Intellectual Property Law

Court Dismisses Suit Challenging Peterlin Appointment

By Brian Wm. Higgin

     The District Court for the District of Columbia dismissed a lawsuit today brought by Gregory Aharonian and others against Carlos Gutierrez, Secretary of Commerce, in April 2007 after Margaret J.A. Peterlin was sworn in as Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office (USPTO).

     Aharonian's complaint asserted that Peterlin's appointment was improper because Peterlin "is not a citizen of the United States who has a professional background and experience in patent or trademark law,” citing 35 U.S.C. § 3(b).

     Judge James Robertson found that the text and the legislative history of the statute does not evince congressional intent required to establish a private cause of action – that is, intent to create both a private right and a private remedy. Robertson went on to say that there must be a presumption in this case that decisions involving high level policymaking personnel are left primarily to the executive. "In such a situation," he said, "one would expect Congress to speak in precise terms if it intended the courts to monitor the minimal qualifications for agency officers. Here, Congress has given only the broadest of instructions – that the Deputy Director should have 'a professional background and experience in patent or trademark law.' ”

     Because the statute is silent as to the terms "professional background" and "experience," the Court was not compelled to evaluate whether the Deputy Under Secretary/Deputy Director has or needs a law degree, whether the appointee took law school courses in intellectual property, whether the individual has a certification to practice before the USPTO, whether the appointee has law firm experience, and, if so, how many years of such experience. Noting that if Congress had intended the "extraordinary situation in which judicial review would reach to the very qualifications of agency officers for their policymaking positions, its statute would not be drawn 'in such broad terms that . . . there is no law to apply.'” Citing Citizens to Preserve Overton Park v. Volpe, 401 U.S. 402, 410 (1971).

     Link to Memorandum Opinion.

Full post as published by Maryland Intellectual Property Law Blog on December 07, 2007 (boomark / email).