Posts Tagged: "Andrei Iancu"

Earlier today the USPTO announced proposed rulemaking that would change the prior policy of using the Broadest Reasonable Interpretation (BRI) standard for construing unexpired and proposed amended patent claims in PTAB proceedings under the America Invents Act and instead use the Phillips claim construction standard.. The new standard proposed by the USPTO is the same as the standard applied in Article III federal courts and International Trade Commission (ITC) proceedings, a change critics of the PTAB process have urged for many years in order to bring uniformity to post grant challenges across forums… The USPTO is also proposing to amend the rules for PTAB trials to add that the USPTO will consider any prior claim construction determination concerning a term of the claim in a civil action, or an ITC proceeding, that is timely made of record in an Inter Partes Review (IPR), Post Grant Review (PGR), or Covered Business Method (CBM) proceeding.

What follows is a letter on the topic of PTAB reform that will be sent to USPTO Director Andrei Iancu on Monday, May 14, 2018. The letter seeks urgent action on the Patent Trial and Appeal Board in order to bring balance to a process that has tormented inventors for the last 6 years. We already have over 100 signatures from patent owners, patent attorneys, investors and inventors. If you would like to sign onto this letter please visit http://100patentowners.org.

As patents become more essential to more businesses, investors are going to want to have more information about them. They’re going to want to have more visibility about the decisions being made around patents and so they’re going to need to know what’s going on in terms of deal making. They’re going to need to understand why deals are being done, how much they’re being done for and that kind of stuff. And another issue I think which is really important is what’s going on in the moment between the U.S. and China in terms of IP and the U.S. being very concerned about Chinese companies getting hold of U.S. technology. We all know for the last 10 years, Chinese companies have been buying shedloads of U.S. patents. But what more do we know than that?

Secretary Ross gave an unequivocal endorsement of Bayh-Dole specifically, and more generally saying laws need to be updated to address business and technology realities of today, and to enable more companies to license federally funded technologies and take advantage of federally funded research in order to launch high-tech start-ups, create jobs, and grow the economy. “Our practices, policies, regulations, and laws all need to be updated to assure that technology transfer commercialization in the large-scale production and manufacture of innovative technologies occurs within the US,” Ross said. “We must address growing trade imbalances by producing in America the innovative products that the rest of the world needs to buy.”

The Notice is significant because in a 101 rejection, an examiner cannot simply assume that elements or a combination are “well understood, routine or conventional.” Examiners will be required to either cite to an admission by the applicant in the specification, or something said during prosecution, court cases holding elements conventional, or a written publication establishing that the element or elements are well understood, routine or conventional. The Notice explains that “official notice” is to be used very sparingly.

“The PTO we will work to provide more concrete tests – to the extent possible given Supreme Court precedent,” Director Iancu said speaking about patent eligibility. “This is an area we must all address, and one on which we will continue to engage this Committee…”

“We are focused on delivering reliable and predictable IP rights,” Director Iancu told the Inventor Group Presidents gathered at the Patent Office as he addressed them to start the day this morning. “I have called for a new dialog in intellectual property. A dialogue focused on the brilliance of the inventors, the excitement of invention and the incredible benefits they bring to our economy… to our history.”

Here is what Director Iancu had to say about the Wright Brothers: “At my swearing-in, I remarked that through the doors of the U.S. Patent and Trademark Office comes our future. And indeed, it does, and it always did. We must celebrate that. From Thomas Edison to the Wright Brothers, from Stanley Cohen and Herbert Boyer to Steve Jobs, American inventors have fueled the imagination of our people for generations. We are a pioneering people who overcome large obstacles in order to realize our dreams and create prosperity. Inventors help make dreams reality, and American invention changes the world. Indeed, with American patents, humans made light, began to fly, treated disease, and enabled instant communications across the globe from tiny devices in our pockets.”

“We are at an inflection point with respect to the patent system itself. As a nation we cannot continue down the same path if we want to continue to succeed economically. We will not continue down the same path,” Iancu explained.

In 1790, the U.S. patent laws were first enacted and individuals could obtain a patent under the new federal government. For about a century beforehand, British citizens in the various parts of the American colonies could obtain patents for that region, and Britain and other European countries had patent laws as well. But the new American patent system was different: it was democratized in that anyone could participate, without the need for consent from the Crown. The origins of patent laws date back to the Fifteenth Century when Florentine regents sought to attract and keep innovators and their inventions. Elizabeth I was a keen ruler in passing various patent laws to encourage foreigners with ideas and inventions to relocate to Britain, as well as encourage domestic innovation.

PTAB proceedings have radically changed the time to money for patent owners asserting U.S. patents against infringers. Additionally, the value of U.S. patents has dropped substantially since its peak in the 2012… Like many others, I applaud Director Iancu’s stated focus on the PTAB process and his concern about whether the U.S. patent system is fostering innovation investment and risk taking, especially for inventors, universities, and small to medium enterprises.

Director Iancu is known to be engaging in something that might be called a listening tour, speaking with various interested parties and groups as he attempts to formulate his own strategies and anticipated rulemaking efforts. It is widely expected by insiders that Iancu will bring change to PTAB proceedings in an effort to realize a more balanced procedure; perhaps even sweeping change. That the USPTO is now openly announcing that they are actively reconsidering the PTAB’s approach to claim construction and indefiniteness should be welcome news to all inventors.

Competitors like Mylan and Teva, rather than inventing better treatments or cures for dry eyes chose the shortcut. They attacked Allergan’s patent in the PTAB. Allergan responded by assigning their patent to the Saint Regis Mohawk Tribe who in turn invoked sovereign immunity at the PTAB, and demanded their rights in a real court with a real judge and jury. Mylan, Teva, the PTAB, Congress, and class action lawyers have formed a mob to gang up on Allergan for defending their intellectual property rights. They filed hundreds of suits accusing Allergan and the Tribe of fraud, conspiracy, and sham transactions stemming from an “invalid” patent. The attackers are mistakenly focusing on the patent as the problem. The problem is not the patent, but rather all of the incentives that reward copying instead of innovating.

The Federal Trade Commission and the Federal Communications Commission want you — at least if you are an innovator with a solution for preventing illegal Robocalls. On April 23, the FTC and FCC will also co-host a ‘Stop Illegal Robocalls Expo’ at the Pepco Edison Place Gallery in Washington, D.C… It is wonderful that the FTC and FCC are looking for technology solutions to combat the ever increasing problem of Robocalls, but coming up with a technology solution as seems to be desired by the FTC and FCC will be all the more difficult in a world where the USPTO and federal courts are openly hostile to software related innovations.

Envisioning what Director Iancu should say to his Patent Office team on his first day in office… People have been asking me about my new job: Are we going to be advocates for a “strong” patent system or a “weak” one? Are we in favor of “good” patents and opposed to “bad” ones? I answer that those questions have no place in this Office. Our ideal is to issue every valid patent applied for – and not a single invalid one. Are we going to make some mistakes along the way? Of course we will. Every government agency does – and their work isn’t nearly as complex as ours!