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USPTO General Counsel Bernard Knight (left) and USPTO Solicitor Raymond Chen (right)<\/p><\/div>On Wednesday August 1, 2012, I had the opportunity to do something I have wanted to do for quite a while. I sat down on the record with both Bernie Knight<\/a><\/strong> and Ray Chen<\/a><\/strong>, the top two attorneys who represent the United States government at the U.S. Patent and Trademark Office. \u00a0This starts the next phase of USPTO 2.0 interviews<\/a><\/strong>, which started earlier in the year.<\/p>\n Knight is the General Counsel at the USPTO, and Chen is the Solicitor. \u00a0I have known each for a few years now, and I can’t tell you how many times I have asked them to go on the record for an interview. \u00a0Obviously, they were cautious; uncertain what I would want to talk about. \u00a0It would have been great to get into a substantive discussion about rules, law and legislation. \u00a0That, however, would simply not be appropriate.<\/p>\n So my philosophy going into this interview was this: It wouldn’t be right for me to place Knight and Chen in a position where they had to say, “sorry, I can’t answer that question.” \u00a0There is no point asking a question to which an answer could not realistically be expected, and which could violate attorney-client privilege if given. \u00a0I don’t play those types of games, period. \u00a0Furthermore, that isn’t why I have wanted to interview Knight and Chen. \u00a0Knight and Chen represent the United States government and work for the people of the United States, but are stationed at the USPTO. \u00a0I suspected at times that might put them at odds with the Administration. \u00a0It also means their job as attorneys is different than what most of us will ever experience. \u00a0So even if I hadn’t agreed to steer clear of substantive legal questions there were just too many process, procedure and ethics questions I wanted to ask.<\/p>\n We talked about where these attorneys got their start, who they view the client as being, what it is like to represent the United States, ethical dilemmas that present, the structure of the General Counsel’s Office and the process for giving Federal Register guidance on a variety of matters.<\/p>\n Without further ado, here is part one of my two-part interview with Bernie Knight and Ray Chen.<\/p>\n QUINN:<\/strong> First I want to thank you guys for taking the time to sit down and chat with me.\u00a0 I\u2019ve wanted to do this for a long time and I think it\u2019s going to be a great conversation.\u00a0 So thanks, Bernie, thanks, Ray.\u00a0 Before we jump into any of the substantive stuff, I thought maybe it might be interesting to just lay some biographical foundation.\u00a0 Because, Bernie, I know you prior to coming to the General Counsel\u2019s Office spent some time over at Treasury.\u00a0 And Ray, if you could also tell \u2013 how did you guys go from walking across the stage as the newest minted lawyer to working on the 10th floor at the Patent Office representing the U.S. government?<\/p>\n KNIGHT:<\/strong> Right, that\u2019s a very good question.\u00a0 I never would have predicted that I would be here right now when I graduated law school, and a lot of it is luck and a lot of it is people having a lot of confidence in my abilities.\u00a0 Right after law school I worked for a firm in Houston, Texas by the name if Vinson and Elkins.\u00a0 It\u2019s a very large firm in the U.S. and I was a tax lawyer.\u00a0 I also worked at the Justice Department as a litigator and tried many tax cases.\u00a0 Todd Dickinson was the Director of the USPTO in 2001 and hired me to be the first Deputy General Counsel of the USPTO.\u00a0\u00a0 That was shortly after the AIPA was enacted, which created the USPTO as a separate agency within the Department of Commerce.\u00a0\u00a0 Todd actually took a chance on me when he gave me the job because I really didn\u2019t have at that point a lot of management experience.\u00a0 If I remember correctly, Todd wanted someone with litigation experience for the position. That was my first break. John Whealan, who\u2019s now a Dean at GW in IP Law, was the first Deputy General Counsel for Intellectual Property Law and Solicitor.\u00a0 So John Whealan and I were colleagues and today we are good friends.\u00a0\u00a0 John and I both left the USPTO about the same time. John went to work for Senator Leahy, and I left here and I went to work at the Treasury Department.<\/p>\n I applied for a job at the Treasury Department, which was kind of a little interesting story in and of itself.\u00a0 I applied to be a Deputy Assistant General Counsel.\u00a0 After I interviewed, the then General Counsel called me and said, you know we have an internal candidate for that job, but would you like a higher up job?\u00a0 And I have never, ever had that happen in my life.