Michelle Lee, Acting as Director but not “Acting Director”

By Dennis Crouch

When Michelle Lee joined the USPTO in 2012, she took an interesting title – Director of the Silicon Valley Patent Office. With the resignation of both David Kappos (USPTO Director) and Theresa Rea (USPTO Deputy Director), Lee is the only remaining titled “Director” within the USPTO. There has been a growing expectation that she would soon shift from her West-Coast focus and take over operations of the full USPTO. Although the position of USPTO Director requires Senate confirmation, the Director of Commerce has the ability to shift the personnel who effectively control that position.

This morning, the Commerce Department announced that Michelle Lee will be the new Deputy Under Secretary of Commerce for Intellectual Property effective, January 13, 2014. Because there is no current USPTO Director she will be in charge until a new Director is nominated by the President and approved by the Senate.

Director Michelle Lee has a strong background in intellectual property, beginning with her multiple degrees from MIT in computer science and electrical engineering and a J.D. from Stanford Law School where she was a law review editor. Prior to law school, she worked in MIT’s Artificial Intelligence labs and also in HP’s research labs. She clerked both in the Northern District of California and for Judge Paul Michel at the Federal Circuit. She then worked for a decade in top Silicon Valley law firms, including Fenwick & West and Keker & Van Nest and then joined Google where she worked for a decade as head of their patent team and deputy general counsel. In the past, Lee has worked closely with Colleen Chien who is now spearheading the White House patent initiatives. Lee is seen as an effective manager and a visionary willing to take on major challenges. Like Kappos, I have always found Lee to be open and ready to hear and respond to reasoned input. There is some trepidation (or enthusiasm, depending upon your perspective) that she will strongly advocate Google’s anti-patent stance. I suspect, however, that the result will be pushing for higher quality examination that better ensures clarity.

Congratulations to Michelle Lee!

Lee’s appointment does have a genuine statutory problem. In particular, the statute requires that a Deputy Director be appointed by the Secretary of Commerce “upon nomination by the [USPTO] Director.” 35 U.S.C. § 3. Because there is no Director, there could be no such nomination. One reason why there is no Director is that position requires Senate approval (as required by the Constitution), and the President’s approach here appears to be an attempted end-run around that process. The DoC press release includes the following statement: “Upon assuming her role as USPTO Deputy Director, Lee will perform the functions and duties of the USPTO Director, a position that is currently vacant. In accordance with statutory law, she will assume the title of ‘Acting Director’ once President Obama nominates a Director.” The final sentence of this is unclear to me, but the PTO confirmed that their statement is correct, she will only be acting as director but not officially Acting Director. This is apparently an attempt to avoid the statutory and Constitutional requirements mentioned above. I think it has the complete opposite result because the statute requires that the Deputy Director “act in the capacity of the Director in the event of the absence or incapacity of the Director.” Noted patent attorney Hal Wegner comments: “Why would a person of heretofore spotless reputation and noted achievement accept an appointment in violation of the strict statutory wording that the appointment is only ‘upon nomination by the Director,’ 35 USC § 3(b)(1), at a time when there is no Director.” USPTO’s chief communications officer Todd Elmer clarified to me that PTO’s Commissioner of Patents Peggy Focarino apparently nominated Michelle Lee who was then selected by the Secretary of Commerce. Since Focarino has been handling all the duties of the director, then the PTO has reasoned that Focarino has the power to nominate under the statute.

John Cabeca will take-over as director of the SV patent office.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.