Solicitor of the United States Patent and Trademark Office

Solicitor of the United States Patent and Trademark Office
Name	Solicitor of the United States Patent and Trademark Office
Incumbent	Vacant
Formation	1976
Inaugural	Roger O. Garrett
Department	United States Department of Commerce

Contents

Solicitor of the United States Patent and Trademark Office

The Solicitor of the United States Patent and Trademark Office serves as the chief legal officer for the United States Patent and Trademark Office and the principal legal advisor to the Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office. The office interacts with litigants and tribunals such as the United States Court of Appeals for the Federal Circuit, the Supreme Court of the United States, and the United States District Court for the Eastern District of Virginia, while coordinating with agencies like the United States Department of Commerce, the United States Department of Justice, and the United States Copyright Office.

Role and Responsibilities

The Solicitor position was formalized amid 20th-century reforms to centralize legal functions within the United States Patent and Trademark Office, influenced by legislation and administrative changes involving the Civil Service Reform Act of 1978 and policy initiatives from administrations including those of Richard Nixon, Gerald Ford, Jimmy Carter, and Ronald Reagan. The office evolved alongside landmark judicial decisions from the Supreme Court of the United States such as eBay Inc. v. MercExchange, L.L.C. and Association for Molecular Pathology v. Myriad Genetics, Inc. and administrative developments involving the United States Department of Commerce, the Federal Trade Commission, and the National Institutes of Health. Early solicitors collaborated with patent leaders from the Patent and Trademark Office Society and academic figures from universities including Harvard University, Stanford University, Columbia University, and Georgetown University.

The Solicitor is appointed by the Secretary of Commerce with consultation from the Under Secretary of Commerce for Intellectual Property and typically is a lawyer with prior experience at the United States Department of Justice, the Federal Circuit Bar, or major firms such as Covington & Burling, Kirkland & Ellis, WilmerHale, Quinn Emanuel, and Paul, Weiss. Tenure varies and has coincided with administrations including those of Bill Clinton, George W. Bush, Barack Obama, Donald Trump, and Joe Biden, with solicitors often moving between public service and private practice at firms like Morrison & Foerster or joining academia at institutions such as University of Pennsylvania Law School or New York University School of Law. Senate confirmation is not required; rather, appointment procedures align with departmental practices observed under secretaries like Robert Mosbacher and Penny Pritzker.

The Solicitor leads an office composed of deputy solicitors, associate solicitors, litigators, and counsel organized into divisions reflecting technical disciplines such as biotechnology, computer science, and mechanical engineering, coordinating with USPTO units like the Patent Trial and Appeal Board, the Trademark Trial and Appeal Board, and the Patent Cooperation Treaty operational liaisons. Staff include career attorneys from the Patent Trial and Appeal Board, former clerks from the Supreme Court of the United States and the United States Court of Appeals for the Federal Circuit, and specialists who have worked with laboratories such as the National Institute of Standards and Technology and agencies like the Food and Drug Administration. The office interacts with professional organizations including the American Intellectual Property Law Association, the International Trademark Association, and the Intellectual Property Owners Association.

The Solicitor has litigated or filed amicus briefs in cases shaping patent and trademark law, contributing to precedent in cases such as KSR International Co. v. Teleflex Inc., Alice Corp. v. CLS Bank International, Association for Molecular Pathology v. Myriad Genetics, Inc., Mayo Collaborative Services v. Prometheus Laboratories, Inc., and eBay Inc. v. MercExchange, L.L.C.. The office’s positions have influenced doctrines including obviousness, patent eligibility, and trademark distinctiveness as adjudicated by the United States Court of Appeals for the Federal Circuit and reviewed by the Supreme Court of the United States. Engagements have extended to international disputes involving the World Trade Organization and multilateral negotiations with the European Commission and the Organisation for Economic Co-operation and Development.

The Solicitor operates within the administrative framework of the United States Patent and Trademark Office while reporting to senior officials such as the Under Secretary of Commerce for Intellectual Property and coordinating policy with the United States Department of Commerce. The office interfaces with interagency partners including the United States Patent and Trademark Office, the United States Department of Justice, and the United States Trade Representative to align enforcement, rulemaking, and international engagement, and collaborates with stakeholders from industry groups like the Computer & Communications Industry Association and academic centers such as the Stanford Center for Legal Informatics.