U.S. GOVERNMENT PRINTING OFFICE

WASHINGTON : 

For sale by the Superintendent of Documents, U.S. Government Printing Office

Internet: bookstore.gpo.gov Phone: toll free (866) 512–1800; DC area (202) 512–1800

Fax: (202) 512–2104 Mail: Stop IDCC, Washington, DC 20402–0001

88–922 PDF 2014

U.S. PATENT AND TRADEMARK OFFICE: 

THE AMERICA INVENTS ACT AND BEYOND, 

DOMESTIC AND INTERNATIONAL POLICY GOALS 

HEARING 

BEFORE THE

SUBCOMMITTEE ON 

COURTS, INTELLECTUAL PROPERTY, 

AND THE INTERNET 

OF THE

COMMITTEE ON THE JUDICIARY 

HOUSE OF REPRESENTATIVES 

ONE HUNDRED THIRTEENTH CONGRESS 

SECOND SESSION 

JULY 30, 2014 

Serial No. 113–110 

Printed for the use of the Committee on the Judiciary 

( 

Available via the World Wide Web: http://judiciary.house.gov 
(II) 

COMMITTEE ON THE JUDICIARY 

BOB GOODLATTE, Virginia, Chairman 

F. JAMES SENSENBRENNER, JR., 

Wisconsin 

HOWARD COBLE, North Carolina 

LAMAR SMITH, Texas 

STEVE CHABOT, Ohio 

SPENCER BACHUS, Alabama 

DARRELL E. ISSA, California 

J. RANDY FORBES, Virginia 

STEVE KING, Iowa 

TRENT FRANKS, Arizona 

LOUIE GOHMERT, Texas 

JIM JORDAN, Ohio 

TED POE, Texas 

JASON CHAFFETZ, Utah 

TOM MARINO, Pennsylvania 

TREY GOWDY, South Carolina 

RAU ́ L LABRADOR, Idaho 

BLAKE FARENTHOLD, Texas 

GEORGE HOLDING, North Carolina 

DOUG COLLINS, Georgia 

RON DeSANTIS, Florida 

JASON T. SMITH, Missouri 

[Vacant] 

JOHN CONYERS, JR., Michigan 

JERROLD NADLER, New York 

ROBERT C. ‘‘BOBBY’’ SCOTT, Virginia 

ZOE LOFGREN, California 

SHEILA JACKSON LEE, Texas 

STEVE COHEN, Tennessee 

HENRY C. ‘‘HANK’’ JOHNSON, JR., 

Georgia 

PEDRO R. PIERLUISI, Puerto Rico 

JUDY CHU, California 

TED DEUTCH, Florida 

LUIS V. GUTIERREZ, Illinois 

KAREN BASS, California 

CEDRIC RICHMOND, Louisiana 

SUZAN DelBENE, Washington 

JOE GARCIA, Florida 

HAKEEM JEFFRIES, New York 

DAVID N. CICILLINE, Rhode Island 

SHELLEY HUSBAND, Chief of Staff & General Counsel 

PERRY APELBAUM, Minority Staff Director & Chief Counsel 

SUBCOMMITTEE ON COURTS, INTELLECTUAL PROPERTY, AND THE INTERNET

HOWARD COBLE, North Carolina, Chairman 

TOM MARINO, Pennsylvania, Vice-Chairman 

F. JAMES SENSENBRENNER, JR., 

Wisconsin 

LAMAR SMITH, Texas 

STEVE CHABOT, Ohio 

DARRELL E. ISSA, California 

TED POE, Texas 

JASON CHAFFETZ, Utah 

BLAKE FARENTHOLD, Texas 

GEORGE HOLDING, North Carolina 

DOUG COLLINS, Georgia 

RON DeSANTIS, Florida 

JASON T. SMITH, Missouri 

[Vacant] 

JERROLD NADLER, New York 

JOHN CONYERS, JR., Michigan 

JUDY CHU, California 

TED DEUTCH, Florida 

KAREN BASS, California 

CEDRIC RICHMOND, Louisiana 

SUZAN DelBENE, Washington 

HAKEEM JEFFRIES, New York 

DAVID N. CICILLINE, Rhode Island 

ZOE LOFGREN, California 

SHEILA JACKSON LEE, Texas 

STEVE COHEN, Tennessee 

JOE KEELEY, Chief Counsel 

HEATHER SAWYER, Minority Counsel 
(III) 

C O N T E N T S 

JULY 30, 2014 

Page 

OPENING STATEMENTS 

The Honorable Howard Coble, a Representative in Congress from the State 

of North Carolina, and Chairman, Subcommittee on Courts, Intellectual 

Property, and the Internet .................................................................................. 1 

The Honorable John Conyers, Jr., a Representative in Congress from the 

State of Michigan, Ranking Member, Committee on the Judiciary, and 

Member, Subcommittee on Courts, Intellectual Property, and the Internet .. 2 

The Honorable Bob Goodlatte, a Representative in Congress from the State 

of Virginia, and Chairman, Committee on the Judiciary ................................. 4 

The Honorable Jerrold Nadler, a Representative in Congress from the State 

of New York, and Ranking Member, Subcommittee on Courts, Intellectual 

Property, and the Internet .................................................................................. 6 

WITNESS 

The Honorable Michelle K. Lee, Deputy Under Secretary of Commerce for 

Intellectual Property and Deputy Director of the United States Patent 

and Trademark Office, United States Department of Commerce 

Oral Testimony ..................................................................................................... 8 

Prepared Statement ............................................................................................. 11 

LETTERS, STATEMENTS, ETC., SUBMITTED FOR THE HEARING 

Prepared Statement of the Honorable John Conyers, Jr., a Representative 

in Congress from the State of Michigan, Ranking Member, Committee 

on the Judiciary, and Member, Subcommittee on Courts, Intellectual Property, and the Internet .......................................................................................... 3 

APPENDIX 

MATERIAL SUBMITTED FOR THE HEARING RECORD

Response to Questions for the Record from the Honorable Michelle K. Lee, 

Deputy Under Secretary of Commerce for Intellectual Property and Deputy 

Director of the United States Patent and Trademark Office, United States 

Department of Commerce .................................................................................... 44 

(1) 

U.S. PATENT AND TRADEMARK OFFICE: THE 

AMERICA INVENTS ACT AND BEYOND, DOMESTIC AND INTERNATIONAL POLICY 

GOALS 

WEDNESDAY, JULY 30, 2014 

HOUSE OF REPRESENTATIVES

SUBCOMMITTEE ON COURTS, INTELLECTUAL PROPERTY, AND THE INTERNET

COMMITTEE ON THE JUDICIARY

Washington, DC. 

The Subcommittee met, pursuant to call, at 3 p.m., in room 2141, 

Rayburn House Office Building, the Honorable Howard Coble 

(Chairman of the Subcommittee) presiding. 

Present: Representatives Coble, Marino, Goodlatte, Chabot, 

Farenthold, Holding, Collins, Smith, Nadler, Conyers, Chu, 

DelBene, and Jeffries. 

Staff Present: (Majority) Vishal Amin, Counsel; Olivia Lee, Clerk; 

(Minority) Jason Everett, Counsel; and Norberto Salinas, Counsel. 

Mr. COBLE. Good afternoon, ladies and gentlemen. The Subcommittee on Courts, Intellectual Property, and the Internet will 

come to order. 

Without objection, the Chair is authorized to declare a recess of 

the Subcommittee at any time. We welcome all the witnesses and 

those in the audience as well with us today. I’ll give my opening 

statement, and then I’ll recognize the gentleman from Michigan. 

Intellectual property forms the foundation of our nation’s innovation economy. The issues surrounding copyrights, copyrights— 

strike that—patents, copyrights, and trademarks affect nearly 

every business in America, both large and small. That is why today’s oversight hearing over the office tasked with managing our 

nation’s intellectual property laws is so vitally important. 

Back in 2011, we passed the America Invents Act, the AIA, that 

was most substantial—the most substantial reform to U.S. patent 

law since the 1836 patent law, or Patent Act. The AIA re-established the U.S. point system as a global standard, and over the 

past 3 years the U.S. Patent and Trademark Office has worked to 

implement the various provisions of the AIA to ensure that the bill 

realizes its full potential to promote innovation and create jobs. 

Our priority is to ensure that the PTO’s implementation of the AIA 

has been in line with congressional intent. While the AIA rewrote 
2 

the underlying patent law and procedures at the PTO, the dramatic rise in abusive patent litigation over the last several years 

necessitated our work to address abusive patent litigation. Through 

election year, patent—though in an election year, pandering and 

politics thwarted our efforts in the Senate. The fight goes on, and 

I’m certain that the Innovation Act, which passed the House last 

year with 325 votes and the support of the White House, will ultimately become law. We need to build on our work with the Innovation Act to ensure that the U.S. patent system operates fairly. 

Abusive patent litigation is a scourge on our economy, and it is 

the product of those taking advantage of loopholes in the current 

system to engage in what amounts to litigation extortion. In that 

vein, I call on the USPTOq to address the issues surrounding preGATT, or submarine, patent applications. Some of these applications have been sitting at the PTO longer than I’ve been in Congress. These are applications that, if issued, would receive 17-year 

terms of protection from the date that they issue—from the date 

they issue, not the date they were filed. But this is not the PTO’s 

fault. This is a result of legal gamesmanship by applicants. Such 

dilatory behavior by these applicants reflects the serious abuse of 

PTO procedure, it seems to me. I called on the USPTO to use its— 

to use its—strike that—to use their existing authority under the 

law to start publishing these dilatory applications so that the public has notice if vital technologies like those that cover the personal 

computer or the Internet are to be ripped from the public domain. 

American innovation cannot be held hostage to frivolous litigation from weak or overbroad patents. Companies are shutting down 

and folks are losing jobs. We need to work together to ensure that 

the American economy does not continue to suffer. 

I hope to hear more today from our esteemed witness and the 

steps that need to be taken to promote America’s innovation economy and create jobs. 

I’m now pleased to recognized the gentleman from Michigan, the 

Ranking Member of the full Judiciary Committee, Mr. Conyers, for 

his opening statement. 

Mr. CONYERS. Thank you, Chairman Coble. 

Today’s hearing provides a long overdue opportunity for us to review our ongoing efforts to strengthen our nation’s intellectual 

property system, and so I’m pleased that the Honorable Michelle 

Lee, the Deputy Under Secretary, will be here with us to help us 

understand the overall strategy for us moving forward. 

The health of our intellectual property system is integral to the 

health of our nation’s economy. It provides critical incentives that 

foster innovation, which in turn creates jobs. For example, IP-intensive industries account for more than a third of the U.S. gross 

domestic product and support about 40 million jobs in the United 

States. 

So as we examine the work of the Patent and Trademark Office, 

here’s what I think we ought to be looking at carefully. The office, 

to be truly effective in protecting the integrity of our intellectual 

property system, we must ensure that the agency has sufficient resources, and I’m sure this is going to be seen as the most basic 

problem before us. 
3 

Unfortunately, the current funding mechanism has failed the 

patent system by allowing an estimated billion dollars in fees over 

the last two decades to be diverted to other agencies, and that’s 

why many of my colleagues and myself have introduced H.R. 3349, 

the Innovation Protection Act. It’s bipartisan legislation that establishes a permanent statutory funding mechanism for the United 

States Patent and Trademark Office. This legislation would ensure 

that the office receives a consistent stream of funding that would 

better enable the agency to address abusive patent litigation. 

