SILENCE BY AGENCY, TRUMP, COMMERCE IN NAMING A DIRECTOR OPENS DOOR FOR PROBLEMS

Editor’s note: This story and commentary was written three weeks after Donald Trump was sworn in as president. The author’s stance about the uncertainty in the United States Patent and Trademark Office remains unchanged, even if a director was named between the time of writing this article and its publication.

For weeks after Donald Trump was sworn in as president of the United States, the question persisted: Who is running the United States Patent and Trademark Office? It seems the Trump Administration chose to sequester the director as if he or she has gone into the witness protection program, declining comment since Trump took the oath of office. It is mind-boggling that no one could conclusively say with any certainty who is director, whether there is an acting director, or whether the commissioner for patents is carrying out the responsibilities of director without being named acting director—the latter which has happened at least once in the past. Although sources told me in February that Michelle Lee continued to be seen on the 10th floor of the Madison Building, where the director’s office is located, there was no comment about who the director is, and a variety of mixed signals had been sent.

Late Notification Unusual

This scenario has been bizarre and extremely unusual. The USPTO has always been very good about notifying the public about changes to the leadership hierarchy. After all, U.S. patent laws place certain specific responsibilities and discretion in the hands of only the director.

Weeks after Trump’s inauguration, the leadership page on the Department of Commerce website continued to list the position of Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office as “vacant.” We also know that the executive biographies page on the USPTO website continued to list Lee under the aforementioned title. We also know that Lee canceled multiple speaking engagements, including one that was to take place in early February at a NASDAQ-sponsored event in San Francisco; John Cabeca, director of the Silicon Valley regional office, spoke in her place.

Having said this, we also know that the USPTO executive biographies page is not always up-to-date.

Challenges May Loom
The intrigue surrounding Lee and who is running the USPTO went from gossip and curiosity to something quite serious.

U.S. Code Title 35, Section 153 says that upon issuance, patents “shall be signed by the Director or have his signature placed thereon…” Sources tell me that the USPTO was prepared to issue patents with the signature of Drew Hirshfeld, who is the commissioner of patents and seemed to be in the position of acting director. At the last minute, however, a decision was made to revert back to Lee’s signature. This creates several significant problems.

First, if Lee is not currently the director, patents that are being issued with her signature are being issued in violation of Section 153. If we know anything about patent litigators it is that they raise every challenge possible, and it is only a matter of time before the provenance of patents issued during these first weeks (and maybe months) of the Trump Administration are challenged as being invalid. I don’t really suspect such an invalidity challenge to ultimately prevail, but how many patent owners are going to have to spend many tens of thousands of dollars to fight such a challenge to the very existence of their patents? Fighting this type of challenge is both unnecessary and ridiculous, but extremely predictable.

Second, if my sources are correct and there were preparations to issue patents with Hirshfeld’s signature, that clearly means that at least some USPTO employees have at least some reason to believe that Lee is no longer the director.

Third, if there was a decision to revert back to Lee’s signature, that would suggest that those working for the USPTO believe Lee may not be the director but are not entirely sure who holds the director’s authority. This internal uncertainty has been confirmed by numerous reports I’ve received.  How is it possible for any entity to run when everyone from patent examiners to senior-level career officials have no idea who is in charge?

What a mess!