USPTO Director Andrei Iancu Discusses Patentability of Algorithms, PTAB Proceedings at Senate Judiciary Committee

By Steve Brachmann
April 19, 2018

“[H]uman-made algorithms that are the result of human ingenuity that are not set from time immemorial and that are not absolutes, they depend on human choices. Those are very different from E=mc2 and they are very different from the Pythagorean theorem,” explained Iancu.

Andrei Iancu, Director, U.S. Patent and Trademark Office

On the morning of Wednesday, April 18th, the Senate Committee on the Judiciary held a hearing regarding oversight of the U.S. Patent and Trademark Office and including testimony from recently confirmed USPTO Director Andrei Iancu. Compared to hearings on the U.S. patent system conducted over at the House of Representatives, the Senate committee evidenced a stunning amount of recognition as to the issues currently facing our country’s patent system. Informed observers would also note the efforts that Director Iancu continues to make to change the dialogue regarding patents and inventors in this country.

“We are focused on engaging in a new dialogue surrounding the patent system,” Iancu said near the top of his opening remarks. “A dialogue centered on the brilliance of inventors, the excitement of invention, and the incredible benefits they bring to the American economy and the country as a whole.” While this statement was not included in the written testimony submitted by Iancu to the Senate Judiciary Committee, it does echo statements he made the day before at a surprise visit to a conference of inventor groups meeting at the USPTO. It also marks a significant departure from patent troll rhetoric which has greatly damaged the U.S. patent system in recent years.

Senator Chris Coons (D-DE)

That damage to the U.S. patent system was a subject of the opening statement made by Sen. Chris Coons (D-DE), who noted that the U.S. Chamber of Commerce dropped the U.S. patent system to 12th this year after having been the world’s gold-standard patent system for greater than 200 years. “In the past decade, there have been a variety of actions on the part of the Judicial, Executive and Legislative branches which have had the cumulative effect of significantly weakening patent rights and the impact of these changes is becoming apparent,” Sen. Coons said. The Senator referenced post-grant proceedings before the Patent Trial and Appeal Board (PTAB), which have created great uncertainty over patent validity within the U.S., as one reason for the decline. “While some form of post-issuance review at the USPTO is desirable, the current review system is systematically biased against patent owners based on statistics from its first five years,” Sen. Coons said.

Senator Kamala Harris (D-CA)

Another problem discussed by Sen. Coons and other committee members was recent jurisprudence from the U.S. Supreme Court in cases like Alice v. CLS Bank and Mayo v. Prometheus Labs which have introduced a lack of clarity regarding the patentability of inventions, especially those in the software and biotech sectors. Issues surrounding the patentability of algorithms were at the center of a very interesting exchange between Iancu and Sen. Kamala Harris (D-CA). Sen. Harris made the point that artificial intelligence, a technology sector expected to become much more valuable in the coming years, relies upon software that processes algorithms to perform the mathematical computations required by AI systems. “I’m curious,” Sen. Harris said. “E=mc2. Would that have received any patent protection?” Iancu responded that Einstein’s theory of relativity was a mathematical representation of a law of nature and therefore not patentable. Sen. Harris followed up by asking whether algorithms were mathematical representations of laws of nature. “You’re getting right to the heart of the issue,” Iancu said. What Iancu said after that should be a major breath of fresh air to inventors and patent owners frustrated by Section 101 validity issues in the wake of Alice and Mayo:

“This is one place where I believe courts have gone off the initial intent. There are human-made algorithms, human-made algorithms that are the result of human ingenuity that are not set from time immemorial and that are not absolutes, they depend on human choices. Those are very different from E=mc2 and they are very different from the Pythagorean theorem, for example.”

Sen. Harris pushed Iancu further, asking the USPTO Director whether he felt that an algorithm was distinctly different from the identification of a pattern existing in nature. Although Iancu said that such determinations would have to take place on a case-by-case basis, he did say that, “As a general proposition, human-made algorithms that are cooked up, invented as a result of human ingenuity are different from discoveries and mathematical representations of those discoveries.”

Senate Judiciary Committee members including committee chair Sen. Chuck Grassley (R-IA), expressed a willingness to take a look at possible legislative fixes to patent-eligibility issues under current Section 101, a statute which Iancu noted hasn’t changed since 1952 and employs much of the same language since the Patent Act of 1793. Although Iancu said there were no current pending legislation on Section 101 that he found particularly promising, Sen. Coons had noted elsewhere that proposals on Section 101 fixes had been proposed by industry groups including the American Intellectual Property Lawyers Association (AIPLA) and the Intellectual Property Owners Association (IPOA). Other legislative proposals discussed during the day’s hearing included the STRONGER Patents Act, a bill which Sen. Coons noted would align PTAB proceedings with district court standards by maintaining the presumption of patent validity and heightening standings requirements for filing petitions for inter partes review (IPR) or post-grant review (PGR) validity challenges. Coons also discussed the Big Data for IP Act, a bill co-sponsored by Sen. Orrin Hatch (R-UT) which was introduced in late March. This bill would extend the USPTO’s fee-setting authority for an additional 10 years in order for the agency to invest in information technology infrastructure upgrades.

