In Memoriam: The Honorable Gerald J. Mossinghoff

By Stephen Kunin
March 20, 2020

It is with great sadness that I inform the intellectual property law community of the passing of the Honorable Gerald J. Mossinghoff on March 20, 2020.  He was 84 years old.  I knew Gerry for more than 37 years, first as a Patent Examining Group Director when he was the Commissioner of Patents and Trademarks at the U.S. Patent and Trademark Office (USPTO) in the Reagan Administration, then as a colleague at the Oblon firm, where I was a partner and he a Senior Counsel.  He was a cherished friend.  We will miss him dearly.

A Long History of Service to the IP Community

Gerald J. Mossinghoff was born in St. Louis on September 30, 1935. He received a bachelor’s degree in electrical engineering from St. Louis University and a law degree from George Washington University.

He worked four years as an examiner at the USPTO, starting in 1957, before leaving to join a law firm. He returned to government service for a series of jobs including the post of director of legislative planning at the USPTO. Later, at the National Aeronautics and Space Administration, he rose to the position of deputy general counsel.

President Ronald Reagan appointed Mossinghoff Commissioner of Patents and Trademarks, and he took the oath of office on July 8, 1981. The next year, Congress changed the title to Assistant Secretary of Commerce and Commissioner of Patents and Trademarks, and Mossinghoff reported directly to the Secretary of Commerce.

Among his many other affiliations and accolades, Mossinghoff also served as President of the Pharmaceutical Research and Manufacturers of America. In 2007, he was inducted into the Intellectual Property Hall of Fame.

Automating and Improving the USPTO

Mossinghoff urged more automation for the USPTO. In 1981 the office installed a computer search device in the public search room that enabled the public to electronically search the first pages of all patents granted since 1971. The next year, the office introduced word processors to eliminate the unpopular, cost-cutting practice of sending handwritten letters to patent applicants instead of having typists prepare letters for examiners using manual typewriters and carbon paper.

In 1982, the USPTO submitted a master plan to Congress calling for complete automation of the office’s operations by 1990. In 1983, the office introduced a computer system to provide up-to-date information on active trademarks and pending trademark applications.

Mossinghoff announced that the office would reduce patent backlogs with an “18 by 87” plan, meaning the waiting time would be cut to 18 months by 1987. A companion “3/13” plan for trademarks would achieve three months to first examination and 13 months to registration by 1985.

Congress passed landmark legislation in 1982 to establish the Court of Appeals for the Federal Circuit. The measure had strong support from the Reagan Administration and the private sector. For the first time, patent infringement and validity issues were appealable from U.S. district courts to a single federal appeals court. Previously, district court appeals were taken to 12 regional appeals courts, causing a notorious lack of uniformity in patent law.

The Federal Circuit was formed by combining the Court of Customs and Patent Appeals (CCPA), which handled appeals from the USPTO, and the Court of Claims. The Federal Circuit’s first chief judge was Howard T. Markey, who was the CCPA’s chief judge and a former patent lawyer.

At Mossinghoff’s urging, Congress passed legislation raising patent and trademark fees substantially in 1982, with the goal of having users pay the full cost of operating the USPTO in return for better service. The trademark examining units were reorganized into “Law Offices” that year, and trademark examiners were given the new title Trademark Examining Attorneys.

In 1983, the USPTO hosted the first Trilateral meeting with the Japan Patent Office and European Patent Office. The Trilateral Patent Offices became a permanent group that cooperated on patent system improvements. Also during Mossinghoff’s tenure, USPTO officials began serving as heads of U.S. delegations at international copyright meetings. The Copyright Office, in the legislative branch of government, was an advisor.

Mossinghoff will be missed by all, but his many contributions to IP law and practice will live on.

The Author

Stephen Kunin

Stephen Kunin is a Partner at Maier & Maier PLLC, where he specializes in all areas of patent practice. His expertise includes post-issuance proceedings at the United States Patent Office, opinions of counsel, advising attorneys and our clients on complex patent prosecution matters, patent litigation strategy, and United States Patent Office patent policy, practice and procedure, for which he is highly sought after for expert testimony.

In addition to serving as an expert witness, Mr. Kunin has vast experience in providing lectures on recent US patent law developments across the USA, Europe and the Far East. He has more than 48 years of experience in the patent profession.

