USPTO Director Iancu tells AIPLA annual meeting: ‘It is a new day at the PTAB’

By Gene Quinn
October 25, 2018

Andrei Iancu, USPTO Director, speaks with Lisa Jorgensen, AIPLA Executive Director prior to the keynote luncheon.

Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, delivered the keynote speech (read the full text) earlier this afternoon during lunch at the American Intellectual Property Law Association annual meeting at the Marriott Wardman Park Hotel in Washington, DC. Director Iancu began his speech by saying there will be a “new day” at the USPTO for the Patent Trial and Appeal Board (PTAB).

Director Iancu announced that within a matter of days the USPTO will formally publish a new policy relating new amendment procedures that will be used in America Invents Act (AIA) trials. “Claim amendments have been relatively rare… and infrequently granted,” Iancu said. “Some have suggested that parties have stopped trying to amend because they see the process as futile…. It is important to ensure that post grant proceedings are not all or nothing.”

“The amendment process should allow the patent owner a meaningful process to draft narrower claims,” Iancu said after pointing out that the statute specifically allows for patent owners to amend claims. “We propose a new amendment procedure [with amendments] filed by the patent owner filed soon after filing,” Iancu said. There would be an opportunity for opposition by the petitioner, a preliminary decision by the Board and then an opportunity for the patent owner to amend in light of the Board’s preliminary decision, another opportunity for opposition by the petitioner, and finally a decision by the Board.

Director Iancu pointed to the fact that in August the USPTO updated the trial practice guide that applies to the PTAB, and in September published two new Standard Operating Procedures (SOPs), specifically pointing out that the first new SOP makes expanded panels a rare event, and the second SOP creates a Precedential Opinion Panel (POP) to “enable top agency management to address some of the thorniest issues… and to speak with one voice.”

Director Iancu pointed out that the TTAB has more precedential opinions despite a much smaller docket, and that the PTAB should have more precedential opinions than the meager handful of precedential opinions that currently exist.

Since Director Iancu was confirmed to lead the USPTO many have suspected that he would make major changes to the Patent Trial and Appeals Board (PTAB). Director Iancu has delivered on those expectation in recent months, starting first with the trial practice guide, moving to the new final rules requiring the PTAB to apply the same claim construction rules applied in federal district court (i.e., changing from the broadest reasonable interpretation examination standard to the Phillips standard).

“It is a new day at the PTAB,” Iancu forcefully stated.

This morning the USPTO also started a soft launch of its new look website, which Director Iancu discussed during his keynote.

Image Source: Gene Quinn.

UPDATED LAST: Thursday, October. 25, 2018 @ 2:21pm EDT

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.

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Discuss this

There are currently 10 Comments comments. Join the discussion.

  1. Anon October 25, 2018 11:21 am

    waking from a dream…

    Iancu: Upon consideration of the Constitutional authority, and more to the point of recognizing limitations on the Constitutional authority, as that authority relates to the Executive branch, I, as Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, hereby announce that we will act within the limits of authority and execute the law as written by Congress.

    This means that we are hereby recognizing a limitation of patent law that has recently been written by a branch of the government other than Congress.

    We state that the cases heard by the Supreme Court, and the meaning of law as has been deemed to flow from those cases, will be constrained to apply only when the same exact factual pattern presents itself.

    We state this, in no small part, after realizing that what the Court has done, either knowingly or unknowingly, is engage in more than interpretation of Patent Law and has impermissibly engaged in common law law writing.

    As leader of the Patent Office, I cannot engage in activity beyond my own authority. I may not use the “directions” from the Supreme Court as an excuse to allow examiners to further engage in common law law writing, which is what is happening with attempts to “just apply” the directions from our Highest Court.

    So today I announce that unless a fact pattern is strictly identical to a case that has been heard by the Supreme Court, we will apply only the actual words of Congress in regards to determinations of patent elibigility under 35 USC 101.

    I invite Congress, rather than the Courts, to change the written law of which we execute, if Congress, rather than the Courts, wants “something more.”

    … alas,

    but a dream…

  2. Curious October 25, 2018 11:45 am

    I’m trying to temper my expectations, but I hope that some real change is announced. That being said, as I have mentioned time and time again before, real change starts and ends at the federal courts.

