DISCLAIMER: The author of this document has no affiliation
whatsoever with anyone involved in the appointment of the next
Director of the United States Patent and Trademark Office (PTO).
This is purely an exercise in identifying the kinds of questions
applicants should be asked so that their qualifications can be
thoroughly reviewed. Whoever is the next PTO Director will need
to be as prepared as possible for the wide variety of challenges
the job presents.
-- Roberta J. Morris
***
APPLICATION FORM FOR DIRECTOR OF THE
UNITED STATES PATENT AND TRADEMARK OFFICE
The ideal candidate for Director of the United States Patent and
Trademark Office (USPTO or simply PTO) should have direct
experience with a broad range of legal fields, clients,
technological areas and endeavors. Such experience is necessary
to insure that from the first day in office, the Director will
have the respect of the examining corps, the patent bar and the
trademark bar.
This application form therefore seeks information that will
supplement and amplify the applicant's resume, rather than
duplicating it. Thus it is not necessary to reproduce resume
information unless specifically requested, nor to add
information not requested that is already on the resume (such as
education, teaching positions, bar association positions, etc.).
Both the application and the resume will be reviewed thoroughly
to insure that the Department of Commerce understands each
applicant's qualifications, including the extent and variety of
the applicant's exposure to patent and trademark practice.
The areas about which detailed information is sought are listed
next. To skip to the General Instructions and a description of
breakdown categories, click here. To go
directly to the Questions, click here.
1. PATENT WORK
1.01 Prosecution: US and foreign; applications (including
provisionals, regular applications, reexaminations and
reissues), appeals, interferences, oppositions, other
proceedings
1.02 PTO Experience (examiner, Solicitor's Office, etc.)
1.03 Licensing: on behalf of licensor and licensee, US and
foreign
1.04 Counseling: advising, strategy, opinions, transactional
work, due diligence, etc.
1.05 US Infringement Litigation: trial level,
including all activities from (or before) the filing of
the Complaint: pleadings, motion practice, Markman
hearings, hearings on equitable issues, bench and jury
trials, post-trial motions to trial court, etc.
1.06 US Infringement Litigation: appellate level,
including Supreme Court: appeals, cert. petitions, etc.
1.07 Other Litigation concerning patents : US (ownership
disputes, contract disputes, etc.) and Foreign (all)
1.08 Policy: Commenting on Proposed Regulations, Testifying
at Hearings of PTO or Congress, Amicus Briefs, etc.
2. INVENTING AND SCIENTIFIC RESEARCH
2.01 Inventions, Patents
2.02 Scientific Research and Development (hands-on
experience, publications, leadership)
3. TRADEMARK WORK
(Same categories as patent work)
4. OTHER INTELLECTUAL PROPERTY WORK
Despite the fact that copyright is not in thejurisdiction of
the PTO but rather of the Library of Congress, the PTO
Director is called upon to advise on copyright matters, as
well as other types of intellectual property that are
neither patents nor trademarks, especially in the context of
international trade and harmonization. Information
concerning these other IP areas is therefore sought here.
5. ADMINISTRATIVE and EXECUTIVE EXPERIENCE
5.01 Management Experience (including at law firms, legal
departments, companies, governmental agencies,
nonprofits, etc.)
5.02 Executive and Entrepreneurial Experience (where
applicant's primary role was not as a lawyer)
GENERAL INSTRUCTIONS
Qualified applicants are not expected to have worked in every
area nor to have represented all types of clients nor worked in
all technological fields equally and substantially. The
successful applicant will nonetheless have a sufficient range
of experience, in both depth and breadth, needed for the job.
In answering the specific questions below,
applicants may choose to write a narrative covering groups of
questions if that would better describe their experience.
Quantitative Information
Please provide quantitative information wherever it is sought, by
using the following categories:
A. None or Never
B. One or Once
C. A Few or A Few Times
D. Many, Most or Often
E. A Lot, All/Almost All or Always/Almost Always
Feel free to provide more detail about quantities and to define
terms as needed. Where you are asked for a breakdown,
percentages may be used instead of quantities.
Client Posture
In questions that concern licensing, pre-litigation counseling
and litigation, please use these categories:
a. patent or trademark owners ("PO" or "TO"),
b. opposed to the owners, such as licensees, accused
infringers ("AI"), junior parties in interferences, parties in
oppositions to patents, trademarks and applications for either,
etc., and
c. others (third party witnesses, suppliers, customers,
etc.).
Client Type
In questions that concern clients (and in the case of inventing
and research activities, employers), please use these categories:
Q. Individuals
R. Small Companies
S. Medium-sized Companies
T. Big Companies
U. Universities and research institutions (non-profits)
V. Governmental Enttites
W. Trade Associations, Bar Associations, and Ad Hoc groups
of interested persons (e.g., for amicus briefs)
X. Other Non-Profits
Y. Others, not described above
These categories are meant to be all-inclusive. Percentages
using Q through Y should add up to 100.
