Who Will Head the USPTO? [Updated]

With a new administration and new Secretary of Commerce comes a new head of the US Patent and Trademark Office — an administrative body of particularly keen import to the high tech industry. After years of the USPTO and the patent bar often sniping at each other, new leadership could mean a chance to improve the way things work at the office. And now the choice is down to two candidates — and potentially different philosophies and approaches. However, signs suggest that the next director of the USPTO might come with a Big Blue t-shirt.

The word had been that there were three candidates in the running: Jim Pooley, a litigator with patent law firm biggie Morrison Foerster; Todd Dickinson, head of the trade organization, American Intellectual Property Law Association (AIPLA); and David Kappos, assistant general counsel for intellectual property at IBM. But Pooley has been nominated to head the UN’s World Intellectual Property Organization (WIPO), which brings the field down to two.

This will be the first time in years that the USPTO was headed by someone with actual experience in the patent field, and patents are the troubled part of the agency. Dickinson is a former head of the PTO under the Clinton administration and also has a formal background as a practicing patent and trademark attorney. According to one well-connected partner at a major IP law firm, Dickinson is well-liked by the IP community, and would be able to help restore communications between patent practitioners and the USPTO. He also spent five years as head of IP for Sun Microsystems. But he also spent time at Chevron and Baxter Travenol, so isn’t identified solely with the computer industry. That is good for the USPTO, which must deal with all industries. However, it suggests that high tech, or at least the large industry players, wouldn’t necessarily have an automatic in.

David Kappos, as head of IP law at IBM, is a major force in the IP world and is clearly associated with high tech — but large high tech, which often translates into IP strategies and interests that are advantageous for those companies that already have large bodies of patents. For example, many smaller companies, individual inventors, and patent lawyers have been complaining that proposed restrictions on the number of claims in inventions and limitations on requesting reconsideration of patents would largely benefit those with established IP presences, putting small firms and start-ups at a disadvantage.

A decision is around the corner. Not only does the organization need a permanent and not acting head, but the Department of Commerce has said that there is a decision on a candidate, but that it’s still in the vetting stage. According to a conversation I had yesterday with someone on the Senate Judiciary Committee, even that group doesn’t yet know who the final choice is, which presents some interesting problems. The Senate has to confirm the director of the USPTO, who is also an undersecretary at Commerce. That means getting through the Judicial Committee. However, that committee has a few other things also of some importance, such as an upcoming Supreme Court nomination and the big patent reform bill that is again up for consideration (with a much greater chance of action this year than even last year, from what I’m hearing).

Granted, the Obama Administration has had some enormous embarrassments in choosing various candidates that ultimately had problems in the confirmation process. But Dickinson has already been USPTO director and so must have been vetted thoroughly at the time. Kappos, however, has been at IBM for the last 16 years, since before he got his law degree, and hasn’t been forced to have his life in the public eye to the same degree. The if-it’s-taking-so-long camp might say that the delay would suggest that Kappos is getting the nod. And, interestingly enough, according to OpenSecrets.org, IBM was Barack Obama’s 14th largest top contributor. Given that Google and Microsoft were numbers three and five, perhaps there could be an inclination on the part of the administration to lean toward the big tech firms.

[Checking with at least one well-connected source, it sounds as though insiders think that Kappos is likely to be the nominee to head the USPTO.]