“I think if we all do our jobs correctly, we should reach the same result, at least theoretically…. To the extent there’s confusion, [the CAFC] could address it; we’ve shown it’s doable here.” – Andrei Iancu
U.S. Patent and Trademark Office (USPTO) Director, Andrei Iancu, joined day one of Virtual CON2020 today to chat with IPWatchdog CEO and Founder Gene Quinn about topics including counterfeiting, Chinese IP theft, and the continued confusion in the courts and at the Patent Trial and Appeal Board (PTAB) around patent eligibility.
Clarity on 101 is Achievable
On the topic of Section 101 and patent eligibility, Quinn lamented the recent American Axle decision, wondering if the holding that an invention involving a drive shaft could be considered directed to a law of nature represents a broader and growing disrespect for intellectual property. Iancu could not comment on the case itself, but said that with respect to the basic principle, “you’re absolutely right. Everything that humans do is based on laws of nature…we’re sitting on these chairs – here on earth – because of a law of nature. If there were no gravity, a chair would not work. But it’s hard to say we would not give patents to chairs, if they were new and novel, because they utilize gravity. We have to be very careful.”
Iancu told Quinn that, while certainly the courts are independent and don’t have to follow the patent eligibility guidance for examiners set out by the USPTO in 2019, which Iancu noted has decreased uncertainty on 101 during examination by 44%, it would nonetheless be helpful. “I think if we all do our jobs correctly, we should reach the same result, at least theoretically,” Iancu said. “To the extent there’s confusion, [the Court] could address it; we’ve shown it’s doable here. It’s just an analytical framework that’s more predictable.”
Barring the CAFC fixing things though, Iancu said he does still think there’s an appetite in Washington to do something on 101. But—as Senator Thom Tillis has said before—“it depends on whether industry can come to the table with some consensus so that legislators are not pulled in five or six different directions,” Iancu added.
Counterfeits and China
Outside of 101, Iancu discussed USPTO projects such as the Go For Real Campaign, which works with the National Crime Prevention Council to raise awareness about the dangers of counterfeit goods and merchandise. Iancu said that people often do not view IP theft or infringement as having real consequences despite statistics that show it’s a grave harm to the U.S. economy. “If folks don’t have the confidence that their creations will be protected down the line, when it actually matters, there is going to be a significant disincentive in investing the time and resources needed,” Iancu explained. “They will put their time and money in other areas. Raising awareness of respect for IP is so important all around.”
With 85% of all counterfeit products coming from China or Hong Kong, Quinn asked Iancu’s thoughts on the current administration’s efforts to decouple the U.S. and Chinese economies amid recent reports of China stealing IP from American companies and research institutions. Iancu stressed that the theft is real and has to stop, but also said that the U.S. focus on “maintaining its competitive edge in an affirmative, positive way” that accelerates the pace of innovation must not be lost. “For 200 years of our existence, we were the clear leaders,” Iancu said. “In today’s world, everybody’s innovative. Everyone’s our competitor, particularly in innovations of the future like AI.” In order to keep up, we have to increase protection so that everyone willing to participate in system will have the incentive to do so, he added.
The Wonderful PTAB
With the slightest hint of sarcasm, Quinn asked Iancu to update attendees on “all the wonderful things the PTAB is doing,” since he knew that the Director would not be able to address the Arthrex case or other hot PTAB topics.
Fully in on the joke, Iancu said “I do think that overall the PTAB is doing a lot of great things.” He noted that the majority of work the PTAB does is ex parte appeals from examination, which “doesn’t get all of the headlines but is critically important.” On that front, the Office has “dramatically improved pendency” and is down to 14 months on average for ex parte appeals. Iancu also said that they have done a number of things to bring some balance to America Invents Act proceedings, including changing the claim construction standard, curtailing serial inter partes reviews, greatly diminishing parallel petitions, and enabling a better process for amendments.
During the interview, attendees of CON2020 were able to weigh in with comments and questions in the sidebar. Here are some of the highlights for further thought and discussion:
Brandon Schoonover on the conversation around 101:
This is a super interesting point…. At what point do we all just admit that we are just playing a game here and technically nothing is patentable?
David Stein on the CAFC:
The Federal Circuit is frequently internally inconsistent, and the courts have been tumultuously interpreting 101 for 40+ years. I don’t believe that any USPTO guidance will address that inconsistency, so the solution must be legislative. Section 101 was written in 1952 as a broad enabling clause; it is time for Congress to revisit and revise this section to address its convoluted interpretation since Gottschalk.
John Fargo on the the USPTO’s 101 guidelines:
Should the guidelines be accorded deference in the Courts (this has helped in other areas of the law)? Would this require Congressional action?
CON2020 Continues Tomorrow
Join CON2020 again tomorrow, when retired Federal Circuit Chief Judge Paul Michel will deliver a keynote address, and also will join a panel on whether the Federal Circuit is still relevant, considering the Court today disposes of 50% of its docket via Rule 36 judgments, says it is handcuffed on patent eligibility, and is increasingly split and confused on 101 law.