“I do worry that the current state of Section 101 in patentable subject matter weakens the robustness of our IP system in the affected area,” Iancu said.
On April 27, 2018, I had the opportunity to speak on the record with new USPTO Director Andrei Iancu. In part one of our interview we discussed the Patent Trial and Appeal Board, inter partes review, the difficulty I and others have getting what should be public documents from the Office when making Freedom of Information Act requests, and much more. During this second and final installment we begin with me trying to get Director Iancu to make a comment on the just decided Oil States v. Greene’s Energy, and whether he personally believes patents are a property right. We then pivot to discuss patent eligibility, the Berkheimer guidance, and we spend a few minutes with some personal questions to get to know him a bit. At the end of the interview we shared a moment discussing our fathers.
While others will no doubt have their opinions, I believe Director Iancu will do everything he can to work to establish a better, more certain, stable and fair patent system. I am also cautiously optimistic that he will have success. Of course, how much success he has will be determined by how much cooperation he receives from Congress. But if the Berheimer guidance and the proposed rules relating to converting PTAB claim construction to the Phillips standard are any evidence, he is off to an excellent start.
Without further ado, here is the finale of my interview with Director Iancu.
QUINN: Okay. So, moving along. Before I forget and not to just constantly throw tough questions at you, but do you personally think a patent is a property right?
IANCU: So, look. The Supreme Court has issued this decision now. And I won’t comment. At least for now beyond what the Supreme Court has said.
QUINN: Okay. Well, you can’t blame for trying. So, moving on to 101, I heard you testify at the Senate hearing and I must say I was surprised. It seemed to me at the end of that hearing when you were talking about 101 you were inviting a legislative discussion that would open up the statute. Did I hear that correctly?
IANCU: What I said is that in a variety of my speeches what I’ve said is that something must be done with respect to 101 in general. And there are certain things we can try to do from here from the PTO such as through guidance. And we began doing that with a memo I think last week or two weeks ago something like that. And we’re looking to do more. We’re obviously constrained by court decisions and obviously by Supreme Court decisions. And we must and we will comply with Supreme Court precedent. And what I said is that if Congress decides that it wants to engage in a legislative proceeding we would be happy to work with them and provide all the assistance necessary for them.
QUINN: Okay. Let me try one more time because I don’t think you answered the question exactly. And let me try and be more direct. I don’t think previous Directors went looking for or inviting that level of scrutiny from the Committee. Did you say that purposely to get them thinking that maybe they should be opening up the statute?
IANCU: Well, at this point I’m focused on the PTO and what the PTO can do. And what the PTO can and cannot do given the various judicial decisions. And we’ll try to do whatever we can from here. And what the legislation does, what Congress does that ultimately is up to them. But again, and I don’t want to speak for prior administrations, but for us if they do go ahead and they decide to look into the statute then we will be very happy to work with them on that. And let me just say obviously, and I’ve said this at the hearing I believe, the statute hasn’t changed at all since 1952. Obviously technology has made great progress since 1952. In fact, if you look carefully at the statutes it substantively hasn’t changed since 1793. The categories of what’s patentable according to the words of the statute are almost identical now in 2018 as they were in 1793. With on the phrase that matters the only thing that’s different is that now we have the word “process” which was introduced in 1952 and prior to that it was the word “art.” And there is some legislative history that suggests that that’s just a modern term for the word “art.” And it is hard to imagine that folks who wrote this statute in 1793 and even folks that wrote or amended the statute in 1952 had in mind or were even able to predict all the new technologies that we’re grappling with today. Algorithms, software algorithms is an example. The world of software and computer algorithms back in 1952 was in its infancy. And certainly wasn’t around or anticipated in 1793. So it’s not a surprise that courts are struggling right now to figure out whether some of these are in or out. A diagnostic tests, DNA analysis not around in 1952 certainly not in 1793. So those are just some examples.
QUINN: Does it worry you that so much startup investment in artificial intelligence is moving to China?
IANCU: Well, that’s a very important question. So I don’t know for sure if that is the fact. There is a lot of anecdotal evidence to this effect and there is a bunch of stories that are surrounding this issue. And I think more studies need to be done and in particular even if it were the case there is the second question is just what’s causing it, right? But for our purposes what I know for a fact is that in order to incentivize American innovation whether it’s artificial intelligence, DNA processing, or anything else we need to have a robust predictable reliable intellectual property system here at home. And I do worry that the current state of Section 101 in patentable subject matter weakens the robustness of our IP system in the affected areas. And if industry cannot predict in a relatively reliable way whether their investments will be protected from an intellectual property point of view I think that will result in less investment, less growth, fewer jobs created in the affected industries. So I do think it is critically important for our economy. And again whatever industry we’re talking about and whatever industry we want to grow it’s critically important to have a strong reliable and predictable intellectual property system.