Applicants may provide definitions for small, medium and big, and
may add and define "very big," if needed. The term "small
company" is chosen purposely to be different from the PTO
definition of "small entity" (37 CFR 1.27) because the PTO
director needs to understand the different perspectives of
individual inventors, small companies, universities and
governmental entities, all of which may qualify for small entity
status.
The breakdown by client type seeks to discover the applicant's
familiarity with the full range of concerns, often quite
different, that various types of clients may present.
Fields of Technology
In questions that concern patent work (prosecution, USPTO jobs,
counseling, litigation), as well as scientific research and
writing and entrepreneurial experience, please use these
categories:
101. Biological, Biotech, Biochemical, Pharmacological
102. Electronics, Computer Hardware, Semiconductors, Chips
and Devices, etc.
103. Inorganic chemistry, plastics, polymers, etc.
104. Medical Devices
105. Non-medical High Tech Mechanical (machine design, oil
drilling, mining, construction, etc.)
106. Medium Tech Mechanical (e.g., sophisticated packaging
and displays, etc.)
107. Low Tech Mechanical (consumer and business products,
etc.)
108. Non-financial Software and Business Methods (data
analysis, information processing, searching, etc.)
109. Financial Software and Business Methods (financial
instruments, money managing, etc.)
110. Other, not described above
Applicants may provide definitions, give examples for terms, or
add categories important to their work history. Percentages add
up to 100.
In determining the level (high, medium or low) of technology, it
may help to consider how difficult or complicated it would be to
present the invention, prior art and accused device to a jury.
The breakdown by technological field seeks to discover the
applicant's familiarity with the full range of concerns that
different kinds of technologies may present, to their inventors,
their owners and their customers, as well as the USPTO and the
international patent system.
Clients - Nationality
If 100% of your clients in any category were not US nationals,
please provide a breakdown of US and non-US clients, in terms of
percentages or quantity.
Role: "Lead" (attorney, writer, etc.),
"supervisor," etc.
"Lead" means the person who had day-to-day primary
responsibility for a matter. Involvement at a supervisory level,
whether or not the ultimate responsibility was yours, would not
necessarily qualify as "lead." In the case of writings such as
briefs and articles, "lead" does not necessarily mean the person
whose name is listed first.
Applicants may introduce and define additional terms that
better describe the nature of their role(s).
QUESTIONS
1. PATENT WORK
Note: Patents Other than Utility Patents
Applicants for whom utility patents were not 100% of their patent
work should quantify their experience with design and plant
patents in terms of percentages or quantity.
1.01 Patent Prosecution - US and Foreign
PATENT PROSECUTION - U.S.
Are you a member of the Patent Bar? Since when?
How many patent applications have you personally
worked on?
Of those, how many you were directly responsible
for the entire prosecution, from the first meeting with the
inventor or receipt of an invention disclosure to issuance?
On how many patent applications have you had
supervisory rather than direct responsibility?
Considering the applications for which you were lead
attorney, provide a breakdown, in terms of percentages or
quantity, by type of application: provisional,
regular, reexamination, reissue?
On what percentage of the applications you have worked on have
you performed a search yourself? Directed someone else to do a
search?
How many appeals to the Board have you filed?
How many other proceedings (e.g., public use)
have you been involved with? Please describe them and the nature
of your role.
How many interfernce cases have you personally
worked on? For how many of those were you the lead attorney?
How many appeals from a Board decision to
district court or the Federal Circuit have you worked on? For how many of those were you the lead attorney?
Describe any other patent prosecution experience not covered by
the preceding questions.
Considering all the US patent prosecution matters on which you
have worked in any capacity, please provide a breakdown, in terms
of percentages or quantity, by:
- client type,
- kind of patent (if any applications
were not for utility patents),
- kind of technology, and
- US v. non-US nationality.
PATENT PROSECUTION - FOREIGN
How many foreign filings of patent applications
have you been involved in?
How many oppositions before foreign patent
offices have you been involved in?
In the PATENT PROSECUTION - FOREIGN cases, for how
many were you the lead attorney?
Describe any other foreign patent prosecution experience not
covered by the preceding questions.
Considering all the foreign patent prosecution matters you have
worked on in any capacity, please provide a breakdown, in terms
of percentages or quantity, by:
- client type,
- kind of patent (if any applications
were not for utility patents),
- kind of technology, and
- client nationality US or non-US.
1.02 PTO EXPERIENCE (patents)
Have you ever worked for the PTO on patent matters?
