the position of Assistant Deputy Commissioner for Patent Operations.

Lee also talked about the importance of international patent protection for U.S. companies, discussing the new realities presented by the Internet age where a sale is as likely to occur outside the U.S. as it is to occur from within the U.S. “American companies are increasingly looking to protect their inventions in multiple countries and they need to rely upon quick, cost effective and efficient protections.” Lee says that the USPTO will continue to “work with other countries to ensure that they share our IP values on patents, copyrights and trade secrets; that their systems, judicial systems, customs, law enforcement and their laws respect and protect intellectual property rights, not only of their own domestic companies, but of foreign companies.” Lee then pivoted to briefly discuss harmonization, pointing out that as the world becomes more and more global companies are applying for patent rights in multiple jurisdictions, “more can be done to streamline… to reduce the costs,” she explained. Although she did not specifically use the term, it seemed her comments were more directed at procedural harmonization as opposed to substantive harmonization.

Lee was also asked about patent reform and recent Supreme Court cases. Not surprisingly, Lee largely dodged this question, which is understandable given that her nomination is still pending in Committee. Truthfully, she is keeping a rather active public profile during this process. In most instances those who have nominations pending completely shun speaking in public for fear of saying something that may upset the process. With patent reform and the Supreme Court being such hot button issues in the industry, Lee proceeded cautiously explaining only that she believes additional reform is needed, but that reform needs to take into account the changing realities of the patent market and industry. This is the line she has used repeatedly in recent months, and while testifying during her confirmation hearings. She did not directly address the question of recent Supreme Court cases.

Finally, while it did not come up during Lee’s presentation at Brookings, the USPTO has also selected Dr. Christal Sheppard to be the new director of the USPTO’s Detroit satellite office. Sheppard has been a member of the agency’s Patent Public Advisory Committee and she most recently has been an assistant professor of law at the University of Nebraska College of Law. Prior to joining the University of Nebraska, Dr. Sheppard was the chief counsel on patents and trademarks for the Committee on the Judiciary, United States House of Representatives. Dr. Sheppard was also employed at the Office of Science and Technology Policy, Executive Office of the President; the law firm of Foley & Lardner, and served in the Office of the General Counsel of the United States International Trade Commission. Dr. Sheppard also holds an M.S. and Ph.D. in Cellular and Molecular Biology from the University of Michigan, as well as a J.D. from Cornell University Law School.

You can watch the entire event below, starting at 14:23 into the recording.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 16 Comments comments.

  1. Curious January 22, 2015 3:32 pm

    On average a start-up may get between $10 to $15 million to last over a number of years, and there are statistics that indicate that patent litigation can cost well over $1 million.

    This is a big red herring. The average startup isn’t going to even have to worry about patent litigation. Very few patent holders are going to spend money (bringing a patent lawsuit isn’t cheap either) suing somebody that has negligible revenue (little revenue = little damages) or money to pay off a judgment.

    The only entities that have to worry about serious damages from patent lawsuits are big corporations like Google (i.e., Lee’s former employer). People have accused Lee as being a stooge for Google — with comments like these, I can easily see the basis for those accusations.

    I wonder where Lee stands on the excessive number of patents improperly rejected by the patent office? The same patents that could be used by startups to encourage investment therein. When are we ever going to get that speech? One this is for sure, I won’t be holding my breath.

  2. splinter January 23, 2015 11:17 am

    Curious – Agreed. Companies typically do not be sued unless they have “deep pockets” or at least some “pockets”. “Sham” or “shake down” letters still a problem but with post grant proceedings and/or attorney fees for sham suits, these should be reduced.

    Regarding quality, they need to also focus on poor quality rejections (including improper final rejections). Improper rejections waste a lot of time and money for clients, including startups. Dealing with the PTO has been much more difficult the past few years (e.g., try changing address, request withdraw as counsel, submitting new Power, etc.) – both admin and examination need improvements.

  3. martin snyder January 23, 2015 1:40 pm

    “The only entities that have to worry about serious damages from patent lawsuits are big corporations like Google”

    This is untrue. Small corporations are sued by large corporations, and the damage can be quite painful.

  4. Benny January 25, 2015 2:11 am

    “So you can see if there is…a patent that should not have issued, there is a cost to our businesses”
    Does that actually need to be spelled out to us? While this often substantial cost can be levied on small businesses by the shoddy or incompetent work of a USPTO patent examiner, the USPTO does not accept any responsibility for damage caused, therefore there is little incentive to get their act together.

