General Counsel Bios
Will Covey, Acting General Counsel
As USPTO's Acting General Counsel, Will Covey is the principal legal advisor to the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. He supervises the provision of legal advice and court representation on intellectual property and administrative matters for the agency. Mr. Covey is responsible for providing legal advice on patent, trademark, and copyright matters as well as administrative issues such as government contracts, personnel, and budgetary matters. As necessary, he coordinates with the Department of Justice, Department of Commerce and other agencies in developing the U.S. position on major intellectual property cases before the Supreme Court and Courts of Appeals.
Mr. Covey is also the Deputy General Counsel and Director of the Office of Enrollment and Discipline (OED). In this role, he manages an office of attorneys, paralegals, and support staff which is responsible for registering patent attorneys and agents to practice before the USPTO, overseeing the Law School Clinic Certification Program, and investigating grievances alleging misconduct by practitioners authorized to practice before the USPTO. To do so, OED evaluates the credentials of applicants for registration, develops and administers a registration examination to determine if applicants have the necessary knowledge of patent law and practice to render patent applicants valuable service, maintains a public roster of attorneys and agents recognized to practice before the office in patent matters, and conducts surveys of active registered practitioners.
Previously, Mr. Covey served as the USPTO's Deputy General Counsel for the Office of General Law for over four years. Mr. Covey was appointed to the Senior Executive Service in 2007. Before joining the USPTO in 2000, Mr. Covey served at the Pentagon in the U.S. Army’s Judge Advocate General's Corps. He serves in the Army Reserve and has completed combat tours in Iraq (2007) and Afghanistan (2011). He served as Deputy Legal Counsel to the Chairman, Joint Chiefs of Staff, and is currently assigned to the Office of the Army General Counsel.
Mr. Covey received his undergraduate degree from Fordham University (magna cum laude; Phi Beta Kappa) and his J.D. from Fordham University School of Law in 1991. He graduated from Harvard University's John F. Kennedy School of Government (Senior Executive Fellowship) in 2005 and received a Master of Science degree in Strategic Studies from the U.S. Army War College in 2010.
James Payne, Deputy General Counsel for General Law
James Payne has served as Deputy General Counsel for General Law since November 2011. The Office of General Law provides legal counsel on the administration and management of the agency, including on financial, employment and labor matters, as well as on administrative law and legislative matters. The Office also represents the agency in litigation before administrative tribunals.
Mr. Payne has served as lead counsel successfully resolving over 200 affirmative and defensive litigation cases. The cases commonly involved technical and scientific experts. He has frequently spoken at and chaired conferences on litigation practice. He has authored five statutes and testified three times before Congress. He was registered as a patent attorney in 2006.
Mr. Payne comes to the PTO after twelve years at the U.S. Department of Justice, where he served as Senior Counsel in the Environment and Natural Resources Division. He was lead counsel for general law, policy and legislative matters and for special litigation. When the Deepwater Horizon oil platform sank in the Gulf of Mexico, he led a team of 60 attorneys across the Government who supported the emergency response with coordinated legal advice on an expedited basis at the request of the White House. He led a similar team for the Japan nuclear crisis. He also led an interagency and White House team that developed the Memorandum of Understanding on Environmental Justice, in which 17 department Secretaries and agency heads agreed to carry out strategic plans to improve health and environmental protection in minority and low-income communities. He received nine outstanding attorney awards, including the Attorney General’s Award for Excellence in Information Technology for leading the U.S. Department of Justice and other departments and agencies in improving electronic discovery practices in civil litigation and criminal prosecutions.
Previously, Mr. Payne served as an Assistant Attorney General in the Environmental Enforcement Section of the Ohio Attorney General’s Office. He authored an 18-State amicus brief adopted by the U.S. Supreme Court in its leading constitutional case on state sovereignty, New York vs. U.S., and led a nationwide team of State litigators who successfully brought to the Court a series of cases in this area. He received the National Association of Attorneys General’s highest recognition, the Marvin Award.
Mr. Payne received from Dartmouth College an A.B. with a major in Engineering Sciences. His J.D. is from Ohio State University. As a law student he founded the Ohio State Journal on Dispute Resolution, which the American Bar Association adopted as its official journal promoting use of mediation and other forms of "alternative dispute resolution" to avoid litigation.
Nathan K. Kelley, Acting Deputy General Counsel for Intellectual Property Law and Acting Solicitor
Nathan Kelley became the Acting Deputy General Counsel for Intellectual Property Law and Acting Solicitor in August 2013. In this role, he defends the Under Secretary of Commerce and Director of the USPTO and the agency in court proceedings relating to intellectual property issues.
As Deputy Solicitor and an Associate Solicitor, Mr. Kelley spent seven years defending the USPTO’s decisions in federal court, briefing and arguing numerous cases before the U.S. Court of Appeals for the Federal Circuit. He has defended the USPTO on a wide range of legal issues, from specific patentability determinations to broader issues involving the USPTO’s statutory examination duties. He has also provided advice and guidance to the agency regarding various intellectual property issues, including the development and scope of rulemakings undertaken to implement the America Invents Act.
The Office of the Solicitor provides legal counsel to the Under Secretary and Director and the Commissioners for Patents and Trademarks on intellectual property matters. The office’s primary responsibility is to defend decisions of the Under Secretary and Director, Patent Trial and Appeal Board, Trademark Trial and Appeal Board, and examiners in patent and trademark cases. The office also represents the Under Secretary and Director at depositions of USPTO employees, provides legal advice on proposed regulations and correspondence, and monitors publication of USPTO decisions. The Solicitor’s Office, in coordination with the Department of Commerce, also provides representation for the Under Secretary and Director in the interagency deliberations on intellectual property matters.
Before joining the Solicitor’s Office, Mr. Kelley worked at the U.S. Court of Appeals for the Federal Circuit, first as a member of its permanent legal staff, and later as a judicial law clerk to the Hon. Randall R. Rader. Earlier, he was an associate at an intellectual property law firm in Washington D.C. His career began as a patent examiner at the USPTO, where he examined patent applications directed to integrated circuits and discrete semiconductor devices. Mr. Kelley received both a JD magna cum laude and a BS in electrical engineering from George Mason University.