If you answered "Yes," and your position(s) and duration are
not apparent from your resume, please provide that
information here.
If you answered "No," please skip to the questions on patent
licensing.
If you were an examiner, how many appeals to the
Board did you work on? For how many appeals
were you the lead author on the brief(s)?
If you worked for the Solicitor's Office, how
many cases were you involved in? Of those, for
how many were you the lead
author on the brief(s)?
How many proposed regulation efforts were you
involved with?
How many MPEP provisions were you involved with
drafting or revising?
Describe any additional PTO experience that is mentioned neither
in your answers to these questions nor on your resume.
1.03 PATENT LICENSING
How many patent license agreements have you
worked on?
What percentage were in settlement of litigation?
Considering all the patent licensing matters you have worked on,
for how many were you the lead attorney?
Considering all the patent licensing matters you have worked on,
please provide a breakdown, in terms of percentages or quantity, by:
- client type,
- kind of patent, for any non-utility
applications or patents,
- kind of technology,
- posture of clients with respect to
the patent(s) to be licensed, and
- US v. non-US entities.
1.04 PATENT COUNSELING
These questions are looking for breadth in your client contact.
They seek numbers of clients rather than numbers of matters
(deals, opinions, etc.), and "client" means the company in most
cases, not a subunit. For example, in-house attorneys counsel
only one client, no matter how many units within the corporation
they may have advised, nor how many years they have worked.
INFRINGEMENT-RELATED COUNSELING (PRE-COMPLAINT)
How many clients have you counseled who wanted
to assert a patent?
How many clients have you couseled who were
concerned that someone else might assert a patent?
How many clients have you counseled such that
patent infringement litigation was avoided, such as by
identifying prior art, negotiating a license, merger or
partnership, etc.?
Of the clients involved in infringement-related pre-Complaint
counseling, please provide a breakdown, in terms of percentages
or quantity, by:
- client type,
- kind of patent, (for any non-
utility patents),
- kind of technology,
- posture of clients with respect to
the patent, and
- US v. non-US entities.
COUNSELING: OTHER ISSUES
How many clients have you counseled on non-
infringement non-licensing patent matters, such as ownership,
mergers and acquisitions, joint ventures, etc.
For how many clients have you provided opinions
of counsel or performed due diligence? Describe, grouping by
kind of opinion, if appropriate.
Describe your involvement in transactional work. In how many of these lawsuits were you the lead attorney?
Of the clients you have counseled, please provide a breakdown, in
terms of percentages or quantity, by:
- client type,
- kind of patent, for any non-utility
patents,
- kind of technology,
- posture of clients with respect to
patents, and
- US v. non-US entities.
1.05 PATENT INFRINGEMENT LITIGATION: TRIAL WORK
How many patent infringement lawsuits in the
trial phase have you worked on?
In how many of these cases did your involvement
begin at or before the filing of the Complaint and continue all
the way through to the suit's conclusion (or the present if the
suit is not yet concluded)?
In how many of these lawsuits was a Markman
hearings contemplated but not held? Held?
How many of these lawsuits involved at least one
day of trial on the merits?
In how many of these lawsuits was there at least
one day of trial before a jury?
In how many of these lawsuits were you the lead attorney?
Of the clients in these lawsuits, please provide a breakdown, in
terms of percentages or quantity, by:
- client type,
- kind of patent, for any non-utility
applications or patents,
- kind of technology,
- posture of clients with respect to
the patent, and
- US v. non-US entities.
Whether or not you handled the appeal, what percentage of the
infringement litigation cases you handled involved an appeal?
1.06 PATENT INFRINGEMENT LITIGATION: APPEALS
On how many patent infringement lawsuit appeals
(including cert. cases to the Supreme Court) have you worked?
Of those, how many were for a party?
Describe any appellate work you have done that was not for a
party that did NOT involve submission of an amicus brief.
Of all the appellate cases where you represented a party, please
provide a breakdown, in terms of percentages or quantity, by:
- client type,
- kind of patent, for any non-utility
applications or patents,
- kind of technology,
- posture of clients with respect to
the patent, and
- US v. non-US entities.
Conidering all the appellate cases in which you have been
involved, please provide a breakdown, in terms of percentages or
quantity, of those for which
- you were the lead attorney on the brief(s), and
- you personally performed the oral argument.
1.07 OTHER PATENT LITIGATION - US and FOREIGN
Please describe your involvement in any US non-infringement
patent litigation, such as interferences that are tried or
appealed in the courts, ownership or contract disputes, etc.
Considering all the matters discussed in the preceding answer,
please provide a breakdown, in terms of percentages or quantity, by:
- client type,
- kind of patent for any non-utility
applications or patents,
- kind of technology,
- posture of clients with respect to
the patent, and
- US v. non-US entities.
