On April 27, 2018, I had the opportunity to sit down on the record with Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
Director Iancu has been on the job just over three months, and in that time he has given numerous speeches that have raised the hopes of many in the patent community. He has promised that the Trump Administration will not pursue the same path for patents as had been pursued during the previous Administration, the Office has already issued fresh, pro-patent 101 guidance in line with the Federal Circuit’s decision in Berkheimer, and proposed rules to begin to reform the Patent Trial and Appeal Board have been released. It hs been a busy three months and no one believes he is done.
As you will read in part one of our two-part interview below, Director Iancu is knowingly and intentionally seeking to provide hope in the words he speaks because he believes a strong patent system is necessary for the U.S. economy to flourish.
In part one of our interview we also discussed the need for transparency, and the troubling Freedom of Information Act processes employed by the Office that seem hopelessly broken. We discussed the post grant challenge process, the PTAB, experience level of the Administrative Patent Judges on the PTAB and inter partes review.
Without further ado, here is part one of my interview with Director Iancu.
QUINN: Thank you for taking the time to chat with me today.
QUINN: I appreciate it. So maybe we should just start with a very open-ended question and go from there. I know you’re new to D.C. Has the job been what you’ve expected so far?
IANCU: It has. It’s exceeded my expectations. It’s been a very busy couple of months as you know. This is a remarkable place. The agency is quite remarkable. The folks I’m dealing with the frontline executives are amazing. It is a government agency but as you know we don’t run on taxpayer funds. Everything we do here is based on user fees and we perform services for users. And it runs like a business. And coming from the private sector it’s incredible to see a government agency run in large respects like a business. Very careful attention to our budget, to our user experience, to the services we provide. So overall it’s an amazing thing to see. And then beyond that what as you know what they’ve done for the past couple of months I have done a lot of public speaking. Mostly Chris’s fault for organizing all those things. But it’s one of the agenda items for me is to change the dialog on Intellectual Property and innovation in general. And it’s also nice to see that it’s working in the sense that I am sensing folks in the community engaging in a more positive pro IP dialog.
QUINN: Yes. That is something I wanted to talk to you about, because it seems that there is a lot more hope within the industry, at least perhaps up until a few days ago when the Supreme Court gave us a little bit of a surprise, which maybe we can talk about a little bit if we have time. But there’s overall a sense of hope and optimism that I haven’t felt for years. And I’ve heard some people say, and I think they are correct, that your speeches almost seem to be raising the bar and intentionally providing a great deal of hope. Is that something that you’re doing intentionally, or are we reading too much into what we are hearing from you?
IANCU: No. I am doing it intentionally and, look, I said it for my confirmation hearing I think it is critically important for us if we want to grow our innovation economy and to grow our overall economy, and to promote innovation we have to have an optimistic view of innovation and a policy agenda that is focused on inventors and the act of innovation. And it is changing the dialog is an affirmative policy position. So, in many of my speeches I tell stories of inventors. I don’t do that just for entertainment value I do it specifically as in order to elevate their visibility so that people can look up to them and try to emulate them.
QUINN: Now I’ve heard you mention the Wright Brothers specifically. You mentioned them by name and also by talking about their invention. And I suspect that you know that over the last several years they have not always been considered to be the heroes that many of us believe they are. Are you signaling that in your mind inventors of all types, whether they are from operating companies or not, whether they’re independent inventors or whether they come from a great lineage of federal laboratories or universities, but that all inventors are really contributors.
IANCU: Yeah, absolutely. Inventors are creators, inventors spark the imagination and create new things to enable us as a society as a whole to move forward and reach our next goals. And the Wright Brothers in particular are a fantastic example. here are two guys working in a bicycle shop who had a vision and combined that vision with incredible determination. This is the ultimate American story, right, when you have this ingenuity combined with unbelievable perseverance to get to an amazing result it is the American character and they are a symbol of that. If you think what they’ve accomplished here we are in 2018 the fundamental principles of flight still derive from their original inventions. And look they fought, they got patents, they fought hard to maintain their patents, to enforce their patents and I don’t think it’s a coincidence that they created what they created within our IP system. Could they have done it? Would they have done it without our IP system? I don’t know. I don’t think so but that’s irrelevant. The fact is that they did it within our IP system and it wasn’t somebody else in some other country who did it it happened here. Thomas Edison happened here. All this amazing progress happened here. And I think that is not a coincidence.