  5. Anon January 25, 2015 4:53 pm

    An interesting thought, Benny.

    How would you establish culpability, though?

    Would you have an element of intent?

    Does not the Congressionaly mandated presumption of validity nullify your idea?

    And how would you address the mirror side of the equation? The responsibility for damages lost due to valid patents denied? I am sure that you want fairness for all, right?

  6. Benny January 26, 2015 2:26 am

    Anon,

    1. Establishing culpability – a line can be drawn if the patent is found ineligible on grounds of novelty, using a patent or published application in the USPTO database as prior art. That, at least, is more or less objective. In this case, the USPTO should accept the full costs of an IPR.

    2. I can’t imagine any element of intent, other that the examiners’ desire to knock off work early on a Friday afternoon. I mentioned incompetence only.

    3. Presumption might, legally, nullify my idea, but objectively, if I published a description of a knurled flange bracket before you applied for a patent for the same bracket, I invented it, not you, and the fact that you have obtained exclusive rights does not mean that you are deserving of them, according to the letter of the law.

    4. I really don’t know how to address the flip side of the argument so I won’t.

  7. Anon January 26, 2015 10:45 am

    Benny,

    Your point three is clear legal (and factual) error and ignores the fact that indeed multiple independent invention is not only possible, but is – and has been – recognized under the law from the earliest days of the patent system.

    The notion of ONLY one first and true inventor sounds in the failed view of a certain US inventor currently challenging the America
    Invents Act on that same ground as being unconstitutional – completely neglecting the fact that the patent system is a multi-runner system; that is, the patent system invites multiple runners to a race for the reward of a patent. It cannot be stressed enough that multiple runners necessarily means multiple independent actual inventors.

    Factually.

    Legally.

    As to your point four, do you at least recognize that fairness and equality dictate that such flip side needs to be addressed?

    As to your points one and two, you appear to want to induce a substantial penalty for as low as a threshold of mere negligence. I hope that you understand that such a view is a clear nonstarter and a guarantee that what you seek will not in fact be instituted. If anything, the only guarantee that you have for ANY government action is that such government action will NOT be free from error. I recommend that you spend some time to think about some of the logical implications of what you are so quick to want.

  8. Benny January 26, 2015 11:19 am

    Anon,
    To the best of my limited legal knowledge, the US patent system does not allow multiple patenting and will not knowingly grant multiple patents for the same invention. There may well be many runners in the race, but only one winner. The problem I refer to is when the USPTO grants multiple first prizes.

    I don’t expect the government to be free of error. I expect the government to acknowledge errors and accept responsibility. As for penalties – does the name Stella Liebeck ring a bell? (couldn’t happen where I live).

    As for point 4 – yes, I can see the problem, but in my industry it is the lesser evil.

  9. Anon January 26, 2015 1:46 pm

    If indeed you are only referencing one winner and multiple runners then I cannot gain that from your earlier comment.

    Can you rephrase that comment?

    I also do not see the relevance of hot coffee here. Again, if you want to instill a level of responsibility, then you need a better and more detailed reasoning.

    Lastly, I simply do not accept any “it’s a lesser evil” type of arguments without more. That’s akin to a naked “I want this” without more. I do not buy what you are selling, and do not see any reason for me to do otherwise.

  10. Benny January 27, 2015 2:09 am

    Anon,
    I’ll spell it out clearly if you didn’t understand. The USPTO shouldn’t grant a patent for an invention which has previously been described publicly – but sometimes, they do. Then, I am asked to pay, from my own pocket, a five figure dollar number for the privilege of asking the USPTO to correct its’ own mistake.
    This, in my view, is wrong. Any government organization should pay the cost of repairing its’ errors (not necessarily the incidental damages, though).

    The hot coffee incident I brought up as an extreme example of how far the US legal system tolerates blame shifting.

    As for “the lesser evil” of wrongly denied patents versus wrongly granted patents – As a manufacturer of a consumer item, I lose a greater market share if I am denied the opportunity of offering a patented feature, than I would if my competitor is offering the same feature which was developed from my own R&D budget. From a marketing point of view (read – profits), I am in a better position when the playing field is level (legal rights aside).

    As for the line “I do not buy what you are selling” – taken literally (which is not how you meant it) – our products are aimed at the more affluent consumer, so perhaps one day you may actually do so, and enhance your lifestyle.