A major contributing factor to the problem of abusive patent litigation is the issuance of ambiguous or poor quality patents. Thus, 

the most effective step we can take is making sure that such patents are not issued to begin with, and by ensuring sufficient resources for USPTO would be a most important step in the right direction. With ample resources, the USPTO could hire and retain 

more examiners to increase patent examination quality and to 

issue strong patents. It would modernize the IT system to examiners—available to examiners to improve the speed and quality of 

the examiners’ work product. And with more funding, it could provide examiners more technical training and expertise. 

Accordingly, I’d like to hear from the Deputy Director about the 

impact the current funding mechanism has had on USPTO’s past 

and future efforts to improve patent quality—patent examination 

quality. 

Now, a strong U.S. intellectual property system also requires 

that the Patent and Trademark Office register trademarks worthy 

of the protection of such authority that conveys to trademark owners. Trademarks provide owners a legal right against unlawful infringers. They also incentivize owners to produce high quality products and services. Otherwise, the trademark owners’ reputations 

suffer. The upward trend in trademark registration application reflects the increasing awareness of the importance of the trademark. 

And so I will put the rest of my statement in the record, and 

yield back the balance of my time, Mr. Chair. 

Mr. COBLE. I thank the gentleman from Michigan. 

[The prepared statement of Mr. Conyers follows:] 

Prepared Statement of the Honorable John Conyers, Jr., a Representative 

in Congress from the State of Michigan, Ranking Member, Committee on 

the Judiciary, and Member, Subcommittee on Courts, Intellectual Property, and the Internet 

Today’s hearing provides a long-overdue opportunity for us to review the ongoing 

efforts of the U.S. Patent and Trademark Office to strengthen our Nation’s intellectual property system. 

The health of our intellectual property system is integral to the health of our Nation’s economy. It provides critical incentives that foster innovation, which, in turn, 

creates jobs. For example, IP-intensive industries account for more than one-third 

of the U.S. Gross Domestic Product and support about 40 million jobs in the United 

States. 

So as we examine the work of the U.S. Patent and Trademark Office, there are 

several factors that should be considered. 

To begin with, for the Office to be truly effective in protecting the integrity of 

our intellectual property system, Congress must ensure that the agency has sufficient resources. 

Unfortunately, however, the current funding mechanism has failed the patent system by allowing an estimated $1 billion in fees over the last two decades to be diverted to other agencies. 
4 

That is why I, along with many of my colleagues on this Committee, introduced 

H.R. 3349, the ‘‘Innovation Protection Act.’’ It is bipartisan legislation that establishes a permanent, statutory funding mechanism for the USPTO. 

This legislation would ensure that the Office receives a consistent stream of funding that would better enable the agency to address abusive patent litigation. 

A major contributing factor to the problem of abusive patent litigation is the 

issuance of ambiguous or poor quality patents. 

Thus, the most effective step we can take is making sure that such patents are 

not issued to begin with. By ensuring sufficient resources for the USPTO, this would 

be accomplished. 

With ample resources, the USPTO could hire and retain more examiners to increase patent examination quality and to issue strong patents. 

It could modernize the IT systems available to examiners to improve the speed 

and quality of the examiners’ work product. 

And with more funding the USPTO could provide examiners more technical training and expertise. 

These all contribute to superior patent examination quality. 

Accordingly, I would like to hear from Deputy Director Michelle Lee about the impact the current funding mechanism has had on the USPTO’s past and future efforts to improve patent examination quality. 

Second, a strong U.S. intellectual property system also requires the USPTO to 

register trademarks worthy of the protection such authority conveys to the trademark owners. 

Trademarks provide owners a legal right against unlawful infringers. They also 

incentivize owners to produce high quality products and services, otherwise the 

trademark owners’ reputations suffer. 

The upward trend in trademark registration applications reflects the increasing 

awareness of the importance of trademark. 

And, the Office has an important responsibility to ensure that the public interest 

is served well regarding the agency’s trademark registration approval process. 

Just last month, for example, a non-political, administrative tribunal within the 

USPTO cancelled the trademark of Washington’s professional football team after 

having determined that the trademark was disparaging to Native Americans. 

Section 2 of the Trademark Act specifically provides, in pertinent part, that a 

trademark is ineligible for registration if found to disparage an individual or group. 

Accordingly, I would appreciate having our witness address whether this law 

needs to be further strengthened. 

Finally, we must consider the challenges presented by international competitors. 

Our intellectual property system is the envy of the world because it forms the 

foundation for our inventiveness and dynamic business culture. It is clear that the 

protection and enforcement of intellectual property is vital to maintaining our competitiveness globally. 

Unfortunately, some other countries, particularly China and India, do not share 

our view of promoting and protecting intellectual property rights. 

I would like the Deputy Director to discuss whether there are measures that Congress should consider to better equip her agency to prevent and deter international 

infringement of U.S. intellectual property rights. 

I thank the Chairman for holding today’s hearing and I look forward to hearing 

Ms. Lee’s testimony. 

Mr. COBLE. The gentleman from Virginia, the Chairman of the 

full House Judiciary Committee. 

Mr. GOODLATTE. Thank you, Mr. Chairman. 

And Deputy Director Lee, welcome. 

When we look at the array of agencies and departments within 

the Federal Government, only a certain number carry out a mission that is explicitly called for in the Constitution. The U.S. Patent and Trademark Office is one of them. As the PTO carries out 

its constitutional mission, we need to conduct appropriate oversight 

to ensure that our IP laws are being implemented fairly and in line 

with congressional intent. 

In recent years, the PTO has been tasked with implementing the 

America Invent Act. The AIA was the most significant reform to 
5 

U.S. patent law in my lifetime. I believe that it is imperative for 

this Committee to examine the rules and procedures that the PTO 

has adopted to implement this important law, in particular, the 

various post-grant proceedings called for in the AIA. The post-grant 

proceedings were designed to create a cost-effective alternative 

legal forum at the PTO to provide a simpler way to review questions of patentability, thus reducing the cost of frivolous litigation 

on job creators. It is important for the PTO to operate these proceedings as true alternatives to the courts. It is also important for 

the programs to operate fairly for both the patent owner and those 

accused of infringement. 

It also appears that the business method transitional program 

has been implemented successfully by the PTO and is operating 

quite well. I hope to hear more from the Acting Director on this 

provision of the AIA. 

With regard to frivolous patent litigation, I remain confident that 

the Innovation Act, which passed the House with 325 votes, will 

become law. Though some in the Senate caved to election year politics and special interests, this is a bill that truly puts our economy 

first. I appreciate the support of the White House for the Innovation Act and, in particular, the provisions that went directly to curtailing abusive patent litigation, specifically a modernized fee-shifting statute based on the Equal Access to Justice Act. 

As we work to enact the Innovation Act, the PTO is also taking 

steps to improve patent quality internally with improved prior art 

searches and clearer guidelines. While I applaud these efforts, I 

also want to caution against attempting to simply implement provisions of the Innovation Act through rulemakings. In some instances, we have seen proposed rulemakings for issues like attributable owner disclosures that have Draconian penalties and little 

to no benefit in reducing frivolous patent litigation or improving 

patent quality. These kinds of rulemakings could impose an exorbitant tax on business and innovation. While we share the common 

goal of approving the patent process, we must tread carefully. 

Rulemakings are not a substitute for congressional action. 

On the patent quality front, I strongly believe that the PTO 

should not simply be in the business of granting patents and leaving the mess created for the courts and Congress to fix, but rather, 

focus on tightening the requirements for patent eligibility to reduce 

the number of weak or overly broad patents from entering the system. 

There are also some patent applications that have been pending 

for a very long time. These pre-GATT, or submarine patent applications, have in some cases been pending for 30 or 40 years. This 

long pendency is not the fault of the PTO, and I appreciate that 

the PTO provided Congress with a report detailing these several 

hundred pending submarine patent applications. 

Apart from being a drain on PTO resources, I believe that the 

public has a right to know if widely adopted technology could suddenly be removed from the public domain. If such applications were 

to issue as a patent today, they would be entitled to a 17-year term 

and would not expire until the year 2030. Moreover, because these 

applications have not been published, the public has no notice that 

patents may issue that claim the invention in question, and the 
6 

public has no opportunity to provide the PTO with prior art that 

could directly apply to the overly broad claims in many of these applications. And so I call on you to exercise your authority under existing law to publish these applications immediately. 

Patent and trademark quality are key components of the PTO’s 

overall mission, but I also want to ensure that the PTO is properly 

spending the fees that it collects, that its employees are acting appropriately when it comes to hiring appropriately qualified individuals and that the PTO’s IP attache ́s have appropriate resources 

and authority in our embassies abroad. When it comes to our efforts overseas, we need to ensure that our IP trade agenda, IP 

attache ́ program, and training and capability building programs 

are in line with compelling U.S. economic interests and job creation. 

Intellectual property powers the engine of American innovation 

and creativity, it creates new jobs, and helps grow our economy. I 

look forward to hearing from Director Lee on these important 

issues. 

Thank you, Mr. Chairman. 

Mr. COBLE. I thank the gentleman. 

The distinguished gentleman from New York and the Ranking 

Member of the Subcommittee, Mr. Nadler, is recognized. 

Mr. NADLER. Thank you, Mr. Chairman. 

Today, we conduct an oversight hearing of the Patent and Trademark Office. A strong patent system is important to foster innovation. Patents serve as one the key drivers of the Nation’s economy. 

I hope that today we will consider what steps we can take to continue to improve the patent system. To do this, we will examine the 

implementation of the Leahy-Smith America Invents Act of 2011, 

which was the largest modification to U.S. patent law in more than 

50 years. 

The America Invents Act was designed to help process patent applications faster, reduce the applications backlog, increase patent 

quality through expedited patent challenges, and to improve examiner recruitment and detention. 

The PTO is a fee-funded agency and the America Invents Act 

provides a model for funding to ensure that the USPTO receives access to the user fees collected each year. 

As we study these issues today, I want to stress that I believe 

that it’s very important that the PTO continue to receive all of 

these funds so that it can continue to issue high quality patents. 

The bill gave the PTO fee setting authority, which has allowed 

the PTO to develop an operating reserve. This enables it to launch 

new initiatives in response to the customer’s needs. To date, the office has implemented most of the provisions of the America Invents 

Act. Of the 37 America Invents Act provisions, 28 were delivered 

on time. Though this implementation rate has been a success, I 

would like to hear today about the planning and implementation 

of the patent review processing system. This system was launched 

in a new Patent Trial and Appeal Board and is the board’s e-filing 

and case management system for trial proceedings. 

The America Invents Act required the office to establish three or 

more satellite offices by September 16, 2014. The PTO opened one 

satellite office in Detroit in July 2012 and recently opened another 
7 

one in Denver. I would like to hear how these offices are helping 

to reduce the patent backlog and how these operations—their operations have been running so far. 

