On Tuesday, June 6, 2017, Under Secretary of Commerce for Intellectual Property and Director of the Patent and Trademark Office Michelle Lee submitted a letter of resignation. Although the e-mail she sent to all USPTO employees did not specify whether her resignation was immediate, and the USPTO has not yet responded to inquiries surrounding her resignation, it does seem as if Lee’s resignation was effective immediately. See USPTO Director Michelle Lee Resigns.
“We thank Michelle Lee for her service to her country and to the Department of Commerce,” said Commerce Secretary Wilbur Ross in a brief statement. “As the first woman in our country’s history to serve as Director of the United States Patent and Trademark Office, Michelle has worked tirelessly to serve our stakeholders and the American public. We wish her well in her next endeavor.”
Speculation will now turn to her replacement, who will run the USPTO an interim basis, and what this will mean from patent policy under the Trump Administration. In order to put this all into perspective we’ve reached out to a panel of well informed industry insiders for their thoughts on Lee’s tenure, her sudden resignation, and for speculation about possible successors.
As for my take — the legacy of Michelle Lee will be extremely complicated. She has been loved by those in the tech community most associated with using patented technologies (i.e., infringers) and reviled by innovators who need strong patent protections. Her speeches have always been full of rhetoric that leads many observers to believe she is not in favor of strong patent rights, so her departure will undoubtedly be welcome in many corners of the industry and could signal a new pro-patent approach on the horizon for the Trump Administration.
With the resignation of Michelle Lee, the Trump Administration must choose what sort of individual they want to set IP policy at PTO. The Administration should focus on individuals who are firmly committed to the promotion of strong American IP rights, which are a core aspect of private property. At a time of falling U.S. rankings in economic freedom (see the 2017 Heritage Index of Economic Freedom) and IP protection (see the U.S. Chamber of Commerce’s 2017 International IP Index), when strong IP is more important than even to economic growth and innovation, yet American patent rights are weakening, the ideal candidate would be dedicated to advancing policies aimed at strengthening American patent protection.
Alden Abbott serves as Deputy Director of Edwin Meese III Center for Legal and Judicial Studies at The Heritage Foundation.
Partner, Oblon, McClelland, Maier & Neustadt, L.L.P.
I have heard from some reliable sources that Secretary Ross held a second round on interviews for candidates for the USPTO Director job. I understand the people given second interviews included patent litigation attorneys from Fish & Richardson, Seed IP and Irell & Manella. It may be the case that the Secretary has made a final decision on his recommendation to the President for the new Director. Peter Thiel and Darrell Issa have been strong supporters of Director Lee, but her announcing her resignation leads sources to believe that the Administration is proceeding to move in a new direction.
Stephen Kunin serves as an expert witness and consultant on patent policy, practice and procedure. Mr. Kunin served three decades at the USPTO, including 10 years as Deputy Commissioner for Patent Examination Policy.
CEO, ELITE Strategic Services
This is a much-welcome departure. Michelle Lee’s actions have spoken more loudly than her words. She oversaw the furtherance of turning the PTO into an unfriendly agency toward inventors and patent owners — and friendly toward patent infringers and antipatent advocates. For instance, how she implemented the PTAB such that its patent invalidation rate and providing repeated opportunities for infringers and speculators to game the system is unconscionable. Her pleasant words about innovation in speeches and so forth thus have rung hollow. Ms. Lee seems to be a smart, pleasant person, but the Google antipatent taint never left her. And the fact of her being an Obama administration holdover certainly hasn’t given any comfort that she would right the ship of the PTO. So, I’m glad to see her leave.
Jim Edwards consults on intellectual property, health care innovation, and regulatory and policy issues. Edwards served as Legislative Director to Rep. Ed Bryant, R-Tenn., then a member of the U.S. House Judiciary Committee, and handled IP legislative matters. Edwards also worked on the staffs of Rep. John Duncan, R-Tenn., the U.S. Senate Judiciary Committee, and Sen. Strom Thurmond, R-S.C.
