Tony Scardino, Chief Financial Officer of the agency is now also the Acting Deputy Director of the USPTO (as recently revealed by the USPTO FOIA Response). It is a bit of an oddity as to how Scardino jumped to the head of the line in almost violation of the USPTO rules of succession that provides for CFO to take an acting head leadership role only if there is no Commissioner for Patents, Commissioner of Trademarks, or Administrator for Policy and External Affairs. However, the rules of succession do not provide in particularity as to who becomes Acting Deputy Director when the Deputy leaves but the Director is still in place. Thus, I would suggest that Dir. Lee is within her authority to select a qualifying person to fill that role. (It may also be that the PTO has a non-public succession plan.)
The statute requires the Deputy Director and Deputy Under Secretary of Commerce to be a person “who has a professional background and experience in patent or trademark law.” 35 USC 3(b). Scardino’s professional background and experience in IP law appears to be wholly based upon his 7-years as Chief Financial Officer of the Agency. Under the prior Peterlin precedent, Scardino’s experience is almost certainly sufficient. See, Aharonian v. Gutierrez, 524 F. Supp. 2d 54, 55 (D.D.C. 2007):
[O]ne would expect Congress to speak in precise terms if it intended the courts to monitor the minimal qualifications for agency officers. Here, Congress has given only the broadest of instructions—that the Deputy Director should have “a professional background and experience in patent or trademark law.” 35 U.S.C. § 3(b). The statute is silent as to the content of those terms. Were the decision subjected to APA review, the Court—not Congress—would be the ultimate source of the standards by which the qualifications of Ms. Peterlin would be judged: Is a law degree necessary? Is it sufficient? Are law school courses in intellectual property a requirement? Is certification to practice before the USPTO? Is law firm experience? How many years? If Congress had intended the extraordinary situation in which judicial review would reach to the very qualifications of agency officers for their policymaking positions, its statute would not be drawn “in such broad terms that … there is no law to apply.” See Citizens to Preserve Overton Park v. Volpe, 401 U.S. 402, 410, 91 S.Ct. 814, 28 L.Ed.2d 136 (1971) (citation omitted).
Thus, although we have a very interesting question as to why Scardino was moved up rather than PTO Commissioner Drew Hirshfeld, the shift would be quite difficult to challenge in court. Almost certainly, this leapfrogging came about with substantial input from the Trump Administration. That result leads me to the potentially disturbing potential that the next appointed PTO leaders will also sidestep the requirements of “professional background and experience in patent or trademark law.”
One difference between Scardino and Peterlin is that Peterlin is an attorney while Scardino is not (nor is he a patent agent). This is relevant because Scardino is also deemed a member of the Patent Trial and Appeal Board. The statute requires, however, that those members “be persons of competent legal knowledge and scientific ability.” 35 U.S.C. 6. Of course, his CPA background may assist with judging Covered Business Method (CBM) cases. Note here – I think that the best interpretation of the statute is that while the Director and Deputy Director are both members of the Board, the competency requirement of Section 6 only applies to the appointed judges.