Tillis Tells PTAB Masters™ Day Three Attendees Congress Should Codify Iancu’s Reforms

By Eileen McDermott
April 21, 2021

“Andrei’s leadership is the gold standard that any future director must adhere to. The next USPTO Director must truly appreciate and value IP and treat it for what it is – a vested property right. And she must commit to strengthening these rights.” – Senator Tillis

Senator Thom Tillis

In his keynote video address to PTAB Masters participants today, Senator Thom Tillis (R-NC) championed the record of former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu, and said that Iancu’s successful attempts to address many of the complaints with the Patent Trial and Appeal Board (PTAB) during his tenure should be codified into U.S. law.

Changes such as harmonizing the PTAB claim construction standard with that of the district courts and making significant changes to the PTAB’s Standard Operating Procedures that have helped to create uniformity and instill transparency, all helped to provide more certainty for inventors, Tillis said. He continued:

These changes have helped to ensure all rights holders, from individual inventors to innovative startups, to industry titans, all receive equitable treatment – now we must ask ourselves do we believe the initiatives and reforms Iancu has undertaken have long term merit and value? I believe they do, and I think Congress should consider codifying Director Iancu’s actions – especially his reforms to the Patent Trial and Appeal Board.

Yesterday, former USPTO Director David Kappos explained to PTAB Masters attendees that even he – the implementer of the America Invents Act (AIA) and related rules package governing PTAB trials – had expected that there would be an iterative process in subsequent years and across USPTO administrations in order to iron out problems as they arose. When that didn’t happen, the PTAB scales tipped too far to the side of petitioners, and left patent owners feeling abused by the system. This arguably underscores the importance of the next USPTO Director continuing the work that Iancu started in order to avoid repeating that history, a point which Tillis also emphasized:

We have to ensure the Biden PTO Director is committed to continuing [Iancu’s] work. We cannot have the PTAB return to a ‘death squad’ for IP rights. Andrei’s leadership is the gold standard that any future director must adhere to. The next USPTO Director must truly appreciate and value IP and treat it for what it is – a vested property right. The USPTO Director must understand that clear, predictable, enforceable IP protections are absolutely critical, and she must commit to strengthening these rights.

Tillis added that the AIA’s legislative history makes it very clear that Congress was worried about abuse of the PTAB, particularly that multiple PTAB proceedings brought by large companies could become a huge burden on innovators. Serial inter partes review (IPRs) petitions, which Iancu also attempted to address, still plague the PTAB, and Tillis said: “The legislative history shows that Congress believed duplicative petitions and weaponized proceedings could be one of the worst evils. The effect of serial petitions is to magnify the cost and the burden of a PTAB defense to the point that many patent owners accept defeat and stop defending their patent or asserting it against alleged infringers. This and other issues raise serious questions about whether the PTAB, AIA, IPR and post grant review proceedings are working the way Congress intended.”

Today’s PTAB Master’s Program will also include a keynote from PTAB Chief Judge Scott Boalick, and a panel titled “The Trial: Stop Spinning Your Wheels & Start Winning” will examine PTAB trial strategies and tactics.

IPWatchdog’s PTAB Master’s 2021 is happening now, and will take place through tomorrow from 11:00am to 2:00pm each day. Upcoming speakers include Retired CAFC Chief Judge Paul Michel.  Register to attend for free now.

The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 8 Comments comments. Join the discussion.

  1. Pro Say April 21, 2021 2:31 pm

    “This and other issues raise serious questions about whether the PTAB, AIA, IPR and post grant review proceedings are working the way Congress intended.”

    No. They. Are. Not.

    Thank you, Senator Tillis, for working so hard to restore our patent system to its formally world-leading status.

    Your Congressional colleagues should be aghast at what has happened since passage of the well-intentioned-but–failed AIA . . . and be willing to something about it.

    Indeed, it has become one of the two cancers (Alice / Mayo being the other) which are slowly, case-by-case killing American innovation.

  2. George April 21, 2021 3:41 pm

    @Pro Say

    “well-intentioned . . . AIA”????

