The complaint is here; it alleges that Deputy PTO Director Margaret Peterlin lacks the statutorily required "professional background and experience in patent or trademark law."
I can't speak to whether the deputy director in fact lacks such background and experience. Her biography doesn't stress much of it, though it points to quite substantial general legal credentials; but according to the Washington Post, patent office spokeswoman Brigid Quinn reported that "Peterlin has '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.'"
I'm more interested in the institutional question here: What should courts do with vague criteria such as "shall ... [have] a professional background and experience in patent or trademark law," criteria that give no instructions about the level of background and experience required? I'm not an administrative law expert, but I'm inclined to say that this is the sort of judgment that is left to the Director (and, indirectly, to the Secretary of Commerce and the President, who can decide to remove the Deputy Director), not to courts. But I'd love to hear what administrative law experts have to say about this, and about other procedural questions that this lawsuit raises.
Thanks to Michael Hall for the pointer.
Related Posts (on one page):
- Lawsuit Challenging Qualifications of Deputy Patent & Trademark Office Director Rejected:
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- Lawsuit Challenging Qualifications of Deputy Patent & Trademark Office Director:
;-)
Second, the plaintiffs attempt to assert jurisdiction under the APA for a personnel action. I'm not aware of any case supporting such jurisdiction. If the courts were to exercise jurisdiction over this type of action, then certainly could be a floodgate opened for actions challenging the job qualifications of innumerable federal employees who are alleged considered to be incompetent under the regulations governing their appointments. Not that such a event would not bring joy to a lot of hearts.
Third, this would appear to be a matter entrusted to agency discretion and thus not subject to review under the APA.
On the other hand, this is another example of Bush administration cronyism. Why on earth would you think that a bunch of years of being Hastert's staffer was the best background for this job? I thought that Republicans saw the virtues of the private sector. Why not get people with actual experience in private sector technology, or with experience practicing patent law.
Another case of politics trumping any conceivable notion of qualifications. Heck of a job, Bushie!
I agree that competence should be paramount, but the problem is not limited to Bush.
I would suggest that the purpose of those provisions in the law are to protect against exactly what is happening here - people who seem to be totally unfamiliar with the realities of the patent and trademark systems AS THEY ACTUALLY WORK, as opposed to some high level theoretical understanding.
I should add that part of what is behind this is that the USPTO top management seems almost clueless about the reality of the patent system. In particular, they have proposed a number of changes to patent prosecution, including eliminating most patent continuations. The response by the patent community has been overwhelmingly, if not deafingly, negative. Yet they proceed.
Why are the proposed rules bad? Just looking at the limitations on continuations - partly because many of the continuations being filed right now are a direct result of patent examiners ignoring MPEP guidelines as to when they can issue final rejections. There are plenty of other very legitimate reasons that patent practitioners file continuations, continuations in part, RCEs, and even divisionals. Yet, under proposed regulations, these would be severly limited. Oh, and one of their other great ideas is that if you submit substantially the same disclosure at about the same time, they are going to assume double patenting WITHOUT LOOKING AT THE CLAIMS.
What is blazingly obvious when you look through their material about the proposed USPTO patent prosecution changes is that those making the proposals have never filed and prosecuted patent applications. And part of this naivity is that forclosing filing continuations, esp. when the continuations, etc. are a direct result of examiners ignoring regulations (as they often do), is that the number of appeals is going to skyrocket. In the past, if an examiner incorrectly marked an office action as final, it was often cheaper for the client to just file an RCE. Ditto if he wasn't budging in the face of not having the prior art on his side. Now, you will petition to remove the final rejection, and then you will appeal. Automatically. The appeals process is already bogged down. Just wait until most final rejections end up on appeal.
I could go on, but most of those here are unlikely to be interested in my rants.
And what is fairly obvious to many of those practicing in that area, is that USPTO top management does not understand how the pieces fit together, which they likely would, if they had actually had the requisite professional experience.
You're right, before Bush it was Clinton who in 1993 appointed Bruce Lehman as Commissioner. Lehman had no expertise in patent law (though he had quite a vision for the Patent Office, unrelated to patents however), and it was under his leadership that the patent system started its downward spiral. Rogan and Dudas have been unable to see and address the relevant issues (due to their complete lack of patent experience), and by their actions and inaction have actually compounded matters to steepen the downward trend.
Before Clinton, I am completely unaware of a single Commissioner appointment who did not have a professional background and experience in patent law (beginning with Brenner, and then Gottschalk, Banner, Parker, Dann, Mossinghoff, Manbeck, Quigg, and Comer?
And so, for the last 15 years (and maybe for the first time in history) the USPTO has been a headless organization, and are we surprised at the result?
