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