Asked in an interview for Managing IP whether the USPTO has lost credibility in recent months in light of GlaxoSmithKline’s and Triantafyllos Tafas’ successful lawsuit against the Office’s controversial proposed rules package on claims and continuations, Whealan defended his former colleagues and said that it’s necessary to “look past the case and see whether what the USPTO was trying to accomplish was at least valid”.
Whealan also expressed scepticism that the new rules would prove as detrimental to the pharmaceutical and other industries as many in the patent community have maintained: “To say that these rules would completely prohibit the pharmaceutical industry from getting patents I think is an overstatement”, said Whealan. “It's a nice press line, but it's not necessarily accurate.”
Whealan also conceded that one of the most significant changes during his 10-year career with the USPTO was that the directors and deputy directors being hired began to have little to no IP background.
He said: “It's not a bad thing, just a noticeable change. It's one thing to do that for one of the positions but it's another to do it for several. If you have the head of the agency be a staffer on Capitol Hill, you might want your deputy to be the type of person more historically hired [with experience].”
Managing IP further questioned Whealan about his recent assignment working on S1145, the pending Senate patent reform bill, which he spent the last year helping the Senate Judiciary Committee to draft.
Commenting on the complexities of drafting legislation that will meet the needs of so many different industries, Whealan said: “The one thing I've found that's not that useful is the extreme positions sides takes. I don't find that helpful or persuasive.”
Now associate dean for intellectual property law studies at George Washington University, Whealan described his time working in Congress as "the most substantively interesting year I have ever seen".
Subscribers can read the full interview in the June issue of Managing IP.