I also don't care for the lexicon that has developed around patent lawyers, how they refer to IP lawyers without technical backgrounds as "soft" IP attorneys. It has an unwarranted pejorative connotation. As though patent law was the one true path to IP enlightenment. Give me a break.
You don't need to have as deep a technical understanding to litigate a patent case as you do to actually write the thing.
Second, the MPEP isn't on any other bar exam. If you don't like the idea of a separate test, would you be okay with the idea of integrating the Patent Bar into the multi-state?
Third, I'm all for the current system because it undermines the lawyer's guild. One does not need to even set foot in a law school to take the Patent Bar - one only needs the requisite technical degree.
The Patent Bar system makes a lot more sense than the current system, whereby a person takes the bar exam which covers a dozen different legal fields, at least 11 of which he will not need to know professionally.
Finally, you mis-characterise the requirements for sitting for the patent bar. A technical degree is a surefire way of meeting the qualification, but anyone who can demonstrate adequate technical understanding (Part C) or cousework (Part B) can sit for it.
If anyone has a clue about the legal issues involved, they should feel free to step forward.
Failing that, a response to Adam B.'s question would probably be a useful start.
"Plaintiffs, for their part, [did] not challenge Mannix's qualifications to serve on ISAC-3 but question only whether his experience and background make him an appropriate representative of the environmental community." Id. at 2. At the time, Mannix was employed by the Mercatus Center at George Mason University, and he had previously been employed by the Environmental Protection Agency and had served as Virginia's Deputy Secretary of Natural Resources. But Mannix is a free-market environmentalist and did not have the support of the organized environmental movement. The court held essentially that, because the intent of the settlement agreement was to ensure that the views of the organized environmental movement were represented, Mannix did not fit the bill.
Although there are relevant differences between that case and the present one, it's likely that the court will look to the intent of the qualifications language in 35 U.S.C. 3(b)(1) and find that it limits the Secretary's discretion. My guess, is that the court will side with the plaintiffs.
Of course, one lacking experience in the current system wouldn't necessarily know how to change the current system to help "garage inventors," while one experienced in the current system might. For instance, the new continuation rules (which, I admit, probably aren't Peterlin's doing, but reflect the zeitgeist of the USPTO, whose leadership were never practitioners) hurt independent inventors most of all. Independent inventors are usually the ones who need the most bites at the apple to amend their claims to something allowable. The new rules limit the inventor's opportunities to do so. Whereas BigPatCorp needs only one chance to amend to go from ridiculously broad to only laughably broad and get allowed.
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Appointments are for the political branches. I you don't like the administration's actions, vote for a new administration.
A hoary argument, and not just about the USPTO; we hear it a lot about politicians, too. Somehow, though, all those 'experienced' folks always end up acting just like their predecessors.
What would be reasonable is admitting the distinction and, no, not turning the PTO into two bureaucracies, but at least splitting this job into one for patents -- to be headed by a PTO-admitted practitioner -- and one for trademarks.
While that is theoretically plausible, it does not work out in the real world. Many, if not most, patent attorneys do some trademark work. Indeed, it was quite a shock to me when I first went into corporate practice to find that I wasn't supposed to even think about trademark questions, as we had trademark counsel who had that responsibility.
The guys who trained me in patent law loved having trademark work. It did a great job at leveling off their practices. These two types of IP law operate at a different tempo. Trademark work is more consistent, but comes in much smaller chunks. More like much of the transactional work done by many attorneys.
Nevertheless, probably because much of trademark work is done by patent attorneys, there are distinct similarities between patent and trademark prosecution that you don't find in copyright work. I had to work last winter with a copyright examiner, and it is like dealing with someone from another planet, compared to patent and trademark examiners, etc.
The similarities between patent and trademark prosecution could be because you often have the same attorneys prosecuting both, or it could be because the examiners work at the same agency, or it could be because the commissioners before Clinton's pick at director (i.e. Lehman) were patent attorneys. Regardless of cause, they are much more similar to each other than they are to copyright prosecution.
But, yes, I think that most patent practitioners would hope to have someone at that level in the agency to have worked as a patent attorney, preferably also having done some trademark work.
Becoming licensed to practice before the USPTO (for patent work) has always seemed to me to be somewhat arbitrary. The horror stories abound. My next brother reminded me yesterday that he had a master's degree in mechanical engineering, but since it wasn't a bachelor's degree, he was a Class B applicant (which means that you have to prove the scientific or technical rigor of your classes, one by one - and no, Al Gore's two science courses at Harvard likely would not have counted). Both of us also had the problem of having mathematics degrees. Mathematics courses or degrees don't count - unless you can convince the USPTO that they weren't really math courses (I was able to convince them that three of them were actually CS courses). But a physics degree does count, and you can sit for the bar with fewer physics classes than any other discipline. I should also note that I first learned calculus in physics, not math. There is a lot of crossover. Nevertheless, I hit the crossover between when CS courses were not accepted but work experience was, to the opposite, where CS was accepted, but not work experience. As a result, I had to go back after law school and get a couple more classes to get over the hump to sit for the patent bar.
