Patent Baristas

Patent law is seldom full of drama so it is with great excitement that we watch the latest little interlude unfold. This one involves law, politics and intellectual property — often the staple of dramatic television shows.

Our story starts back in April 2007, when Commerce Secretary Carlos Gutierrez appointed Margaret J.A. Peterlin, formerly a national security House aide, to serve as Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the Commerce Department’s United States Patent and Trademark Office (USPTO).

Before joining the USPTO, Ms. Peterlin was Counsel for Legal Policy and National Security Adviser for the Speaker of the U.S. House of Representatives, J. Dennis Hastert. In this role, she advised the Speaker, House and Senate leadership, and senior staff on legislative policy and strategy, including judiciary issues such as intellectual property protection, and international relations issues. She previously was General Counsel to Richard Armey, Majority Leader of the U.S. House.

While Peterlin offers an impressive resume, it is now being alleged that her legislative background fails to satisfy federal law — 35 USC 3(b)(1) requires:

(1) DEPUTY UNDER SECRETARY AND DEPUTY DIRECTOR.- 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. The Deputy Director shall be a citizen of the United States who has a professional background and experience in patent or trademark law.

There’s the rub. Just what does it mean to have “a professional background and experience in patent or trademark law“?

Now, a lawsuit has been filed asking the courts to order Secretary Gutierrez to prove that Ms. Peterlin’s legislative experience satisfies the law. If not so satisfied, they want the court to order Secretary Gutierrez to immediately dismiss Ms. Peterlin from her position.

The Plaintiff’s are asking the Court to grant the following relief:

1. Hold that Peterlin fails to meet the statutory requirements defined by 35 U.S.C. 3(b)(1) to hold the position of Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office;

2. Hold that Defendant Gutierrez’ appointment of Peterlin violates 35 U.S.C. 3(b)(1);

3. Order Defendant Gutierrez to dismiss Peterlin from the position of Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office immediately;

4. Order Defendant Gutierrez to establish Department of Commerce agency rules to assess what qualifies as a “professional background and experience in patent or trademark law” under 35 U.S.C. 3;

5. Order Defendant Gutierrez to appoint a new Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office who fulfills all of the requirements of 35 U.S.C. 3(b)(1);

6. Award Plaintiffs their costs and reasonable fees in this action; and

7. Grant any further relief as this Court may deem just and proper.

If anyone knows precisely how to determine the definition of “a professional background and experience in patent or trademark law,” please let me know. Having said that, I wonder if it’s really wise to include a requirement in a job description (for such a high level position) that is not defined.

See the complaint at: http://www.bustpatents.com/peterlin.pdf.