Posts Tagged: "Andrei Iancu"

During the interview with Technology Center Director Tariq Hafiz we discussed whether it is realistic to expect patent examiners to perform a complete Section 101 analysis, including comparing a claimed invention to concepts that have been found patentable and not patentable under Section 101 in Federal Circuit and Supreme Court decisions. Unfortunately, this has often involved examiners pigeonholing claims at issue into completely unrelated court decisions that found claims to be directed to an abstract idea. In the new guidance, the USPTO plainly states that the approach of examiners comparing claims to a growing number of court decisions involving Section 101 has “become impractical.”

Congress created Inter Partes Review (IPR) to weed out clearly invalid patents that would not have been issued had the United States Patent and Trademark Office (USPTO) known about certain prior art. However, USPTO Director Iancu should consider limiting his delegated authority in 35 U.S.C. § 325(d) to prior art that was not presented to the USPTO during examination. As such, all references in the prosecution record would be presumed to have been fully considered by the examiner and could not form any part of a post grant petition. This change would exercise the discretion provided by Congress to its fullest, preserve USPTO resources by not reconsidering the Office’s prior decisions, and restore some predictability to the U.S. patent system.

The PTAB not only assented to Mirror Imaging’s suggestion that a five-page brief be entered in advance of the hearing but added that parties may submit one brief for each of the four CBM review proceedings which were petitioned by Fidelity… This could be a pivotal moment in the history of the PTAB specifically, and the USPTO more generally. If Director Iancu can achieve the goal of having the Patent Office speak with one voice, with patent examiners and the PTAB all following the same law and guidance, he will have achieved a united Patent Office that has been elusive, but desperately needed.

Before proceeding it is worth noting two things. First, that my list focuses on specific and identifiable events. Second, there are a number of stories worth mentioning, but which just missed the cut for one reason or another. The two that will probably be most glaring omissions are the Federal Circuit’s decision in Vanda Pharmaceuticals v. Westward Pharmaceuticals, 887 F.3d 1117 (Fed. Cir. 2018), and the final rules implementing the Phillips claim construction standard. With respect to Vanda, while it is a pro-patent decision, the claims found eligible are virtually indistinguishable from those held ineligible in Mayo, so it seems virtually certain a different panel of the Federal Circuit would have ruled differently. Thus, all Vanda did was seem to create uncertainty, which may be good for settlements, but likely not a repeatable decision. As for the Phillips standard, while it makes perfect sense for the PTAB to be using the same claim construction standard as used in federal district courts, many have questioned whether it will make any real difference in outcomes. Still, it is a big event and would have been 11th on my list. Had a chance to Phillips been accompanied by patent claims being presumed valid and requiring clear and convincing evidence to be declared invalid at the PTAB, that would certainly be worthy of top 10 inclusion. Alas, that would require an amendment to the statute and beyond the powers of Director Iancu. Thus, the banishment of BRI, while important, finds itself on the outside looking just in at this year’s top 10.

The U.S. Patent and Trademark Office recently released its 2018-2022 Strategic Plan, setting various goals to ensure high quality services for the agency’s customers and stakeholders aligned with the Department of Commerce’s strategic objective to strengthen intellectual property protection… “We are confident in attaining the goals set out in this plan and look forward to the continued engagement and feedback from our stakeholders and employees,” Director Andrei Iancu is quoted as saying in a press release issued by the USPTO upon the release of the new strategic plan. “Together we celebrate innovation and entrepreneurship—we are very proud of the men and women who stand behind a well-balanced American intellectual property system.”

Director Iancu’s remarks gave a first look at what his reforms will look like, and by all indications these changes will be extremely innovator friendly… What has made the quartet of patent eligibility cases so devastating is how they have been stretched and pulled, twisted and manipulated to invalidate (and prevent) patent claims on innovations of entirely different magnitudes than those contemplated by the Supreme Court. Director Iancu understands that what the Supreme Court has actually said is quite limited. Director Iancu proposes that the USPTO strictly follow the Supreme Court, and nothing more.

Director Iancu did not make much, if any, news speaking at PPAC today. He did, however, indicate that at least for now his major initiatives to reform the Patent Trial and Appeal Board (PTAB) have been rolled out, albeit with the last phase still in proposed rule form. Director Iancu indicated that he believes it is necessary now to carefully assess the implementation of these PTAB reforms and consider stakeholder reaction to the changes.

“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.