As we examine the continued implementation of the America Invents Act, we will study why changes are needed, if any, for the 

patent system as a whole. One of the key goals of the America Invents Act was to help the PTO quickly review patent applications, 

and another goal was to establish higher quality patents, and the 

PTO has worked to achieve that goal. 

I’m happy the PTO has made improving patent quality a top priority. I would like to hear how the PTO plans to improve patent 

quality as it continues to implement the America Invents Act. Also, 

as quality continues to improve, we expect this will play a large 

role in curtailing abusive patent litigation. In recent years, there 

has been increasing awareness about abusive patent litigation. 

There’s also been a public and private effort to combat it. We need 

to continue to develop other creative solutions to deal with instances of such litigation without diminishing the rights of legitimate patent holders. In particular, the House passed the Innovation Act last December with strong bipartisan support to address 

many of the concerns that have been raised about abusive patent 

litigation. During our work on the bill, we heard from many stakeholders about how the bill could be modified and improved, and we 

attempted to work with all interested parties. The Senate has continued to work on this important issue, but the bill has been put 

on hold as stakeholders continue to attempt to work out their differences. We must not become discouraged as we continue to attempt to find common ground to deal with this problem. 

Last year, the Administration announced seven legislative recommendations designed to increase transparency of patent ownership information to curtail abusive litigation and ensure high quality patents. We should continue to study these recommendations as 

we continue to develop ways to improve the system. 

I would also like to hear today about efforts, such as the intellectual property rights attache ́ program, that the PTO has taken to 

work with our trading partners to improve intellectual property 

rights and enforcement. 

The Supreme Court has recently issued several opinions that impact some of the legislative issues we will discuss today. For example, in the Octane and Highmark cases, the court issued opinions 

lowering the standard for awarding attorney’s fees in patent cases. 

I would like to hear how the Patent Office is working on executive actions to address the question of overly broad patent claims, 

particularly in the context of software. 

The Administration has called on the PTO to provide new targeting training toward examiners on the scrutiny of these types of 

claims. I commend the PTO for developing four training modules 

focused on functional claiming under Section 112(f), which is often 

used in software patents. This is an important step in taking the 

executive action to increase patent claim clarity seriously. 

Finally, we should make sure that American companies continue 

to receive adequate patent protection in key overseas markets. 

This hearing will provide us with an opportunity to evaluate the 

efforts of the PTO to implement the America Invents Act and pro-
8 

vide suggestions of how we can improve the patent system going 

forward. 

I look forward to hearing from the witness, and I yield back the 

balance of my time. Thank you. 

Mr. COBLE. I thank the gentleman. 

The statements of other Members of the Subcommittee will made 

part of the record without objection. 

Before I introduce our distinguished witness today, Ms. Lee, I’d 

like you to stand and be sworn, if you will. 

[Witness sworn.] 

Mr. COBLE. Thank you. You may be seated. Let the record show 

that the Ms. Lee responded in the affirmative. 

Our witness today is the Honorable Michelle Lee, Deputy Under 

Secretary of Commerce for Intellectual Property and Acting Director of the U.S. Patent and Trademark Office. In her position, Ms. 

Lee provides leadership, oversight and day-to-day management to 

one of the largest intellectual property offices in the world, which 

consists of 12,000 employees. She also serves as one of the principal advisors to the President on both domestic and international 

intellectual property matters. Prior to her role as Deputy Director, 

Ms. Lee served as the first Director of the Silicon Valley Patent 

and Trademark Office, where she established and led the new office. Her experience also includes being the first Head of Patent 

Strategy at Google, where serving as the company’s Deputy General Counsel, she—while serving as the company’s Deputy General 

Counsel. She received her J.D. from the Stanford Law School and 

her M.S. and B.S. in electrical engineering and computer science 

from the Massachusetts Institute of Technology. 

Ms. Lee, we’re delighted to have you with us. 

I must advise all of you, we expect a vote on the Floor imminently, so at that time, we will declare a brief recess, should be no 

more than 35 or 40 minutes, I’m thinking. 

Ms. Lee, there’s a timer before you on your desk. When the green 

light becomes amber, you’re being warned you have a minute to go. 

And if you can wrap up on or about 5 minutes. You won’t be severely punished if you fail, but on or about 5 would be fine. We’re 

pleased to have you with us today. 

TESTIMONY OF THE HONORABLE MICHELLE K. LEE, DEPUTY 

UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL 

PROPERTY AND DEPUTY DIRECTOR OF THE UNITED STATES 

PATENT AND TRADEMARK OFFICE, UNITED STATES DEPARTMENT OF COMMERCE 

Ms. LEE. Thank you, Chairman Coble. 

Mr. COBLE. Put the mike on, Ms. Lee. 

Ms. LEE. Okay. Thank you. 

Chairman Coble, Chairman Goodlatte, Ranking Member Nadler 

and Ranking Member Conyers, and Members of the Subcommittee, 

thank you for this opportunity to discuss the USPTO’s options, operations, programs and initiatives. 

Mr. Chairman, promoting innovation, stimulating growth, and 

creating an environment that generates high-paying jobs continues 

to be a top priority of the Obama administration and vital to our 

country’s long-term competitiveness. I’m honored to be a part of an 
9 

agency that directly serves America’s entrepreneurs by providing 

the intellectual property protection they need to secure investment 

capital and allowing them to build their companies and bring cutting-edge products and services to the global marketplace. 

I am also very proud to be a part of an agency that was ranked 

as the number one best place to work in the Federal Government 

out of 300 agency subcomponents by the Partnership for Public 

Service Survey. This ranking is a tribute to my predecessors, to the 

USPTO’s management team, our employee unions and, most importantly, to our 12,000 dedicated employees. 

Mr. Chairman, our business is thriving, and I believe that is a 

good sign for the economy. This fiscal year, we expect to receive 

nearly 600,000 patent applications and more than 450,000 trademark applications. We have reduced the patent application backlog 

by 24 percent since January of 2009, despite an on average 5 percent increase year over year in filings, and we continue to make 

progress in reducing the backlog and the pendency of applications. 

Our trademark team has long been at its optimal backlog and 

pendency targets. On average, it takes just 10.3 months to receive 

a final decision on a trademark application. 

The USPTO and the American public continue to benefit from 

the legislative changes enacted by the Leahy-Smith America Invents Act. During the last 3 years, the USPTO has fully implemented these changes to modernize the U.S. patent system, 

transitioning from a first inventor to file system, establishing timely and cost-effective post-grant review proceedings, and taking advantage of new authority to enable sustainable funding. 

Mr. Chairman, the Administration believes that additional legislative changes building on the AIA would further enhance patent 

quality and lessen abusive patent litigation. This Committee deserves substantial credit for moving forward a bill that addresses 

these goals. We continue to hope that a bill can reach the President’s desk, and are committed to working with Congress and our 

stakeholders to build balanced and effective consensus legislation. 

In the meantime, we are not waiting. We are implementing an 

array of initiatives to improve our patent system now and for the 

future. We have launched a multifaceted enhanced patent quality 

initiative to expand examiner training, both legal and technical; to 

collect more data to further improve our examination process and 

training; to harness the power of the crowd, or public, to find the 

best possible prior art during, and not after, examination; and to 

gather input from all of our stakeholders on how further to improve 

quality. 

High quality patents reduce the potential for abusive litigation, 

permitting our companies to focus on innovation. For those who receive abusive demand letters or lawsuits, we have launched an online toolkit to help them know their rights and available resources 

before entering into costly litigation or settlement. We are committed to helping under-resourced applicants benefit from the patent system through our pro bono and pro se assistance programs 

and in increasing the transparency in our patent system. 

Further, our Patent Trial Appeal Board is operating exactly as 

you, Congress, intended. We are providing a faster and lower-cost 

alternative to district court litigation in determining the validity of 
10 

patents. As required by the AIA, every one of our trials to date has 

completed with a high quality ruling within the statutorily-required 1-year deadline, despite an increasing volume of petitions, 

more than 1,600 per year, which is more than 200 percent of that 

originally predicted. 

Moreover, as also required by the AIA, we have opened four satellite offices to increase our capacity to handle applications and to 

provide services and information to help entrepreneurs and inventors. Offices in Detroit and Denver are already up and running in 

permanent space and have patent examiners on the ground locally. 

Permanent offices in San Jose and Dallas will officially open next 

year. Patent Trial Appeal Board judges are working in all four locations on appeals and post-grant review proceedings. These satellite 

offices have been extremely well received by the local innovation 

communities and play a strategic role in helping the USPTO fulfill 

its mission. 

Mr. Chairman, with our colleagues at the Department of Commerce, we issued a green paper last year that analyzed key copyright issues in the digital environment. We are currently engaging 

with our stakeholders and the copyright office to develop recommendations. 

Finally, on the international front, the USPTO continues to play 

a significant role in promoting protection and enforcement of intellectual property rights for our innovative companies entering foreign markets. 

Mr. Chairman, my written statement contains more detailed information about our many domestic and international intellectual 

property related activities, and I thank you for this opportunity 

and am pleased to answer any questions you or your Committee 

Members may have. 

Mr. COBLE. Thank you, Director Lee, for being here and for your 

testimony. 

[The prepared statement of Ms. Lee follows:] 
11 
12 
13 
14 
15 
16 
17 
18 
19 
20 
21 

Mr. COBLE. We try to confine ourselves to the 5-minute rule as 

well, so I will start with a quick question to you, Ms. Lee. 

The USPTO IP attache ́ program has been an important part of 

the United States international IP advocacy. The two countries of 

highest priority have been China and India. If you would, Ms. Lee, 

speak more to the key issue that the PTO’s attache ́s are working 

on in those countries, particularly on the issue of trade secret theft 

in China and in India, the changes that we are seeing or hope to 

see in regards to patents protection. And market access under the 

newly elected pro-reform prime minister. 

Ms. LEE. Thank you, Mr. Chairman, for your question about the 

IP attache ́ program. That program is designed to have IP experts 

on the ground. We currently have IP experts on the ground in just 

under a dozen countries, including three in China and one in the 

U.S. Embassy in India. 

And what our IP attache ́s do is they serve multiple purposes. 

One is they advise American companies who are entering that 

country on the IP landscape on a range of issues, including patents, 

trade secrets and copyrights, and how to protect their intellectual 

property. In addition, our IP attache ́s work closely with the host 

government. They work with judicial officials to make sure that the 

country has rules that are in compliance with and we can influence 

and share similarities and values on IP. So we work with judicial 

officials, we work with law enforcement officials there, we work 

with policy makers there. Really we’re trying to create an environment that is favorable for American businesses to export their 

products and services overseas. 

Specifically, in terms of what we are doing in China, I mentioned 

we have three IP attache ́s on the ground there. We also have a 

team of dedicated China experts at the USPTO. I co-chair the U.S.- 

China Joint Commission of Commerce and Trade, and we will be 

meeting—on the IP working group—earlier this fall to discuss important topics, including trade secrets and other intellectual property matters. And we provide training to American companies in 

the United States through what we call our China IP road show. 

We go to multiple cities throughout the country advising companies 

on the IP landscape in China. 

And on the front—on the Indian front—we are working together, 

of course, through our IP attache ́ program and also through our 

Global IP Academy to train policymakers, judicial officials and law 

enforcement officials. The same is true for representatives from 

other countries as well besides India and China. 