Sen. Hatch did raise concerns during questioning over the USPTO’s participation in the Department of Commerce’s shared services initiative, which has raised concerns among shareholders that agency fees may be siphoned off for non-agency purposes. He also raised concerns over the effects that PTAB proceedings have on patents that are also involved in Hatch-Waxman trials in district court. “Some commentators have expressed concern that IPR conflicts with the careful balance Hatch-Waxman struck,” Sen. Hatch said. “In particular, these commentators have pointed out that IPR can enable parallel validity proceedings with different standards and can also impact timing of certain FDA litigation benchmarks under Hatch-Waxman.” Anyone who has followed the story of the Allergan Restasis patents owned by the St. Regis Mohawk Tribe would be very familiar with some of the concerns voiced by Sen. Hatch here. Along with the effects of IPRs on Hatch-Waxman proceedings, Iancu also said that his agency was looking at various factors regarding decisions to institute IPRs and PGRs as well as claim construction standards, claim amendment processes, the composition of administrative patent judge (APJ) panels, the conduct of PTAB hearings as well as various standard operating procedures at the agency.

“I was a chief author of the Leahy-Smith America Invents Act that modernized our patent system,” said Sen. Patrick Leahy (D-VT). “I’m proud that innovation in the U.S. has thrived since AIA with investment and research and development increasing significantly. The United States has climbed from number 10 in the Global Innovation Index in 2012 to 4th in 2017.” One could assume that Sen. Leahy was also proud that his bill has helped lower the strength of the U.S. patent system to 12th overall and has seen the United States also drop out of the top 10 in the Bloomberg Innovation Index this year.

Sen. Grassley asked Iancu about actions that the USPTO could take to mitigate IP issues in China, including unfair trade practices regarding IP which were the focus of the Trump Administration’s Section 301 probe launched last August. Iancu discussed the agency’s ability to work with the U.S. Trade Representative and other administrative agencies to ensure that the IP rights of American companies were being respected overseas. Discussing a recent trip of his own to China on IP issues, Sen. Grassley said that, “After that trip, I’ve come to the conclusion that China will do anything that’s moral or immoral, legal or illegal, ethical or unethical to get ahead and stay ahead… They’re going to be a very difficult nut to crack.”

Sen. Mazie Hirono (D-HI) asked Iancu questions regarding the results of a recent Yale study which found apparent gender biases at the USPTO regarding patent examination, including findings that patent applications by women inventors were both more likely to be rejected and were more likely to have more words added reducing the scope of their patent claims. While Iancu noted that he had some questions about the study, which had come out a little more than one week prior to the Senate Judiciary hearing, he did discuss that the agency was working on initiatives regarding women and minority inventors. Iancu also noted that World IP Day next Thursday, April 26th, would feature a heavy focus on the contributions of women inventors.

The Author

Steve Brachmann

Steve Brachmann is a writer located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He has become a regular contributor to IPWatchdog.com, writing about technology, innovation and is the primary author of the Companies We Follow series. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 19 Comments comments.

  1. Night Writer April 19, 2018 7:55 am

    Wow. Someone that is not a completely ignorant worthless POS like most of the CAFC judges.

  2. Joachim Martillo April 19, 2018 8:37 am

    I read articles like the following, and I have the impression that China respects IP rights and comity far more than the US. It may be time to abandon the meme of flagrant Chinese infringement of US intellectual property rights.

    Unfortunately the title Judge Orrick enjoins Huawei from enforcing injunction for infringing SEPs issued by China’s Shenzhen court (Huawei v. Samsung) is slightly confusing although the issues addressed by the various cases are extremely interesting.

  3. angry dude April 19, 2018 9:46 am

    “anything under the sun that is made by man” – that’s all it should be

    math and algorithms do not exist in nature on their own and any of those “discoveries” talking heads mention are just written approximations to “nature’s laws”.
    There are no “Nature’s Laws” cause any “law” is just a simplified mathematical description of something that can’t be described in full detail and never can be…

    Examples:

    1) Newton’s Laws are just crude approximation to Relativity theory which is not the absolute truth either

    2) Ideal gas equation is just an approximation to van der Waals equation which is in turn just an approximation to results of direct numerical simulations,which is just an approximation to a real thing

    etc. etc. etc.

