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Michelle Lee takes the reins at the USPTO; but why now and why not as Director?

My immediate reaction to the news that Michelle Lee is to become deputy Director of the US Patent and Trademark Office on 13th January 2014 was why not Director and why now? Lee, the former head of patents & patent strategy at Google, has been in charge of the USPTO’s satellite office in Silicon Valley since it was established in 2012. She was also being mentioned as a candidate for the top job at the agency almost as soon as David Kappos announced that he was standing down last year. It’s not as if she has been hidden away waiting to be discovered: everyone has known about her for a very long time.

On the face of it, therefore, a year’s wait to get the second in command job is not exactly a ringing endorsement. PatentlyO reports that Peggy Focarino, the Commissioner of Patents at the USPTO and the most senior official currently in place there, nominated Lee and the US Commerce Secretary then selected her; but it is hard to believe that that “just happened”. Would Focarino, who is not a political appointee, have put forward someone who she was not certain was going to get the job? Realpolitik surely dictates that is highly unlikely.

Until last month the deputy Director’s job had been done by Teresa Stanek Rea. But for whatever reason she left and went back into private practice. What is interesting about the deputy job, though, is that while the post-holder runs the office in the absence of a permanent Director, she does not have to be approved by legislators. Had Lee been appointed Director now or any time earlier she would have had to have gone in front of the Senate Judiciary Committee, which would then have had to have decided whether to forward her nomination to the full Senate for a final vote of approval.

It’s inconceivable that this was not fully known to everyone involved in the process of putting Lee in place. Thus, it is hard to escape the conclusion that a principle driving force behind making her deputy Director and not Director is that the Obama administration wanted to avoid legislative scrutiny of her appointment. If that is the case, the question then is why?

The obvious answer is Lee’s past links to Google, a company which has thrown a lot of lobbying money at and provided loud vocal support for significant reform to the US patent litigation system, and which also strongly supports restricting the patentability of certain types of invention – notably those relating to software. There is little doubt that members of the Senate would have focused on Lee’s views on such issues and her ties with Google had they been given the opportunity to do so.

Running the USPTO at this time is a hugely important job. Not only is the Innovation Act now being fast-tracked through Congress in the face of opposition from a wide range of stakeholders in the patent system, but in CLS Bank v Alice Corp there is also a major case up before the Supreme Court that could (though probably won’t) see major restrictions being placed on software patents. The USPTO will have a strong voice as both these issues play out; and it will have to interpret the findings of the Supreme Court justices and decide whether to put in place new examination guidelines for software.

With regard to the Innovation Act, at least, the Obama administration’s line – which Lee will be responsible for explaining and defending (as well as helping to develop)  – is pretty close to Google’s. If the same were to become true for software patents that would raise very loud alarm bells in many parts of the technology sector and beyond. Some may feel that the Senate should have had the chance to explore Lee’s thinking on these matters – although it is unlikely they will say so out loud.

For her part, Lee has stated clearly that she should not be seen as Google’s woman at the USPTO.  “None of the policy positions of my former employers has guided my work … I certainly would be very welcoming of everybody's input," Reuter’s quotes her as saying.  And despite what I have written above, my view is that she has every right to be taken at her word. With a long and distinguished career in private practice and corporate IP, two terms on the USPTO’s Patent Public Advisory Committee, and a background in computer engineering, Lee has all the credentials and more.

There are things that Lee has said in the past that I profoundly disagree with - notably, the fact that she wrote that patent plaintiffs “who don’t make or sell any real product or service” are trolls - but she would not be the first person to have believed one thing while at the sharp end of litigation as a defendant only to see the bigger picture once they have moved on. What’s more, the feeling I always got with the poor old IP team at Google was that they were constantly battling against a whole series of mixed messages from higher up. Things are much more coherent there now, but in Lee’s day I imagine there were many times when she and her colleagues were tearing their hair out trying to get other parts of the business to see a bit of sense.

My concern here is not with Lee the individual, it is with the process through which she got to be the person who will run the USPTO. Potentially, it sends out negative signals to a US IP community that is looking for a strong leadership at the agency; one that will take an evidence-based approach, stand up to the Commerce Secretary and White House if necessary, and listen with an open mind to concerns. If Lee did get the deputy’s job so as to avoid Congressional scrutiny, to my mind that is a very bad thing as it does invite questions about Google and its influence over the Obama administration when it comes to patents. I guess the easiest way to dispel any such thoughts would be to nominate a permanent Director of the office in very short order. Let’s see if that happens.  

Joff Wild
IAM Magazine
12 December 2013

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