Mr. COBLE. I thank you for that. Director Lee, I want to commend you for your stewardship at the PTO and thank you as well 

for working closely with us on the Innovation Act. I appreciate 

that. There are a good number of people who are intellectual property advocates who believe you would be a rock solid Director of the 

agency. Now, my record for endorsements is dismal, so I won’t dare 

call this an endorsement, because it might end up being a liability, 

but you’ve been very—we appreciate very much the exchange we 

have enjoyed with you during your tenure there. 

If you would, with that in mind, what are some of the key challenges that you’ve faced as Acting Director? 
22 

Ms. LEE. So I have to say I’m blessed to be the current leader 

of an agency that, for the most part, Mr. Chairman, is exceedingly 

well run. I’ve got an extremely talented and capable senior executive team and advisors by my side, and none of the good work that 

I’ll describe to you over the course of the day could be accomplished 

without the help of that team, but as we look ahead, certainly one 

of the challenges we face is that our Patent Trial and Appeal Board 

proceedings have been extremely popular. 

Members of Congress, with their foresight, created these AIA 

trials. There are three new post-grant proceedings, including postgrant review, inter partes review, and covered business method review. And I have to say, the public’s interest in and appetite for 

these proceedings is significant. 

As I mentioned in my opening comments, there have been about 

1,600 petitions filed per year, and that’s 200 percent more than we 

originally projected. So a goal—or a challenge of the agency, a challenge that I think we are absolutely up for, is to ensure that we 

continue to issue high quality rulings from our Patent Trial and 

Appeal Board within our very strict 1-year statutory requirement. 

We have hit all of our deadlines so far, and I’m optimistic that we 

are—we can meet the challenge going forward, but it’s something 

we will need to keep our eye on. 

Mr. COBLE. I thank you. 

I see my red light has illuminated. Let me try to get one more 

question in. 

How is the Patent Trial and Appeal Board handling the backlog 

pending appeals? 

Ms. LEE. So we have a backlog of our ex parte appeals, and the 

backlog with the AIA trials is just beginning to build. So I guess 

the key is that with the AIA trials, we’ve been hitting our 1-year 

statutory deadline. So we need a little bit of backlog, because we 

want to make sure that our Patent Trial and Appeal Board judges 

are fully engaged and they’re not sitting around waiting for cases 

to be filed, but the backlog of the AIA trials is something that we 

need to keep an eye on, but I’m—I mean, the good news is that we 

seem to be hitting our deadline. 

Mr. COBLE. I thank you for that. I see my time has expired. 

The gentleman from New York, Mr. Nadler. 

Mr. NADLER. Thank you, Mr. Chairman. 

Ms. Lee, do you think that the USPTO currently has the resources and flexibility to continue to reduce the patent application 

backlog, to shorten patent pendency, improve patent quality, and 

enhance the administrative appeal and post-grant processes? Do 

you have enough resources? 

Ms. LEE. So thank you for the question, Congressman Nadler. 

That’s a very important question. And I have to say, with the implementation of the AIA, right, and the ability to keep our user 

fees, that has been a tremendous improvement over past years. We 

now have, working with our stakeholders, an operating reserve, 

which also very favorably impacts our ability to deliver in terms of 

reducing backlog and pendency, and improving quality. I mean, 

prior to the implementation of the AIA, we were on a year-to-year 

budget, and if there were fluctuations in fees, important projects 
23 

like patents quality or even, for example, IT investment, IT investment was oftentimes the first thing to go. 

So now that we’re able to set our fees, which we engaged in a 

very comprehensive outreach to our stakeholders to set it at an appropriate level, now that we have an operating reserve, which provides a little cushion for fluctuations in terms of filings or what 

have you, I think we are very much able to focus on further reductions on the backlog and pendency, and I’m very excited to be giving an enhanced emphasis on patent quality. We’re really at a 

point in our history where, like no time in the recent past, we’re 

truly able to focus on—— 

Mr. NADLER. So your testimony is that not only is it a great improvement, but it’s adequate at this point? 

Ms. LEE. Yeah. I think we set our fees based upon what we think 

it costs us to provide—— 

Mr. NADLER. Okay. 

Ms. LEE [continuing]. The service. So as long as we can keep 

it—— 

Mr. NADLER. Yes. Thank you. 

Ms. LEE. Yes. 

Mr. NADLER. Now—thank you. How have you improved on your 

efforts to train the patent examiners to ensure they stay abreast 

of the latest developments in the law? 

Ms. LEE. So we have initiatives underway to—we give them— 

when the Supreme Court comes out with rulings, we take a look 

at those rulings, and if they affect examination processes, then 

what we will do is we will issue guidance to our examiners on how 

to examine in light of the new case law. 

In addition, we are constantly training our examiners on the new 

developments in the case law, not just through the guidance, but 

through training in person on video. Much of that training material 

is available on our Web site for the public to see. And we also have 

technical experts from outside the walls of the PTO come into the 

PTO. They are the experts in perhaps the latest in computer vision 

technology or artificial intelligence or semiconductor manufacturing, and they have the ability to come into our office through 

our patent examiner technical program to train our examiners, and 

that’s been tremendously helpful in terms of keeping our examiners 

up-to-date. 

Mr. NADLER. Good. That was my next question, which you already answered. 

Do you believe that the fiscal year 2015 appropriation bill that 

the House has passed and the Senate Appropriations Committee 

has approved will provide the office with the adequate authority to 

spend anticipated fee collections as estimated by the Congressional 

Budget Office? 

Ms. LEE. So, for the fiscal year 2015, the House approved—the 

House passed and the Senate approved the USPTO keeping and 

spending all that we predict that we will collect in 2015. And any 

amount in excess of that—any amount in excess of our projected 

fee collections will go into a fee reserve fund. So to answer—— 

Mr. NADLER. For the office? For the office? 

Ms. LEE. Into a fee reserve fund. And then the way we can access that fee reserve fund is by submitting a reprogramming re-
24 

quest to our appropriators to access that fund. So it’s our hope 

that—and we anticipate a slight overage there, and some amounts 

of money arriving into that fee reserve fund, we hope to be able to 

access those funds as well. 

Mr. NADLER. That sounds good. Thank you. As the number of filings continues to grow, does the PTO plan to provide a full text 

searchable database of Patent Trial and Appeal Board filings? We 

have heard these filings are in the patent review processing system 

site, and there’s often very limited searchability. Do you have any 

plans to manage these PTAB filings differently in the future? 

Ms. LEE. Thank you for your question on that one. And the answer is yes. We had a lot to implement when the AIA came out, 

including a lot of IT systems to go along with, so it was no minor 

feat to get all the processes, the rules implemented and the IT systems up and running. So, as a first matter, we stuck to the basic 

functionality, but it is clearly our goal to add additional 

functionality and make it more user friendly to use, and that includes things like being able to search the text of our documents. 

So the answer is yes. And we are looking to phase out our current 

system by fiscal year 2015 with hopefully a next generation system 

that will be much improved. 

Mr. NADLER. Thank you. My last question is really twofold. Is 

there any way to predict the number filings for a given case, and 

do you have any metrics on which patent review processing system 

documents users want to access most often? 

Ms. LEE. So let me answer your second question as far as access 

to documents. We don’t actually currently track which of the documents are accessed more frequently than others or the number of 

accesses, but it is entirely possible that in our next generation IT 

systems, that is something we can add, that’s a feature we can add. 

And your first question about the number of documents in any 

given case—— 

Mr. NADLER. Number of filings, yeah. 

Ms. LEE. Yeah. In any given Patent Trial and Appeal Board filing, a litigation before the Patent Trial and Appeal Board is much 

like the litigation in district court, and I think the number of documents filed depends upon the number of motions that the parties 

may have. So there’s always a variable, and at this point, it’s hard 

to predict the number, given the newness of the proceedings, but 

I imagine over time, perhaps we can gather more data on averages 

and such, but it depends a lot on the number of motions filed by 

the litigants and the number of opinions that then need to be written afterwards. 

Mr. NADLER. Thank you very much. 

I’ve exceeded my time. And I want to thank the Chairman for his 

indulgence. 

Mr. COBLE. Thank you. I appreciate the gentleman. 

Thank you, Ms. Lee. 

The gentleman from North Carolina. 

Mr. HOLDING. Thank you, Mr. Chairman. 

I’m delighted to now of your expertise in international intellectual property matters and your focus on ensuring that our companies, you know, have access to foreign markets and our intellectual 

property is protected. 
25 

I’m concerned about countries that have embarked on some 

trademark destruction when it comes to tobacco products and plain 

packaging of tobacco. Australia was the first country to prohibit the 

use of trademarks on tobacco products in 2011, and other countries, 

like Ireland and the United Kingdom, seem to be taking a similar 

path toward destruction of intellectual property rights vis-a`-vis 

trademarks on tobacco products. 

So I’d like for you to describe what USPTO’s position is on these 

proposals and these laws that encumber the use of trademarks, 

and specifically, what will USPTO do to defend the intellectual 

property system vis-a`-vis these trademarks of our companies? 

Ms. LEE. Thank you, Congressman. So are you talking about the 

bad faith filing of trademarks in certain countries? So, for example, 

if the U.S. has a trademark that they filed for or registered for in 

the United States, that other bad faith actors overseas then go out 

and file for trademarks? 

Mr. HOLDING. No. I’m talking about when a country enacts a 

law, vis-a`-vis tobacco products, and says that the company cannot 

use their trademarks on a tobacco product. So you have the plain— 

you have a pack of cigarettes, and it is a plain package with no 

trademarks allowed to be used on there. 

Ms. LEE. You know, this is the first time I’m hearing about this. 

Mr. HOLDING. I’m very surprised it’s the first time you’re hearing 

about it, because it’s—— 

Ms. LEE. So I appreciate the question. 

Mr. HOLDING. It’s a—— 

Ms. LEE. Sounds like it’s an important issue. And if you don’t 

mind, let me discuss with my team, and we will get back to you 

with an answer on the record, but that sounds like a very important issue, and I could see it might be of concern to some of our 

stakeholders. 

Mr. HOLDING. Sure. Well, I would appreciate that. I’m concerned 

that it’s a matter of first impression, because it has been—you 

know, obviously it’s an important matter involving, you know, a 

great deal of resources. 

Switching gears a little bit, as you know, in the inter partes proceedings provisions that were included in the AIA, a new—you 

know, as a new, expeditious way to challenge validity of patents, 

the basis for invalidating these patents is strictly limited to Section 

102 and Section 103 challenges, and the tradeoff for the limitation 

is that a third party can include all challenge claims of a patent 

within a petition seeking an inter partes review and as long as the 

position—the petition, excuse me, doesn’t exceed the PTO’s specified page limitation. 

And assuming that the threshold level has been met by the petitioner, I’d like for you to tell me why is it that the Patent Trial 

and Appeal Board is not instituting review on all of the alleged 

claims in a petition but on only some of them? 

Ms. LEE. So thank you for your question. And when we review 

the petitions, it’s my understanding that we do look on a claim-byclaim basis, and we do indicate whether or not the petition is 

granted on a claim-by-claim basis. 
26 

Mr. HOLDING. Okay. What do you think the PTAB’s authority to 

institute proceedings on less than all of the claims in the petition 

is? Do you have—where is the authority for that in the AIA? 

