USPTO begins process for finding new leadership at the PTAB

By Gene Quinn
September 5, 2018

For now, come September 2nd, the acting chief will be Scott Boalick, and the acting deputy chief will be Jackie Bonilla.

USPTO Director Andrei Iancu. August 27, 2018.

USPTO Director Andrei Iancu. August 27, 2018.

On Monday, August 27, 2018, I had an exclusive, on the record conversation with USPTO Director Andrei Iancu and Office of Enrollment and Discipline Director Will Covey. We spoke about the Office’s proposal to implement annual dues for patent practitioners, encourage patent related continuing legal education, and a rather broad based conversation about the role the Office of Enrollment and Discipline plays in policing the industry.

At the end of the aforementioned conversation, which was the agreed upon topic of conversation for the day, Director Iancu indulged me by going off topic to answer a several questions relating to the Patent Trial and Appeal Board (PTAB) and patent eligibility. Specifically, just days prior to our interview an announcement was made that PTAB Chief Judge David Ruschke would be stepping down and assuming new responsibilities associated with the Director’s initiative to better coordinate patent examination operations and guidelines with PTAB decision making, and vice-versa.

What follows is the brief conclusion to my exclusive interview with Director Andrei Iancu.

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Gene Quinn: Alright. I appreciate you guys taking the time to chat with me about that, but since I have you here, if I could just quickly pivot, Director, because I would be remiss having you on the record and not at least mentioning the most recent changes at the PTAB. Chief Ruschke has stepped down or left. I’ll let you characterize it however you think is factually the most correct, but there’s a change at the top.

Open-ended question. What does that mean, and do you know who might replace him? Where are you in that process?

Andrei Iancu: Chief Judge Ruschke, he hasn’t left the PTO, obviously. He will be in a new role at the PTO addressing an important issue for the office, which is the coordination between the PTAB and the overall patents organization. Sometimes there is a gap between the two organizations that we would like to bridge, or at least minimize. He will take on that role and study that issue and try to make suggestions on how to improve it. I do think it’s an important function to address. And at the PTAB, we will have new leadership. For now, come September 2nd, the acting chief will be Scott Boalick, and the acting deputy chief will be Jackie Bonilla.

We’re going to post the position, the vacancy. I want to encourage everybody out there, both inside the PTO and from the outside, who is interested, and thinks will do an excellent job, to apply. We are at the beginning of the process for finding new leadership at the PTAB.

Gene Quinn: Okay. I guess the last thing that comes to mind relates to 101. I guess it was earlier this month as PPAC, you had hinted that there was going to be some fresh 101 guidance. I’ll let you characterize it. I have in my mind it was in weeks or months, but sometime soon.

Andrei Iancu: Yes. I think that is our goal, the next several months, we should be able to put out broader based guidance to address the process of the 101 analysis that our examiners do. As I’ve said publicly many times, it is obviously a very complex issue. There’s a lot of case law that’s involved, and we need to be mindful of, and we just want to make sure we’re doing the right thing. We’re looking at that, and we’re working very hard on 101. I am hoping that we can get something out in the next several months. Can’t promise for sure because it is so complex, and we just need to make sure that it is actually doable, in fact, but we are working with that kind of a time frame in mind to come to a particular view one way or another.

Gene Quinn: Are you thinking about that being a federal register notice, or is that more like a memo from Bob Bahr to the examiners, or is it like a PowerPoint training guidance, or is it maybe all of the above?

Andrei Iancu: It’s at least several of the above. We haven’t figured all that out yet, but at the minimum it would be guidance to the examiners in combination with training, for sure. In many of these situations, we also put it out for public comment in the federal register. We did that, for example, with what’s come to be known as the Berkheimer memo.

Gene Quinn: Yes. You mentioned that at the PPAC meeting. I think you called it the so-called Berkheimer memo. Are you uncomfortable with that being called that?

Andrei Iancu: No, it’s just a name, but-

Gene Quinn: Because that is what it’s called.

