Iancu Agrees Key USPTO ANPRM Proposals Should be Handled by Congress

“In a place where Congress spoke expressly and it’s in the statute, it seems that the better course of action is for Congress to address it.” – Andrei Iancu

USPTOFormer Director of the U.S. Patent and Trademark Office (USPTO) Andrei Iancu, who is now a partner with Irell & Manella, told attendees of an Orrin G. Hatch Foundation webinar today that many of the proposals in the USPTO’s recent Advance Notice of Proposed Rulemaking (ANPRM) on Patent Trial and Appeal Board (PTAB) practices should be legislated by Congress. Particularly on issues that were statutorily prescribed, such as the standard patents are reviewed under at the PTAB versus the courts, the timing for filing petitions, and who can bring an inter partes review (IPR) proceeding, Iancu said the better route to certainty is through Congress.

“The statute does say that anyone can bring an IPR,” Iancu said. “I think the PTO has discretion on institution…and the Supreme Court said specifically that the discretion is broad, but in a place where Congress spoke expressly and it’s in the statute, it seems that the better course of action is for Congress to address it,” he added.

While Iancu said he personally thinks there should be a standing requirement, Congress should be the entity to codify that. Similarly, he said he believes the standard of review should be clear and convincing evidence, “but if you want to change that it is up to Congress to debate that issue and pass that legislation.”

On the other hand, Iancu said, repeated attacks on the same patent in multiple fora “is expressly contrary to what the AIA was meant to be, which was for IPRs to be an alternative to district court litigation, not in addition to district court litigation, therefore I do think the PTO needs to exercise its discretion there.”

Andrei Iancu

Iancu was responding to former Congressman Bob Goodlatte’s answer to a question about the PTAB reform process, which has been recently debated by both the Senate and House IP Subcommittees.

Matt Sandgren, Executive Director of the Orrin G. Hatch Foundation, asked the panelists about the ANPRM and whether the proposals should be the purview of the Office or Congress. Goodlatte, who was active in passage of the America Invents Act (AIA) as Chairman of the IP Subcommittee at the time, expressed concern, saying the PTAB was “well-designed” and the Office should not be able to decide on its own that it wants to change key provisions passed by Congress.

Jonathon Johnson, Chief Executive Officer at Overstock, said the ANPRM creates uncertainty for business and that patent trolls have become emboldened again since Fintiv, and now with the recent proposals. “One thing businesses crave is certainty and I think the AIA created more certainty around patent litigation,” Johnson said.

Senator Thom Tillis (R-NC), the current Ranking Member of the Senate IP Subcommittee, also participated on the panel and told attendees that he “expect[s] good things this year.” At a recent IPWatchdog event, Retired Federal Circuit Chief Judge Paul Michel said that Tillis and Coons are working on legislation to fix many of the problems with the U.S. patent system, including the PTAB. While quick passage of such bills is unlikely, Michel said the mere introduction of legislation could build momentum. “The three biggest problems are all about to be the subject of bipartisan bills in the Senate, and the House will follow suit,” Michel said. “I think when the bills are introduced and get cosponsored by numerous people of both parties, and then they start holding hearings, that will create a huge amount of momentum, and when the courts see the momentum, they will start acting on their own – particularly the Federal Circuit.”

Bob Goodlatte

Tillis commented that he likes some of the direction of the ANPRM, “but there needs to be certainty. If we vetted something that we feel like is going to be promulgated as a rule, we have to look at that as potential candidate for codification.”

Tillis also alluded to looking at legal decisions that need to be abrogated and said that he has no agenda “except to get something passed.”

The webinar panelists also discussed artificial intelligence, another hot topic in Congress. While they acknowledged the need for caution and legislation, Goodlatte warned against jumping on legislation too quickly that ultimately fails to keep up with the technology, and Tillis said he would disabuse people of the notion that AI is bad. Iancu added that “AI is a tool” and “we have a lot of experience in the IP world on how to treat tools.”

Iancu explained: “We will do a disservice to the innovation ecosystem if we do not recognize patent or copyright protection for the results [of AI creations]….. Protection is really important because IP is the currency of innovation and creativity, and without it it’s much more difficult to engage in trade of those creative works, the transfer of those creative works to the public and the growth of the innovation economy.”




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.

Join the Discussion

5 comments so far.

  • [Avatar for George]
    June 5, 2023 01:21 am


    Have to agree. But most members of Congress have no idea what’s going on at the PTO and don’t seem to want to know. I asked our Senator for some help with the PTO refusing to issue us even one of THREE patents, after more than 12 YEARS of satisfying all statutes and overcoming ‘all possible’ objections they could muster (at least 10 times – over 5 rounds of examination) and he had absolutely ‘no interest’ in even calling them up and asking them a few questions. Instead told us to ‘get a lawyer’ for that. What the hell kind of ‘help’ to a constituent is THAT?

    We have THREE ‘breakthrough’ inventions that are now being intentionally BLOCKED by the PTO (I guess for just being ‘too broad’) and no one in Congress wants to even look into this?!! It’s like see no evil, hear no evil, and speak no evil, when it comes to the all-powerful USPTO. Congress seems literally afraid of them!

    I believe they have become a ‘rogue’ agency, like the VA became. But at least Congress investigated the VA and straightened them out in hurry. Weird stuff has been going on at the PTO since passage of the AIA and no one wants to even raise the issue with them now (or the big corporations and monopolies who paid for it)? Maybe because Congress almost unanimously passed it and so caused the mess we have now?!

    It should have been Europe that ‘harmonized’ with our original system, not the other way around! We invented ‘egalitarian patents’. Americans did, not England or the Europeans. Tesla didn’t want to stay in Europe. He wanted to come to America to get his patents here. But he wouldn’t have stood a chance today! We would never know the name Tesla today (and Musk certainly wouldn’t have used it for car).

    While Congress snoozes, America looses (to China).

  • [Avatar for Mashered]
    June 4, 2023 04:45 am

    Thom Tillis is a shill for big tech. They created the PTAB and AIA specifically to help google. Now Tillis writes to John Robert’s that Gilstrap is too fast and google is unable to keep up. What a crock of BS Tillis shovels out for google. The biggest offenders of this abuse is big tech. They just steal what they need and then bankrupt the patent owner with litigation, IPR’s and then have their buddy’s also petition IPR’s. Google has tried this unsuccessfully with Netlist and hasn’t been successful in bankrupting them. So now Tillis needs to help them out again. It’s clear.

  • [Avatar for Anonymous]
    June 2, 2023 03:23 pm

    Here here!

  • [Avatar for Model 101]
    Model 101
    June 2, 2023 10:18 am

    Agree with Pro Say.

    It’s been long enough.

    Senator Tillis we knew you when.

    It’s been so long you now look like skinny Santa.

    Stop the lip service and get it done.

  • [Avatar for Pro Say]
    Pro Say
    June 1, 2023 06:13 pm

    “I think the AIA created more certainty around patent litigation,” Johnson said.

    Gee, what a surprise. The CEO of Overstock — one of the biggest robbers of the innovations of others — likes things just the way they are (except of course for the fair, balanced, and reasonable Fintiv decision).

    As the facts clearly and obviously prove (case after case after case), however, the only certainty around patent litigation . . . is the certainty that Big Tech infringers will misuse IPRs and reexams in their never-ending quest to keep for themselves that which they have stolen from others.

    Doing so in complete and total contravention of the clear, unambiguous intent of Congress.

    Here’s a novel idea Jonathon . . . either stop infringing or take a license for what you feel Overstock needs to keep.