Ms. LEE. My guess is that when the statute came out, it was not 

clear as to whether or not the proceedings would be instituted on 

all claims or partial claims, but that the USPTO then had to interpret the rules, and we’ve done so. 

I will say, though, that now that we’ve had some amount of experience with these Patent Trial and Appeal Board proceedings, quite 

frankly, we are engaging in an eight-city—and we already engaged 

in an eight-city road tour where we got the public’s input on ways 

we can improve the procedures and the programs by the PTAB so 

that it can be even more effective. And if this an issue of concern— 

and I think we heard some comments on this issue in our road 

show—this is absolutely an issue that we can consider and discuss 

and re-evaluate. 

Mr. HOLDING. Following up on the road show, you know, I’ve 

heard from stakeholders that the PTO’s interpretation of these proceedings, you know, is adding to the cost, complexity, burden to the 

patent system without any gains in efficiency, economy or clarity. 

Did you get some responses like that during the road show? 

Ms. LEE. Thanks for sharing that. Actually, we heard quite the 

opposite. 

Mr. HOLDING. Okay. Well, good. Good. 

Ms. LEE. We heard that these proceedings are providing a costefficient and more timely manner in which to adjudicate the validity of the patents with the expertise of a technically trained panel 

of three judges. And based upon the increase in our petitions filings, they seem to be very popular. 

Of course, that said, I’m sure there’s plenty of room for improvement, and we are, as I said, eager to engage the public in that conversation to make those proceedings even more effective and even 

more useful to the—— 

Mr. HOLDING. Good. Well, I’ll share the input from some of my 

stakeholders and you can share some of the other input, and we’ll 

compare notes. 

Ms. LEE. Appreciate it. 

Mr. HOLDING. Thank you. 

Ms. LEE. Thank you. 

Mr. HOLDING. Thank you, Mr. Chairman. 

Mr. COBLE. I thank the gentleman. 

The distinguished gentleman from Michigan, Mr. Conyers. 

Mr. CONYERS. Thank you very much. 

Deputy Under Secretary Lee, we have a sequester. I think there 

has been some kind of an agreement worked out with appropriators 

about how much of your fees that you collect are kept back. And 

it seems to me that with all the creative strategies that you’ve discussed, we have a problem of our own. And I’m not sure if maybe 

new appropriators may work out something with you that would be 

better than the present situation, but most of your progress, or 

much of it, is going to be obstructed by the appropriation processes 

in the legislative body. 
27 

Do you have any words of wisdom or a view about how we might 

deal with this matter, which seems to be to me at the heart of our 

relationship right now that’s creating the problem? 

Ms. LEE. So, Congressman, are you talking about the $148 million that we lost in sequestration and the impact that it had on the 

agency, because, you know, as a result of the sequester, we had to 

cut a number of our critical IT projects, right? We were well underway, we were implementing those, and we had to make some very 

expensive and costly cuts to the investment in our IT program. In 

addition, we had to stop the hiring that was occurring and we had 

to stop the expansion of our satellite offices in certain cities. Fortunately, Detroit was already up and running, so Detroit was not affected, but we couldn’t hire more patent examiners. 

So when we talk about our goals of reducing backlog and pendency times, right, due to the sequester, we had to slow down our 

reductions on those fronts, and our timelines of achieving, for example, 10 months until a first office action, or a total pendency of 

20 months, got bumped out further because of the sequester. 

Mr. CONYERS. Absolutely. And we’re proud of our Detroit office, 

and we’re pleased that it was selected. I’d like to go out there and 

visit, but I’ve been informed that we don’t have a director of that 

office yet. And so I know you’re probably looking for it, so you can’t 

promise me that we’re going to get one right away. 

How can you be working with so many people in one location and 

there’s no director in about the second year almost of its existence? 

Ms. LEE. Right. So I’m happy to share with you the progress 

we’ve made in terms of the hiring of the director in the Detroit office. I’ll share with you what information I can, and that is we put 

up a job posting. And I have to say, there was incredible interest, 

and we’ve seen a number of very talented candidates who have 

submitted applications. So we’ve reviewed those applications and 

we’ve ranked them, and we are in the process of selecting a handful of candidates to come back to our office in the next couple of 

weeks for interviews, and we are very excited about the prospects 

there. 

That said, in the meantime, we’ve also been engaging in—you 

know, you’ve got the examiners on the ground there doing the work 

of the agency, and we have Patent Trial and Appeal Board judges 

there working on appeal cases, and we engage in a variety of outreach and education efforts, but with our director, we hope to do 

even more. 

Mr. CONYERS. Well, that is encouraging. I’m glad to hear that. 

Now, has it occurred to you that there may be a need for even 

further transparency in the patent system? 

Ms. LEE. What sort of transparency are you referring to? 

Mr. CONYERS. Well, that it’s clearly understood by those that are 

seeking patents that the way to get there is more easily accessible 

and determinable by them through a little bit more transparency. 

Don’t you think it’s a pretty complicated process, without it being 

anybody’s fault? It’s just the nature of the beast here. 

Ms. LEE. Right. So I—the USPTO has a number of efforts underway, and the satellite offices help us tremendously in terms of increasing the transparency of the patent system to our stakeholders. 

So everything from, you know, how do you file a patent, how do you 
28 

register your trademark, what issues might I consider in terms of 

trade secrets to protect my business, right, just the general training and education and background on intellectual property and intellectual property awareness, we’re using our satellite offices to, 

and our Alexandria office, to provide greater transparency there. 

Also, with our satellite offices and through Alexandria, we’re also 

looking to provide more transparency on our goals and our metrics 

and our programs and procedures. And we’re always seeking public 

input on them, such as the Patent Quality Initiative. 

Also, we are going to be engaging in outreach to our stakeholders 

on what they view as patent quality and what the agency can better do or do more of to increase the quality of patents. 

So, as far as transparency goes, we have metrics on our Web site. 

But I agree with you, Congressman. I mean, the more transparency 

on the work of the PTO, how you navigate the system and what 

we provide, I think the better for the innovation economy in our 

companies and our innovators. 

Mr. CONYERS. Ms. Lee, I thank you. 

And I thank the Chairman. 

Mr. COBLE. You’re indeed welcome. 

Mr. Farenthold, the gentleman from Texas. 

Mr. FARENTHOLD. Thank you very much, Mr. Chairman. 

Ms. Lee, I appreciate you coming to talk to us today. 

First and foremost, I want to put in a plug for the patent reform 

bill that Mr. Jeffries and I authored, along with the remainder of 

the House-passed Innovation Act. It sure would be nice if the Senate would pick that up. 

I want to go on to some recent problems that came out of an Inspector General’s report from the Department of Commerce recently talking about the Patent Trial and Appeal Board, or PTAB, 

and the Office of the Commissioner of Trademarks. Their findings 

demand immediate attention and hands-on corrective action, with 

PTAB fraud, waste and mismanagement resulting in, and I’m 

quoting from the IG report, ‘‘more than $5 million in wages and bonuses,’’ being paid to employees from 2009 to 2013 who were not 

actually doing any productive work. According to the IG, some of 

the 20—I’m sorry—30 to 50 paralegals involved spent more than 

half their time that way over multiple consecutive years. Despite 

PTAB managers being fully aware of this, it appears that little corrective action was taken until they noticed the Inspector General’s 

investigation last year. 

Worse still, the report details how PTAB paralegals, supervisory 

paralegals, specialists and senior management involved received 

more than three quarters of a million dollars in bonuses, and appallingly, 95 percent of the paralegals received the absolute highest 

performance rating. 

Now, we did have three whistleblowers out of this group of paralegals who reported this, so I think that’s outstanding that we have 

a Federal workforce saying, ‘‘Hey, we’re doing nothing, why are we 

getting paid for it?’’ But it did go on for a long time. 

And in the case of the trademark offices, we’ve seen violations of 

Federal law, regulations and ethical standards that go directly to 

the top of the organization, to the commissioner of trademarks herself. According to the review, Commissioner Cohen was personally, 
29 

repeatedly and substantially involved in hiring of an obviously unqualified and repeatedly rejected applicant, who just happened to 

be the live-in boyfriends of her daughter. 

In addition to the allegations involving Commissioner Cohen, the 

OIG reported that the hiring practices at the USPTO regularly involve the use of ‘‘preferences,’’ that are, if not illegal, are at the 

very least, they show some unreasonable favoritism. 

Regarding the PTAB IG report, I have several questions. And, 

Ms. Lee, have you met with the IG to discuss these reports? 

Ms. LEE. Yes, I have. 

Mr. FARENTHOLD. And what’s your view of the recommendations 

of the OIG? 

Ms. LEE. Yeah. Well, thank you, Congressman, for the opportunity to address these two very, very important issues. 

Let me just say that the USPTO takes the allegation and the 

work of the OIG very seriously and view it with utmost importance. And we are carefully reviewing the Patent Trial and Appeal 

Board matter, the report, which just came out yesterday, and we 

are reviewing it in terms of evaluating appropriate next steps. We 

will provide a full response within 60 days, as required, and will 

include in there details of our intended next steps with regards to 

each of the allegation—or the allegations and with regards to each 

of the recommendations made in the report. 

Let me just say, though, that much of what the OIG recommended in terms of management and organizational improvements is already underway or already completed at the USPTO, including the elimination of the paralegal timekeeping issue, which 

is at heart in the report. This is because as soon as the IG identified this issue in February of 2013, the USPTO conducted its own 

investigation and confirmed the problem. We further commissioned 

a second independent investigation by Grant Thornton, a thirdparty expert group, which recommended structural improvements 

to the PTAB program. 

And as I said, therefore, many of the recommendations in the IG 

report are already completed or are in the process of being completed. 

Mr. FARENTHOLD. All right. Well, the IG expressed some concerns that one of the reasons this was allowed to continue was fear 

of angering some of the unions. His recommendations specifically 

call for a review of the labor agreement to ensure that the PTAB 

can implement policies or even modify terms that is needed to prevent waste and abuse of government resources. 

If you generally are following up on the report, can this Committee assume that you will do everything you can to review these 

labor agreements and make sure that managers are held accountable? 

Ms. LEE. Absolutely. Absolutely. 

Mr. FARENTHOLD. All right. Well, listen, I appreciate this. Let’s 

talk about the commissioner. I’m out of time. We’ll talk about the 

commissioner of trademarks in my second round of questioning. 

Thank you. 

Ms. LEE. Okay. 

Mr. COBLE. I’ll give you 1 more minute, the gentleman from 

Texas. 
30 

Mr. FARENTHOLD. Thank you very much. 

When did you first become aware of the issue with the commissioner? 

Ms. LEE. I think our office first became aware of it about 3 weeks 

ago when the OIG met with us. 

Mr. FARENTHOLD. Do you agree that the Commissioner of Trademarks is an at-will employee? 

Ms. LEE. I believe she is. 

Mr. FARENTHOLD. Okay. Well, I understand you have until September 7th to comply with the requirement that you respond in 60 

days. Do you think you’ll be able to take any action with respect 

to Ms. Cohen before then? 

