Ex-Google IP Counsel Named to Key PTO Post

, The Litigation Daily

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Former Google Inc. deputy general counsel Michelle Lee, who is currently the director of the U.S. Patent and Trademark Office’s Silicon Valley satellite office, has been appointed deputy undersecretary of Commerce for intellectual property and deputy director of the PTO.

The PTO currently has neither a director nor a deputy director, so Lee will perform the functions and duties of the PTO director upon assuming her new role Jan. 13, the agency said Wednesday. By law, however, she cannot assume the title of acting director until President Barack Obama nominates a director, who then must be approved by the Senate.

Former PTO director David Kappos stepped down in February, and Teresa Stanek Rea, the office’s former deputy director, resigned her post in November.

Some observers, including noted patent attorney Hal Wegner and Patently-O blogger and law professor Dennis Crouch, said that Lee’s appointment might have a statutory problem. The statute governing the appointment requires that a deputy director be appointed by the secretary of Commerce, “upon nomination by the [PTO] director.” But because there is no director, Crouch writes, no such nomination could take place.

The PTO, however, says that commissioner of patents Peggy Focarino has been handling all the duties of the director while the vacuum at the top existed, so she had the power to nominate a deputy director—which she did. This enabled the secretary of Commerce to appoint Lee, the PTO said.

The fact that Lee will only be acting as director but not officially be the acting director is, according to Crouch, “an attempt to avoid the statutory and constitutional requirements.”

Technicalities aside, Lee has a strong background in intellectual property and experience with the PTO. She began working in-house at Google in 2003, after spending seven years at Fenwick & West. Google’s patent department grew substantially while she was there, and she played a key role in the company’s strategic patent acquisitions.

Her role there changed early in 2012, however, when Google’s legal department added Allen Lo, a former associate counsel at Juniper Networks Inc., as deputy general counsel in charge of patent litigation and patent acquisitions. Lee was named head of patents and patent strategy. Six months later, she left the company.

In November 2012, the PTO announced that Lee would serve as the director of its new “satellite office” in Silicon Valley, giving her an insider’s view of the PTO. She also served two terms on the Patent Public Advisory Committee.

Lee started talking publicly about the problems caused by so-called patent trolls—companies that don’t make anything but that follow a business model of acquiring and asserting patents against others—earlier than most. In 2009 she wrote a blog post calling for patent reform, saying it was needed “now more than ever.”

As she assumes her new position, Congress is in the midst of writing new patent reforms. Much of the tech community has welcomed legislation introduced by Rep. Bob Goodlatte (R-Va.), which passed last week in the House. But some large companies and much of the patent bar say that Congress should not interfere with the judiciary and worry that the legislation is likely to create more problems. The Senate has not yet taken up its patent reform bill.

At a news conference announcing her appointment, Lee said she was pleased that Goodlatte and others have shown they understand the importance of innovation over litigation. But she stopped short of saying she supported the bill. “I look forward to working with the group, while also protecting the overall integrity of the patent system,” she said.

Lee graduated from Stanford Law School, and also has a graduate degree in electrical engineering and computer science from the Massachusetts Institute of Technology.

Lisa Shuchman covers intellectual property for Corporate Counsel and the Litigation Daily.

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