PublishedJanuary 24, 2017

Why It’s a Good Thing If Michelle Lee Stays at USPTO

USPTO Director Michelle Lee

Well, this would be a nice surprise: it seems that Michelle Lee may be staying on as Director of the US Patent & Trademark Office. Director Lee has done a great job for businesses and innovators over the last few years.

Perhaps her most important contribution has been her recognition that the USPTO issued a lot of bad patents over the previous couple of decades, and that too many of those bad patents have been ammunition for patent trolls.

Patent troll litigation has exploded in the 21st Century. Even though there were fewer troll suits filed in 2016, there were still nearly 3,000 companies sued by patent trolls last year. Research shows that patent trolls typically use older patents; this means that a bad patent issued today might cause harm 10 or 15 years from now in the hands of a patent troll.

In short, bad patents can have real world consequences, many years after the USPTO was involved. It’s important to improve the examination process to improve the quality of patents issuing from the Office.

Director Lee, to her credit, has taken on the difficult problem of improving patent quality, rather than simply being too strict in issuing patents. That is, she has directed the Office to try to issue the right patents, efficiently. Under her leadership, the USPTO launched the Enhanced Patent Quality Initiative, a long-term effort to improve patent quality across the Office. This has included a variety of events to gather feedback from stakeholders on nearly every part of the patent prosecution process. The USPTO has also started a number of pilot programs to look for possible ways to make patents better, including a pilot to include glossaries of terms, a pilot to identify best practices for clarifying the record, and a pilot to provide an additional review of a case before an applicant has to appeal. A number of pilots are still underway, and there are more planned; it’s better to have continuity of leadership to continue to push these to completion.

Michelle Lee has also overseen the implementation of inter partes review (IPR), which has proven to be effective in dealing with patents currently being used by patent trolls. IPR is a procedure created by the America Invents Act that allows limited challenges to patents. These challenges are heard by the Patent Trial and Appeals Board instead of a district court. IPRs are intended to be faster, cheaper, and more accurate than court hearings, and so far, they’ve been just that.                                                 

Since Director Lee took over as Acting Director, the time from filing to a first action by the Office has dropped from over 18 months to just over 16 months, a decrease of 12%. This happened even though filings have increased by over 5% during the same period. The PTO has significantly reduced the patent backlog from a high of 750,000 in 2009 to 550,000, all the while processing an average annual filing of 600,000, which increases by 4% yearly.

There have been a number of ongoing issues identified by the inspector general for the Department of Commerce, the Government Accountability Office, and others. The USPTO’s response has been to take immediate action and make improvements. For example, since allegations of employee time and attendance abuse came out, the USPTO immediately implemented new training and reporting requirements for examiners and supervisors.

The list goes on. Michelle Lee has worked to create a generally transparent USPTO that listens to stakeholders in every industry, listens to the courts, and works hard to do its job better. Her staying on means that the programs she’s started will continue, and that’s a good thing for American businesses and innovators.

It’s also important to have some stability in the patent world. Patent law has been changing quickly over the last few years. The America Invents Act changed some fundamental parts of patent law. For example,  we went from a “first to invent” system to a “first inventor to file” system. The AIA also created new forms of post-grant review, such as inter partes review and covered business method review; IPRs have proven to be a powerful tool for getting rid of bad patents. At the same time, the Supreme Court has been unusually active in patent law, issuing decisions on subject matter eligibility, damages, and a number of other aspects.

Michelle Lee has navigated the Office through this changing landscape. Keeping her as Director would mean that a key part of the patent world is steady.

As Martha Stewart might say, “It’s a good thing.”

Matt Levy

Previously, Matt was patent counsel at the Computer & Communications Industry Association

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