Ms. LEE. So we’ve already taken actions. I mean, basically, as 

soon as we received the IG’s report on this issue, we immediately 

conducted a review of the hiring for the position that was at issue 

in this case. We also created a task force, which is composed of 

high-level officials in the PTO as well as an independent outside 

third-party expert in this area to look at the USPTO’s hiring practices. 

I mean, the USPTO values impartial, fair, and transparent hiring processes, and we intend to reply fully to all of the allegations 

within 60 days, but we’re just evaluating the facts now. We received the report 3 weeks ago, and we will follow up and take the 

appropriate—— 

Mr. FARENTHOLD. My final request is you keep us apprised of 

both of these matters as they develop. 

Ms. LEE. Absolutely. 

Mr. COBLE. The gentleman’s time has expired. 

Ms. Chu, let’s try to get—we have a vote on, but the gentlelady 

from California, Ms. Chu. 

Ms. CHU. Thank you so much. First, congratulations, Director 

Lee, on your appointment as Deputy Director and Acting Director. 

I’m so glad to see such a well qualified person in this position. 

Ms. LEE. Thank you. 

Ms. CHU. Director Lee, in June, the Supreme Court issued its decision on Alice Corporation v. CLS Bank International. The court 

ruled that the patent claims in question in the case, which involved 

the claims to a computerized scheme for mitigating settlement risk, 

were ineligible to be patented. How does this decision impact the 

Patent Office and how are you responding to the case? 

Ms. LEE. Well, thank you for the question, Congresswoman Chu. 

It does affect the examination of cases before us, and as soon as 

the ruling came down, we are in a position at the PTO where we 

have to offer guidance to our examiners on how to examine cases, 

right, if the case law has implications on the examination process. 

So, within days of the ruling coming down, our Deputy Commissioner for Patent Examination Policy issued initial guidance on examination of these types of claims, and we have published that. It’s 

posted on our Web site, and we are seeking public input on our preliminary guidance. We welcome that input from everybody, and we 

look forward to receiving that input. We also receive input from our 

examination corps, and if there are further changes to the case law, 

we are always willing to and looking to improve our guidance and 
31 

eventually making it final until there are further changes in the 

case law development. 

So, then, after that, we will then train our examiners to ensure 

that they’re examining in compliance with the guidance, and for 

those cases that are still pending that have not yet been issued a 

final patent number, we think it’s incumbent upon us to take a 

look at those cases in light of the new developments in the case law 

to make sure that they are still in a position for allowance or if 

there needs to be further change. 

Ms. CHU. Thank you. Let me ask about another issue that I’m 

very concerned about, and that is patent assertion entities. Many 

times, they can be individual consumers or small- to mid-sized 

businesses, customers of public safety units in local governments, 

and of course, they receive demand letters alleging patent infringement. For Main Street businesses, it’s certainly difficult to figure 

out how to react to a demand letter, especially if they can’t afford 

a lawyer. I understand the PTO uploaded an online tool kit on its 

Web site to help these individuals and businesses. How has the tool 

kit helped level the playing field, and have you received feedback 

from those who have used it? 

Ms. LEE. Thank you very much for the question. We’re very 

pleased with our patent litigation online tool kit. Basically, you can 

go to the USPTO Web site, and if you look under patent litigation, 

there are a set of tools that are very useful to particularly unsophisticated small businesses who are on the receiving end of these 

demand letters. You know, what is a patent? Just because I get a 

demand letter, does that mean I need to write a check? Or what 

are my options if I decide that I do want to fight this? And on that 

Web site, they can pull up information about the litigation history 

of the patent. They can pull up information about who else that 

patent has been asserted against so that if they want to collaborate 

with other defendants in the defense of infringement with others, 

they can do so, and this is the kind of information that previously 

patent lawyers and litigating attorneys had access to, but if you 

were a small business and you’re just trying to make a quick assessment of what are your options, it’s really handy to have these 

tools, and we’ve provided that, working with a number of partners, 

for free to the stakeholder community, so we’re very excited about 

that. 

Ms. CHU. Well, I think it’s a great program. And finally, let me 

ask about the pro bono program of the America Invents Act. I am 

very interested in this because I was the sponsor of the amendment 

in Committee and also a member of the PTO’s Pro Bono Task 

Force. Many inventors, individual inventors may not have the resources to get legal assistance, and so this pro bono program is so 

important to them, and I was glad to see that a new charter was 

signed last fall and an advisory council was formed. When the 

charter was signed, it was anticipated that all 50 States would 

have a pro bono program by the end of 2015. How many States are 

currently covered, and is it expected that the pro bono program will 

cover all 50 States by 2015? 

Ms. LEE. Yes, thank you for the question, and I need to get you 

the precise statistics about the number of States that have pro 

bono programs in them. I think it’s a handful of States, but it in-
32 

cludes Minnesota, California, and a number of others, but let me 

get you the answer, and we’ll submit it on the record. Let me just 

say, though, that pursuant to an administrative action and a priority, it is our goal to offer the pro bono program in all 50 States, 

and we’re going to hire a pro bono coordinator, and we’re going to 

look forward to working with the members of the patent bar so 

that we can provide pro bono services to innovators regardless of 

their financial resources or those who are underresourced, I should 

say. 

Ms. CHU. Thank you. 

I yield back. 

Mr. COBLE. I thank the lady. 

The gentleman from Georgia, Mr. Collins, can we do it tersely? 

Mr. COLLINS. We can do it tersely, efficiently, and get it over 

with. 

Mr. CHABOT. Would the gentleman yield for a moment? 

Mr. COLLINS. For a moment. 

Mr. CHABOT. Thank you. I appreciate that. I would ask, Mr. 

Chairman, for the record, if I could submit some questions in writing relative to intellectual property rights in India? 

Mr. COBLE. Without objection. 

Thank you very much. 

Mr. COLLINS. Real quickly as we get ready for a vote series, I’m 

interested in the transitional program for covered business methods patents, and it’s a special review created by PTO that came 

through the AIA. The purpose of the program is to re-review already issued patents in the field of computer implemented inventions or software. The reason this program concerns me is it discriminates against one type of technology, computer-implemented 

inventions, over all others. I don’t think that we should really be 

treating one person’s property rights differently because they made 

their innovation using software rather than hardware. CBM proponents have touted the program as a tool for fighting patent 

trolls, however the latest statistics that we’ve been able to see show 

that the program has been overwhelmingly used against operating 

companies. Has the PTO performed any research on how the program is affecting operating companies? 

Ms. LEE. Operating versus nonoperating? 

Mr. COLLINS. Yes. 

Ms. LEE. That’s something that we can look into but we have not 

looked into. 

Mr. COLLINS. So you have not—we have not researched this? 

Ms. LEE. The petitioners come before us, they have their cases, 

we adjudicate their cases, and oftentimes it’s unclear whether they 

are operating or nonoperating. You have to do some investigations 

on that issue. 

Mr. COLLINS. But it is important to the program, and I think 

that is something that needs possibly to be looked at as we go forward. 

Ms. LEE. We can look into that. 

Mr. COLLINS. It is also my understanding that the PTO is pulling 

back patent applications that have already been allowed as a result 

of the Supreme Court’s recent decision in Alice v. CLS Bank which 

related to the question of whether software inventions are patent-
33 

able. While the Supreme Court has invalidated the patents at issue 

in the case, the decision reaffirmed what I’ve always believed, that 

software is just like any other technology, it deserves patent protection when it is the true invention. How widespread is the impact 

of the Supreme Court decision, and how many patent applications 

at the PTO will be impacted? 

Ms. LEE. So thank you for the question, and we’re not pulling 

back patents that have already issued. What we have in our pipeline is a number of cases that may or are affected by the changes 

in law by the Alice-CLS Bank case, and in that instance, before a 

patent number has been provided, it’s incumbent upon us before 

the patent leaves the office to apply the current law. So for cases 

that have not left our office, we are taking a look at them, we’ve 

reached out to our applicants and said we are taking a look at that 

in light—— 

Mr. COLLINS. About how many are those? 

Ms. LEE. I would have to get numbers, the precise numbers. 

Mr. COLLINS. Can you get those in writing back to us? 

Ms. LEE. Absolutely. 

Mr. COLLINS. Thank you. As you know, abusive patent litigation 

is also a concern here, and will the PTO’s actions as a result of 

Alice help ease abusive patent litigations? If so, how, and can you 

provide us with data on that or what you project it will be? 

Ms. LEE. So CLS Bank goes to the issue of patent eligibility and 

what is patentable subject matter. 

Mr. COLLINS. Right. 

Ms. LEE. And abusive patent litigation occurs and exists for a variety of reasons, including some litigation related or—but some of 

them also patent related. I would say that our initiatives to enhance the scrutiny of functional claiming and to our efforts to train 

examiners to put statements on the record so that if they’ve considered an issue, right, and there’s a reason for a certain action, that 

they make the statement on the record. I think those steps more 

closely target the issue of reducing and curtailing abusive patent 

litigation. Basically, the clearer the patent, the clearer the boundaries, the clearer the statements in the record, the less the opportunity for abuse. 

Mr. COLLINS. Okay. And I appreciate that, and I think the concern, you know, especially in my previous question of pulling back 

patents, and you said is really the—it might harm that could be 

if it was for legitimate and innovative patent applications, you 

know, look at it from the disadvantage if it’s on a global scale, and 

you assured me that’s not happening or won’t happen. 

Ms. LEE. We wouldn’t want to issue patents that are not in compliance with the current case law. 

Mr. COLLINS. Okay. That is good. I think myself and other colleagues are going to be visiting China. I appreciate the work that 

has been done there. We’re going there, in fact as early as this next 

week, looking at this from an IP perspective. It is something, as 

those who follow this Committee know, that is very close to my 

heart and something that I’ve worked on a great deal. 

And on that note, it is tragic that the United States Senate cannot figure out how to do their job in this area, and I would love 

to see them do that. I appreciate the work that you are doing, and 
34 

I’m sure you’ll be back before us on many occasions, and I do appreciate your testimony. 

Mr. Chairman, I yield back and give you 19 seconds. 

Mr. COBLE. Tersely done. 

Ms. Lee and ladies and gentlemen, we will return imminently. 

Ms. LEE. Thank you. 

[Recess.] 

Mr. COBLE. Mr. Jeffries is recognized for 5 minutes. 

Mr. JEFFRIES. Thank you, Mr. Chair, for yielding. 

And thank you, Director Lee, for your presence and for your service to the country. I wanted to speak for a moment about the 

USPTO’s law school pilot certification program. It’s my understanding that the program was initially jump started and piloted 

in 2008. Is that correct? 

Ms. LEE. I think that sounds about right. 

Mr. JEFFRIES. Okay. And can you just describe for us, you know, 

how the program works in its current form, what some of the benefits are, particularly as it relates to law students as well as clients 

as well as the innovation community. 

Ms. LEE. Yes, thank you very much for the question, Congressman, and I’m very excited to say that just this morning, we announced an expansion of our law school certification program. And 

to your question, let me explain what it is for those who may not 

be familiar with it. I mean, basically, what we do at the USPTO 

is we provide temporary registration numbers to law students so 

that they can prosecute patent applications on behalf of clients who 

otherwise could not afford to hire an attorney, and they are supervised by law school professors, so it’s really a win-win for both the 

students in terms of developing valuable, practical patent skills, 

and they may one day become patent examiners or patent prosecutors or patent litigators, and it’s also a benefit to our innovation 

community because they get the advantage of these pro bono services that complement our pro bono program, so we’re very excited 

to be expanding that program. We announced it today, and I believe that a law school in your district, the Brooklyn Law 

School—— 

Mr. JEFFRIES. Yes. 

