IP Expertise Of Senior USPTO Official Challenged

By Steven Seidenberg for Intellectual Property Watch
Amid complaints over patent quality and a rising backlog of applications at the United States Patent and Trademark Office (USPTO), the agency has been hit with a lawsuit alleging that its deputy director should be removed for lacking sufficient expertise.

A lawsuit filed by a patent attorney and others in a US federal court in July claims that Deputy Director Margaret Peterlin’s appointment violates a 1999 amendment to the US Patent Act, 35 U.S.C. §3(a) and (b), which requires that the director and deputy director of the USPTO must each be a US citizen “who has a professional background and experience in patent or trademark law.”

Peterlin lacks this background and experience, the suit claims, because she has never practised any patent or trademark law. Instead, Peterlin spent years as a politically well-connected legislative aide.

The four inventors and patent attorneys who filed the suit are facing an uphill legal battle, according to observers. But if these plaintiffs succeed, they claim that experienced patent and trademark experts will finally be brought into top positions at the USPTO, which will lead to major improvements in the agency’s operations.

When the US Congress amended the country’s patent law in 1999, in order to require the top two executives at the USPTO to have experience in patent or trademark law, the legislators were trying to address concerns about incompetence and excessive delays at the agency. “One of the appointments under [President Bill] Clinton … was so unprofessional they had to pass this law,” says Gregory Aharonian, a patent analyst who is the lead plaintiff in the suit against Peterlin.

But the 1999 law was ignored, according to Aharonian. The top two spots at the USPTO continued to go to politically-favoured individuals with little expertise in patent or trademark law, he claims.

Then, in May 2007, Peterlin was tapped for the number two job at the USPTO, and Aharonian learned about the little-known 1999 statute. “I got an email from a politically conservative patent lawyer who was upset about the appointment, and he mentioned the statute,” said Aharonian. “Shortly thereafter, a dozen of us wrote to the Department of Commerce [the parent agency of the USPTO], asking why she was qualified. We waited two or three weeks, they didn’t respond, so we sued.”

The complaint alleges that Peterlin is unqualified because she never prosecuted a patent or trademark application, litigated a patent or trademark case, or otherwise practised patent or trademark law. Moreover, the complaint states, she is not registered to practice before the USPTO and could not be registered, because she lacks the required educational credits in science and engineering.

Peterlin’s supporters counter that she may not have the nuts-and-bolts experience of practising patent or trademark law, but she does have legislative and public policy experience in this area. Prior to moving to the USPTO, she spent five years as an aide to one of Congress’ most powerful legislators, the then Speaker of the US House of Representatives, Dennis Hastert. In this position, Peterlin’s biography states, “she advised the Speaker, House and Senate leadership, and senior staff on legislative policy and strategy, including judiciary issues such as IP protection….”

According to a USPTO press release, “Margaret Peterlin is well qualified for her job as deputy undersecretary and deputy director, having had direct involvement in oversight of the USPTO and every piece of patent-, trademark-, and copyright-related legislation considered on the House floor over the past five years.”

This position is seconded by two respected congressional figures, who wrote a joint letter to the US Department of Commerce after Aharonian’s suit was filed. The current chair of the House Judiciary Committee, John Conyers, and former chair Henry Hyde wrote that since the 1999 law went into effect, “both the Clinton and Bush administrations have taken this law seriously and appointed highly qualified individuals” to the top two jobs at the USPTO.

If Peterlin were not an expert in the work performed by her agency, she would be in good company. The top officials of many PTOs around the world are generalists, not experts. The Japan Patent Office and the European Patent Office, for instance, are both headed by political appointees, not specialists in patent or trademark law, according to Martin Adelman, who teaches international patent law at George Washington University Law School, located in Washington, DC.

Most federal agencies in the United States are managed by political appointees, not experts. The nation’s two top patent courts are also staffed by generalists. “Both the Federal Circuit [America’s appellate patent court] and the US Supreme Court [America’s highest court], make policy on patent law, and there’s no requirement that those judges have expertise in patent law,” said John Duffy, who teaches patent law at George Washington University Law School.

But unlike the courts and other federal agencies, the USPTO has a specific statute that requires its top two officials to be experts. And Aharonian argues that without expertise in patent or trademark law, Peterlin will be unable to improve the USPTO’s operations. “How can you manage changes in the process [of prosecuting patents] if you’ve never been involved in the process?” he asked.

Aharonian and his fellow plaintiffs are facing a tough legal fight. They must prove they have standing to sue – i.e., that Peterson’s appointment created specific, identifiable harm to them. That’s a daunting task, according to many. “And even if the court were to reach the merits of the case, it would give a very high degree of deference to the agency,” warned Duffy.

Aharonian, however, is determined to wage a good fight. He said, “I can just fight my little battle and hope for the best.”

Steven Seidenberg may be reached at info@ip-watch.ch.