QUINN: What do you say to inventors who wonder whether the system and the laws are set up in a way today that would enable another Wright Brothers to exist? And by that what I mean is the Supreme Court comes out with the Oil States decision and some read that case, me included, and they call patents a “government franchise”. And then we have questions about the PTAB taking property rights away and that makes it difficult to get investment in startup technologies and the like. Inventors are out there really struggling. What do you say to them?
IANCU: I say to keep persevering. It wasn’t easy for the Wright Brothers they worked incredibly hard not only on their inventions but they worked really hard at enforcing their patents as well. It didn’t’ come easy back then, it’s never easy when you are successful, no success comes without perseverance. And inventors who – the inventors that come through our doors are folks who are used to that because they have worked hard to create what they’ve created. I am sure that what they come up with is not easy. So they should keep persevering. Look, I think that the conditions nowadays while not perfect, and I don’t know if they ever were perfect to be frank, but I think that conditions today are conducive to innovation. And especially now in going forward this Administration is very focused on creating conditions to continue and grow innovation. You saw a statement from President Trump yesterday that was on World IP Day he had the proclamation, that commits the Administration to strengthening intellectual property rights to ensuring that patent rights are reliable, and the President, the Secretary of Commerce, myself we’re all committed towards that. So what I say to inventors is keep inventing and come to us with those inventions to make sure you have the appropriate protections.
QUINN: I’m glad you brought that up. That’s something I wanted to talk about. I’ve gone to a lot of these events and I’ve seen you at these events and Secretary Ross has been at some of these events and he’s been talking about patents in a way that makes it seem like he’s very engaged. Under Secretary Copan as well. And it sounds like you guys are all actually on the same page.
IANCU: I think we are. And I think the natural inclinations of this Administration is to be in that direction. And you saw the President, the Secretaries, myself, Walt Copan at NIST. You’ve seen Makan Delrahim at the Department of Justice folks who are deeply connected to intellectual property in this Administration and deeply committed to intellectual property.
QUINN: Now I don’t know whether you can answer this, or even if it is a fair question because I’d like to ask what is in the mind of someone else. So maybe I can at least share what I hear and we can go from there. Everyone I talk to is very optimistic about what we’re hearing from you and Secretary Ross and Director Copan and Makan Delrahim at DOJ and even the President seems to be saying all the right things. But then you see what the Solicitor writes in certain filings, there does seem to be a little bit of a disconnect. I wonder whether that may also be simply because at the time some of these briefs were filed the Trump Administration hadn’t maybe really gotten its sea legs under it, for lack of a better term. There’s not really a question here yet, but I think what I’m trying to say is I sense over the last three to six months, as you and Makah Delrahim and Walt Copan have come onboard I’m starting to see the aircraft carrier that is U.S. government innovation policy turn. Do you sense the same thing?
IANCU: Well, all I can say is I can’t comment on what happened before I got here so but since I got here two and a half months ago and on a going forward basis the overall thrust on intellectual property that you hear from me is what we’re going to try to do. It’s a big government. There are many people who have the podium, but nevertheless the overall thrust is in that direction on a going forward basis.
QUINN: Now I’ve heard you mention a lot of times about transparency. It’s a theme that keeps coming up and when I caught you at one of these events I think I may have mentioned to you that when I hear you talk about transparency I hear you use that term as if you’re not a politician, which you’re not, so I actually believe you. Could we have a conversation about what transparency means to you?
