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8 June 2017Patents

Rader? Johnson? Lawyers have their say on next USPTO director

After the news broke that Michelle Lee was stepping down from her role as director of the US Patent and Trademark Office (USPTO), speculation began over who should be next to take on the role.

Yesterday, Joseph Matal, an associate solicitor at the office, was appointed as interim director by Wilbur Ross, US secretary of commerce.

He will perform the functions and duties of the under secretary of commerce for IP and director of the USPTO during the nomination and confirmation process for a new director.

WIPR asked lawyers and associations who they thought would be a good fit.

Phil Johnson

Phil Johnson, a former senior vice president of IP at pharmaceutical company Johnson & Johnson, was hailed as a “terrific candidate” by Ron Cahill, a partner at Nutter McClennen & Fish.

Cahill explained that Johnson & Johnson is not just a pharmaceutical company, but also has significant medical device and consumer businesses, so its relationship with patents is not one dimensional.

Johnson serves on the board of the Intellectual Property Owners Association and has served on American Intellectual Property Law Association board.

Before Lee’s nomination, Johnson’s name was floated as a nomination but the choice was questioned. This was because while the White House has championed patent reform to curb frivolous litigation by non-practising entities, Johnson had publicly opposed reform as a representative of the Coalition for 21st Century Patent Reform.

“The real question is whether there is room in Washington to do the right thing, or whether this position will remain a political football,” said Cahill.

Kevin Noonan, partner at McDonnell Boehen Hulbert & Berghoff, explained that Johnson’s name was previously withdrawn “purportedly due to objections that he was too ‘pro-patent’ by some members of the high-tech community”.

He added that there are several others who would be able to do an outstanding job, and that it’s important that the next director has experience in patenting matters, both in the US and globally, and “understands both the role of patents in mature industries as well as how critical patents usually are to startups and nascent technologies”.

Someone from the pharmaceutical industry is most likely to have that perspective, explained Noonan.

Mercedes Meyer, partner at Drinker Biddle & Reath, said that Johnson would “bring a great deal to the IP table”.

“Johnson understands the financial running of a multibillion dollar company and protecting its IP,” she explained, adding that he was instrumental in assisting with the writing and implementation of the America Invents Act (AIA).

Randall Rader

Former judge Randall Rader could also be in the running for the role.

Rader, who served as chief judge of the US Court of Appeals for the Federal Circuit, announced his retirement from court in 2014.

An outspoken judge, in 2013 Rader called the Patent Trial and Appeal Board, which was formed as part of the AIA, a “death squad” for patents.

In 2014 Rader founded The Rader Group, a company that deals with the international arbitration of complex disputes.

Other options

The Computer & Communications Industry Association, an organisation of which Amazon, Google, Facebook and Microsoft are members, claimed that a number of nominations have no technological experience, “which ought to be a qualification in this era”.

It added that Krish Gupta, senior vice president of IP and IP litigation at Dell Technologies, was also mentioned last time.

According to the association, Gupta, like Lee, has “excellent credentials” to run the USPTO.

Who do you think should replace Michelle Lee as director of the USPTO?  Click here to answer.

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Rader? Johnson? Lawyers have their say on next USPTO director

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More on this story

Patents
7 June 2017   Michelle Lee stepped down from her role as director of the US Patent and Trademark Office (USPTO) yesterday.
Copyright
19 June 2017   Speculation over who will replace Michelle Lee as director of the US Patent and Trademark Office has continued since Lee stepped down from the role on June 6.