On the Next USPTO Director, Patents as a Private Property Right

[NOTE: This article is take from an LES open letter to Secretary of Commerce Wilbur Ross, and published here with permission.]

To promote the progress of science and the useful arts, the U.S. Constitution empowers Congress to grant authors and inventors an exclusive right in their respective writings and discoveries for a limited term. In the case of invention, society properly demands of the inventor a disclosure of how to make and use the invention. This enlarges the public store of knowledge, fosters improvement, and makes the invention available to all upon expiration of the patent.

The Licensing Executives Society, USA & Canada (LES) is a non-profit, non-partisan professional society of 3,000 business executives, lawyers, entrepreneurs, and inventors devoted to bringing the fruits of innovation rapidly to market through business alliances. These alliances, on the whole, are pro-competitive and enhance economic integration and specialization. They promote business formation, investment, and the creation of good, high-paying jobs. Surely, a system that produces durable, predictable, enforceable intellectual property rights will reduce the risk inherent in such alliances, will promote their formation, and will inure to the public good.

The chief steward of America’s patent system is the Undersecretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office.   The Director “is the principal advisor to the President, through the Secretary of Commerce, and to the Administration on all intellectual property policy matters and the chief executive of the USPTO.”[1] Recently, Director Michelle Lee, who held that post since March 13, 2015, resigned.

Now, the Administration must appoint a new Director. LES urges the Administration to do so promptly. The US patent system is a potent economic engine. It stimulates a disproportionate amount of new business formation, job growth, and investment.

In selecting the next steward of our patent system, LES recommends the following qualifications.

Above all, LES recommends appointing a Director dedicated to protecting intellectual property, generally, and patents in particular, as the private property right our nation’s founders envisioned. The founders saw great value in rewarding individuals who toil to bring forth from commonly accessible resources useful products and processes by granting to those individuals an enforceable property right. They recognized that such a property right would, in the fullness of time, work a substantial benefit to the public by encouraging innovation and disclosure. We must honor that philosophy. It contributed substantially to America’s rapid ascendancy from agrarian economy to industrial powerhouse, and can be traced to America’s first patent act of 1792. In affording that private property right, we reward and empower the archetypal American innovator, the individual daring to risk all to bring forth the next big thing, and thereby challenge market incumbents who benefit from stasis and the status quo.

We further recommend that the Administration appoint a Director who has: (1) first-hand experience of at least 20 years in the procurement, and enforcement and/or commercial exploitation of IP rights in a diverse range of technologies, both domestically and internationally; (2) a commitment to the prompt examination and issuance of patents and trademarks of the highest quality; (3) dedication to the administration of the USPTO’s duties to ensure transparency, equity, and compliance with prevailing law for the good of industries both large and small, and in a manner that promotes innovation and disclosure; (4) legal and/or executive leadership skills, especially in the operation of an enterprise engaged in the creation or utilization of intellectual property; and (5) a thorough understanding of the role US patent law can play in promoting a fair and level playing field in the world of international trade.

Commercial development of innovation, and new business formation, demands the prompt and predictable grant of durable property rights, and a reasonable expectation of the enjoyment of quiet title upon issuance. Financing of new enterprises, and the growth of existing ones, demands intellectual assets that stand up to challenge, regardless how those assets are derived or commercialized. American innovators deserve strong, predictable, enforceable intellectual property rights, and that starts at the USPTO.

Regrettably, recent changes, both legislative and precedential, have chipped away at US patent rights. Meanwhile, patents issued by other countries are increasingly perceived to be more predictable and enforceable, and thus to have greater value. Investment, and ultimately innovation, will migrate to those environments. We need a USPTO Director dedicated to reviving the US patent system as one of the best in the world, restoring public confidence in the rights it confers, and thereby restoring US prominence in innovation, manufacturing, and new business formation.

The Licensing Executives Society, USA & Canada, would be both pleased and honored to work with you in your selection process, and to provide further advice and counsel as you see fit. I encourage you to contact us to discuss how we can best serve you.

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[1] U.S. Patent and Trademark Office, at https://www.uspto.gov/about-us/organizational-offices/office-under-secretary-and-director

The Author

Brian O’Shaughnessy

Brian O’Shaughnessy is a Partner in the Washington, D.C. office of Dinsmore & Shohl LLP, where he focuses his practice on counseling clients in strategies to protect and respect intellectual property particularly in the areas of organic chemistry, pharmaceuticals and biotechnology. Mr. O'Shaughnessy represents clients in contested matters before the federal courts of the United States, and in administrative proceedings before the U.S. Patent and Trademark Office including patent procurement, post-issuance proceedings, and interferences. He is also President and Chair of the Licensing Executives Society (USA and Canada), Inc. (LES), which is a non-profit, non-partisan professional society devoted to bringing the fruits of innovation rapidly to market for the benefit of the global community. For more information or to contact Mr. Mr. O'Shaughnessy please visit his firm profile page.

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Discuss this

There are currently 5 Comments comments.

  1. Anon June 13, 2017 12:52 pm

    I could do without the international aspects of point 2.

  2. Paul Johnson June 13, 2017 2:11 pm

    I believe that the next USPTO Director will not be able to truly protect patents as private property rights until the U.S. Supreme Court starts to recognize them as such (i.e., by overturning eBay).

  3. Edward Heller June 13, 2017 5:41 pm

    I would like any new Director to frankly recognize that the AIA as a whole has been a disaster to the patent system, and should conduct a thorough review.

    I would further like to have the next director recognize that the purpose of the United States patent system is to promote invention in the United States. This means that the U. S. patent laws should bias in favor of invention and R&D in United States to the extent consistent with our treaty obligations.

    Too long we have focused on harmonization as universally a good thing. It might be a good thing for international business that locates manufacturing and R&D anywhere it wants to. But that does not promote the advance of invention in the United States.

    And like others here, patents are property. They should not easily be invalidated once issued. Only if their validity is somewhat reliable can a patent system actually function.

  4. Bluejay June 13, 2017 11:09 pm

    Mark my words, the next Director will dismantle the efficient infringement scheme. This will be Trump’s payback to Bezos and Cook for WaPo and the travel ban hysteria.

  5. staff June 14, 2017 5:15 pm

    ‘Regrettably, recent changes, both legislative and precedential, have chipped away at US patent rights’

    Inventors agree. Our large competitors are now able to easily rob and crush us and regularly do. We no longer have a fair chance at commercializing our inventions. The next Director must be someone who inventors and small entities can trust as small entity issued patents and applications have plummeted to about 1/10th of their historical share. Trust is essential if America is to restore the patent system. Another appointment of a crony for large infringers will only worsen matters, if that is possible given the low state things are already in. We have prepared a list of qualified candidates who inventors will trust and stand ready to advance that list with our friends in Congress and the White House.

    For our position and the changes we advocate (the rest of the truth) to truly reform the patent system, or to join our effort, please visit us at https://aminventorsforjustice.wordpress.com
    or, contact us at aifj@mail.com