At least if she had passed the patent bar, we would have some confidence that Ms. Peterlin understood the MPEP, which are the operational rules that rule patent practice. She is effectively in charge of them, but there is little evidence that she understands them.
There is also a chance that this suit is a rear-guard action against the Patent Reform Act of 2007. There is a shocking antipathy towards "first to file", "inter partes reexamination" and damage calculations (i.e. "patent's specific contribution over the prior art.").
I typically agree with Bruce Hayden on IP matters in this forum, but not here. The proposed prosecution changes he notes are not proposed by someone "almost clueless about the reality of the patent system" but by someone looking to shift the burden from the Office to the Applicant.
There is a mentality I perceive among patent lawyers that patent law and PTO administration is about nothing more than science. If I have a Ph.D. in biology, I know more than you and how dare you tell me anything.
Science is only part of the picture, however, and at the top levels of the agency, it's probably more useful to have generic management skills, legal knowledge, and some sort of macro-level policy experience. Stephen Hawking is brilliant, but I don't think anyone could plausibly argue that he's the best-suited person in the entire country to run NASA. The head of the PTO shouldn't necessarily be the best patent prosecutor in the country any more than the GM of the Redskins should be the best football player in the country.
Moral seems to have gotten progressively worse at least since Lehman was put in charge 14 years ago. The work rules seem to be getting worse and worse. If not for that, the pay would probably be ok, if they weren't located in northern VA. So, now you have a bunch of bureaucrats trying to game the system. Far too many are immigrants with weak technical skills and even weaker grasp of the English language (most of us can recount horror stories where the examiners' inability to understand basic spoken, and worse, written, English was the reason behind some rejections).
Add to all that, that patent practice is getting more and more specialized. Biotech and pharma are far different than even chemical, and all those are different than mechanical, which is different from software. The types of problems you face, the types of claims you write, etc., are all very different these days. I am at the point where I will do software, business methods, and some electronics, esp if computer related. No mechanical anymore, and never chemical, etc.
If the upper management at the agency is not panicking, they should be. Yet, they continue to propose rules that look good on paper, but will just make matters worse in reality. Potentially, a lot worse. What I see is management that does not understand patent prosecution from the prosecutors' side. And, as a result, they don't seem to understand how the pieces fit together. And, as a result of not understanding how the pieces fit together, their "reforms" just seem to make things worse, for them and for us.
Only you know your own reaction to "the idea of a non-career patent or trademark lawyer leading the office." By your own statement, hthough, we can see that you are not "nonplussed" by the idea.
It is nice to posit a world where one time through is sufficient. But that ignores the reality of examiners gaming the system and examiner incompetence. Not all, or maybe even most of the examiners, but enough to cause the problem in the first place.
A lot of the other proposed changes are almost as bad for me and my clients as the limit on continuations. We don't file shared mega applications with different claim sets because we like to, but rather because the systems are large and the parts are interrelated. And, indeed, the alternative is going to be that instead of filing multiple copies of one application each with their own claims, we will file them all in one application, and let the examiners sort out the inventions. And yes, that will be more work for the USPTO and us, and cost a lot more in fees (and, yes, I have gone over $10k in initial filing fees).
I think that part of the problem is trying to come up with a one size fits all solution. My brother working primarily in the mechanical areas has never filed a single application that turns into a dozen or two patents. In software, I have done it on numerous occasions. I am working on one now.
Some of the proposals have some merit. I can see the rational behind designating the most important 10 claims. Most examiners seem to only look at the independent claims anyway, and so this isn't going to be a hardship - though at some point they should have to examine the rest of them. But the better solution of too many claims would probably be to just charge more for them, in possibly an escalating fashion. But that would work against having to file a lot of claim sets in a single application, when the agency is going to presume double patenting when filed separately with the shared specification. And paying this is esp. aggravating since most of the extra claims are going to be restricted out anyway, and you have to pay for them again in the divisionals. (But, as I note below, money isn't the major objection, rather patent protection is).
I don't really mind doing some searching and making that available to the examiners. My worry is about estoppal, etc. What happens when I miss something? Will that invalidate the patent? The reality is that in my art areas, even with the publication of applications at (usually) 18 months, it is inevitable that a lot of prior art is going to be missed.
So, I don't mind moving more of the burden to the applicant and his patent practitioners. Rather, my worry is about actually losing the ability to get a patent on an invention or, after getting one, having it invalidated, for stuff that is, in the final analysis, primarily the fault of the USPTO. Throwing in that we can petition for relief doesn't really help, since petitions are arguably more discretionary than the appointment of Deputy PTO Director Margaret Peterlin was.
