Late in the afternoon on Wednesday, June 7th, it was announced that U.S. Secretary of Commerce Wilbur Ross had selected Joseph Matal, formerly U.S. Patent and Trademark Associate Solicitor, to serve as the interim director of the USPTO.
Although we have characterized Matal as “Acting Director,” the announcement does not specifically identify Matal by that title, instead noting that he will perform the functions and have the responsibilities of the Director during the nomination and confirmation process for the next Director. Perhaps a linguistic nuance, but then again there is always the possibility that the nuance is purposeful. If Matal were to be Acting Director of the USPTO he could not be nominated to serve as Director and continue to serve in an “acting” capacity. See NLRB v. SW General, Inc. Perhaps this is much ado about nothing. Increasingly the DC rumor mill seems to believe the lead candidate for the nomination is Andrei Iancu, the Managing Partner of Irell & Manella LLP.
But who is Joe Matal? Inside the beltway Matal is a well known entity, having served as a Staffer in the Senate and responsible for ushering the America Invents Act (AIA) through the Senate. Matal is no doubt less well known by the broader patent community in the trenches.
While Matal’s intimate involvement with the passage of the AIA will no doubt be upsetting to many stakeholders who are rightfully unhappy with the evolution of the Patent Trial and Appeal Board (PTAB), it is difficult to predict how Matal views the PTAB given his Washington experience has to date been in support positions. Further, in all likelihood Matal has been placed in position as a trusted Republican loyalist at a time when there were increasing questions about the wisdom of maintaining Lee, an Obama holdover, in the position of Director. Still further, if the rumor mill is accurate it would seem that Secretary Ross is close to making a recommendation to the President on the next Director, so it would seem unlikely that Matal would be in the top decision-making role at the USPTO for more than several months, which is hardly time to engage in anything particularly substantive.
Notwithstanding, Matal being plucked from the Solicitor’s Office and put in place over Commissioner for Patents Drew Hirshfeld and the many other senior level managers seems significant. While Matal himself may not be in the running for the post of Director, he could very easily wind up as the next Deputy Director of the USPTO. And while this move may strike many as odd, recall that at the beginning of the Obama Administration a similar move was made when then Secretary of Commerce Gary Locke brought former Patent Commissioner and Acting Director Nick Godici back to the Office on an interim basis, also during a similar period while the nomination and confirmation process unfolded. So a move to put a trusted alley in position is certainly not unprecedented.
Finally, we are hearing some say that Matal has no patent experience, which is simply not true. While we have not always agreed with Matal (particularly during the AIA debates) there is no doubt that he does have sufficient patent experience for the position, although not patent prosecution experience. Matal is likable, knowledgeable, and has been a key assistant to several powerful Republican Senators. While the track record of Staffers coming to run the USPTO many not be great in the opinion of many patent practitioners, Matal taking over the Office in the interim should be well received by politicos who have wanted loyalists to be put in positions of authority at agencies.
We are cautiously optimistic this is a step in the right direction, while at the same time cognizant of the legitimate fears of those who would have preferred someone more obviously likely to view the PTAB with the healthy skepticism that is so rightfully deserved.
The Ross announcement notes Matal’s experiencing in briefing and arguing appeals of patent and trademark cases at the Federal Circuit, as well as his prior roles as counsel for former Sens. Jeff Sessions and Jon Kyl.
Matal’s LinkedIn profile notes that he had served as USPTO associate solicitor since August 2012, although he was recently detailed to senior staff to be Chief of Staff to Michelle Lee for several months before returning to the Solicitor’s Office.
Between January 2011 and August 2012, Matal served as Kyl’s counsel on the U.S. Senate Committee on the Judiciary, helping to co-manage Senate floor consideration of the America Invents Act (AIA), negotiate bill compromises with the House of Representatives, explain bill provisions to Senators along with House and Senate staff as well as draft provisions of the bill. After the AIA passed Matal wrote a comprehensive guide detailing the legislative history of the AIA, which is largely regarded by those in the industry as the authoritative treatment of the AIA from the first hand perspective of a key Staffer.
The articles discuss the AIA’s revisions to Section 102 and Section 103 of U.S. patent code, the creation of derivation proceedings, changes to the inventor’s oath, the authorization of third parties to submit prior art, bans on tax-strategy and human cloning patents, provisions concern post-grant review proceedings, inter partes proceedings, supplemental examination, section 18 business-method-review program, the new defense of prior commercial use, partial repeal of the best-mode requirement and deadlines for seeking a patent term extension.