  11. Anon January 27, 2015 8:07 am

    Benny – you keep on equating only one side with a level playing field.

    Sorry, but until you realize that such is not the case, I can give you no credit for what you want to propose.

    And I have to laugh at the attempted humor of personalizing my ability to afford your products. What bearing would that have on our discussion of legal matters here?

  12. Benny January 27, 2015 8:37 am

    Anon,
    If you limit all your discussions only to legal matters you will not be invited to many parties.
    While accusing me of equating only one side with a level playing field, you tend to ignore the fact that your clients must take into consideration all the financial aspects of IP, not just the legal side of it. Our goal as a manufacturer is to maximize profit from sales, and IP is just one tool in the toolbox to achieve that aim, but not in every case an effective one. No sense in chasing a patent through RCE and appeal to the tune of 100K legal fees if I only sell 500 units at a couple of K$ gross each, is there? ( a mistake our company actually made, in overestimating the total market).

  13. Anon January 27, 2015 9:37 am

    Being invited “to many parties” is as equally unpersuasive to the matter at hand as is your attempted “humor.”

    Further, your supposition that I ignore anything is unfounded.

    Try to stick to the conversation please. Focus my friend.

  14. Anon2 January 30, 2015 9:45 am

    “what other Patent Offices are doing that the USPTO can adopt”

    How about examining the inventive concept…but the outside stakeholders wouldn’t like that too much because that would mean they couldn’t bamboozle an Examiner into giving them a patent by simply shifting numbers around.

    The problem with patent quality is directly related to two things: 1) Production time. I understand that the office needs metrics to show they are getting things done, but if you expect an Examiner to examine a 21st century device but only give them the time they were allotted back in 1975, then you’re not going to reach your goals. 2) Outside stakeholders exacerbate this problem by submitting applications that are patently unpatentable from the start. They then wait for the office action and then amend, usually inconsequentially, to try to get around the office action. This is not the intent of the patent system.

    Moving to a European system (ie. “inventive concept”) would solve both these issues. The Examiner would simply examine the inventive concept, not the fluff the applicant puts in the claims to try to get a patent by obfuscation. The Examiner could concentrate on quality as they’d only be examining the actual inventive concept instead of red herrings. And quality would go up.

    It’s a win win….except when you realize that the idea/game in the US isn’t to actually GET a patent on patentable subject matter, but to get pieces of paper.

  15. Anon February 2, 2015 10:22 am

    Anon2,

    I am unclear as to a number of your comments.

    Who is “outside stakeholders?”
    Why would they not like such a change too much?
    What does this “shifting numbers around” mean?
    What does “patently unpatentable” mean? (are you using US law or some other law to make that assumption?)

    Fluff…?
    by obfuscation…?

    Sorry, I am not buying your accusations. You sound more like a typical patent-hater than anyone with an objective viewpoint of the US patent system.

    You seem to not like the typical interaction that starts with a US applicant attempting to maximize his patent coverage, but then responding to the constraint of the prior art found by the examiner. I am not sure why you think this is a particular problem, but such is geared to the reality of one side doing the inventing (and naturally wanting maximum protection for that invention) and the other side doing the examining (yes, examination is a difficult thing to do well at times). Perhaps you are not familiar with a case here in the States that had this same battle play out. That case was the Tafas case. I would put to you that the applicant desiring maximum protection has always been the intent of the patent system. Always. So unless you want to pretend that human nature is something other than what it is, if you want to pretend that the writings of Adam Smith are not accurate, that the observations of Abraham Lincoln were simply wrong, I would suggest that you modify your views.

    Or at least try to do a better job at checking your emotionalism at the door.

  16. Benny February 2, 2015 10:47 am

    Anon,
    Anon2’s comments become clear after reading a few patent applications. They often start off with an independent claim so broad as to encompass wide swaths of prior art (“unpatentable”) and then put the novel concepts in the dependent claims, and see just how much protection the examiner will concede, based on what prior art she (or he) can find. Don’t tell me you haven’t seen this sort of application before. (I’ll put up a couple of examples if you haven’t). Changing the system would potentially limit the protection provided by a patent – so applicants “wouldn’t like such a change”.
    The maximum protection you refer to, Anon, should not exceed the protection which the applicant is entitled to by law, but sometimes does, when the examiners’ work is inadequate.

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