Please describe your involvement in any foreign litigation
involving patents or patent applications, including oppositions.
Please provide a breakdown, in terms of percentages or quantity, by:
- client type,
- kind of patent for any non-utility
applications or patents,
- kind of technology,
- posture of clients with respect to
the patent, and
- US v. non-US entities.
1.08 POLICY: Testimony, Commenting, Amicus Briefs,
TESTIMONY AND COMMENTING
If not apparent from your resume in sufficient detail, please
describe any testimony, comment submissions, and similar
information you have provided to the executive or legislative
branches of government.
In how many of these were you the lead
attorney?
If your activities were on behalf of clients, please
provide a breakdown, in terms of percentages or quantity, by:
- client type,
- kind of technology, and
- US v. non-US entities.
Please also provide a breakdown, in terms of
percentages or quantity, identifying the posture of clients with respect to the
subject matter (patent applicant view, patent owner view, PTO
view, accused infringer view, etc.)
PATENT POLICY - AMICUS BRIEFS
How many amicus briefs on patent issues have you
worked on?
What percentage supported the patent owner side?
What percentage supported the PTO or accused infringer side?
In how many of these cases did you have a
traditional client (company or group of companies, trade
organization, the PTO, etc.)?
In how many of these cases did you work on
behalf of a bar association, ad hoc group of interested lawyers
or professors, yourself, etc.?
In how many of these cases were you the lead attorney on the brief(s)?
In how many of these cases did you perform the
oral argument?
Of the clients involved in these appeals, please provide a
breakdown, in terms of percentages or quantity, by client type.
2. INVENTION, SCIENTIFIC RESEARCH and WRITING
2.01 Inventions, Patents
On how many patent applications are you listed
as an inventor? (Please count a parent application and all
children applications as one.)
On how many issued patents are you an inventor?
Considering all your work as an inventor, please provide a
breakdown of your employers and the technology involved, in terms
of percentages or quantity, by:
- employer type,
- US v. non-US employers,
- kind of patent, for any non-utility
applications or patents, and
- kind of technology.
2.02 Scientific Research and Development and Writing
How many scientific research projects have you
been involved with as a researcher?
Of those, for how many were you a student
(graduate student or below)? On how many were
you the lead researcher?
How many peer-reviewed scientific publications
have you worked on?
Of those, on how many were you the lead
author?
Considering all your inventor and scientific research
actitivities, please provide a breakdown, in terms of percentages
or quantity, by:
- employer type,
- US v. non-US employer nationality,
and
- kind of technology.
3. TRADEMARK WORK
TRADEMARK - PROSECUTION (U.S.)
How many trademark applications have you been
involved with?
Of those, for how many were you the lead
attorney?
How many trademark oppositions have you been
involved with?
Of those, for how many were you the lead
attorney?
How many appeals to the Board have you been
involved with?
Of those, for how many were you the lead
attorney?
Considering all your US trademark prosecution work, please
provide a breakdown, in terms of percentages or quantity, by:
- client type,
- posture of clients with respect to
the trademark, and
- US v. non-US entities.
TRADEMARKS - PROSECUTION (FOREIGN)
Please describe your international trademark experience.
Considering all your foreign trademark prosecution work, please
provide a breakdown, in terms of percentages or quantity, by:
- client type,
- posture of clients with respect to
the trademark, and
- US v. non-US entities.
TRADEMARK - COUNSELING, INFRINGEMENT LITIGATION TRIALS,
INFRINGEMENT APPEALS, ETC.
Please answer the same questions for trademarks matters as you
did for patent matters. Include infringement cases in state
court as well as federal court. In the breakdowns, please also
quantify the cases that involved a registered US
mark v. those that did not.
4. OTHER INTELLECTUAL PROPERTY WORK
Desribe your work in copyright, mask works, trade secrets, and
other forms of intellectual property.
Please provide a breakdown, in terms of percentages or quantity, by:
- client type,
- kind of intellectual property,
- posture of clients with respect to
the property, and
- US v. non-US entities.
5. ADMINISTRATIVE AND ENTERPRENEURIAL EXPERIENCE
Except as noted, please consider activities where your main
function was other than as a lawyer.
Have you started a business, alone or with other people?
Have you run a business?
What is the greatest number of people you have had working for
you at any one time (including management activities at a law
firm or law department)?
Have you had primary authority for a budget in a company or firm?
What is the largest annual budget you have controlled or
supervised?
For your administrative and entrepreneurial experience other than
with law firms or law departments, please provide a breakdown of
the businesses involved, in terms of percentages or quantity, by:
- business type,
- kind of technology, and
- US v. non-US entities.
Last modified 03-15-09 at 5:40 pm PST. - rjm