After graduating from Washington University (MO) with a Bachelor’s in Science in Electrical Engineering with honors in 1970, Mr. Kunin embarked on his lengthy career over nearly 35 years at the United States Patent Office. He received his JD in law degree with honors in 1975 from The National Law Center at George Washington University. He held many significant positions with the USPTO, which culminated with ten years of service as the Deputy Commissioner for Patent Examination Policy from 1994-2004. While at the USPTO, he was a leading voice in forming patent policy, in revising examination guidelines on subject matter eligibility, utility, non-obviousness and written description, and in establishing reissue and reexamination procedures. Mr. Kunin spearheaded revisions to the Rules of Practice and Manual of Patent Examining Procedure, making key changes to chapters on ex parte reexamination, reissue, and inter partes reexamination.

Since leaving the PTO, Mr. Kunin has been a practicing patent attorney for more than 13 years counseling clients in post-grant patent proceedings at the USPTO and routinely serves as an expert witness in patent litigation cases. He is a registered patent attorney with the USPTO, and admitted to practice in the Commonwealth of Virginia, before the U.S. Court of Appeals for the Federal Circuit, and before the United States Supreme Court. From 2005 through 2017, Mr. Kunin served as the Intellectual Property Program Director at the Antonin Scalia School of Law at George Mason University, while teaching patent and intellectual property law classes as an adjunct professor of law.

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 7 Comments comments. Join the discussion.

  1. Dmitry Karshtedt March 20, 2020 11:35 pm

    In addition to his many other accomplishments, Gerry (along with Ralph Oman) taught the IP Legislation seminar at the George Washington Law School for many years. Even after he stepped out of that role last spring (and Todd Dickinson took over), Gerry continued to judge papers for the Marcus B. Finnegan Competition, which offers prizes for best student essays on intellectual property topics, and to attend our IP program events. We will miss Gerry’s stately presence and warm smile here at GW.

  2. Joe Allen March 21, 2020 10:11 am

    I first met Gerry when he was patent counsel at NASA. He was very helpful when I was a staffer on the Senate Judiciary Committee getting up to speed on patent issues and we remained in touch when he moved onto the PTO and later PhRMA. I always enjoyed working with him and am sad to hear of his passing. He was a good man.

  3. Daniel P. McCurdy, CEO RPX Corporation March 21, 2020 10:55 am

    I met Gerry about 20 years ago when we both served on the National Academies’ Committee on Intellectual Property Rights in the Knowledge-Based Economy. There,we actively discussed and debated key policy issues around IP with the objective of providing information that would help guide needed advancements in IP policy. Gerry was a vocal and instrumental participant in the Committee, which ultimately produced a pivotal report in 2003 entitled “Patents in the Knowledge-Based Economy.” It continues to impact patent reform policy discussions.

    Through this collaboration, Gerry and I became friends and he joined the Board of Advisors of ThinkFire, a patent advisory startup I co-founded in 2001. There he was a steady, consistent voice as we grew the company. I will miss that voice, but his advice and guidance will live with me always, just as it will with the thousands of others who he guided throughout his remarkable life.

  4. Randall Rader March 21, 2020 12:10 pm

    I first met Gerry in 1980 when he visited my Senate Judiciary Committee Office to advocate creation of the U.S. Court of Appeals for the Federal Circuit. In the following 40 years, our friendship only grew. As I think of Gerry, I recall Billy Wilder’s iconic closing line in SOME LIKE IT HOT, “Nobody’s Perfect!” Of course that is true (and good reason to eschew forever criticism and gossip), but Gerry was about as close as you get! By the way, Wilder’s headstone reads: BILLY WILDER, I am a writer, but “NOBODY’S PERFECT!” I particularly like his use of the present tense, “I am . . .” — a beautiful expression of faith. Yes, Gerry, you are! Until we meet again!

  5. Michael E. McCabe, Jr. March 21, 2020 5:12 pm

    I was honored to meet Gerry when I was a partner at Oblon Spivak. Gerry could command a room with his presence and for all of his expertise in patent law, he was a plain spoken Midwesterner who loved to tell stories. Gerry introduced me to the Giles Rich Inn of Court, where you could almost always see him. He loved teaching at GW as well. He loved IP law. He practiced like a true professional. And he was a true gentlemen lawyer. It was no wonder to me why he was one of the most, if not the most, sought after patent law testifying expert. I am going to miss Gerry.

  6. Pro Say March 22, 2020 7:25 pm

    Given the above warm remembrances, I must, sadly, be included in the group of those who never knew someone so clearly worth knowing.

    Thank you everyone for sharing your memories.

  7. B March 24, 2020 7:21 pm

    Mossinghoff was one of my adjuncts in law school. He was a really good lecturer, and patient with students. He had a dry, sometimes dark, sense of humor. He was a touch cynical. He was hard not to like.

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