\u00a0 (Laughs)\u00a0 And I said, sure, I\u2019d love a higher up job.\u00a0 Who wouldn\u2019t.\u00a0 So I applied for a higher up job and I was one of the five senior lawyers for the entire Treasury Department. I was the Assistant General Counsel for General Law, Ethics, Litigation, and Regulations.\u00a0 I was responsible for clearing all the regulations, for example, of the Internal Revenue Service and all the Treasury bureaus.\u00a0 I also was in charge of ethics, procurement, personnel, and appropriations law. \u00a0Near the end of the Bush administration, I worked on the financial markets crisis with Secretary Paulson and his team.\u00a0 When I was at Treasury, I met President Bush.\u00a0 He came over and thanked people working on the financial markets crisis.\u00a0 When the Bush Administration ended and President Obama took office Secretary Paulson had to pick one of the senior lawyers to be the Acting General Counsel of the Treasury Department until a new General Counsel could be selected by President Obama and confirmed by the Senate.\u00a0 Secretary Paulson picked me over more senior lawyers at the Department to run the Legal Division of Treasury during a critical period of the financial markets crisis.\u00a0 The Legal Division of Treasury has about 2,000 to 2,500 lawyers.\u00a0 All the lawyers at Treasury report up to the General Counsel including for example all of the IRS lawyers, the lawyers of the U.S. Mint, and the lawyers of the Bureau of Engraving and Printing.\u00a0 So it\u2019s a pretty diverse set of issues that the General Counsel has to face.<\/p>\n I was acting General Counsel at Treasury for the first about eight months of the Obama Administration.\u00a0\u00a0 I worked with Tim Geithner and his team.\u00a0 For example, I was General Counsel when the Government bought the auto manufacturers.\u00a0 At about the time that the political appointee General Counsel was selected by the President and confirmed by the Senate, Dave Kappos asked me if I would like to come back to the USPTO to be the General Counsel, managing the Office of the Solicitor, the Office of General Law and the Office of Enrollment and Discipline.\u00a0 Dave Kappos offered me the job and I accepted.\u00a0\u00a0 It has been great being back at the USPTO and part of Dave\u2019s team implementing the AIA.<\/p>\n QUINN:<\/strong> Well, that\u2019s great.\u00a0 This is a nice office you have here by Patent Office standards, but it probably doesn\u2019t quite compare.<\/p>\n KNIGHT:<\/strong> It\u2019s very nice.\u00a0 I definitely enjoy being General Counsel and I have a great working relationship with my colleagues.\u00a0\u00a0 I\u2019ve worked with Peggy Focarino and Debbie Cohn back when they were Group Directors in Patents and Trademarks and I was Deputy General Counsel.\u00a0\u00a0 They are good friends of mine in addition to work colleagues.\u00a0\u00a0 That creates a great working environment.<\/p>\n QUINN:<\/strong> Okay, Ray, how about you?\u00a0 How did you go from new attorney to Solicitor?<\/p>\n CHEN:<\/strong> Well, just listening to Bernie\u2019s story it makes me realize my pathway has not been nearly as diverse as Bernie\u2019s.\u00a0 I\u2019ve just been a little old patent lawyer from Day One.\u00a0 But\u2014<\/p>\n QUINN:<\/strong> You say that like there\u2019s something wrong with it.\u00a0 Be proud.<\/p>\n CHEN:<\/strong> No, I am proud.\u00a0 I\u2019m comfortable.<\/p>\n KNIGHT:<\/strong> He\u2019s not a little old patent lawyer.\u00a0 He\u2019s an outstanding patent lawyer.<\/p>\n CHEN:<\/strong> Well, thanks, Bernie, but I guess I\u2019ve had more of a niche type career path then Bernie, and let\u2019s just leave it at that.\u00a0 But when I left law school I knew two things.\u00a0 One was I was going to be a patent lawyer.\u00a0 And the second thing I knew was I was going to spend the rest of my life in California.\u00a0 I grew up in California.\u00a0 I went to NYU for law school, and it was a great experience there and there were opportunities to be a patent lawyer in New York.\u00a0 But I wanted to go back home. And so I did that.\u00a0 I started out at Knobbe Martens Olson and Bear.<\/p>\n QUINN:<\/strong> Down in Orange County?<\/p>\n CHEN:<\/strong> Down in Orange County, which is where I\u2019m from.\u00a0\u00a0 So to me it was like going back home.\u00a0 I was an associate there for a couple years, doing prosecution and some patent litigation.\u00a0 And I think I could have been happy really for the span of my career just staying right there if they would have had me.\u00a0 But ultimately my girlfriend, now wife, from law school, she took her first job here in D.C.\u00a0 So we were kind of commuting back and forth and then we had to make a decision and in the end I decided to come, move to D.C.\u00a0 And so I took a job at the Federal Circuit.