Andrei Iancu: That’s what some people call it. Just calling it that would suggest that we’re tracking specifically a particular case. We are definitely …that particular memo does address the Berkheimer case, but goes into further explanation specifically for our agency.

Gene Quinn: You probably consider it the 2B memo?

Andrei Iancu: Okay. That’s another way to look at it.

Gene Quinn: Okay. I’ve taken up enough of your time, but I really appreciate you guys sharing some of your day with me today.

Andrei Iancu: Absolutely. Thanks for coming by.

Gene Quinn: Thank you.

 

Image Source: Gene Quinn

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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 7 Comments comments. Join the discussion.

  1. Concerned September 5, 2018 10:19 am

    My patent appeal to PTAB will test that Berkheimer memo and the new leadership.

    I cannot imagine too many patient applications with more evidence to prove their claims are not well understood, conventional or routine.

    Hoping for the best.

  2. Bemused September 5, 2018 12:29 pm

    I like Director Iancu. Clearly smart and very much in tune with the problems besetting the PTO and the effects on the innovation economy.

    These interviews with Director Iancu remind me of all those free-slowing, open-ended, enlightening, transparent and cordial interviews that Gene had with Director Michelle Lee…

  3. Name withheld to protect the innocent September 5, 2018 4:11 pm

    My patent appeal to PTAB will test that Berkheimer memo and the new leadership.
    Going to the PTAB is like going to the CAFC, whether you win or lose has more to do with who is hearing your appeal than the facts of your appeal.

  4. concerned September 6, 2018 2:38 am

    @3: Going to the PTAB is like going to the CAFC, whether you win or lose has more to do with who is hearing your appeal than the facts of your appeal.

    Agree 100%. I already experienced the same in the patent prosecution. They had to cheat to defeat (ignore their own official memos, toss 100% of all the evidence on record and pick bits/pieces of court cases instead of the entire thrust of that ruling). All that effort to reject the application which screws people with disabilities (nature of the patent application) and their own employer (Federal government).

    I bet the entire patent system cannot beat me on my other ideas that will just remain ideas until we all learn to play fair. The money, time and effort spent on this type of result are just too unilateral.

  5. Paul Morgan September 6, 2018 10:14 am

    Thanks again for these interviews Gene. [This is a test, since my comments for the blog on the first part were blocked.]

  6. Jianqing Wu September 6, 2018 11:02 am

    A quick fix to any institutional problems is to getting those who play politics for their personal gains. This is the quickest fix that the Director can find. The PTAB junk decisions have caused examiners to suffer panic in granting patents to non-corporate inventors. Examiners must know that non-corporate inventors could not deal with endless IPRs.

    The PTO needs to look into the massive number of arbitrary rejections signed by SOME SPEs whose sole reason for entering rejections is giving in political and corporate pressures, and satisfying their corporate clients. Giving in political pressure makes those leaders unfit for their jobs. Anyone can see differences between bad rejections due to good-faith mistakes and wanton rejections that are products of personal bias, lack of minimum fairness, and a total lack of understanding of the vital role of the patent system. They repeated what happened in the history. There is not point to keep bias leaders as the damages they have done are magnitudes more than the contributions they can ever made.

    Those leaders even do not have the wisdom to see that their arbitrary decisions will be exposed some day. Many have legal backgrounds, but lack a sense to strike a balance between the legal standard and political wind. I guarantee their bias decisions will be exposed, and ask inventors and patent owners to tell their stories. This is the only way to prevent the same from being repeated. “Those who cannot remember the past are condemned to repeat it.” The end results of all anti-patent movements are known.

  7. Curious September 7, 2018 12:50 pm

    We’re looking at that, and we’re working very hard on 101. I am hoping that we can get something out in the next several months. Can’t promise for sure because it is so complex, and we just need to make sure that it is actually doable, in fact, but we are working with that kind of a time frame in mind to come to a particular view one way or another.
    In the meantime, clients will literally be wasting millions of dollars on attorney time addressing overgeneralizations, by the Examiners, of the Federal Circuit’s analysis followed by overgeneralizations of the inventions.

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