Provenance of U.S. patents in question as they continue to carry signature of Michelle Lee

By Gene Quinn
February 6, 2017

USPTOWho is running the United States Patent and Trademark Office? That straightforward question shouldn’t be imponderable, but it seems that the Trump Administration has chosen to sequester the Director as if he or she has gone into the witness protection program. Indeed, we seem no closer to an answer to who is running the USPTO today than we were 18 days ago. Although sources tell me that Michelle Lee continues to be seen on the 10th floor of the Madison Building, which is where the Director’s Office is located.

As we begin the third week of the Trump Administration I cannot tell you with any definitive certainty who is Director, or if there is an Acting Director, or if the Commissioner for Patents is merely carrying out the responsibilities of Director without being named Acting Director, which has been the case at least once in the past.

So far the USPTO has not made an announcement relating to Michelle Lee or who is in administrative control of America’s innovation agency during these first few weeks of the Trump Administration. While this is undoubtedly bizarre, it is also extremely unusual. The USPTO has always been very good about notifying the public about changes to the leadership hierarchy. After all, U.S. patent laws place certain specific responsibilities and discretion in the hands of only the Director. Thus, knowing who is Director is rather critical.

What we do know is that as of 10:27am ET on February 6, 2017, the leadership page on the Department of Commerce website continues to list the position of Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office as “Vacant” (see screenshot). We also know that as of 10:32am ET on February 6, 2017, the Executive Biographies page on the USPTO website continues to list Michelle Lee as Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office (see screenshot). We also know that Lee has been canceling multiple speaking engagements, including one that was to take place last week at a NASDAQ sponsored event in San Francisco; John Cabeca, Director of the Silicon Valley regional office spoke in her place.

Having said this, we know that the USPTO Executive Biographies page is not up to date. Russ Slifer remains listed as Deputy Director of the USPTO, but Slifer has confirmed that he resigned on Friday, January 20, 2017, as requested by President Obama. I can also confirm that Chief of Staff Vikrum Aiyer and Patrick Ross both resigned on or before Friday, January 20, 2017. Thus, the USPTO Executive Biography page lists at least three individuals who no longer work at the USPTO.

The intrigue surrounding Michelle Lee and who is actually running the USPTO has gone from gossip and curiosity to something quite serious.

Pursuant to 35 U.S.C. 153, upon issuance patents “shall be signed by the Director or have his signature placed thereon…” Sources tell me that the USPTO was prepared last week to issue patents with the signature of Drew Hirshfeld, who is the Commissioner of Patents and seems to be currently in the position of Acting Director. At the last minute, however, a decision was made to revert back to Michelle Lee’s signature. This creates several significant problems.

First, if Lee is not currently the Director patents that are being issued with her signature are being issued in violation of §153. If we know anything about patent litigators it is that they raise every challenge possible, and it is only a matter of time before the provenance of patents issued during these first weeks and months of the Trump Administration are challenged as being invalid. I don’t really suspect such an invalidity challenge to ultimately prevail, but how many patent owners are going to have to spend many tens of thousands of dollars to fight such a challenge to the very existence of their patents? Fighting this type of challenge is both unnecessary and ridiculous, but extremely predictable.

Second, if my sources are correct and there were preparations to issue patents with Hirshfeld’s signature, that clearly and unambiguously means that at least some USPTO employees have at least some reason to believe that Lee is no longer the Director.

Third, if there was a decision to revert back to Lee’s signature that would suggest that those working for the USPTO believe Lee may not be the Director, but are not entirely sure who holds the authority of the Director. This internal uncertainty has been confirmed by numerous reports I’ve received.  I’ve been told by multiple sources that those inside the USPTO continue have no idea whether Michelle Lee is the Director or whether there is an Acting Director. How is it possible for any entity to run when everyone from patent examiners to rather senior level career officials have no idea who is in charge?

We know that Michelle Lee wanted to stay on as Director, and it seems that she attempted to revoke her letter of resignation at some point before President Trump was sworn into Office. The uncertainty caused by Lee’s attempts to stay, coupled with silence from the USPTO, Department of Commerce and White House, have lead to confusion. Further complicating the matter is how the Department of Commerce website has consistently labeled the position of Director as “Vacant” since Friday, January 20, 2017, while the USPTO website has consistently shown Michelle Lee as the Director. Characterizing all of what we know in a light most favorable to those involved even the most vocal supporter would have to acknowledge that mixed signals being sent.

Mixed signals and political curiosity is one thing. Issuing patents that will have their bona fides questioned simply because of a formality is simply unacceptable. Ultimately, we will learn the full story because you can rest assured that there will be challenges to the validity of the patents being issued with Lee’s signature, which means discovery and all the details will surface.