    It was OBVIOUSLY lobbied for, written and paid for by the large Pharmaceuticals and other multi-national companies and ‘monopolies’ that everyone knows!!! It was written for and by the Forbes 500! That was completely obvious from the start! No surprises there, so no excuses for those who EVER supported it! I never did.

  3. George April 22, 2021 2:35 pm

    Slightly off topic (but not entirely). I believe it’s time for Tillis and others in the Senate to call for a thorough ‘independent’ investigation of the PTO and how it now operates (especially post AIA). I also think that this should also involve the FBI.

    In particular, the SAWS program needs an independent investigation. Also, there are huge security problems at the PTO, including the possibility (and likelihood) that they have been hacked – multiple times – and that they may be ‘much more vulnerable’ to hacking than other agencies of government, given that they have over 9000 examiners now allowed to work from home, using either insecure or ‘very insecure’ internet connections!

    This is simply a recipe for disaster and doesn’t even include the possibility of having some actual ‘spies’ among the Examiner Corps. How can the government and Congress not be concerned about THAT possibility, especially given that many examiners are foreign born and raised, and some may even have dual citizenship? Have there ever been spies at the PTO and if so how many have there been? Anyone know? Does anyone in the government even know?

    I believe all PTO examiners should be required to get ‘top secret’ clearance, before they are allowed to be employed there, given the nature of some of the inventions they deal with and given that many of those inventions are not even permitted to be published, unless and until, actually patented! Wouldn’t knowledge of those unpublished applications be very valuable to America’s foreign competitors (and even domestic ones)? How much would interested parties be willing to pay for ‘as yet’ unpublished technology disclosures, much less inventions that MAY NEVER be published or might remain unpublished for many years (such as new military tech)? In other words, who’s minding the store at the PTO, to ensure that ‘secrets’ don’t just take a (very profitable) walk, once in a while?! Is there any REAL security at the USPTO? When it comes to security, I think the PTO is ‘very sloppy’ and almost totally unconcerned about it.

  4. Anna April 22, 2021 7:21 pm

    The patent office should “stand behind their work”!!!!
    The PTO should
    1) pay for it’s defense (legal fees etc)
    and
    2) the examiners that allowed it should be included in it’s defense!
    This is the least the PTO should do.

  5. PTO-Indentured April 22, 2021 8:31 pm

    George @3

    Yes. And how it irreversibly wrought its double-standard Caste system.

    2012: ‘Let’s launch AIA to reduce costs!’ (wink, wink). 2021: each case now $3M – $4M. The perfect unreachable bar needed to eliminate those pesky U.S. independent inventors.

  6. Paul V. Hayes April 25, 2021 8:28 am

    Pro Say, George, Anna, PTO-Indentured,

    I agree with your comments.

    As some may recall, Sneaky Pete Tillis, held a series of “Round Table” talks to fix 101 issues, only to attempt to slip in the 112F Trojan Horse at the last second w/o any discussion – thus the table became quite pointed.

    Thankfully, Paul Morinville’s (US Inventor) testimony called this “bait and switch” tactic out and outlined how damaging the changes to 112F (previously written/sponsored by Google) would be to the patent system. Sneaky Pete then took his ball and went home. Tillis later staged a series of peep-shows for his base – “industry titans”, by invitation only. Big Tech/Pharma/Banks were allowed a brief look at wording in the latest framework but could not bring phones to the peep show. So much for the round-table approach. Apparently it was decided to leave sleeping dogs lay, after all the hoopla, as nothing was accomplished in Congress. Yet, Tillis had the Gaul to blame Dir Iancu for not doing more at the PTO in a formal letter to the office. IMO, Tillis and Congress in general, are bought and paid for stooges acting only in the interest of Big Corp. Real innovation in the U.S. has been crushed as each small entity is out spent at PTAB. Unfortunately we will all eventually reap the consequences of this unmitigated, “let them eat cake” greed.

  7. Anon April 25, 2021 11:31 am

    It is OBVIOUS the PTAB was “specifically created” to STEAL patented inventions from independent inventors, inorder to allow large companies with big $ to exploit the stolen technology with impunity.

  8. Anon April 26, 2021 7:42 am

    It should be noted – without judgment – that the post at 7 is not from the usual Anon that posts here.

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