    Those people are science illiterate and some of them are downright retarded

    “The fate of all mankind I see is in the hands of fools”

  4. angry dude April 19, 2018 10:04 am

    Both E=mc^2 and the Pythagorean theorem must be fully patent eligible (at their respective times)

    E=mc^2 is a formula written by a genius to approximate reality and having great utility (for a-bomb at the very least)

    Pythagorean theorem had a great utility for architects when it was first “discovered” (long before Pythagoras – probably in Babylon or Egypt) – I can’t even imagine how they did their jobs before it was known

    Neither of these existed in nature like berries to be picked – it took a human genius to formulate them and put them on paper as math formulas or theorems for others less genius folks to use

  5. Night Writer April 19, 2018 10:06 am

    @3 angry dude

    You are of course right. Ask one of the people that spout the nonsense of natural laws where are these natural laws and you end up with an answer something like they exist in the spirit world.

    The fact is all those equations and laws are nothing more than heuristics for our brains to use. Anything other statement is profoundly ignorant.

  6. angry dude April 19, 2018 10:26 am

    About Pythagorean theorem:

    Imagine that it’s not known today and you, as an architect for example, must go to some tabulated charts (like logarithm and sin/cos tables we used in high school) to find the length of hypotenuse…

    Then one day someone comes up with a simple formula for that… so no more tables, just a simple plug-and-play math formula

    Then those folks will call it a “discovery of nature’s law” or “just math”and strip the poor dude of any IP rights… so the next time that poor dude will not publicly disclose anything new and useful

  7. anon April 19, 2018 10:45 am

    Wow, further verification that Kamal Harris is a self-aggrandizing dolt no matter what the topic.

  8. anon April 19, 2018 10:50 am

    “Those people are science illiterate and some of them are downright retarded.”

    Well said except it is an insult to people born with limited cognitive ability. Any Senator should know basic science or be pumped full of it by staff. It is mostly a b.s. rhetoric “trap” (torn from the pages of TV lawyer dramas) to try to get Iancu to say something stupid, when he has lived his whole life thinking on his feet and not saying something stupid.

  9. Anon April 19, 2018 11:15 am

    I have phrased the “algorithm” issue thusly:

    There is math.
    There is applied math.
    There is “Maths.”

    The last is a philosophical view of the first two.

    The second is – and has always been (under a proper understanding) – patent eligible.

    The first has more to do with what Iancu labels as “are [_] set from time immemorial and that are [_] absolutes”

    Those items that are absolutes and that exist apart from man (one plus one equals two, no matter if man ever existed) – such are NOT products of man’s ingenuity.

    Of course, what has always existed and what man creates as a map of what has always existed may in fact be two very different things.

    This famously is portrayed in the Magritte work: “The Treachery of Images,” or as is colloquially known: “This is not a pipe.” (printed under an image of a pipe).

    One manner of recognizing “the treachery” is to take a course (or two) in the history of science and engineering (which I have done),

    From a proper perspetive, and when one looks at the long view, one sees that many of the ingenuity-filled maps created by the hands of man have – in fact – NOT been “real” in the sense that the universe is not in accord with the map.

    Phlogisten, the Aether, and many other examples abound.

    In the “philosophical sense,” when one takes a first step beyond the basic principles and applies those principles – even if merely building other principles, one has left behind the world of “math” and entered into the world of “applied math.”

    Maths” itself is NOT math. And this is where many of the Slash-dot or Techdirt minions fall flat in attempting to understand patent law.

  10. angry dude April 19, 2018 12:01 pm

    Anon @9

    It called a “utility patent” for a reason

    No one can patent “math” with unknown utility

    So as far as patents are concerned it’s always “applied math”

    And even if “math” itself is trivial and not new but you find new, useful and unobvious application for it – it’s still patent eligible

    Example 1: Famous RSA cryptography patent – all math in there is trivial but the application of it is not (to anyone skilled in the art back in the time when it was patented)

    Example 2: New use of active chemical in Viagra recipe – the chemical itself was very well known before Viagra patent

    There must be no difference in patent eligibility between above examples. Period.

  11. Ternary April 19, 2018 12:29 pm

    “One plus one equals two, no matter if man ever existed.” That is only true under the assumption of counting. In cryptographic computer methods, addition of equal operands is often 0. (1+1 = 0 and 7+7 = 0 as an addition over a binary extension field for instance in the standard Advanced Encryption Standard (AES).) Proving your point unintentionally.