\u00a0 There is a little known staff attorney position there called technical assistant.\u00a0 It\u2019s not a clerkship to a specific judge, although occasionally you will do a special project for one of the Federal Circuit judges.\u00a0 During my two years there I often would go watch oral arguments in front of the three judge panels at the court.\u00a0 I saw a number of young PTO attorneys coming down every month defending Patent Board decisions and Trademark Board decisions.\u00a0 I also noticed that among the appellate lawyers who were regularly arguing at the Federal Circuit, the PTO lawyers seemed to be among the youngest.\u00a0 Watching them made me realize\u00a0 that was something that I\u2019d like to do.\u00a0 I thought that would be a great experience to have.\u00a0 So at the end of my two years at the court I interviewed with Nancy Linck who was then the Solicitor.\u00a0 This was back in 1998.\u00a0 INancy gave me an offer and I came onboard.\u00a0 It was terrific to have those experiences standing up in court, writing your own briefs, trying to construct persuasive legal arguments.\u00a0 I was an associate solicitor for ten years just trying to do the best job I could.\u00a0 And during the course of those ten years I realized that for me the job was not just about getting great experience but it became more and more like a calling to be a part of the PTO here. \u00a0To do the work here, to try to do the best we can for the public, for the patent system overall, to create a fair and balanced patent system.\u00a0 In any event, after Nancy Linck, John Whealan was Solicitor for quite a long time.\u00a0 When he left to go become associate dean at GW Law School, the position opened for Solicitor and I applied. \u00a0The then Director Jon Dudas and Deputy Director Margaret Peterlin selected me in late 2008.\u00a0 So I\u2019ve been the Solicitor ever since.\u00a0 In the end it wasn\u2019t a master plan here, it was just kind of staying open-minded and not being afraid to tackle new challenges.<\/p>\n QUINN:<\/strong> I guess one of the things that I know from my experience when I talk to successful people like you, some of the stuff that happens during our careers, you don\u2019t always set out going down this path and have this work out that way.\u00a0 But the reccurring theme I always hear, and I\u2019d like to get you guys to comment on this, is the harder you work the luckier you get.\u00a0 Because it seems like you can be in the right place at the right time but if you haven\u2019t attracted some positive attention from people, then you just kind of stay there, or maybe you go off in a different direction.\u00a0 Thoughts?\u00a0 Comments?<\/p>\n CHEN:<\/strong> Yes, I think hard work matters a great deal.\u00a0 You can\u2019t just be a bright person, you have to be fully committed to the task at hand.\u00a0 And I agree with that, the harder you work the luckier you get in the sense that people will notice you or perhaps the opportunities will ultimately arise.\u00a0 I think that\u2019s true probably in just about any endeavor, you know, whatever you\u2019re doing, do it the best you can and ultimately there will be opportunities that spring from that down the road.<\/p>\n KNIGHT:<\/strong> I \u00a0agree that hard work is important, yes.\u00a0 But equally important is the ability to lead people and to work under pressure.\u00a0 As a manager of a large organization, it\u2019s important to have the respect of your team, which requires you to put an oar in the water on important issues and make significant contributions.\u00a0 My three most important management principles that I live by are to treat people with integrity, honesty and kindness. I appreciate the work that people do and their contributions to the success of the organization.<\/p>\n CHEN:<\/strong> Right.\u00a0 And just to follow up on that.\u00a0 There is also some luck involved.\u00a0 Whether it\u2019s timing or anything else, I personally think there\u2019s probably a lot of people that could be a great Solicitor for the PTO and just for whatever reason due to timing, circumstances and other things, and I guess hard work, it just happened to work out for me.\u00a0 And I\u2019m very grateful for the opportunity to be the Solicitor. \u00a0The other crucial factor that we haven\u2019t quite mentioned yet is mentors.\u00a0 I\u2019ve been fortunate to have some great bosses over the years, including John Whealan, as well as Mel Halpern, the former Senior Technical Assistant at the Federal Circuit.\u00a0 Mel knew patent law and the court inside out, and is also one of the most ethical people I\u2019ve ever met. \u00a0\u00a0\u00a0Without the mentorship and coaching from John, Mel, and others over my career, I wouldn\u2019t be where I am today.<\/p>\n QUINN:<\/strong> Yes, mentors can make all the difference in the direction.