Between May 2009 and January 2011, Matal served as counsel to Sessions, then ranking member on the Senate judiciary committee. During that time, he also negotiated and drafted provisions of the bill, which would become the AIA. As well, his resume notes that he was a member of the senior leadership team for the Senate judiciary committee’s Republican membership, supervised lawyers and provided advice on legal, policy, legislative and political matters. Before that, from April 2002 through May 2009, Matal served his first stint as Kyl’s counsel with the Senate judiciary committee. During this time, Matal drafted and managed enactment of legislation on patents, copyrights and trademarks along with the False Claims Act, Federal Indian law, First Amendment issues, bankruptcy, whistleblowers, class-actions, Federal-question jurisdiction, criminal and national security matters.
Matal’s experience with Senate judiciary matters extends all the way back to March 2000 when Matal began a two year-stint as policy director for former Sen. Peter Fitzgerald. Matal advised Fitzgerald on Judiciary and Commerce committee matters, including Fitzgerald’s questioning of Enron witnesses as well as drafting materials regarding telecommunications, trade and defense matters.
Prior to working for Sen. Fitzgerald, Matal was an associate attorney at Gibson, Dunn & Crutcher LLP where he served as a member of the appellate and constitutional law practice group. While at Gibson Dunn, Matal also drafted U.S. Supreme Court certiorari petitions in at least one First Amendment case and worked on briefs in FOIA, FIRREA, CIRCLA and IGRA cases. Matal also served as a law clerk for the U.S. Court of Appeals for the Ninth Circuit (Sept. 1997 to Sept. 1998) and at the Alaska Supreme Court (Sept. 1996 to Sept. 1997).
Matal completed his undergraduate studies at Stanford University in 1993, graduating with a bachelor’s degree in public policy and English. While at Stanford, Matal participated in both the Stanford Debate Society and the Stanford Review. He obtained his J.D. doctor of law degree in 1996 from the University of California Berkeley School of Law, where he was also a member of the Order of the Coif national honors society and served as an articles editor for California Law Review.
Join the Discussion
35 comments so far.
Tesia ThomasJune 20, 2017 01:28 am
Innocent until proven guilty. 🙂
I’m not going to go back and forth with you anymore.
But, I hope that you find peace someday whether that means Chase loses his trademark or you move on.
I wish you well.
Scott SmithJune 20, 2017 12:41 am
So wait, you’re not disputing that you’re defending a convicted bank robber who got federal trademarks by using a fake name to hide his criminal past, by using your own fake name(s)? That’s priceless!!
Tesia ThomasJune 19, 2017 11:39 pm
Everyone is innocent until proven guilty in America. Or, at least that’s how it should be.
Your opinion, my opinion, etc doesn’t matter.
You have to challenge the case and have your claims investigated.
But, in my situation, the whole govt is corrupt so I contacted corrupt OIG and didn’t bother with a qui tam but instead posted on my blog.
So far, OIG hasn’t done sh*t. But, I’m still working on my company.
Move on. Dwelling on this negative isn’t going to help you.
Scott SmithJune 19, 2017 07:59 pm
@Tesia Thomas, @Anon
Are those your real names, fake names, aliases, pseudonyms or sobriquets?
Why do you have to hide your true identify when trying to defend Entrepreneur magazine, just like serial con artist “Chase Revel” had to do?
AnonJune 13, 2017 12:08 pm
First, you have parsed my question and the part you leave out answers your parsed question.
Second, your attempt to spin this as some type of “my opinion” is not correct. I have not given you my opinion, and instead have sought to provide you with controlling notions of law and noted that YOU are employing opinion without those notions of law.
Third, your last comment in 25 adds material “facts” not present in your earlier comments. If indeed the false representation of submitting samples to establish a use date is a fact, such a fact would be the very type of item that I indicated in my post at 17 (otherwise not entitled…).
Tesia @ 26, AND @ 28,
Scott @ 27, You err in thinking that someone wanting to defend me is even necessary in our dialogue. You thus continue to exhibit signs that you are merely acting out of emotion without an understanding of the pertinent law. My replies here have been of the nature that I am trying to provide that legal understanding. You DO appear to be getting mad at me for doing this providing.
As to why anyone would defend anyone else, there are plenty of points that I could provide to you as to why (including some bedrock provisions of innocent until proven guilty and the like).
You act as if ONLY the name change is material enough. As I provided to you (at posts 17 and 18), this is just not so.
You need more to sustain your anger (in the sense that sustaining would be “properly” reflecting the controlling laws).
I just have not seen it (perhaps outside the glimmer of the fraudulently dated samples that you added at post 25). Your posts at 27 and 29 appear to draw parallels to other situations that do not control the situation that upsets you so.
