Posts Tagged: "Director Andrei Iancu"

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.

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.

Sen. Harris followed up by asking whether algorithms were mathematical representations of laws of nature. “You’re getting right to the heart of the issue,” Iancu said. What Iancu said after that should be a major breath of fresh air to inventors and patent owners frustrated by Section 101 validity issues in the wake of Alice and Mayo: “This is one place where I believe courts have gone off the initial intent. There are human-made algorithms, human-made algorithms that are the result of human ingenuity that are not set from time immemorial and that are not absolutes, they depend on human choices. Those are very different from E=mc2 and they are very different from the Pythagorean theorem, for example.”

“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.

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.