\u00a0 I know like myself when I try and think about, sometimes I\u2019ll sit back and say, how is it that I am a lawyer? What is it that I do?\u00a0 How did I get into this habit or that habit or why do I write like this?\u00a0 And I constantly look back to the people who mentored me when I first entered the legal profession.\u00a0 Mentors can make all the difference in the world.\u00a0 You both say John Whealan is a mentor.\u00a0 What\u2019s the one thing that you look at how you lawyer today that you would attribute to John?\u00a0 Or more than one if there\u2019s more than one that comes to mind?<\/p>\n CHEN:<\/strong> Well, for me, you know, it\u2019s something that I think we all believe in but he definitely impressed it upon me, which is just a commitment to excellence.\u00a0 That every time we file a brief at the Federal Circuit, every time we appear at oral argument in front of that court, it is a significant event.\u00a0 And the reputation and the credibility of the office is on the line every single time.\u00a0 We take that seriously, because we have worked very hard over time to build up a reputation with that court.\u00a0 And it\u2019s very easy to lose it very quickly.\u00a0 So it is this kind of consistent commitment to excellence that is ingrained in how we approach our work.<\/p>\n KNIGHT:<\/strong> The other thing, too, I would say is that there are many lawyers in the IP community who help Ray and me do a great job on a daily basis.\u00a0\u00a0 You know, everyone wants us to be successful because it\u2019s good for IP. \u00a0That\u2019s the great thing about our positions.\u00a0 So for example, Todd Dickinson at AIPLA often gives us his views on an issue and it helps us to get a broader perspective from our user community.\u00a0 I knew when I started this job I needed to reach out to the IP community to be successful.\u00a0 Marylee Jenkins at Arent Fox was chairman of the ABA IP Section when I started, and I called Marylee and I said, \u201cI\u2019m the new General Counsel, I\u2019d like to get involved in the ABA.\u201d\u00a0 Before I knew it, I was invited to ABA meetings and invited to speak.\u00a0 Without the help of people like Todd Dickinson, Herb Wamsley, Marylee Jenkins, and others, it\u2019s very difficult to succeed in these jobs and I know that Ray and I are very appreciative to all these people for their help and support.<\/p>\n QUINN:<\/strong> See, now that\u2019s interesting that you bring that up.\u00a0 Because, one, it raises the issue that you\u2019re never really done being mentored.\u00a0 There\u2019s always something you can learn from somebody or take away.\u00a0 And then, two, is that in the position that you all have there is an interesting two-way street representing the government, but the private sector has an interest in making sure that things run smoothly and that you understand their day-to-day lives. So they\u2019re helping you as well. How do you walk that line?\u00a0 How would you characterize your job on a day-to-day basis?<\/p>\n KNIGHT:<\/strong> Well, I would say the first answer to that question is that we are very lucky because we work with Dave Kappos.\u00a0 Dave is a manager that consistently puts an oar in the water as I said earlier and mentors his staff on high level projects. He understands the private sector very well. He has a great practical approach and is very decisive.\u00a0 Ray and I wouldn\u2019t be nearly as good as we are without Dave\u2019s leadership and mentorship.<\/p>\n CHEN:<\/strong> Yeah, responding to your question really can go in a lot of different directions.\u00a0 On one level, my responsibility is to defend the decisions of this agency as zealously as I can in federal court.\u00a0 That\u2019s one significant role the Solicitor\u2019s Office plays.\u00a0 Beyond that, we\u2019re also doing an incredible amount of outreach to the public, to the stakeholder community.\u00a0 That\u2019s something that I\u2019ve come to appreciate more over my time as the Solicitor.\u00a0 I think initially I wasn\u2019t as inclined to go out and do a lot of public speaking because I felt like, well, that\u2019s just not what government litigators do.\u00a0 That\u2019s not our role.\u00a0 But the longer I\u2019ve been here the more I\u2019ve been able to appreciate that all of us, Bernie, me, and others, we have a leadership role in this agency and we do have an important responsibility to reach out to the public to share with the public what the PTO\u2019s perspectives are on a whole host of different issues.\u00a0 For me it would be a lot of the legal issues that the agency\u2019s wrestling with.\u00a0 But not only that, another critical component of public outreach is learning about their perspectives on issues and becoming sensitive to the types of problems they encounter. \u00a0Then we can take that information back and incorporate it into our thinking in how we approach different issues, whether it\u2019s in an amicus brief at the Supreme Court, or whether it\u2019s through examination guidelines that we provide to our examiners.