Tesia ThomasJune 13, 2017 01:21 am
An alias is a pseudonym and is a fake name. Whether or not it is illegal is up to the law.
Why don’t you challenge the trademark?
Scott SmithJune 13, 2017 01:12 am
Again, why do you want to help a “trademark bully” such as Entrepreneur magazine that gets its trademarks by submitting knowingly false and fraudulent information to the USPTO?
Is Tesia Thomas even your real name?
Chase Revel, Entrepreneur magazine’s convicted bank robber founder, did not use a “pseudonym” to mislead the USPTO. That’s the kind of fantasy Entrepreneur magazine’s unethical attorneys would dream up. Chase used one of his at least eight aliases that he came up with to deceive people about his extensive criminal history, etc.
Try using a made up name if you ever get pulled over by a police officer, or using a made up name to get a drivers license. I’m sure the judge will let you off easy after you explain you were just using a “pseudonym.”
Tesia ThomasJune 13, 2017 12:40 am
Using a pseudonym is not the same thing as using a false name/name fraud.
It depends on the specific law.
And, as I mentioned, one can get a copyright for sure with a pseudonym.
Do you think a copyright owner who files the copyright under a pseudonym is making false statements under the code law?
Scott SmithJune 13, 2017 12:30 am
Why would you want to help defend Anon, or an infamous “trademark bully” such as Entrepreneur magazine that gets trademarks by submitting knowingly false and fraudulent information to the USPTO?
And this isn’t just “some thing.” We’re talking about lying to the USPTO, a federal agency. So this is both “unethical” and “criminal”:
“Making false statements (18 U.S.C. § 1001) is the common name for the United States federal crime laid out in Section 1001 of Title 18 of the United States Code, which generally prohibits knowingly and willfully making false or fraudulent statements, or concealing information, in ‘any matter within the jurisdiction’ of the federal government of the United States, even by mere denial. A number of notable people have been convicted under the section, including Martha Stewart, Rod Blagojevich, Scooter Libby, Bernard Madoff, and Jeffrey Skilling.”
Tesia ThomasJune 12, 2017 07:23 pm
In Anon’s defense, some things are unethical but not illegal.
If what you say is true, then try to invalidate the trademark on that basis as Anon mentioned in #15.
But, I thought only patents needed to be filed by the “true inventor.”
Copyrights can even be obtained under pen name and one can even trademark a pen name.
It appears that trademarks are the middle ground between the stiff patent laws regarding use of pseudonyms and the relaxed copyright laws regarding pseudonyms.
Scott SmithJune 12, 2017 04:57 pm
Why would I be “mad” at you? You’re obviously entitled to your opinion. But defrauding the USPTO and lying on federal trademark applications is a big deal to reasonable jurists and judges.
Besides, if you’re truly curious about this issue, contact Entrepreneur magazine’s management and/or attorneys and ask them why they’re unable to publicly deny submitting knowingly false information to the USPTO (for decades), including even submitting false specimens to show fake current use.
AnonJune 12, 2017 03:59 pm
I meant what I said. Please try to understand why I posted the statements in 17 and why you need more.
You are just not at a point where your feelings are in sync with the law. You need more, and this has absolutely nothing to do with any sense of what you are trying to imply.
You want to use the words “defraud” and “fraud,” and you just have not established that your use is actually proper.
Don’t get mad at me and try to accuse me of improper motives merely because I am pointing out that your view is (so far) insufficient.
You only impugn yourself doing that.
Scott SmithJune 12, 2017 01:53 pm
I think what you meant to say is that defrauding the USPTO and lying on federal trademark applications is not a big deal to you.
AnonJune 12, 2017 07:15 am
You have not shown the highlighted item of post 17.
You appear to be hung up on the name thing. That just does not rise in heat to the point of ignition. You may have other things, but I have not seen them.
Tesia ThomasJune 12, 2017 01:33 am
@10 Eric Berend:
Don’t think Thiel cares much for Stanford or education in general.
Also think he is more pro-patent than not: pando.com/2013/05/02/andreessen-and-thiel-debate-whether-were-still-innovating/
Through Breakout Labs, he invests heavily in biotech startups which have nearly zero legal defensibility with AIA.
Also, Paypal and Palantir attained software IP.
Scott SmithJune 11, 2017 06:30 pm
@Anon, thanks for your questions. While re-looking at Entrepreneur magazine’s decades of defrauding the USPTO, I stumbled upon what could end up being the most powerful evidence so far!