Editor in Chief, IAM Magazine
It was a surprise that Michelle Lee stayed on at the USPTO when the Trump administration took over and it is a surprise that she has suddenly decided to quit now. Expect to see her emerge as either a law firm partner or a senior in-house counsel sooner rather than later. Lee’s departure will spark a fierce fight as Commerce Secretary Wilbur Ross seeks a permanent successor. While many in the US patent community will be pleased to see her go, as they believe she has presided over a regime that has deliberately and effectively undermined patent rights, others will be very worried about what comes next – this will particularly be the case among many of the larger technology companies. Only recently a group of them – including Amazon, Facebook, Google and Samsung – wrote to President Trump and Secretary Ross urging them to leave Lee in place or to appoint someone who will continue the work she began at the agency. You can see why: the Supreme Court’s Cuozzo decision in 2016 made clear that the USPTO Director has substantial power to revise the rules under which the Patent Trial and Appeals Board operates, while a new director could also choose to revisit examination guidelines created in response to recent Supreme Court judgments such as Alice and Mayo. Any moves away from the status quo to a more patentee-friendly approach at the PTAB and among the examiner corps would be very unpopular in many parts of Silicon Valley. Conversely, from the perspective of companies operating in other sectors, such as the life sciences, they might be very welcome.Thus, whoever does end up with the USPTO director’s job permanently stands to have a fair bit of power; and they are probably going to be able to do much as they like without having to worry too much about being second-guessed further up the government chain. Depending on the identity of the individual, that could mean steady as it goes or radical change. Expect extreme lobbying as a result and perhaps open dissent prior to a confirmation process should a nominee unpopular in certain quarters finally emerge. The USPTO Director’s job is political in a way that it has never been before. If left to themselves, those with the deepest pockets may end up deciding who gets to shape the US’s patent environment over the coming years; so if you feel strongly about this, your best bet is to hold your breath and get down deep into the swamp!
Joff Wild is Editor of the IP Division of Global Business Media Group. He has overall editorial responsibility for a number of titles and events including Intellectual Asset Management (IAM) magazine, World Trademark Review and the IP Business Congress.
Patent Policy & Litigation Consultant
It’s disappointing to have Michelle Lee’s tenure end so strangely and suddenly, because her time as Director has been very positive for the USPTO. She pushed initiatives that made some great progress towards improving patent quality and overall improved the functioning of the Office. Michelle oversaw the creation of the new AIA post-grant review procedures and just generally left the Office in better shape than she found it.
I hope that whoever her replacement eventually is can put the interests of the patent system ahead of any particular industry.
Matt Levy is the former Patent Counsel at the Computer and Communications Industry Association (CCIA). He is now a consultant on patent policy issues and patent litigation.
Brian P. O’Shaughnessy
President, Licensing Executives Society
The Licensing Executives Society (USA and Canada), Inc. (LES) is deeply grateful to Director Lee for her leadership of the U.S. Patent and Trademark Office these past two years. Director Lee assumed the helm of the USPTO in a time of great uncertainty. The implementation of the AIA was still very much a work in progress. The USPTO was still devising and ramping up complicated new proceedings, and hiring staff to conduct those proceedings. At the same time, courts were rewriting precedent in patent law that was seemingly long settled and well established. Director Lee met those challenges with great skill, professionalism, and laudable transparency.
Now, the Administration must appoint Director Lee’s successor. 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. The Administration should appoint a Director committed to protecting IP as the property right our nation’s founders envisioned, and who has: (1) first-hand experience of at least 25 years in the procurement, and enforcement and/or commercial exploitation of IP rights; (2) a commitment to the prompt examination and issuance of patents of the highest quality; and (3) a thorough understanding of the role of US patent law in the world of international trade. Regrettably, recent changes, both legislative and precedential, have chipped away at the US patent right. Meanwhile, patents from other countries are increasingly perceived to have greater value. Above all, we need a USPTO Director dedicated to reviving the US patent system as one of the best in the world, and one that is capable of producing IP rights that are definite, durable, and reliable.
Brian O’Shaughnessy is president and chair of the board of the Licensing Executives Society, Inc. (USA and Canada) (LES). He is also a partner with Dinsmore & Shohl LLP in Washington, DC.
