Richard Lloyd

Since the start of the year there has been much discussion over who might be named the next director of the USPTO, with Obama appointee Michelle Lee holding the fort while candidates are vetted and interviewed. Among those under consideration are ex-Johnson & Johnson IP head Phil Johnson, former chief judge of the Court of Appeals for the Federal Circuit, Randall Rader and a handful of private practice lawyers.

What has not been clear is just who tech’s choice might be, but earlier this week any doubt was cleared up when a large constituency of big name companies including Amazon, Facebook, Google and Samsung wrote to President Trump and Commerce Secretary Wilbur Ross urging them to leave Lee in place or appoint someone who will continue the work she has begun at the agency.

The letter was organised by United for Patent Reform, the advocacy group that has been pushing hardest for new patent legislation. As well as including some of the biggest tech companies, the signatories also include organisations representing builders, retailers and the auto industry. 

Under Lee’s watch, the letter points out, the PTO has put a strong focus on improving patent quality through the Enhanced Patent Quality Initiative and via its oversight of the post-issuance review process. “Patent quality, which had unfortunately been neglected for too long, is finally being recognised as critical to the strength and success of our patent system,” the letter states. “We believe that the American economy would greatly benefit from [Lee’s] continued leadership or the leadership of a USPTO Director committed to the priorities she has instituted and championed,” it concludes.

While it is unusual for the PTO head to remain in place after a change in administration, recent reports have suggested that Lee is holding the fort while she remains in the running to head up the White House Office of Science and Technology Policy.

As the letter shows, there is obviously some concern in parts of tech that a new director will institute changes that blunt the effectiveness of inter partes reviews (IPRs) in knocking out patent claims. Both Rader and Johnson have been outspoken critics of the IPR process, with the former going to far as to label the Patent Trial and Appeal Board (PTAB) a “death squad”.

As the wait goes on for a nominee, it is becoming increasingly clear that the Trump White House is casting its net far and wide. While Johnson and Rader have been perhaps the most high-profile possible nominees, speculation in Washington DC patent circles has focused on the candidacies of three private practice lawyers – David Carlson from SeedIP in Seattle, Michael McKeon of Fish & Richardson in DC and Andrei Iancu the managing partner of Irell & Manella in Los Angeles. Both Carlson and McKeon have been linked with the job before, while Iancu has flown relatively under the radar.

Although numerous sources said that he is in the running for the job, Iancu did not respond to emails from IAM seeking comment and it is not clear if he remains under consideration. Like Carlson, Iancu is not well known in wider, national IP circles, but he boasts a resumé that includes a string of high-profile litigations; according to one source, he leans more towards the stronger patent rights end of the spectrum.

Notably, Iancu's recent workload includes representing Ariosa in its case against Sequenom involving the latter’s patent relating to a method for accessing fetal DNA from a mother’s blood. That grant was ultimately found to be invalid by the Federal Circuit en banc, in a ruling that proved particularly controversial in some quarters given the apparently innovative nature of Sequenom’s discovery. Iancu has also handled a series of cases for TiVo, which gives him experience of advising a business with an active licensing operation. 

Beyond the growing list of names linked with the top job at the USPTO, it is becoming increasingly clear that it could be some time before anyone is confirmed. The director job is just one of many senior positions in the new administration that remain unfilled, including number two at the Commerce Department – which oversees the patent office – after Todd Ricketts, the original nominee, withdrew from the confirmation process.

With nominees having to undergo a lengthy security clearance process (unless they have been cleared already as Johnson has) and then go through a confirmation process before the Senate Judiciary Committee, it seems unlikely that anyone will be in place until the autumn at the earliest.

In Obama’s first term, David Kappos was formally nominated in June 2009 (although he began to be vetted in April) before being confirmed in August of the same year.