QUINN: Yes. You know, I was at the Newsuem for the LeadershIP 2018 event and David Kappos asked a question of Congressman Stivers. David explained that he has been in communication with the Cleveland Clinic and said that they have completely given up on medical diagnostics because investors simply will not fund them, so they’re moving on. When you hear that what’s your first thought about that?
IANCU: Well, my first thought is that if accurate I am very concerned about it. And my second thought is what’s causing it. And then if it is the IP system then we need to fix it. Now, the fact of the matter is that I do believe it is more difficult now than I think it should be to know whether medical diagnostics, artificial intelligence and other such areas are patentable or not. And without knowing that, without knowing for sure where the lines are, what’s in and what’s out I absolutely do think that it is more difficult to raise funds for a startup and to grow a particular company and therefore an industry. And that is one of the main reasons I’m very focused on this issue.
QUINN: What do you think you can do here at the Patent Office specifically? Because as you mentioned, you’re to some extent constrained by the decisions, which others have observed — I think Judge Linn when I interviewed him said that he even has trouble reconciling all of the Supreme Court’s 101 decisions. How can you as a Director help the examiners get on the same page?
IANCU: So, there are several things we can do through guidance. We have to work with the current test that the Supreme Court has given us. Now that test – and the courts are trying to apply that test on a case-by-case basis. And then what happens is and what’s happened in the past federal circuit comes out to the variety of case decisions, we summarize those cases and we provide further guidance to the examiners in reaction to those cases. And that’s all well and good and it’s important to keep doing that. but what I think we can do in addition to that is forward looking guidance what we think the law is or should be within the balance of the Alice-Mayo test. So just to use the example from last week, okay? On the second step of the Alice-Mayo test where one has to look at whether something is conventional or not the additional elements whether they’re conventional or not. Well, what does that mean? What does the word “conventional” mean? And how does it differ from just having prior art in the record? And are our examiners supposed to do now a conventionality search of some sort or analysis of some sort? And more importantly how are they to document it? So those are things that we just looked at this one narrow issue of conventionality and we provided this guidance. The guidance there’s two things. First it tells our examiners how to document their conclusions. Okay. You’ve got to put it in writing. You’ve got to support it with evidence. And unless you’re absolutely sure then that it’s so common that you can just take traditional notice but then if challenged then you still have to support it with evidence. So that’s on the documentation front and I think that can help with the records and it can help our applicants. But then there’s also the question of what does it mean? How is an examiner to know what conventional means? And we said look it’s the same analysis as you would do for Section 112 which you’re used to. Our examiners know how to do Section 112 analysis we’ve been doing at the office Section 112 analysis for years on years. So now our examiners have something to ground themselves in. they have the experience and the knowledge of how to approach this one issue. So that was that guidance. There are other areas where we can try to do similar things and provide similar types of guidance to help not just the examiners but also the applicants who come before us.
QUINN: Okay. Well, we’re running a little short on time here now. I sometimes ask a series of rapid fire questions that are of a “get to know you” nature. Are you game?
QUINN: In your free time, if you have any, what are your hobbies?
IANCU: First of all I haven’t had any free time since I’ve moved to D.C. But just generally speaking I love to read about invention and innovation especially in the United States. The story of the Wright Brothers for example. The biography of Edison you’ll see it on my shelf back there I just finished that. And things along that nature. I love to read American history. I read whatever biography of American presidents especially the Founding Fathers. And I do a lot of that. I’ve read Washington, Madison recently by Lynn Cheney. I’ve read the just recently the Hamilton book. So anyway so that’s one thing. I love to ski. So whenever I can I try to get to the mountains to ski. This year was a little bit truncated because I moved to D.C. in the middle of February so I missed out on probably the best part of the season. So hopefully I’ll get to do more of that next year.
QUINN: You mentioned the Founding Fathers. If you could meet one and only one who would it be and why?