Ms. LEE [continuing]. Has been added to the list I think as of 

today. 

Mr. JEFFRIES. No, that’s fantastic. Now, as you may know, Mr. 

Chabot and I have introduced legislation relative to this program 

that would sort of enable the removal of its pilot status and authorize further the expansion as you move forward and also ask for a 

report to the Congress moving forward just so that we can be informed about the good work that the program continues to do. 

Now, as you expand the program, potentially being able to offer 

it as you’ve done with the announcement today and moving forward to additional law students, to additional law schools, will 

there be an additional cost that will necessitate an additional appropriation, or am I correct in my understanding that you have the 

capacity, at least as of the present moment, to absorb the expansion internally? 

Ms. LEE. So thank you for the question. I’m sure my CFO will 

correct me if I’m wrong on this, but my understanding is that the 
35 

beauty of this program is that it doesn’t involve a lot of resources 

on behalf of the PTO. It’s the volunteer students. It’s the volunteer 

professors who agree to oversee those students, so I think we pretty much have, maybe with a plus or minus, the resources that we 

need to expand the program. If it gets to be so tremendously successful that we really have to keep, you know, every law school 

across the country, then perhaps we might have to revisit the issue 

in terms of we want to maintain the quality, but I think, at this 

point, given the rate at which we’re moving and the law schools 

that we carefully select for eligibility in the program, we’re able to 

manage it. 

Mr. JEFFRIES. Thank you very much. I want to switch topics for 

a moment. You have indicated in prior testimony as well as I think 

today in an exchange that you support the notion of patent litigation reform done in a balanced way and saluted the efforts that the 

Chairman and many of us on the Committee undertook last year 

to try and advance patent litigation forward. 

After that litigation or legislation moved out of the House, there 

were two Supreme Court decisions, I believe, earlier this year that 

were decided upon relative to the Section 285 provision. One I believe related to the standard of review; the other related to the actual substance of Section 285. Can you comment at all as to how 

you think that may change the landscape moving forward in terms 

of where our focus should be? 

Ms. LEE. So thank you very much for the question, Congressman. 

I think you’re referring to two cases in particular from the Supreme Court, the Octane Fitness case and the Highmark case 

handed down from the Supreme Court on the issue of fee shifting. 

And those cases increased the discretion that the district courts 

have to award fees to the prevailing party in a patent litigation dispute. That said, there’s still a requirement that it has to be an exceptional case, and I think there’s still room for legislative reform 

because I think companies could benefit from greater certainty 

about when fees would be shifted and when they would not, so, 

right now, with the current case law of exceptional, there’s going 

to be a lot of litigation, a lot of motions brought on these issues, 

but I think there’s room for legislative clarification on that issue. 

Mr. JEFFRIES. Thank you very much. 

I yield back. 

Mr. COBLE. I thank the gentleman. 

The distinguished gentleman from Pennsylvania, Mr. Marino, is 

recognized for 5 minutes. 

Mr. MARINO. Thank you, Chairman. 

Welcome, Director. It’s a pleasure to talk with you. I see by your 

credentials you have an extraordinary background and that you actually worked in private industry as counsel. 

I would like to talk with you and get your insight on the report 

from the Office of Inspector General concerning the overpay, if you 

would, please. Now, I know that you were not there during that 

time. You’ve been in your position for how long, your present position for how long? 

Ms. LEE. I was sworn in on January 13, 2014. So 7 months. 
36 

Mr. MARINO. Fourteen, okay. When you were sworn in or even 

before you were sworn in, were you brought up to speed on the report? 

Ms. LEE. I was informed of the report. It wasn’t a report yet because it had not issued, but the facts and circumstances surrounding the Patent Trial and Appeal Board paralegal matter because as I explained earlier today, I mean, the USPTO had itself 

been investigating that matter when it first came to our attention 

in 2013, so the office was well aware of that issue as early as 2013 

and undertook some efforts. 

Mr. MARINO. Can you tell me, is there, are there any plans to 

hold those responsible that collected the overpay, for the managers 

or the supervisors who knew that there was overpay and no work 

being done? Is there going to be any retribution, is someone going 

to be fired? 

Ms. LEE. So thank you for the question. It’s a good question, and 

what we’re doing is we are reviewing the details of that report, 

which we just got I think yesterday, and there’s some discussion 

of that in the OIG’s report, and we will evaluate all options, including the one you mention. 

Mr. MARINO. Okay. Because the report is very clear. I mean, you 

know from your work in private industry, how long would someone 

be employed in the company you worked for under those circumstances? 

Ms. LEE. I don’t have an answer for that, but I hear your point. 

Mr. MARINO. I do. They wouldn’t be employed very long at all, 

and we have a report from the OIG’s office that people knew that— 

in fact, they categorized their time sheet, for a matter of fact, into 

a completely different area. It was called ‘‘other time,’’ very general, other time. And people, through investigations, it was learned 

that they were watching television, surfing the Internet, used social media, such as Facebook, performed volunteer work for charity 

from home, washed laundry, exercised at home, read books, the 

news, and magazines, shopped online, cleaned dishes, et cetera. 

Now, this is theft from the hardworking taxpayer, and quite honestly, I’m getting tired of hearing about this. You’re not responsible 

for this, but it’s very frustrating for me because we constantly hear 

about this. 

And then what adds insult to injury is we hear that people like 

this are put on administrative leave with pay. Now, this is nauseating. This is frustrating, and the people in my district are fed up 

with it. So I am asking you that if the facts you find as the Office 

of Inspector General states them, and people were doing these 

things and lying on their time sheets, why would they not be fired? 

Ms. LEE. So I appreciate your concern, and as I said earlier, we 

do take these allegations—and I personally take these allegations 

very seriously. 

Mr. MARINO. Good. 

Ms. LEE. And we will get back to you on those issues. 

Mr. MARINO. I appreciate that, but even more so with the managers and the supervisors that oversaw this, I just—this is a perfect example of how large this government has grown, and the left 

hand doesn’t even know what the right hand is doing, and we’re 

hiring people who just believe that I don’t have any work to do, so 
37 

I’m going to collect pay. And we have supervisors and managers in 

charge of these people who are not reporting to you or other individuals that there is something drastically wrong with the system, 

but yet we’re paying people for doing—not just doing nothing and 

sitting at their desk—but staying at home and reading books and 

shopping online and doing laundry. This is just—it’s unbelievable 

what takes place anymore. 

The government needs to be downsized straight across the board 

by 50 percent, and then maybe we’ll get control on people that are 

cheating the taxpayer and not giving the taxpayer a hard day’s 

work. So I’m asking you once more, you’re giving me your commitment that if these allegations are true and these facts are accurate, 

that these people will be fired? 

Ms. LEE. We’ll take appropriate action. 

Mr. MARINO. What’s ‘‘appropriate action’’? 

Ms. LEE. We’ll have to look at the facts, we’ll have to consider—— 

Mr. MARINO. So do you think the Office of Inspector General is 

making these things up? 

Ms. LEE. No. 

Mr. MARINO. Do you think the whistleblowers that came forward 

are making these things up? Because what I’m getting from you 

now is they probably will not be fired. This is a real easy, simple 

question. 

I was in industry and worked in a factory for 13 years and 

worked my way up to management, and if anything like this happened in private industry, these people not only would be prosecuted—fired, but they would be prosecuted as well. 

Ms. LEE. I will say, Congressman, that as I mentioned earlier, 

our Patent Trial and Appeal Board proceedings are exceedingly 

busy now, so I understand—— 

Mr. MARINO. There’s no question that you have been. 

Ms. LEE. And so they are now fully—— 

Mr. MARINO. You folks are doing a great job. 

Ms. LEE. They are now fully engaged. 

Mr. MARINO. You are doing a great job as director, but there is 

no excuse for this. Please do not use the excuse that you’re very 

busy, because apparently, there was a bunch of people who collected over $5 million that weren’t very busy. 

Ms. LEE. I understand. 

Mr. MARINO. Thank you. 

I yield back. 

Mr. COBLE. I thank the gentleman. 

The gentlelady from Washington is recognized for 5 minutes. 

Ms. DELBENE. Thank you, Mr. Chair. 

Thank you, Director Lee, for being here today. I know that Representative Chu spoke earlier about the Supreme Court’s decision 

in the Alice v. CLS Bank case, which addressed the scope of patent 

eligibility for software-related inventions, and I was pleased to 

learn that the PTO was able to issue preliminary guidance very 

quickly to patent examiners on how to interpret that Supreme 

Court decision, and you mentioned that the PTO is now accepting 

comments on the guidance as it helps draft more detailed guidelines, and thank you for doing that. I appreciate it. But I do think 
38 

it’s very important that patent examiners are consistently applying 

the new case law, and—because it’s complicated, and while the 

feedback I’ve heard on this initial guidance has been that it’s clear 

and thoughtful, I’ve also unfortunately heard that, despite this 

guidance, a good number of examiners are rejecting some software 

patent applications based on a possible misinterpretation of the 

Alice case, so I’m concerned about this and am hopeful that we 

aren’t in a situation where true inventions are being denied patents based on a misinterpretation of the law, and I’m also worried 

that this could lead to an increased number of appeals to the PTO, 

and you’ll see an increased number, and it can become a widespread problem if this is allowed to continue. So I wondered if you 

could explain what types of quality control the PTO is putting in 

place and implementing to make sure that there’s consistency in 

how the patent applications are being treated in light of the decision. 

Ms. LEE. Yes, thank you very much for your question, Congresswoman. 

We absolutely strive to have consistency in our examination that 

complies with our guidance and the case law, and if there are instances where an applicant thinks that an examiner is not applying 

the case law properly, they can’t come to an agreement, they can’t 

see eye to eye on an issue, we have a patent ombudsman program 

where the applicant can, without ruffling the feathers of an examiner, without sort of jeopardizing that kind of relationship, can escalate it to a patent ombudsman person so we have another person 

looking at the issues to see what the issue is, to see if the case has 

been, the rules are being appropriately applied, so I would just 

refer you to that. But we have a lot of initiatives in the agency to 

ensure consistency. When we issue the final guidance on the Alice 

case, we will train all of our examiners. We’ve already trained the 

supervisory patent examiners. We’ve already given guidance to our 

examiners. We already have our technical directors instructed on 

the preliminary guidance, but once the guidance becomes final, we 

will provide the appropriate level of training to everybody across 

the board in much greater detail, and that information will be posted on the Web site, so the public can see what our examiners have 

been directed to examine toward or to follow. 

Ms. DELBENE. Do you have a sense of when final guidance might 

be coming out? 

Ms. LEE. We’re targeting September and October, but we—I 

think the deadline for receipt of comments is July 31st. We want 

to be careful in terms of evaluating and reading and reviewing all 

the comments, and we understand that we want to issue it promptly, but we also want to be accurate about our guidance. 

Ms. DELBENE. So what types of things do you use to measure 

whether or not you have consistency out there? So you’ll train the 

examiners on the guidance? 