Scott SmithJune 11, 2017 05:57 pm
@Anon, while you may not believe that lying on a federal trademark application is fraud on the USPTO, a jury or judge will certainly agree that it is. Especially after seeing Chase Revel’s declaration:
“CHASE REVEL states that…all statements made herein of his own knowledge are true and that all statements made on information and belief are believed to be true; and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under section 1001 of Title 18 of the United States code and that such willful false statements may jeopardize the validity of the application or document or any registration resulting therefrom.”
AnonJune 11, 2017 10:00 am
The best that I could find is this:
No mention whatsoever of any law related to trademarks…
As I mentioned, you may have some fire here – I am just not seeing it. Instead, I am seeing emotion, and while your feelings are real for you (and I am not putting you down for having such feelings), they just do not carry much weight in a legal discussion.
AnonJune 11, 2017 08:40 am
“specific false, material representation of fact in connection with an application to register, with the intent of obtaining a registration to which it is otherwise not entitled”
otherwise not entitled…
You have not shown that part yet. I “get” the part in your argument about using a fake name, but that is not enough.
Is there something in the Lanham Act that states that corporations being run by convicted felons may not have registered trademarks?
Scott SmithJune 10, 2017 09:29 pm
@Anon, this shows why it’s fraud for a convicted felon to use a false name to misrepresent to the USPTO who they really are in order to get a federal trademark: “Fraud in procuring a trademark registration occurs when an applicant for registration knowingly makes a specific false, material representation of fact in connection with an application to register, with the intent of obtaining a registration to which it is otherwise not entitled.” See In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1939 (Fed. Cir. 2009); Qualcomm Inc. v. FLO Corp., 93 USPQ2d 1768, 1770 (TTAB 2010). It’s like a convicted felon getting a home loan by using a fake name on his mortgage application, a convicted felon using a fake name to get a drivers license, or a convicted felon using a fake name to get a job as a school teacher, etc.
AnonJune 10, 2017 08:46 pm
You keep on saying “fraud,” but I have to wonder if that merely reflects your feelings or if it reflects a legal understanding.
As to the word itself, I also wonder if anyone has bothered challenging the trademark that is being enforced (and I certainly hope that you are not merely upset that someone is enforcing a mark).
Scott SmithJune 10, 2017 07:37 pm
@Anon, the “fire” as you call it, is what I pointed out. That the USPTO refuses to do anything about trademark bullies, or fraudulently granted (or renewed) trademarks. And as you pointed out, Entrepreneur magazine was granted their fraudulently acquired trademark THIRTY years ago, and yet they’re still getting away with using it to unfairly attack small businesses who cannot afford to fight back. On top of that, the USPTO refuses to stop granting Entrepreneur magazine’s newer fraudulently applied for and renewed trademarks. I guess the larger issue might be how the USPTO grants federal trademarks to pretty much every word in the dictionary. If you doubt that, then search the USPTO’s online database using any common and generic word you can think of and see if you can find any that the USPTO hasn’t already allowed to be federally trademarked (and by several different companies and organizations). For example, the USPTO has granted several trademarks that include the word “Anon.” But hopefully none of them are trademark bullies who want to attack you over your use of the word “Anon.”
AnonJune 10, 2017 07:08 pm
That is closer to “fire,” Scott, and definitely something concrete with which to discuss.
When did Revel exit the scene from the magazine (and any associated bullying)?
Near as I can tell that was 1987.
Yes, that was thirty years ago.
Are those embers still smoldering?
Scott SmithJune 10, 2017 03:23 pm
@Anon. I’m not sure how you define “on fire,” but the USPTO’s policies and practices support and encourage the biz killing problem of “trademark bullies.” The USPTO doesn’t even have people prosecuted for fraudulently getting (or maintaining) trademarks. Chase Revel, the founder Entrepreneur magazine, was a convicted felon and serial con artist, but the USPTO still allowed him to get Entrepreneur mag’s “Entrepreneur” trademark using one of his at least eight(!) fake names he used to hide his criminal past. The USPTO refuses to do anything about it, and keeps granting Entrepreneur mag more and more trademarks. This of course encourages Entrepreneur magazine to bully and ruin even more small businesses. For more info do internet search for: entrepreneur magazine trademark bully.
Night WriterJune 10, 2017 12:57 pm
@10 Eric. Yes and Lemley has spread his seed throughout academia. He has helped many people get jobs as professors where he selects the anti-patent judicial activists.
Eric BerendJune 10, 2017 10:25 am
One further note: Mr. Matal is yet another product of the patent-destroyer factory known as Stanford University.
Hasn’t anyone here, noticed that?
What do the following persons, have in common?
Peter Thiel: chief ringleader of the gold-plated SiliCON Valley IP pirates cabal.