Allowing blog-style comments concerning the disclosure to be posted by anyone would serve very well in place of an examination of the claims or a search for prior art, give the patent holder a good idea if he could prevail in court and tell a potential buyer or licensee of the patent if it was worth pursuing.
Sure, there'd be lots of worthless patents. So what? They'd invoke neither cost nor effort.
I understand your concern. It is up to us, as patent attorneys, to make sure that our clients know what they are getting into when they file the application. It seems like more and more of my practice is in doing cost benefit analyses for my clients and talking them out of filings or into limited number of filings.
Costs and the burden on the applicant have been increasing since I started; I just don't see how the background of the Deputy Director is that big an issue.
Neurodoc:
You're right, I totally plussed!! Although I must admit I don't know what you are talking about.
A patent attorney who wouldn't know a trademark from an aardvark is completely qualified under the rule; a trademark attorney who thinks patent refers to leather shoes is also completely statutorily qualified.
Why? If experience with patent practice is essential for doing the job, then the latter person is unqualified; if experience with trademarks is essential for doing the job, then the former is. Either both sets of experience ought to be required, or the job ought to be split in half.
To be "nonplussed" is to be at a loss as to what to say, think, or do. Because you were not at a loss as to what to say about "the idea of a non-career patent or trademark lawyer leading the office," you appeared to be anything but "nonplussed" by it. I don't think it follows logically that someone who is not "nonplussed" must be "plussed," but if you say that describes your state of mind on this, then far be it from me to dispute you. Enjoy your "plussedness."
(BTW, I am told that the USPTO may be coming out with a new rule that will shake up a lot of people, though whether into "nonplussedness" or "plussedness" only time will tell.)
Stevethepatentguy, back when you were employed by the USPTO, was it a pleasant or unpleasant place to work? As an alumnus and now a practitioner, are you aware of any buzz about the USPTO as a place to work these days? I am told it is a most unpleasant place for professionals, with labor-management relations decidedly hostile there. Also, I am told that while Clinton's director of the USPTO (Q. Todd whatever) may have been appointed as a political favor to a certain Democratic constituency, he did a very good job, and that his Bush-appointed successor, the defeated congressman who had been part of the impeachment team (Rogan?), was totally unqualified and a disaster in the job. I have no first-hand knowledge of these matters and am just passing along what I have heard.
In any case, his latest news/gossip is that those new rules that I was railing against are expected to be published in August to become effective two months later in October.I frankly don't know about or really have an opinion on the "multiple administrative abuses and capricious falsehoods on which the rules changes are based".
He then goes on and discusses standing for a lawsuit to block the implementation of the new rules. I found it an interesting coincidence, given this thread. Listed are six limitations on standing:He thinks thatOf the other two (1 and 5), I think that proof of actual injury is likely to be the hardest to show. The basic problem here is that the real harm that the proposed rules are likely to cause will be down the road, may even 5-10 years from now. For example, the new searching requirements seem to require that the applicant guess at the class and subclass of the invention. But he is likely to be second guessed by the USPTO, at multiple times during prosecution, and even after allowance. Then, the patent is litigated, and part of the defense is improper searching due to using the wrong class/subclass. By the time that a patent is invalidated for this reason, it is likely to be 10 or so years from the time the applicant filed is original search report (based on average prosecution times and average maturation before litigation).
Similarly, the major danger I see from the continuation limitations is in losing the right to a patent because the USPTO forced an applicant to continue based on examination irregularities.
So, the basic standing problem there is that while it is probably fairly likely that some applicants will be seriously harmed by the changes, it is likely impossible right now to pick which applicants will be so harmed, and any such harm will be at some unknown time in the future.
Getting back to Eugene's original post, I would think that in light of this, the case against the USPTO for the appointment of Deputy PTO Director Margaret Peterlin for her lack of statutory qualifications would be even more suspect on standing grounds.
Lumping the two together is just plain illogical. (See here).
With respect to Peterlin's qualifications: My research suggests that she is bright. Brilliant even. But someone unqualified to file a trademark application (or a patent application) is certainly not someone who should be deputy director of the USPTO. She's more qualified to be on the Supreme Court than at least one of the justices, so there is a place for her in the administration. This just isn't that place. (my post on the issue here).
Let me add though that my position here seems to be a minority view among at least patent attorneys. I have on occasion gotten in trouble for playing devil's advocate, and been accused of not being a team player, of being a nay sayer, etc. But in the end, I think that my questioning has most often had positive results.
So, I am already advising bigger clients to start anticipating some of the possible negative effects of the rule changes - without the heated rhetoric you see here, because there my role is adviser and not advocate.
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