(Photo: Diego M. Radzinschi)
Commerce Secretary Wilbur Ross has chosen PTO Associate Solicitor Joseph Matal as the interim head of the U.S. Patent and Trademark Office following Michelle Lee’s surprise resignation Tuesday.
Matal was not given a formal title but will “perform the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO,” according to a press release issued by the Commerce Department Wednesday afternoon.
The announcement came just hours after reports began circulating that the agency had bypassed its acting deputy director, Anthony Scardino, leaving Commissioner for Patents Drew Hirshfeld in charge.
Matal is a known quantity at the agency, in the patent community and on Capitol Hill. He was counsel to the Senate Judiciary Committee for 10 years, primarily under former Sen. Jon Kyl, who’s now a senior of counsel at Covington & Burling, but also worked for a time with Jeff Sessions. He helped draft and manage the America Invents Act and subsequently documented the history of the legislation, which among other things established inter partes review proceedings. As associate solicitor, he’s occasionally defended the law before the Federal Circuit.
“Joe was in the room when the AIA was being passed and he’s been at the solicitor’s office and done great work there,” said Jonathan Stroud, Unified Patents’ chief patent counsel. He represents stability in PTO operations, Stroud added.
Before working at the Senate, Matal was an associate at Gibson Dunn & Crutcher. He has a law degree from UC-Berkeley and did his undergraduate work at Stanford.
It’s not clear whether Matal is a candidate to run the office permanently. Ross is reported to have interviewed several other candidates, including former Johnson & Johnson intellectual property chief Philip Johnson.
Patent lawyers interviewed before Wednesday’s announcement credited Lee with running the office smoothly and said they hope her successor will bring the same combination of inside and outside legal experience and patent expertise. Lee had practiced at Fenwick & West before running Google Inc.’s IP department for about 10 years.
“I think it would be beneficial if the director has a range of experience,” said Donald Steinberg, chairman of Wilmer Cutler Pickering Hale and Dorr’s IP department.
Steinberg said Lee was a visible and accessible leader who effectively managed operations while digesting the Supreme Court’s Alice decision on patent eligibility and rolling out AIA trials. There was some doubt when the AIA was passed whether the agency could meet the statutory one-year deadline for inter partes review, Steinberg noted. Lee deserves some of the credit for making things like that happen, he said.
Fenwick IP partner Daniel Brownstone said Lee balanced competing interests while bringing first-hand appreciation of how policy decisions would play out. “I think the agency was under enormous pressure from all directions, and I think she did a great job of keeping it stable and moving forward,” he said.