    That is why I agree with The Dude. Anything under the sun.

  12. Night Writer April 19, 2018 12:52 pm

    Hmmm..gender bias? I can’t think of any time I have noticed that. I’ve interviewed so many examiners.

  13. Night Writer April 19, 2018 1:16 pm

    Part of reform needs to be to disband the CAFC and reform it without the Google judges.

  14. Curious April 19, 2018 1:25 pm

    Both E=mc^2 and the Pythagorean theorem must be fully patent eligible
    If claimed as a useful novel/nonobvious process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, then yes. However, I think the uninformed get wigged out when you starting arguing that these formulas per se are patentable subject matter.

    Oftentimes the devil is in the details, which is why the anti-patent crowd likes to overgeneralize everything — it makes their arguments much easier.

  15. Anon April 19, 2018 1:25 pm

    angry dude @ 10 and Ternary @ 11,

    I hear you.

    Both of your examples though go beyond math (as I have labeled it) and enter into the realm of applied math.

    And yes, applied math IS applied because there is (typically) some utility involved in doping so. As long as that utility is of the proper “Useful Arts” (that is, is NOT something of the Fine Arts), then the proper utility aspect of 35 USC 101 is met.

    I will add that 35 USC 101 was always meant to be a LOW bar to patent eligibility.

    As I noted in my historical reverberations comment, it is the Court that seeks to mash the wax nose, to once again institute its rather snobbish “Flash of Genius” type of imprimatur on innovations and deny patent protection to “lesser things” that they merely feel should not earn patent rights.

    But that is no longer their role (if it ever was).

    If “math” is involved in a claim, and that math is being used for some reason (to gain some utility) then the “math” no longer falls into the category of “math” and has moved into the category of “applied math.”

    Ternary, this occurs QUICKLY in your examples because you are setting out systems in which math concepts are applied to obtain utility. The application itself OF counting is something that alone may place “math” into “applied math.” One simply has to consider why one is counting and if there is some utility involved in applying counting in how the math is being used.

    Even the term “using math” runs the linguistic parallel to “use” as “utility.”

    Returning to the purposeful low hurdle that 35 USC 101 was meant to provide:

    There are two and only two “hurdles”:

    1) the innovation was to be able to be loosely associated with at least one of the statutory categories (in truth, innovation can often be reflected in multiple statutory categories).

    2) the innovation was to reflect utility within the Useful Arts (as opposed to the Fine Arts). What seems to bother certain people (among them the now missing Ned Heller) is that business methods are within the Useful Arts. Anyone who has had some semblance of education in the business arts would easily see that at least since the advent of Deming et al, scientific principles have been applied to management theory, easily bringing business methods well within the classical borders of what constitutes Useful Arts. It is only the snobbery of purists (typical PHD level bio-folks that bristle at the inclusion of mere business into the realm of patent protection. This snobbery is not only out of place, it is also detrimental to the advancement of ALL technical fields, given that ALL technical fields exist in the context of business. The overlap and interwoven aspects make such snobbery a self-spiting venture.

  16. angry dude April 19, 2018 2:27 pm

    Curious @14

    Any math formula (including E=mc^2 and h = sqrt(a^2 + b^2) ) can be part of a method (process) or apparatus patent claim…

    BUT only for achieving practical and useful result in a novel and unobvious way

    Of course anti-patent folks have (or pretend to have) no clue and wrongly state that “pure math” gets patented

    “pure math” can be copyrighted though, e.g. if you write an academic paper with a bunch of math formulas or a calculus cheat sheet

  17. Anon April 19, 2018 8:25 pm

    “pure math” can be copyrighted though

    Let me correct you, angry dude.

    This is simply not true.

    Math cannot be copyrighted.

    A book of math may be copyrighted, but the protection therein is thin and does NOT apply to the math itself.

    Your “academic paper” would earn copyright NOT for the math portions, but for the creativity and layout involved in the book itself.

    I stress this point because many anti-software patent people like to pretend that software is nothing but math – and that is simply not so.

    To be absolutely clear: one cannot obtain a copyright to pure math.

    Period.

  18. angry dude April 20, 2018 9:49 am

    Anon @17

    You are most likely correct

    But what if academic paper is just a bunch of math formulas (sufficiently unique to be substantially different from anything else ever printed) and nothing else ?

    Can someone else just copy it for his own paper ?

  19. Anon April 20, 2018 10:52 am

    angry dude,

    As I noted – the choice of layout (creativity of choice) is the thin veneer of protection.

    The math itself is not – and cannot be – protected by copyright.

    If it helps – think about this: even phone books gather some copyright protection!

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