Eventually, Congress will likely be called upon to waive any signature problems associated with these patents if, in fact, Lee is not currently the Director. Special interest legislation may still be need even if an announcement is made that Lee is still be the Director given the cloak and dagger nature of this whole episode and contradictory signals from Commerce and the USPTO. Such special interest legislation would be the only way to save tens of thousands of patents from unnecessary challenge and stigma.

What a mess!

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 20 Comments comments. Join the discussion.

  1. Greg DeLassus February 6, 2017 11:58 am

    “What a mess!”

    Exactly! This is not a hard question. The administration just needs to say a name—any name—to make the whole problem go away. Someone is in charge of the PTO. Say the name, and let patents be printed with that name until a new director is formally nominated and confirmed.

  2. Ken February 6, 2017 1:19 pm

    At this point might it be wise to just “sit” on a Notice of Allowance for a while, until this question is resolved?

  3. Gene Quinn February 6, 2017 1:23 pm

    Ken-

    I would not be in any rush to pay an issue fee. Obviously, you have to pay it within 3 months, but why risk rushing to pay if you don’t have to. I just know that these patents are going to get challenged. Likely a frivolous challenge, but it is hard to understand why the USPTO would be doing this. Of course, they told me they weren’t going to get sued for Lee declaring a federal holiday. I told them they were wrong. They laughed at me. I was, of course, right.

    -Gene

  4. anon February 6, 2017 3:25 pm

    Gene –

    It’s not just patentees who might run into challenges — my certificate granting me license to practice before the USPTO just arrived, and it has Lee’s signature on it as well. Oy!

    – One of your PLI students

  5. Gene Quinn February 6, 2017 4:42 pm

    PLI Student anon-

    First, congratulations. Second, I have to confess I didn’t even think of that, although I should have. I can’t imagine anyone will ever call into question your credentials, but let me see if I can do better than that in terms of an answer. What a mess!

    -Gene

  6. To the board we go ...... February 6, 2017 7:24 pm

    Very important issue that is written about. What’s as important is that every count Monday our systems crash. It’s been several months since the new systems have been mandatory to use. However, the PTO still has not been able to provide a stable IT infrastructure for their Examiners. Extending count Monday deadlines, as the PTO regularly does now, does nothing to make up for lost examining time! As Melissa McCarthy has said….that’s the real story, that’s the story that should be published. How can an organization with billions spent on IT be so incompetent. Whether or not the director leaves, the head of IT should be forced to leave.

  7. Stephen Curry February 7, 2017 2:02 am

    do a bing search on USPTO and michelle lee.
    don’t use google search as it filtes.
    there sure is a lot of lawsuits brought against USPTO in district courts regarding PTAB.
    It seems the AIA created more lawsuits and not reduced lawsuits.

    here is Lee creating the “patent crisis” fiction in year 2007. this is how the PTAB “squad” idea started to blossom.

    http://cyberlaw.stanford.edu/blog/2007/08/stanford-summit-patent-crisis

  8. anyanon February 7, 2017 8:44 am

    Re: To the board we go. . . .

    Yes, as an Examiner I can confirm that for at least the past 3 or 4 count Mondays our examining IT has slowed/crashed for at least 4 hours, if not the whole day. It makes us much less productive, yet our counts remain the same. And it happens on the one day where things actually have to get posted. And, as you mentioned, they have removed the old infrastructure, so there is no more reliable backup. Not sure what this has to do with Ms. Lee’s position, but a frustrating goings-on at the Office for sure.

  9. Paul Morinville February 7, 2017 10:27 am

    Stephen Curry @7. Michelle Lee advocated filing more patents in China in that post. Then she took over the PTO and provided incentive to file patent there.

  10. Night Writer February 7, 2017 11:20 am

    @9: 🙂 Lee is certainly no friend to patents and certainly is not qualified to run the patent office.

    This whole thing with Lee is just so strange.

  11. Colin February 7, 2017 12:20 pm

    I work in Silicon Valley (and have for nearly 20 years). What so many of us find unsettling is Michelle’s willingness to stay on in the Donald J. Trump administration. She will wear that name on her resume like a scarlet letter all the days of her life. It gives one pause about her level of intelligence.

    I certainly hope she likes the East Coast, because if she thinks she will ever be welcomed back here in any capacity, at any firm, after serving a President Trump, she’s got another thing coming. As far as Silicon Valley is concerned, she owes everyone in her life an explanation for her thinking, and as soon as she makes her first public remarks to a public audience with Q&A, we will be there to demand answers. She can’t hide out forever.