IANCU: [Laughs] Oh, boy. I think all of them in combination. The unbelievable luck or of history that they were all combined at the same time it’s I think that provided significant impetus for what we have here. Boy, just one. I guess I would go with Hamilton for now. To some extent he has a bit of a similar history to mine. He was an immigrant to this country, he came here with nothing and he worked really hard and he got to where he got by simply unbelievable perseverance and his own wits. It is such an amazing symbol of what this country provides and I can attest to it firsthand that the opportunities provided in this country to folks who are willing and want to work hard are unparalleled anywhere in the world and anywhere in the history of mankind. So I related to him a little bit more perhaps than the others. But I have to say it’s a tough question because each one of them have, I mean Jefferson obviously I mean I don’t have to go through them all but Washington nothing would have happened without him. So.
QUINN: Okay. So now to the more mundane. Do you have a favorite movie?
IANCU: Dead Poet Society.
QUINN: How about coolest invention of all time?
IANCU: Oh, again so tough to choose. But given my background I will go with the wing warping by the Wright Brothers.
QUINN: How about the best fictional inventor of all time. And I can give you a couple so popular choice might be Tony Stark from Ironman, Q from James Bond, Emmet Brown from Back to the Future those are a couple popular choices that you can pick from one of those or go off the board.
IANCU: I’ll go with Q from James Bond because they were somewhat real and practical. Back to the Future is also very cool but I haven’t really actually seen that in practice and I’m not sure we’re going to see it in our lifetime so it’s a little bit too fictional.
QUINN: I could go with any of them. I always say if you can invent your way to becoming one of the Avengers then that’s something special. Oh, I just had it – I lost it. Maybe –
IANCU: Well, while you are thinking but keep thinking over the next question. But there are so many cool real inventions of all time I should say that one of the coolest in my opinion is Edison’s speaking machine, or phonograph. It revolutionized the world at the time. we’re still living that revolution. It democratized sound in so many different ways. And the story of how he came up with it is phenomenal. But I’ll save that story for a speech later on.
QUINN: Okay. Star Trek or Star Wars?
IANCU: Oh, for me Star Trek.
QUINN: Oh, I knew I liked you. [Laughter] And why?
IANCU: Oh, just –
QUINN: There is a right answer here by the way. [Laughter]
IANCU: Well, for me a whole host of things but the different characters and the different worlds that they keep on visiting it makes it tremendously interesting and the diversity of individuals and societies that combination is unique.
QUINN: See, and I like both. But Star Wars always seems to me to be more about science fantasy and Star Trek is science fiction, you know, there was always another gadget, there was always another invention and so for me that was I thought always the real cool thing. Did you have anybody along the way a teacher, somebody in your family that inspired you to become an engineer or that pushed you forward that you look back and you say you know without that person I probably wouldn’t be sitting here today?
IANCU: Well, that’s an easy question so that’s my dad. My dad who passed away about two and a half years ago was and is my hero. He was an engineer himself but he was much more than that. He was a mentor to me in all aspects of life not just my professional life. And is one of my if I have any regrets or sad parts of this experience it’s I’m having now is that he’s not here to experience it with me. And I should say, Gene, and I mentioned this to you beforehand that when your dad passed away you had an amazing column and it was I read it contemporaneously when you put it out and it was very inspirational for me and I reviewed it actually again last night because I knew you were coming here today. That was so moving, that tribute was so moving to me it said a lot about you actually and it also tells me what an important role you have in just in life and in your professional career now you have a podium and you’re using it and people read it and you have an impact on a variety of things. But your story and your tribute to your father had an impact on me. And then I didn’t even know you back then so that’s so to speak the power that you have and good for you for using it.
QUINN: Well, thanks. I appreciate that and as we talked briefly about our fathers it’s, you know, it’s hard you know and one of the things that is coming up for me that I always shared with my father is, you know, he was the only person I knew that was really into horseracing. I grew up literally a block away from a horseracing track, so we shared that interest. And so, the Kentucky Derby is next Saturday and wherever we were that was always a time and we’d watch it together on TV wherever we were and we’d talk about it. And so, I don’t want to be alone for the first Kentucky Derby we’re apart, so I’m having a small party with some friends and – but fathers, you know.
IANCU: That’s great. You can’t replace a parent. But the qualities in them and the messages that they delivered still live on and we have the memories and that’s important.
QUINN: Well, thank you. I really appreciate you taking all this time and –
IANCU: I’d be remiss before we go off the record for not mentioning patent 10 million.
QUINN: Oh, yes, that’s right. Have you picked –
IANCU: That is coming up.
QUINN: Do you know which patent it’s going to be yet?
IANCU: No. But it’s an important milestone that we’re looking forward to celebrating this summer.
QUINN: Well, very good. Very good I look forward to seeing it and if I can give a plug, it would be great if it was an independent inventor. [Laughter] But thank you, Director.
IANCU: Thank you.
[End of recording]