The former chief administrative patent judge of the U.S. Patent and Trademark Office has joined Miles & Stockbridge's Tysons Corner, Va., office as counsel.
Michael Fleming, who retired as chief judge in January 2011, spent 33 years with the government. He was influential in advising Congress and the administration on parts of the America Invents Act.
In addition to his six years as chief judge, Fleming spent 17 years as an administrative patent judge and four years as a supervisory patent examiner. The move to Miles & Stockbridge marks his first time in private practice. Because of his former post, Fleming had a two-year ban on doing business with the PTO. That prohibition ended January 1.
Now that the embargo is lifted, Fleming said he looks forward to working on matters before the PTO, in particular many of the statutory changes he was instrumental in forming. Among those are the ex parte and inter partes proceedings, a request for the patent office to review the validity of a patent.
"I know the number for filing for inter partes review is quite impressive," Fleming said. "I think that will be a huge area for growth in terms of work."
Fleming said that one highlight of his career was working with the U.S. solicitor general on the government's brief in the KSR v. Teleflex case. In its unanimous 2007 decision, the Supreme Court ruled on the obviousness of patent claims. Fleming said that practitioners in the field were only now starting to see the results of that decision.