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