Doll Is New Deputy At USPTO; More Changes On The Way

By Liza Porteus Viana for Intellectual Property Watch
John Doll will be the new acting deputy undersecretary of Commerce for intellectual property and deputy director of the US Patent and Trademark Office, replacing Margaret Peterlin, effective immediately. Meanwhile, the House of Representatives is elevating the handling of intellectual property issues.

The USPTO announced Friday that Doll, currently the agency’s patent commissioner who has been with the agency for 34 years, will have his position temporarily filled by Peggy Focarino, the deputy commissioner for patent operations who has been at the USPTO for 31 years.

“With John’s and Peggy’s leadership, we will ensure that the important work of the deputy undersecretary and deputy director, as well as that of the commissioner for patents, continues in an uninterrupted fashion, which is good for our employees, the agency and the intellectual property system,” Dudas said in a Friday statement.

Peterlin, who previously resigned, was the deputy under PTO Director Jon Dudas, who is expected to leave his post when President-elect Barack Obama takes office in January.

Doll, whose patent commissioner term expires in 2010, told Intellectual Property Watch last week that he is prepared to fill the director spot once that happens, until the Obama administration names permanent replacements for both the director and deputy director positions.

Dudas’ replacement will have all the traditional duties of a director, which has some limitations on rulemaking and rule changes that require the approval of a presidential appointee confirmed by the US Senate – such as the full commerce secretary.

Names that have surfaced during the Washington parlour game of “guess who” the next USPTO chief will be include Shanna Winters and Q. Todd Dickinson. At least one source indicated to Intellectual Property Watch that other names have surfaced as possible contenders for the USPTO post, while another hinted that there are talks on who will take over.

Winters is the majority chief counsel and Democratic staff director for the House Judiciary Subcommittee on Courts, Internet, and Intellectual Property, which Rep. Howard Berman, a California Democrat, chairs. That committee is coming in for a change in the new Congress in January, according to a congressional source.

“I’ve heard it from some very reliable people she is actively seeking” the USPTO post, said Harold Wegner, a patent attorney at Foley & Lardner who has been following the changes.

In 2000, Winters was chosen as one of two executive board representatives for the National Treasury Employees Union’s Chapter 245, which represents the trademark examining attorneys. She played a role in House passage of patent reform in 2007.

Should Winters be appointed, a lawsuit against her nomination will be filed by Gregory Aharonian, a patent analyst who was the lead plaintiff in last year’s legal suit against Peterlin, which claimed Peterlin did not have enough expertise in the field (IPW, US Policy, 13 September 2007).

“Shanna has no management experience, no experience with patent prosecution or litigation, no experience with information technology management, etc… all essential to restore the health of the PTO,” Aharonian told Intellectual Property Watch Friday. “Shanna’s appointment would be an insult to inventors, patent lawyers and patent examiners, and would further accelerate the decline of patent quality at the PTO.”

Aharonian said this time around, “there will be many more plaintiffs.”

Dickinson is the current executive director of the American Intellectual Property Law Association (AIPLA) and former USPTO director under President Clinton. Prior to joining the Commerce Department, Dickinson was chief counsel for intellectual property and technology at Sun Company and at Chevron Corporation.

Many patent practitioners and industry officials have stressed the next USPTO chief must be well-versed in the patent system.

“There have been a lot of folks who have called for an experienced patent practitioner and that actually, in this particular environment, might be good when we have an age where there’s a lot of patent reform discussed,” said Manny Schecter, associate general counsel for intellectual property law at IBM. “That would be helpful.”

Schecter also said “there’s also a tremendous amount of diplomacy” in negotiating bilateral or multilateral agreements between patent offices, between the USPTO and Congress, and other parties.

“What is critical is to get as good a director in the patent office who understands the system,” Wegner added, particularly when it comes to addressing patent reform in the next Congress. “If you had a very good, honest broker that both sides could admire and respect, then common elements could be found in a solution.”

Intellectual Property Owners Association Executive Director Herb Wamsley expressed confidence that the Obama administration would find a director with a good understanding of intellectual property rights and management expertise. He hopes that person will be named sooner, rather than later.

“The PTO gets things done, providing Congress provides adequate funding to keep all the machinery running,” said Wamsley, who worked at the agency for 18 years. But with an acting USPTO director, “there’s a natural tendency not to make any revolutionary move changes, to make any new policies.”

Also up for grabs will be the position of an IP tsar, created by a bill President Bush recently signed into law. That Intellectual Property Enforcement Coordinator within the Executive Office of the President would coordinate US domestic and international intellectual property enforcement activities.

Capitol Hill Shuffle

Meanwhile, intellectual property issues – including patent reform and internet neutrality – in the 111th Congress will be taken up by the full House Judiciary Committee, and no longer by the Subcommittee on Courts, Internet, and Intellectual Property. Rep. John Conyers, a Michigan Democrat, heads the Judiciary Committee.

A committee aide confirmed the change to Intellectual Property Watch, noting that antitrust issues will be moved from the full committee to the subcommittee. “Because there’s so much interest on in the issue of intellectual property,” the aide said, the subpanel has grown “pretty dramatically” in recent years.

“I think the chairman felt that there that made much more sense,” the aide said.

The Judiciary Committee will hold an organisational vote in January to formalise transition. The subcommittee also needs a new leader, since Berman will be heading the House Foreign Affairs Committee in the next Congress. That person has not yet been picked. Berman was known for having a pro-rightsholder stance.

These committee posts are usually based on seniority. If that is the case, then Rep. Rick Boucher, a Virginia Democrat, and founding member of the Congressional Internet Caucus, would be the likely pick. That decision will be made before the January vote.

Rep. Zoe Lofgren, D-California, who also serves on the Congressional Internet Caucus and has been on the IP subcommittee for seven terms, also may be interested.

The Senate Judiciary Committee, which deals with myriad intellectual property-related issues in that chamber, will be headed by Senator Patrick Leahy, a Vermont Democrat, in the next Congress. It is expected he will try to push through patent reform again. This panel also is where judicial nominations will be vetted.

Liza Porteus Viana may be reached at info@ip-watch.ch.