    Despite the problems at the USPTO, there will have been approximately 300K patents issued by the USPTO in CY2018 and probably close to 1M patents issued over the last 3 years. However, all those issued patents are worthless if they cannot be enforced, which is where the federal courts come into play.

    The federal courts aren’t going to change on their own because they don’t have to. This leave Congress as the only driver for real positive change for the US Patent System.

    That being said, can someone tell me the last time Congress passed a bill that was considered friendly to patentees? The AIA (aka, the America Infringes Act) doesn’t count for obvious reasons.

    I really want positive news because this is my profession, and I care about the health of the US Patent System. However, I don’t see how real progress can be made without the intervention of Congress.

  3. Anon October 25, 2018 3:02 pm

    Curious,

    See my dream at 1.

    That dream would indeed take some gumption.

  4. Pro Say October 25, 2018 3:04 pm

    Hazah Director! Hazah!

    While not a silver bullet to the heart of the antipatentism beast, this is yet another very welcome arrow to its body.

    MPGA! Make Patents Great Again!

    (anon — you had me going for a minute there 🙂

  5. EG October 26, 2018 10:37 am

    “waking from a dream”

    Hey Anon,

    I hear you, but what Iancu says is spot on-SCOTUS has exceed its Constitutional boundaries when it comes to patent law jurisprudence. If only Congress would listen and act to corral this SCOTUS “beast.”

  6. Curious October 26, 2018 10:41 am

    That dream would indeed take some gumption.
    I suspect that I’ll long be retired before your dream comes to fruition.

    This announcement by the USPTO was step in the right direction, but having more opportunities to amend during an IPR proceeding is but a band-aid. Moreover, it is a band-aid that can be ripped off by Iancu’s successor, should he/she choose to do so.

    If Iancu wants to make a real difference, he needs to (after the elections) go to Congress and advocate for real, systematic change to the US Patent System that benefits the inventor class (not the infringer class, who was the apple of Michelle Lee’s eye).

  7. Anon October 26, 2018 11:39 am

    Moreover, it is a band-aid that can be ripped off by Iancu’s successor, should he/she choose to do so.

    Absolutely correct.

    But that is not even the worst of it.

    The “worst” of it (ok, at least a “more worse”), is that ANY amendment practice raises a very serious issue in that actual examination on the merits is NOT done in the post grant scenarios. There is NO actual examination (by examiners). And the fact that claims “must be more narrow” is simply NOT a saving grace.

    I’ve covered this in prior discussions, but the long and short of it is that once cannot “safely” say that just because an amended claim is more narrow than a claim that at one time was held to be patent able, does NOT mean that the amendment itself is patent able based on the now REMOVED prior “fence” effect of the rejected claim.

    As is often the case, even though dependent claims may provide a spectrum of scope, during the actual initial examination, it is the independent claims that carry the day, and the dependent claims “ride along,” without any type of “secondary fence” being established.

    When one removes the primary fence in a post grant proceeding — and without any actual examination in order to properly set the “new” fence limits — what comes out of the post grant trial for most any claim is a claim that has NOT been truly examined.

    Keep in mind that the petitioner is NOT an examiner.
    Keep in mind that the “keeper of the trial” (the Office in the form of the PTAB) is NOT an examiner.

    This is a critical flaw in the very design of the post grant system as written by Congress (and their helpers) in the AIA.

  8. Kelly Kennedy October 26, 2018 1:04 pm

    With out a doubt these moves made by Mr. Iancu are steps in the right direction and light years ahead of the toxic system Ms. Lee left behind for patent holders. We need to see much more done, and Congress need to pass pro patent bills so we can wake up the SCOTUS and shift the place of power from companies like Amazon and Apple to the small inventor who has lost her/his voice in their right to get paid for their inventions. Shut down the patent killing laws so people are not afraid in fighting someone like Google from stealing their patents again and give them the confidence to invent again. Good news but I want to see much more done.

  9. B October 26, 2018 2:32 pm

    @ Anon “I, as Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, hereby announce that we will act within the limits of authority and execute the law as written by Congress.”

    I would really, really, really like to see the internal memos circulating in the USPTO right now

    I mean, like, a lot!

  10. Jianqing Wu October 28, 2018 4:21 am

    The justices in the Supreme Court STILL think they are common law judges in the King’s bench and still have an unlimited power to make and change laws. They still think that they are controlled by their own precedents (which are largely absurd, biased, and conflicting personal views).

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