Posts Tagged: "Andrei Iancu"

“It seems self-evident that the same patent contested in different tribunals should have its meaning – its boundaries – determined using the same standard,” Director Iancu said when discussing the final rules implementing the Phillips standard at the PTAB… Those few who were not pleased by the change have cited a believe that the change to the Phillips standard would usher in a return to lower quality patents. With a bit of a confrontational tone, Director Iancu took issue with that, finding the argument without merit.

Director Iancu: ‘For the sake of predictability and reliability, the boundaries of a patent should not depend on which forum happens to analyze it. People who want to invest in a patented technology, or who want to invent or design around one, should be able to determine, within reason, what that patent means. Objectively speaking, that meaning cannot, and should not, depend on the happenstance on which forum might review the patent, years after issuance. The rule change, therefore, increases the predictability of our patent system.’

“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 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. 

Earlier today the USPTO announced the substantial revision of Standard Operating Procedures (“SOPs”) for the paneling of matters before the PTAB (SOP1) and precedential and informative decisions (SOP2). The revisions deliver upon the repeated promises of USPTO Director Andrei Iancu to increase transparency, predictability, and reliability across the USPTO. These new SOPs update the procedures based upon feedback the Office received from stakeholders, courts, legislators, and six years of experience with AIA trial proceedings. These new SOPs are a major change to how PTAB panels will be comprised, and how precedential opinions will be designated. Given Director Iancu’s speeches, actions and apparent desire to have a more patent owner and innovator friendly Patent Office, these revisions will likely be game changing.

The focus of this interview was OED generally, but more specifically why they Office felt it was necessary to begin charging annual dues to practitioners and what those funds would be used for. I indicated leading up to the interview that I would specifically like to discuss the issue of unauthorized practice of law, explaining that I personally was not philosophically opposed to dues but that as a registered patent practitioner myself I would like to see OED do more than just reciprocal discipline, which appears to be the overwhelming portion of their work, at least if you look at the OED Reading Room of published decisions. Director Covey came with statistics and followed up after the interview with the chart included below. While it may appear OED focuses overwhelmingly on reciprocal discipline, that is a tiny fraction of what they do.

Repeatedly during his remarks and the question and answer period, Director Iancu explained that there will be more to come from the USPTO on patent eligibility and PTAB reforms, hopefully with several weeks he explained… “I certainly agree it is important to have certainty of patent rights,” Iancu explained. “The boundaries of a patent cannot possibly depend on the happenstance of which tribunal will review that patent years down the line…”

In his Categorical Imperative, Kant simplifies a moral argument position for an individual by asking a question: if you thought that your position or Statement would be Universal, i.e., applicable to all people, it would have the stance of a Categorical Imperative and thus you must do it. A proposed Categorical Imperative is the following Statement: creators should be protected against the unlawful taking of their creation by others… Allowing the free taking of ideas, content and valuable data, i.e., the fruits of individual intellectual endeavor, would disrupt capitalism in a radical way. The resulting more secretive approach in support of the above free-riding Statement would be akin to a Communist environment where the State owned everything and the citizen owned nothing, i.e., the people “consented” to this.

87.2% of patents in the study, per the table, were subjected to just 1 or 2 IPR petitions – so gang tackling is no big deal. But make this simple observation: If a patent is killed in its first IPR, it can’t possibly be considered for a second one. The USPTO keeps their denominator fixed (and too large), which artificially lessens the reported percentage of patents which have large numbers of petitions filed against them. The calculation shouldn’t be 55/4,376 = 1.3% because by the time a patent faces its 7th(!) IPR petition, the universe of eligible-for-challenge patents is much smaller than during the first petition.

While the subject matter of the speech was similar, this speech by Director Iancu was different. It was much more direct and forceful than any of his previous speeches. Iancu asked how inventors are supposed to know where to focus energy and effort without knowing what is patent eligible. That is an excellent question. One that Congress and the Courts should take to heart and thoroughly consider. Very real damage has been done to the U.S. patent system as the result of unnecessary uncertainty and an overly restrictive view of what is patent eligible in the U.S.

Yesterday the United States Patent and Trademark Office (USPTO) filed a Director’s Unopposed Motion to Vacate and Remand in In re Intelligent Medical Objects, Inc. After the decision of the Board the Federal Circuit decided Berkheimer, which Director Iancu believes requires the Board’s original decision to be vacated and reconsidered in light of both Berkheimer and USPTO guidance relating to Berkheimer.

Earlier today USPTO Director Andrei Iancu testified at an Oversight Hearing before the House Judiciary Committee. In addition to detailing forthcoming changes to post grant proceedings, Director Iancu fielded many questions on patent eligibility. “The issue is very significant. It is significant to the Office, to our applicants, and it is significant to the entire industry,” Iancu responded to Congressman Collins. “In some areas of technology, it is unclear what is patentable and what is not, and that can depress innovation in those particular areas. Our plan at the PTO is to work within Supreme Court jurisprudence to try and provide better guidelines. What we think is in and what we think is out, and provide, hopefully, forward looking guidance that helps examiners and the public understand what at least from the PTO’s point of view we think is right.”

It is understandable that inventors, investors and others supportive of strong patent rights would be skeptical, and I’ve heard and read much skepticism. If not now, when? It would be easy to be skeptical, but the patent community should take this opportunity to engage. Despite continued disappointment from the Supreme Court, there is a very real possibility that pro-patent reforms could be achieved within the next 2-3 years. While 2-3 years may seem a long time away, if you are not trying to affect change today you will be too late by the time momentum begins to publicly surface. That’s how DC operates. So, is the pro-patent community going to continue to lose every battle?

Director Iancu: “But for our purposes what I know for a fact is that in order to incentivize American innovation whether it’s artificial intelligence, DNA processing, or anything else we need to have a robust predictable reliable intellectual property system here at home. And I do worry that the current state of Section 101 in patentable subject matter weakens the robustness of our IP system in the affected areas. And if industry cannot predict in a relatively reliable way whether their investments will be protected from an intellectual property point of view I think that will result in less investment, less growth, fewer jobs created in the affected industries. So I do think it is critically important for our economy. And again whatever industry we’re talking about and whatever industry we want to grow it’s critically important to have a strong reliable and predictable intellectual property system.”

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 posts grant challenge process, the PTAB, experience level of the Administrative Patent Judges on the PTAB and inter partes review.

On May 9th I attended the International IP Commercialization Council (IIPCC) USA Chapter second annual program at the United States Capitol.  The topic of the event was Meeting the Threat to America’s Economic Future: US IP & Innovation Policy where representatives from IBM, Qualcomm, Personalized Media Communications, the Cleveland Clinic and the University of Michigan, as well as a Who’s Who of IP Leaders and policymakers, shared their real-world perspectives on the state of the US Patent System, and the effects it has and will have on the economy.