IANCU: Yeah, sure. So, look, I think as I said here at the PTO we’re here in service of our users. Folks who come here to apply for a IP rights and the like. I think what we do here should be transparent to them to the extent possible. So there are several examples where this might come into play. But we want to – and we can talk about that, you can ask further questions but so for example when we issue a ruling or if we issue an institution decision for example in an IPR we want to make sure that we give folks as much guidance as possible about the thought process for a particular proceeding. With respect to the operations of the office look it was the SASS case came out on Tuesday and it was important to us to get out as quickly as possible some guidance and we did that yesterday morning. And things like that to be as responsive as possible so that users who are before us know where we’re going.
QUINN: Now, and I wanted to bring that up for a couple of reasons. And so I think I may have a couple difficult questions here.
IANCU: No worries you can always ask questions.
QUINN: Okay. and I want to be as respectful as –
IANCU: It doesn’t mean I have answers.
QUINN: — I want to be as respectful as I can because I know you’re the new guy. And I know the one thing that has been frustrating for me and others is dealing with the FOIA process, the Freedom of Information process, at the PTO. The PTO FOIA process is, in my opinion, so hopelessly broken that I wouldn’t even know to begin where to suggest how to fix it. In many cases when you give a FOIA to the Patent Office we get hundreds of documents where it’s just completely blank pages. And I have three FOIAs pending that were on the day that they were due extended ten working days, and those ten day extension have now come and gone and I haven’t gotten even a response acknowledging the deadline has passed. So, it almost feels like in a lot of cases the Patent Office is forcing people to sue to get even basic documents that seem like they should be up on the Office website. And it becomes a little frustrating. And, of course, these documents, most of them at least, deal with the PTAB. And then the other thing that I’d like to talk to you about too, if we can, is what appears to be a cloud of secrecy around the PTAB. For example, there are no rules of judicial conduct that apply to the PTAB judges. And there have been cases that we’ve uncovered where a PTAB judge has sat on over 50 petitions dealing with a former client that they litigated on behalf of. And when people see that I think it fundamentally calls into question everything that goes on at the PTAB. So, I guess there are a couple questions here. The first question I have, which I think is easy, is there going to be any movement towards adopting rules of judicial conduct for PTAB judges?
IANCU: So that is an issue we’re looking at. I frankly don’t have yet all the background on that so I can’t really comment in full simply because I haven’t been here long enough to get to that particular issue yet but it is an issue that I plan to look at.
IANCU: I’ll say this. And I said this at my confirmation hearing it is important for our users to have confidence in the system. Rightly or wrongly if on a particular issue if our users don’t have confidence in our system and in our processes then we need to look at why that is and to try to address is. And this is an issue I’ll take a look at.
QUINN: Okay. And then on the FOIA issue, I know this has to be low on your list of things to do, but can I ask you to maybe – and I don’t want to ask for any personal favors so I’m not asking you to look into my FOIA issue – but at some point I do think that the PTO FOIA process needs to be looked at because from what I – I don’t even know what to say. It seems like it’s a thoroughly broken process. If the documents can’t be provided I think that an answer just needs to be given and requesters notified that the PTO is not going to provide them because then at least the rest of the FOIA mechanism can be brought to bear. Because one of the things that I asked for, which I don’t understand why this doesn’t exist, there’s no roster of PTAB judges, so when I did a research study and found that over half of the PTAB judges when they were appointed were appointed at a time when they were associates and close to 15% of them were appointed at time when they had five or fewer years out of law school. I was expecting to find a higher concentration of PTAB judges from one certain law firm and I didn’t find that and there was another hundred PTAB judges I couldn’t locate any information on. So it almost feels like the PTAB is to some extent hiding this information.
IANCU: Well, let me – I don’t think you had a question in there but that’s okay.
QUINN: No, I know.
IANCU: Let me address the –
QUINN: If you have any thoughts on this because I don’t know –
QUINN: See, but this is the problem with the FOIA process because without those documents I almost don’t know how to ask the question.
