Joff Wild

Michelle Lee, who was head of patents & patent strategy and deputy general counsel at Google until she left the company in June, is to head up the newly-established Silicon Valley office of the US Patent and Trademark Office. Lee joined Google in 2003, having previously been a partner with law firm Fenwick & West. So the one thing you can say with quite a lot of certainty about her new role is that she will probably be earning significantly less than she has been used to!

Lee was linked with the deputy director post at the office following the resignation of Sharon Barner at the end of 2010, but that job was eventually taken by Teresa Staneck Rea. She also served as a member of the office’s Patent Public Advisory Council.

Her new appointment seems to have gone down well with that part of Silicon Valley’s community which believes that NPEs are a major problem. At Google, of course, she will have acquired a great deal of experience of dealing with NPE-related litigation and in the past she has written about the need for serious patent reform in order to reduce the number of “frivolous patent claims from parties gaming the system to forestall competition or reap windfall profits”. Google has undergone something of a sea change in terms of the way it views the importance of patents, but during much of Lee’s time at the company its strategy seemed to be to ignore them as much as possible; though that seems to have been a policy dictated from much higher up in the organisation than the IP group.

Writing for Ars Technica, Joe Mullin reports:

Caroline Dennison, a legal advisor at the patent office, said her hiring was a sign of the office's dedication to better dialogue with the tech sector. "[Lee] has been in the trenches with the non-practicing entities in litigation," said Dennison. "She gets it, she knows what's going on. And we couldn't be more thrilled to have her. Director [David] Kappos is committed to this industry, and committed to looking for solutions to this problem. We plan on having this to be not just a satellite office, but a platform for outreach." 

It’s intriguing that Dennison seems to refer to NPEs as a problem. To the best of my knowledge, USPTO Director David Kappos has never done that. At the IPBC in Cascais earlier this year, he said of them: “They are neither good nor bad [they] are a market clearing mechanism.” That strikes me as the sensible position for the USPTO to take, given the multiple interest groups it serves, not to mention the many kinds of NPEs that there are in the first place.

A registering authority that starts to make judgments about the merits or otherwise of different types of patent owner would be heading down a very slippery path and it is difficult to see someone as politically astute and committed to the patent system as David Kappos countenancing that. For this reason, I am not sure that Lee’s appointment is as significant as some might hope. In any case, whether the director of a satellite office sitting thousands of miles away from USPTO HQ in Washington DC can have much influence on the overall decision making process is an open question.