Michelle Lee: useful water carrier, anti-patent large corporations’ apparatchik.
Joe Matal: useful legal architect, anti-patent large corporations’ apparatchik.
Larry Page and Sergei Brin: co-Founders, Google, Inc.
Andy Bechtolsheim: co-Founder, Sun Microsystems.
Mark Lemley: patent infringer cheerleader sycophant, routinely defrauding the good faith presumed of Professors in academia, for the corrupt benefit of his IP pirate masters.
David Filo: co-Founder of Yahoo!, Inc.
Andrew Grove: the false pejorative “patent troll” originated at Intel, Inc., where ‘Andy’ was a Founder.
Vinod Khosla: Sun Microsystems co-Founder and Kleiner Perkins partner – the ‘efficient infringer’ was advised and encouraged by Kleiner, IN PARTICULAR.
Reid Hoffman: LinkedIn CEO and Founder.
Scott McNealy: Sun Microsystems co-Founder.
Jerry Yang: Yahoo!, Inc. co-Founder.
Steve Ballmer: Microsoft’s “battering ram”, leading the way to destruction of 2,000+ startup and SMB businesses in the OS wars of the 1980’s, and the destruction of the Amiga system and near-destruction of the MacIntosh system, in the small computer industry.
Jim Allchin: Windoze systems corporatchik, ‘battering ram’ Ballmer’s right-hand man.
Carly Fiorina: spearheaded and oversaw the destruction of the former Bell Labs known as Lucent Technologies; one of the first to advocate for dumping out (“monetizing”) IP assets and eliminating the R & D that actually produced it in the first place; “Chainsaw Al in a skirt”.
1. They’re all software-centric and committed to contempt of others’ property rights, and local government purview; e.g., “Move Fast and Break Things”.
2. They all, ALL OF THEM, come from Stanford University – the most evil institution of higher learning in the ‘Western’ world today.
STANFORD UNIVERSITY: “DO be evil”.
AnonJune 9, 2017 08:54 pm
Yes, Scott, besides the name of the scope (hence the notion of “on fire”)
Scott SmithJune 9, 2017 06:38 pm
Besides “intellectual property” also includes trademarks and copyrights, or that the “USPTO is the federal agency for granting U.S. patents and registering trademarks”? 🙂
AnonJune 9, 2017 06:14 pm
Perhaps Scott can supply reasons that he thinks that copyrights and trademarks should garner the concerns of readers….
Maybe he does think those houses are on fire (and maybe there is a fire that no one else is seeing).
Eric BerendJune 9, 2017 03:09 pm
@5., ‘Scott Smith’:
U.S. copyrights and trademarks have not been subjected to such wholesale, radical changes in their jurisprudence and practice as has U.S. patents, in the past decade at least.
If anything, by contrast, over time, there has been substantial additional empowerment to copyright holders, through extensions of term repeated times, in the U.S. legislature, since the Berne Convention.
The squeaky gets the oil. The firehose is not turned upon a house not burning. Your question, if truly an expression of a mind naive to IP issues in general, is a fair one.
Scott SmithJune 9, 2017 01:30 pm
Shouldn’t “IPWatchdog.com” and its readers also be concerned about copyrights and trademarks, and not just patents?
EGJune 9, 2017 08:04 am
Given that Matal is an architect, if not the chief architect for former Senator Kyl of the AIA (Abominable Inane Act), I can understand and feel the angst that many have about his appointment, even if temporary, to the Director of the USPTO slot. If I had been told beforehand that Matal was in the running for this position, I would have said: “You’ve got to be kidding.”
Night WriterJune 9, 2017 05:56 am
I have rarely been wrong. My prediction in the previous thread stands. I add that you are saying that a person that likely cannot even read a file wrapper is being appointed as the supervisor to 7,000 examiners. I add that a person that has zero experience with innovation is being appointed as the head of the main engine of innovation. He is not qualified. And why this is so scary is that he can implement policies that are devastating to examination or innovation and he will have no basis to understand why they are devastating. I think this is the worse appointment in my lifetime. I also think that he smells like a mercenary which means he will do Ross’s bidding. So, the question is what does Ross want? For that see the youtube video above and note it is for the individual and not our Nation.
IPdudeJune 8, 2017 10:31 pm
After the ecstasy of Lee’s resignation, this is how the pro-patent world feels right about now (or, at least me): https://www.youtube.com/watch?v=9Jz1TjCphXE
Jeff LindsayJune 8, 2017 09:29 pm
Thanks, that is helpful. I truly hope we can see a revolution in the USPTO to strengthen American innovation again.