The Patent Act (35 U.S.C. 3(b)) indicates that the Deputy Director of the USPTO have “a professional background and experience in patent or trademark law.”
Margaret Peterlin, the current deputy director, was sworn in as Deputy Director in the Spring of 2007. A few days later, Greg Aharonian, along with David Pressman (Author), Steve Morsa (Inventor), and David Lentini (Patent Attorney), filed suit in Washington DC Federal Court to force Deputy Director Peterlin out of office.
Now, the DC District Court (Judge Robertson) has dismissed the lawsuit on the pleadings based on a two-step analysis:
- Section 3(b) creates no private right or remedy in itself. Thus, the plaintiffs cannot sue directly under that section of the Patent Act.
- The Administrative Procedure Act (APA) does allow for a private right of action. However, the Commerce Department’s appointment decision here is “unreviewable under the APA” because the Section 3(b) of Patent Act lacks “standards that a court could use in evaluating this type of high-level personnel decision.”
At the foundation of this analysis is the presumption “that decisions involving high-level policymaking personnel are left primarily to the executive.”
In my view, the court made the correct decision here, although the reasoning is off. Certainly, the “professional background” provides at least some direction to the court in making its decision.