By Kevin E. Noonan —

The U.S. Patent and Trademark Office announced today that Margaret Peterlin, Deputy Undersecretary of Commerce for Intellectual Property and Deputy Director of the USPTO will resign from her post some time in August.

Deputy Director Peterlin (at left) has been a controversial figure in the Office, in part because she apparently lacked qualifications long thought to be required for senior Patent Office management positions, and for her association with several of the controversial "new rules" packages promulgated by the Dudas regime.  She survived a court challenge to her appointment mounted by Greg Aharonian, noted intellectual property crusader; David Lentini and David Pressman, both patent attorneys and authors; and Steven Morsa, an inventor (see "Margaret Peterlin Gets to Keep Her Job").

This challenge, based on the provisions of 35 U.S.C. § 3(b)(1) that the person holding Ms. Peterlin’s office must be a "citizen of the United States who has a professional background and experience in patent or trademark law," was dismissed by Judge James Robertson of the U.S. District Court for the District of Columbia, who ruled last December that the provisions of the statute did not confer a private cause of action with regard to Ms. Peterlin’s alleged lack of statutory competence for her position.  The Court also held that, although the Administrative Procedures Act (APA) provided a cause of action, the patent statute was sufficiently vague about the standards for her position, and consideration of what qualifications might satisfy the standard were sufficiently subjective, that the decision of whom to appoint to the Deputy Director position was properly "committed to agency discretion by law."

Deputy Director Peterlin was often the official face of the Office, testifying successfully before Congress on major policy initiatives, including the worksharing (see "Lunch with Commissioner Doll") and telecommuting (see "Deputy Director Peterlin Testifies at House Hearing on Teleworking") initiatives.  But she also made some missteps in that role, including granting an interview with a Wall Street Journal reporter about the now-enjoined continuation and claims rules the day before they were published in the Federal Register, something that seemed in violation of the spirit if not the letter of the APA (see "Patent Office Announces That New Continuation and Claims Rules Will Be Published . . . Tomorrow").

The Patent Office press release announcing her departure was predictably effusive in its praise of Deputy Director Peterlin, saying that she "strategically positioned the USPTO as a leader in such important policy debates as patent modernization legislation, in which the USPTO played a lead role in forming and communicating the Administration’s position."  Director Dudas (at right) called her "instrumental" to the Office’s success during her tenure, pointing to her "insistence on data-driven decision-making" that "greatly improved the USPTO’s business operations."  Perhaps in answer to her critics, Director Dudas also said that she "has tremendous understanding of IP issues and helped the Administration promote smart IP policies both on Capitol Hill and with IP offices around the world."

Deputy Director Peterlin in her own valedictory said she was "proud of the strides the agency has made and, for the first time in the USPTO’s history, we are on track to meet 100% of our goals," those goals including "helping the organization reach a new level of excellence through effective delegation, continuous process improvement, transparency of operations and increased employee engagement."

While it has been reported elsewhere that at least part of the motivation for her departure includes the impending birth of her first child later this year, her decision to leave the Office now may also reflect an acknowledgement by the Deputy Director and the Administration that the time is almost over for achieving many of the "goals" they have had for U.S. patent law, including patent "reform" legislation and the numerous rules packages in limbo either in the courts or within the Administration, and that there is little more they can expect to do before the new President is inaugurated in January.  Having strongly objected to many of these policy goals, we wish Deputy Director Peterlin well, but cannot honestly say we are sorry to see her go.