The ‘Iancu Effect’ Won’t Matter if Not Supported by the Courts or Congress

By Gene Quinn
February 11, 2019

“The question that remains for patent industry observers is whether the Federal Circuit will ultimately agree with what Director Iancu is doing in order to implement predictability.”

https://depositphotos.com/127425732/stock-photo-the-chamber-of-commerce-in.htmlThe Global Innovation Policy Center (GIPC) of the U.S. Chamber of Commerce issued its annual International IP Index ranking the intellectual property environments in 50 of the most important economies. The 2018 edition saw the United States rank #1 overall for intellectual property, as the top jurisdiction in the world broadly speaking for intellectual property protection. The 2019 edition, released February 7, 2019, again saw the U.S. maintain its dominance as the top jurisdiction in the world for intellectual property protection as a whole.

In 2018, however, the U.S. sank to twelfth place in the Chamber rankings relative to patent protections. In 2019, the U.S. rose to a tie for second place. This is certainly welcome news, but it is worth mentioning that the historic lead the U.S. had as the top patent jurisdiction in the world since the early 1980s has largely been forfeited over the last decade. Indeed, the U.S. patent score of 7.5 is only 0.25 points ahead of thirteenth-place Italy, and only .5 points ahead of both Hungary and Taiwan, which find themselves in a two-way tie for fourteenth-place. Singapore, which took first place in the Chamber patent category, came in with a patent score of 7.75. Thus, the top 15 patent jurisdictions in the world are tightly packed in these rankings.

Although the U.S. woes over the past decade are well documented, the twelfth place ranking last year for the United States took place before USPTO Director Andrei Iancu was sworn into office. Indeed, this month marks the first anniversary for Director Iancu. At the Chamber event celebrating the release of the IP Index, Director Iancu would joke during his remarks about the Chamber report making quite a nice anniversary present.

There is little doubt in the industry that the rise of the U.S. in the Chamber rankings was due to Director Iancu, or what patent industry professionals are already referring to as “the Iancu effect.” Without referring to it as the Iancu effect, Patrick Kilbride, Senior Vice President of GIPC, did acknowledge during a press call last Thursday that the U.S. rise in patent rankings was due to Director Iancu’s efforts to address predictability.

Before he delivered his remarks at the Chamber IP Index release event, I had the opportunity to briefly speak with Director Iancu on the record.

QUINN: So, Director, the U.S. Chamber of Commerce is out with the new IP report and the U.S. has raised its ranking. Many of us think, myself included, this is probably due to a lot of what you’ve done over the past year, and because there is a lot of optimism for the future. So, what do you have to say?  Are you pleased?

IANCU: Well, yes, first of all, I’m very pleased and I very much appreciate the fact that the Chamber has recognized the work that the PTO has done over the past 12 months to increase the reliability and predictability of IP rights.  I think we’ve made great progress on a variety of fronts and we have more work to do.  We have more work to do to further improve our systems and to further get folks to understand the importance of intellectual property for our economy and for the United States in general.  But, overall, I’m very pleased with the results this year and look forward to working with everybody and all the stakeholders to do even more.

There is great optimism among patent owners and innovators that things are changing and will continue to improve at the USPTO under Director Iancu’s guidance. The question that remains for patent industry observers is whether the Federal Circuit will ultimately agree with what Director Iancu is doing in order to implement predictability. Of course, it will not be up to the Federal Circuit to like, dislike, or agree with any of the structural changes Director Iancu is implementing. But will the Federal Circuit agree with the Berkheimer guidance, which relates to Alice/Mayo Step 2B? Will the Federal Circuit agree with the recently released patent eligibility guidance, which relates to Alice/Mayo Step 2A? Will the Federal Circuit agree with decisions from the Precedential Opinion Panel (POP), which should start to issue precedential opinions that will bind the entire Patent Trial and Appeal Board at some point during Q2 2019? The fate of the momentum built by the patent system under the direction of Iancu will ultimately be decided by those wearing black robes, unless and until Congress decides innovation policy matters enough in the 21st century to put the country first and do the right thing for America.

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The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. 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 4 Comments comments. Join the discussion.

  1. Lost In Norway February 12, 2019 8:31 am

    You have hit exactly what worries me the most. Iancu has done an incredible job. But he’s just a man giving guidance. He has not managed to rewrite court decisions or rewrite the law.

    I worry that the next director will simply overturn everything. Without the courts or preferably congress to “lock in” his changes, this is likely going to be a short term gain.

  2. Jason Lee February 12, 2019 9:41 am

    The sad part is the elites oligarchs control the men in the black robes and the politicians. Its not in the best interest for companies like Apple and Google to allow a small patent holder to have any power. America is a system that is run and controlled by special interest groups. America is, whether we will admit it or not a plutocracy. Im a little shocked that they have not shut down this website.

  3. Anon February 12, 2019 12:42 pm

    LiN,

    It’s worse (far worse) than merely the possibility of a “next Director” undoing things.

    Just as it is ultra vires for the judicial branch to substantively REWRITE (note, this is not the same as “interpret,” and we must be clear that what has happened with the eligibility law is NOT a matter of mere interpretation) the statutory law that is patent law, it is likewise improper for the Executive branch to attempt to do the same through its own “interpretations.”

    These protocols constrain examiners to execute the law as directed.

    But these constraints are not — nor can they be — the actual necessary mechanisms needed to “fix the scoreboard.”

    Applicants (our clients) need to be aware that ALL patents obtained through these protocols will still face a hostile judiciary that has been he11-bent on NOT recognizing the existence – and level – of a certain legally prescribed notion of validity.

    The protocols do NOTHING against the very thing that Iancu expressly notes: the Supreme Court “gift” of Common Law law writing on eligibility will continue regardless of the existence of even these latest protocols.

    As I first noted, the protocols are doomed to failure because they do not (and cannot) sever the Gordian Knot of conflicting Common Law re-writes.

    We do our clients NO favors by even attempting to think that the “Iancu effect” somehow necessarily will impact anything beyond the grant of the patent (as a first stage in protecting innovation).

  4. Jacek February 12, 2019 7:28 pm

    Self congratulation – “how good job we did for Google” by entity well known for its right wing political ties. If you are looking at ranking by other institutions according to WIPO US in 2018 was at 4th place. Few months ago I was reading some other statistics from EU were US patent system was listed among “Problematic”
    https://www.internationalpropertyrightsindex.org/countries Is listing Finland as 1st, US is 14th on their list.

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