Ms. LEE. Yes. 

Ms. DELBENE. And how do you know it’s being applied consistently, what checks and balances? 

Ms. LEE. We have a quality assurance team that selects applications at random or per technology area to test it for accuracy and 

prosecution, and where there is, you know, evidence that it’s not 
39 

being applied properly, we will definitely go back and that input 

will be fed back into both our examiner training as well as our examination processes, what can we do to improve the process so that 

examiners are able to examine more accurately. 

Ms. DELBENE. And if it is true that you see an increased number 

of appeals, do you then have a mechanism to try to figure out why 

you’re seeing more appeals and understand? 

Ms. LEE. That would certainly be a factor that we would look to. 

Ms. DELBENE. Uh-huh. So you check all of that kind of consistently across—— 

Ms. LEE. I don’t—we should, and I’ll have to check with you to 

see if we currently do, but I wouldn’t be surprised if we do. 

Ms. DELBENE. Okay. 

Ms. LEE. So let me get back to you on that. 

Ms. DELBENE. Okay, thank you. 

Thank you, Mr. Chair, I yield back. 

Mr. COBLE. I thank the gentlelady. 

The gentleman from Missouri, Mr. Smith. 

Mr. SMITH OF MISSOURI. Thank you, Mr. Chairman. 

Mr. Chairman, thank you for holding a hearing on this important 

subject. Also I want to reiterate what a lot of my colleagues have 

said about how unfortunate it has been that the Senate has refused 

to take up and work with and pass the bipartisan patent reform 

bill that we’ve worked on in this Committee for quite some time. 

I hope that maybe they’ll figure out how the legislative process 

works and decide to govern for the people of the United States. 

So my question, Ms. Lee, thank you for being here, first off, and 

talking to us. I’m sure we’ve all heard that Amazon’s application 

for .amazon’s top level domain was rejected by the board of directors at ICANN. They’re a California nonprofit which is supposed to 

operate by contract with the U.S. Government for the public at 

large. And my question is, absent a separate negotiated treaty or 

other national law, does the USPTO believe that a foreign country 

can claim a sovereign right to a term and prevent use of a mark 

that the U.S. and other countries have otherwise granted trademark rights in? 

Ms. LEE. So could you repeat the question one more time? 

Mr. SMITH OF MISSOURI. Okay. Does the USPTO believe that a 

foreign country can claim a sovereign right to a term and prevent 

use of a mark that the U.S. and other countries have otherwise 

granted trademark rights in? 

Ms. LEE. You know, I think I need to get back to you on the 

record, and I will do so. I appreciate the question, but I want to 

make sure that we understand it, and we get to you an accurate 

answer, so let me get back to you. 

Mr. SMITH OF MISSOURI. I appreciate that. Thank you. 

Ms. LEE. Thanks for the question. 

Mr. SMITH OF MISSOURI. One other question. What are the three 

key problems that American companies face in China and India regarding patent and trade secret protection? 

Ms. LEE. So our companies work hard. I mean, when they export 

their products and services overseas, there’s always a risk and a 

vulnerability in terms of misappropriation of their trade secrets or 

infringement of their patents or copyrights. I mean, it can be in 
40 

China; it can be in other countries. We are working very, very hard 

with our companies that do business in China to increase or improve the environment in which they’re operating. We give trade 

secret training to government officials in China to create an environment that is more favorable for our companies, we work with 

the leaders there, we bring them to the United States to receive 

training at our Global IP Academy so that they share the same values that we do with regard to trade secrets, patents, and copyrights. And we have a STOPfakes program, which goal is to curtail 

piracy and counterfeiting of U.S. intellectual property matters, so 

we have a number of initiatives underway, and we are constantly 

striving to improve the environment. 

Mr. SMITH OF MISSOURI. Do you think that China and India are 

in compliance with the international obligations under the TRIPS 

agreement? 

Ms. LEE. So are you referring to—which aspect of the TRIPS 

agreement are you referring to? 

Mr. SMITH OF MISSOURI. In regards to the patent and trade secret protections. 

Ms. LEE. So there’s a lot of patent and trade secret provisions 

even under the TRIPS agreement, but—— 

Mr. SMITH OF MISSOURI. Do you think that they’re noncompliant 

in any provision within the TRIPS agreement? 

Ms. LEE. I know there’s been some discussion in the area of compulsory licenses in connection with India, and there have been certain circumstances where perhaps that may have been triggered or 

applied or granted where some might argue was not in compliance, 

and that’s an issue of concern to us. I mean, critically, it is important that innovators have the incentive to innovate, and if compulsory licenses are granted in circumstances that are beyond the requirements of our TRIPS agreement, that’s an issue of concern for 

us, and that’s what we work with, with our IP attache ́s, that’s 

what we work with in our conversations in our trade negotiations 

with our partners, with officials in the Indian Patent Office. We are 

focused on that issue to make sure that a compulsory license is 

granted where it should be and not granted where it shouldn’t be 

and therefore jeopardizing of innovation and investment in innovation. 

Mr. SMITH OF MISSOURI. Thank you, Mr. Chairman. I yield back. 

Mr. COBLE. I thank the gentleman. 

The gentleman is recognized for 5 minutes. 

Mr. MARINO. Thank you, Chairman. 

Director, do you have enough personnel to examine newly submitted patent applications and compare those to already established patents to avoid future litigation? Do you understand my 

question? 

Ms. LEE. Do we have enough personnel? 

Mr. MARINO. To review patents that are newly submitted to see 

if those patents already exist or if there is any conflict between the 

two? 

Ms. LEE. Oh. So that is what we normally do. When an application comes in, it’s the job of the patent examiner to search what 

we call the relevant prior art, so they look at databases of patents 

that have previously been issued, they search the literature. 
41 

Mr. MARINO. I understand the process. What I’m asking you is 

do you have enough personnel to adequately do those examinations? 

Ms. LEE. So we’re looking to expand the examiner force. We are 

using—we’re targeting a hire of a thousand examiners in 2014. In 

2015, we’re targeting roughly 750. We have to see. 

Mr. MARINO. Good. 

Ms. LEE. And also we’re using our satellite offices to tap into for 

the first time previously untapped talent pools, so we’re very excited about that, and we’re looking to expand the production capacity of the USPTO. 

Mr. MARINO. I’m glad to hear that. Do you think that hiring 

these experts, these additional experts would curtail, I know it’s 

not going to eliminate, but would curtail frivolous litigation, particularly when we’re talking about patent trolls? 

Ms. LEE. I think hiring additional examiners so that we have the 

capacity to examine the patent applications will ensure that patents issue more quickly, and for our businesses, right, who create 

innovations and inventions, it’s important that they be able to have 

the protection that they need to enter the marketplace. So the patents need to be examined properly, and I think the addition of the 

examiners will help us reduce our backlog and pendency. So really 

it’s pro-business. 

Mr. MARINO. Is there anywhere else in the office that you’re 

short of personnel? 

Ms. LEE. We are hiring on the Patent Trial and Appeal Board 

front for administrative patent judges. I mentioned earlier in the 

first session that we’ve experienced record number of petitions, and 

there seems to be a tremendous appetite for the services offered by 

the Patent Trial and Appeal Board, and again, we’re recruiting nationwide, including through our satellite offices, and we’re getting 

some outstanding candidates. 

Mr. MARINO. Is that the bottleneck at this point? Is that where 

things are jamming and then perhaps people are waiting to do 

something? 

Ms. LEE. So I wouldn’t say that things are jamming. I mean, 

we’re still issuing our final opinions in these Patent Trial and Appeal Board trials within the 1-year statutory time frame. We can 

outdo ourselves and perhaps lower, get it out even more quickly, 

but I think we’re well within statute, and our goal is to keep it that 

way. 

Mr. MARINO. Well, I know it takes some time to hire a thousand 

people, but I hope you do that as expeditiously as possible. 

Ms. LEE. We will, thank you. 

Mr. MARINO. Thank you. 

I yield back. 

Mr. COBLE. We’re about to wind down, Director Lee. Thank you 

for being here. Let me put a final question to you. As Federal agencies have faced budgetary issues, departments have looked to creative ways to stretch their budgetary dollars. Does the PTO fund 

any trade missions or trips for the Secretary of Commerce or other 

officials at the Commerce Department or other agencies? 

Ms. LEE. Thank you for your question, Mr. Chairman. I’m not 

aware of the PTO funding individuals from the Department of 
42 

Commerce on trade missions. I believe the funding comes from 

elsewhere, but if my statement is incorrect, we will correct it, but 

I’m not aware of our funding of Department of Commerce officials. 

Mr. COBLE. And I appreciate that. Let me give you a more detailed question. Do you have a requirement that the PTO will only 

fund trips that are IP focused and would PTO staff be the primary 

points of contact or does another agency with less expertise, such 

as the ITA, take the lead on the Secretary’s IP-focused trade visits 

or participation in bilateral forums, such as the U.S.-India strategic 

dialogue currently taking place in New Delhi? If so, does it not 

make sense for the IP experts at PTO to take the lead on such 

trade missions, especially if PTO resources are being used? 

Ms. LEE. So we fund matters that are in line with our mission, 

and I’m not sure I understand your question, but is the question, 

are we funding travel of ITA members who are advising the Administration on intellectual property issues? 

Mr. COBLE. ITA as an example; ITA, yes. 

Ms. LEE. So do we fund travel of other individuals outside of 

PTO on PTO—on IP-related matters, is that your question? 

Mr. COBLE. Yeah. 

Ms. LEE. Let me get back to you on that. 

Mr. COBLE. That will be fine. In the same vein, I think that we 

need to make sure that the IP attache ́s in our embassies have sufficient authority in terms of diplomatic rights and access to resources. What has the Commerce Department done to elevate the 

position of the IP attache ́s in our embassies? 

Ms. LEE. So thank you for the question. Our IP attache ́s are a 

tremendous resource for American companies and the innovation 

community. I will say that this is an issue that we’ve been working 

with through the Department of Commerce and others is that the 

rank of our IP attache ́s could be at a higher level. If you think 

about it, right, these IP attache ́s are, you know, on the ground in 

the foreign countries; they’re working with the IP leaders in the 

host country discussing very important issues, like compulsory licensing and, you know, trade secret policy and so forth. And in foreign countries perhaps even more so than the United States, your 

rank has a lot to do with the access that you have to appropriate 

people who can effect change, so that is one issue that we are looking at to increase the effectiveness of our IP attache ́s. They’re already doing a great job, but if you look at ways to further improve, 

that’s one way. 

Mr. COBLE. Well, Director Lee, thank you, and thank you in the 

audience for your patience. We apologize again for the delayed 

hearing, but it’s been very worthwhile, and this concludes today’s 

hearing. Thanks to all for attending. 

Without objection, all Members will have 5 legislative days to 

submit additional written questions for the witnesses or additional 

materials for the record. The hearing stands adjourned. 

Ms. LEE. Thank you. 

[Whereupon, at 5:11 p.m., the Subcommittee was adjourned.] 
(43) 

A P P E N D I X 

MATERIAL SUBMITTED FOR THE HEARING RECORD
44 
45 
46 
47 
48 
49 
50 
51 
52 

Æ