<\/p>\n QUINN:<\/strong> Okay.\u00a0 Well, let me take a little different approach.\u00a0 There\u2019s a question that I\u2019ve been dying to ask you guys because I think it will be a really interesting discussion and lead to a discussion that most attorneys in the private sector will never need to have.\u00a0 Who is the client?\u00a0 I mean, is Dave Kappos the client?\u00a0 Is the Patent Office the client?\u00a0 Is the U.S. government the client?\u00a0 I think I know what the answer is, but if I\u2019m correct then that raises a whole other set of other questions and possibly some ethical issues or maybe they\u2019re just practical issues. So who is the client?<\/p>\n KNIGHT:<\/strong> You know, whenever you are working for the United States the client is the United States whether that\u2019s at the USPTO or another federal agency.\u00a0 And I think that\u2019s probably true if you\u2019re working at a private corporation.\u00a0 If you\u2019re working at Dow Chemical I have to believe that your client is Dow Chemical, not your immediate supervisor.\u00a0 So the client really is the United States and we have an obligation to do what\u2019s in the best interest of the United States.\u00a0 Now, we also do that keeping in mind that the PTO is completely user fee funded.\u00a0 So we have a much greater obligation to our user community than many other government agencies do who are funded by taxpayers generally.\u00a0 So we keep that in mind as well, and as Ray said we do a lot of outreach, we get the views of the user community on most of the things that we do because we want to have their input before we implement anything new.\u00a0 With respect to Dave Kappos, he is our supervisor and we definitely take direction from Dave.\u00a0 Dave, as I said, is very decisive, the clear leader of the agency.\u00a0 But that doesn\u2019t mean he doesn\u2019t listen to us because he values and listens to everyone\u2019s input.\u00a0 And I can tell you honestly that we have changed Dave\u2019s positions on many issues. Dave\u2019s a very fair manager, has a lot of energy for the job and is fun to work with. \u00a0He and Terry Rea make a great team and work well together.<\/p>\n CHEN:<\/strong> We\u2019ve also lost a few times.<\/p>\n KNIGHT:<\/strong> Yes, we\u2019ve lost a few times, too.\u00a0 [Laughs]\u00a0 But he does listen, and we have changed his mind.\u00a0 He is our supervisor and, you know, I have to tell you the dynamic of working with Dave Kappos is one of the best working relationships I\u2019ve had my entire career.<\/p>\n CHEN:<\/strong> Right.\u00a0 So first of all, I agree with everything my boss just said.\u00a0 [Laughter]\u00a0 He\u2019s crystallized my thoughts exactly.\u00a0 But\u2014<\/p>\n QUINN:<\/strong> But it may be a little different for you because your job is to defend the decisions of the Board, for example.<\/p>\n CHEN:<\/strong> That\u2019s true.\u00a0 There are plenty of times where I\u2019ve, you know, my most immediate client is the Board.\u00a0 And we defend the Board vigorously and we enjoy a high affirmance rate at the Federal Circuit, which is terrific.\u00a0 But also at the same time there are those very rare occasions where we will work with the Board if we spot an issue in a particular appeal where in our view more work needs to be done before the case is ready for appellate review.<\/p>\n QUINN:<\/strong> But sometimes you take up some easy issues too, particularly from pro se folks who appeal. It seems a lot of the cases, and maybe it\u2019s just the ones I tend to read, I don’t know, are rather easy. I read the decision from the Federal Circuit and it\u2019s almost like they must be thinking, well, this guy doesn\u2019t get it.\u00a0 Because it\u2019s just clear that the Board was correct.\u00a0 So, how much time do those kinds of cases take?\u00a0 The cases where somebody continues to fight and won\u2019t give up.<\/p>\n CHEN:<\/strong> We give all the time that each case deserves.\u00a0 So\u2014<\/p>\n QUINN:<\/strong> Yes.\u00a0 And I didn\u2019t mean to imply that. What I was trying to ask is whether my perception is correct?\u00a0 Are there a lot of those cases?\u00a0 Or is it a minority of cases and they\u2019re just the ones I remember?<\/p>\n CHEN:<\/strong> Right.\u00a0 Those might stand out in your mind because they seem particularly peculiar.\u00a0 But I don\u2019t think we get that many of those.\u00a0 In fact, you know, we deal with our fair share of close cases.\u00a0 But at the same time the Board, they are the experts and so they\u2019re calling balls and strikes and when reasonable minds can differ there are times where applicants want to have their day in court.<\/p>\n