IANCU: Let me just address some of the things you said. I mean you raised some important issues. On the broader topic of PTAB judges first of all let me just say to the whole issue of there is as far as I know there is no attempt in any way to be secretive, to use your word. Over all my view is again that our user – we have to do what it takes for our users to have confidence in our system. And we’ll make sure that we look into the variety of issues that might cause a lack of confidence and so that’s at the higher level from a higher level point of view. To your specific issue about the seniority of our judges I’ll just say this. For the issues that are before our board the validity of patents and the technical analysis that must be done to compare patents to the prior arts and the like I think any given panel of judges on one of our proceedings has overwhelming qualifications. The folks who sit on a panel collectively for example have significant technical expertise. And significant legal expertise. Are there some judges here who are more junior than others? For sure. But we take care to pair up on a particular panel the junior judges with more senior judges and the like to make sure that we have an appropriate balance. Now if you compare to other judicial bodies our PTAB judges perform a specific task and for that task they are collectively uniquely qualified. I think it’s important to look at the combination of not just legal years in the field but also technical expertise. And also on a panel by panel basis the collective expertise both legal and technical.
QUINN: I think that’s a very fair point. The only pushback that I would give is that now you have the PTAB considering Constitutional issues and the rules of evidence and procedure apply. Sometimes I see decisions that are made on jurisdiction basis. Documents that have been produced for FOIA requests by others suggest that there have been situations where certain panels have been deliberating with other members of the PTAB that would be superiors and that’s concerning because then that doesn’t seem like it comports with the requirements of the APA. So, there are some of those kinds of questions as well. And again, it comes back to the whole transparency issue. Maybe there’s absolutely nothing there. Maybe there’s no “there” there.’ But when you can’t see what’s going on and the documents aren’t allowed to be received; and frankly I’ve never litigated in a courtroom where you had to ask permission to file a motion.
IANCU: Oh, I don’t know. I mean so for example there are district courts. There are district courts where just as an example you have to in order to file a discovery motion you have to file a letter brief and then if once you get past that the court can say okay you can file your file motion or not. And actually there are situations, there are courts where I believe you have to go through a letter brief request to file a summary judgement motion and things like that.
QUINN: Okay. That’s fair. But my understanding of what goes on with the PTAB is a little bit different. There have been cases, I believe, where people have asked for permission to file something and it’s been denied and they’ve been told if they ask for permission again they are going to be sanctioned. And in some of the cases it’s been late discovered material – the type of stuff that was not available previously that a district court judge would ordinarily allow you to file – as long as you had been looking and you weren’t dilly-dallying. So, some of that type of stuff I wonder, you know, if the judges had more legal training or had been litigating whether they might be – because I look at that and I don’t think that would have happened in an Article III court. And I don’t know what the answer is because I understand in the stuff that goes on at the PTAB you have to have people that have a scientific background and maybe there’s just a process that needs to be put in place to consider some of these more procedural motions.
IANCU: Let me just make two points on this. First of all as I mentioned a few minutes ago when you look at panels and you’re looking at their level of expertise both legal and technical look at the whole panel combined because they’re sitting in groups of three and there’s a reason for that. So when you’re considering the legal expertise on a particular IPR consider the combined expertise or look at all three of them because you will always have somebody more senior. But let me also say this. And as I said in quite a few of my speeches, we are really looking at the entirety of the process beginning to end. Including the trial practice guide. And we are very much interested in seeing whether there are any adjustments that need to be made including on procedural issues. Now just because we’re looking doesn’t mean we’re going to make changes. Some things might be just perfectly fine but some things might not and if they’re not we will make appropriate changes. And it’s an iterative process. We very much do appreciate the feedback and you provide the very important service because you and your readership care a lot about the system and you are users of the system. And hearing back from you all is important in that process. Whether privately or otherwise. So in the next few months we’re going to have our results from our current investigation and our study. And if several months from then if things need to be tweaked again we’ll look at it again.
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