  12. Stephen Curry February 7, 2017 2:37 pm

    @9

    Here is michelle Lee calling for the creation of “PTAB” year 2007.

    so inventors now know how PTAB started.

    https://publicpolicy.googleblog.com/2007/09/reforming-patents-promoting-innovation.html

  13. Paul Morinville February 7, 2017 3:47 pm

    Colin @11. I’m not sure that is true. Eric Schmidt is lobbying for her to stay. He’ll hire her again and just about any of the consumer Internet companies who like to steal patents without consequence. The list is pretty long starting with Facebook, Amazon, going down to thousands of phone app companies. I suspect she will get a parade with confetti made of invalidated patents covering the streets and highways.

  14. Paul Morinville February 7, 2017 4:00 pm

    Stephen Curry @12. The Patent Reform Act of 2006 had PTAB’s. Lee is simply trying to get them passed. I don’t know what role (if any) she played in getting these into this failed bill.

    https://www.congress.gov/bill/109th-congress/senate-bill/3818/text#toc-ID7a4c153e1d3a4877966969f4f66c8aba

  15. Stephen Curry February 7, 2017 5:34 pm

    #14 thanks for note on patent reform Act of 2006

    The Coalition for Patent Fairness (which includes google) supported the patent reform Act of 2006. Since David Drummond still had confidence in michelle lee in year 2006, we can guess who was the woman who was screaming patent reform in the google hallways.

    http://www.computerworld.com/article/2545087/security0/patent-reformers-hail-supreme-court-decision-in-at-t-case.amp.html

  16. Eric Berend February 8, 2017 5:41 am

    Problem #1: doubt as to the correct and lawful provenance of U.S. Patents issued during the current situation of uncertainty as to who has Directorial authority at the USPTO

    A possible solution: Have these Patents endorsed by the signatures of both the (possibly former) “Director” Ms. Lee and the (possibly current) Acting Director Mr. Hirshfeld. Since one or the other will likely be revealed as the defacto Director during this time, and their titles and nominal organizational positions are different; then, wouldn’t that ensure valid endorsement?

    Problem #2: IT infrastructure breakdown.

    A possible solution: get a top-flight consulting firm to take up the essential data center and networking tasks; fire everyone from the IT Director on down to the senior SA’s and replace them with competent, if not excellent replacements; have the IT architecture and job roles be established by the consulting team and made policy for the IT management, in their wake.

    I used to work for a boutique IT networking consultancy in the first ‘dot com’ era, though our clients were primarily large established firms such as large university hospital operating companies or Wall St. clearinghouses. Despite the impression I may have garnered in this forum as to being focused primarily upon physical and electrical inventions; I am well aware of the considerations of software-based development, implementation, installation and maintenance.

  17. Silicon Valley Inventor February 8, 2017 11:57 am

    My fourth patent was issued on January 31. I have a number of questions and concerns about the implications, given that the directorship appears to be in limbo, along with the new administration’s policy on IP. My first three patents were issued in 2013, prior to Lee taking directorship. I agree with the general consensus in our community that she and the prior administration have eroded the rights of individual inventors/small startup patent holders like myself by using patent trolls as a scapegoat to enact policies that the big boys/campaign donors lobbied into place. Being a CIP of my earlier work, my fourth patent has a priority date in 2010 that predates the AIA by more than a year. Does that mean it is free of the act’s post-grant opposition procedures? Two more of my patents are pending and my wish is that Lee and the AIA (the very name is steeped in hubris) are both abolished.

  18. Stephen Curry February 9, 2017 5:30 am

    continuing with our previous conversation with Mark N in another thread, this document is in michelle k lee wikipedia entry.

    why are the patents written and USPTO-filed/signed by michelle Lee omitted from the below document?
    these patent applications signed by Lee is important if Lee renominated for USPTO Director and will be subject to new questionings by the Senate Judiciary Committee

    why is the name of google’s main outside patent prosecution counsel omitted from the below document ? (Gene knows that patent attorney who is a contributing author in IP watchdog)

    Perhaps the Senate Judiciary Committee can answer these un-answered questions?

    https://www.judiciary.senate.gov/imo/media/doc/Lee%20Questionnaire%20Final.pdf

  19. James Walker February 9, 2017 1:20 pm

    Sounds to me something shady is going on. Sources within the office state that Lee was seen in the past days, yet no official email is coming from her to the employees.

    I’m suspicious that her letter of resignation was either accepted by form. Pres. Obama and she cannot act in any official capacity and they’ll appoint her behind doors, or, they don’t want to admit to have a carry on from the former administration.

    Probably one of the two.

  20. Michael February 13, 2017 8:24 am

    Silicon Valley Inventor said: “Being a CIP of my earlier work, my fourth patent has a priority date in 2010 that predates the AIA by more than a year.”

    You need to hire a patent lawyer. He or she will tell you that the publication of that first application may be prior art to your CIP application. And that’s before they explain the nuances of transition applications, which your CIP appears to be.

Post a Comment

Respectfully add to the discussion.

Name *
Email *
Website