Amster Rothstein & Ebenstein LLP
Michelle Lee was in charge of the US Patent and Trademark Office during tumultuous times. She inherited the Office after the departure of a very popular and successful administrator and his protégé. She was charged with numerous difficult tasks, including implementing the controversial AIA, an ever changing law of patent-eligibility, addressing other significant changes in the patent law arising from disagreement between the Judges at the Federal Circuit and the Justices as the U.S. Supreme Court, as well as addressing landmark decisions in trademark law also coming from the Federal Circuit and U.S. Supreme Court. She was one of the few Obama appointees who continued to serve under the new Administration, which presented its own unique set of challenges. Through it all she served the public with grace and poise. May she have the best of luck in her next endeavor and her successor have smooth sailing when the mantle is assumed.
Charles Macedo is a partner with Amster Rothstein & Ebenstein LLP. He litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation and appellate work.
Managing Director, US Inventor
I don’t know all of the reasons why Michelle Lee’s tenure at the USPTO was so controversial. But one is certainly her perspective. The AIA created the PTAB and changed a property right into a public entitlement despite 220 years of precedent, black letter law and the Constitution. Successfully managing a change of this magnitude would be nearly impossible for anyone, Michelle Lee included. However, I think the root of Michelle Lee’s magnificent failure was her perspective.
She was a multinational corporation’s lawyer working for Google before she took the job at the PTO. After obtaining patents on their search algorithm Google grew to have a dim view of patents, and massively commercialized a wide range of technologies without even considering what was patented and owned by others. So it’s not surprising that Google attracted a lot of patent infringement suits. Michelle Lee’s perspective was undoubtedly formed as a result of defending Google against these suits.
But Michelle Lee had not worked enough with small inventors and startups trying to fund their company when the only asset they have to attract that funding is a patent. When she formulated the policies that drive the PTAB and examination under Alice, the only perspective she knew was that of a multinational infringer that didn’t care what patents they infringed. So her polices naturally protected multinational infringers. Michelle Lee could not have known how damaging these policies would be for small inventors and startups because she had no experience there. The next Director must have experience with small inventors and startup where patents matter to the funding of the company. If not, we will continue on this very damaging course all the while thinking we are doing the right thing.
Paul Morinville is Managing Director of US Inventor, Inc., which is an inventor organization working in Washington DC and around the US to advocate for strong patent protection for inventors and startups.
The primary concern for the independent inventor community during Michelle Lee’s tenure as USPTO Director has been the administration of a PTAB system run amok, invalidating significant portions of 90% of the issued patents brought before a tribunal which has lost it’s credibility among key shareholders. The result has been an inexpensive path for infringers to bypass the traditional court system, lessen the historic value of Intellectual Property and promote uncertainly in the capital funding of innovation. This seems 100% contrary to the core purpose of the institution our founding fathers created to assist, not prevent, US innovation and economic growth. Our hope is the next USPTO Director will narrow the scope of the PTAB process and reign in the current excesses, focus on supporting organic innovation, and maintain a fair playing field for innovators and investors to once again place their trust in the US patent system.
Warren Tuttle is President of the United Inventors Association. John Calvert is Executive Director of the United Inventors Association.
Nutter McClennen & Fish LLP
Certainly, Director Lee’s tenure at the USPTO has been marked by excellence in management, and excellence as a policy goal. Decisions around her replacement will necessarily involve balancing policy concerns among different industries. Director Lee, an electrical engineer by training and coming to government from Google, leaned toward the concerns of high tech industries, where patent infringement litigation by NPEs (Non Practicing Entities) is a significant issue. As a result, patents became more difficult to obtain and more easy to challenge during Director Lee’s tenure.
While also focusing on patent quality, life sciences industries tend to favor stronger patents, as their patents often protect the substantial investments they make in research and development in bringing life improving products to market. Many suspect that the current administration favors strong intellectual property protection for U.S. companies—the selection of the next USPTO Director gives the administration a visible opportunity to move in that direction.
Ron Cahill is partner and chair of the Intellectual Property Litigation practice group at Nutter.