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Former Google IP Counsel Michelle Lee To Head PTO as Director Search Continues

Friday, December 13, 2013
By Tony Dutra

Dec. 11 -- Commerce Secretary Penny Pritzker appointed Michelle K. Lee, former deputy general counsel at Google Inc., as deputy director of the Patent and Trademark Office on Dec. 11.

Because the office is operating without a director right now, Lee will perform the director's duties while the search continues for a permanent head for the agency. A press release indicated that Lee will assume the role--but not the title--of acting director effective Jan. 13.

“Michelle Lee has proven herself to be a tremendous asset to the USPTO and the Department of Commerce,” Pritzker said in the release. “She has a great mix of skills and experiences to assume this leadership position during a time when the administration is deeply focused on strengthening the nation's intellectual property system.”

Lee has been the director of the Silicon Valley satellite office for the past year.

“Michelle is highly competent,” former PTO General Counsel Bernard Knight of McDermott Will & Emery, Washington, D.C., told Bloomberg BNA after the announcement. “I worked a lot with her when I was general counsel,” he said. “I just have the utmost respect for her, and I think she's a great choice.”

Background
Lee holds a B.S. and an M.S. in electrical engineering and computer science from the Massachusetts Institute of Technology. She worked as a computer scientist at Hewlett-Packard Research Laboratories and at the MIT Artificial Intelligence Laboratory.

After Lee received her J.D. from Stanford Law School, she served as a law clerk for Judge Vaughn R. Walker of the U.S. District Court for the Northern District of California and Judge Paul R. Michel of the U.S. Court of Appeals for the Federal Circuit.

Lee was at Fenwick & West before joining Google in 2003. She was deputy general counsel for Google and was the company's first head of patents and patent strategy. While there, she served two terms on the PTO's Patent Public Advisory Committee, which advises the agency on its policies, goals, performance, budget and user fees.

Lee left Google in May 2012 before taking the PTO post in the Silicon Valley satellite office, which was created under the America Invents Act, in November. But with the PTO subject to the sequester, the PTO had difficulty finding a permanent home for the office.

With “generous support” from state and local Californian governments, Lee negotiated a deal to house the office in the San Jose City Hall building.

The Dec. 11 press release said that John Cabeca, a 25-year veteran of the PTO, will take over Lee's position as director of the satellite office at least until it becomes operational.

Permanent Director?
It is more than 10 months since David J. Kappos, the last director approved by Congress, left the PTO and more than five months since Pritzker took office, and a permanent director has yet to be named.

Deputy Director Teresa Stanek Rea took over as acting director on Feb. 1, 2013, when Kappos resigned. Margaret “Peggy” Focarino was temporarily named acting director on Nov. 12 after Rea resigned. Focarino will now return to her role as commissioner for patents.

Statutory Technicality
Lee's appointment as deputy director is pursuant to 35 U.S.C. §3(b)(1), a provision which also allows Lee to take on the acting director role.

According to the provision: “The Secretary of Commerce, upon nomination by the Director, shall appoint a Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office who shall be vested with the authority to act in the capacity of the Director in the event of the absence or incapacity of the Director.”

There is a technicality, therefore, in that no formally nominated director is in office. However, in a Dec. 11 press call, PTO Chief Communications Officer Todd Elmer said that Focarino was able to make the nomination “having been delegated all the functions and duties of the director.”

The press release indicated that Lee will merely “perform the functions and duties of the USPTO Director” as of Jan. 13, and that, “[i]n accordance with statutory law, she will assume the title of 'Acting Director' once President Obama nominates a Director.” The delay in changing her title is pursuant to “a law that applies to all U.S. government agencies,” Elmer said, referring to the Vacancies Reform Act, 5 U.S.C. §3346(a)(1).

 

To contact the reporter on this story: Tony Dutra in Washington at adutra@bna.com

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com

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