Speaking to the U.S. Chamber of Commerce on April 11, 2018, recently sworn-in USPTO Director Andrei Iancu gave an impassioned speech about his vision for the patent system. Director Iancu outlined challenges facing the USPTO and goals the agency aspires to achieve, focusing on two main objectives: (1) creating a new pro-innovation, pro-IP dialogue, and (2) increasing the reliability of the USPTO granting patents. Stakeholders should take note of the Director’s objectives and should anticipate policy changes that further strengthen the patent system.
Creating a new pro-innovation, pro-IP dialogue
One thing is clear from Director Iancu’s remarks: the USPTO under his leadership will strive to help the inventor and incentivize innovation. Consistent with this goal, the USPTO will “create a new narrative that defines the patent system by the brilliance of inventors, the excitement of invention, and the incredible benefits they bring to society.” “And it is these benefits,” Director Iancu continued, “that must drive our patent policies.”
Much of the narrative of the patent system in recent memory has focused on curbing abuses of non-practicing entities sometimes referred to as “patent trolls.” And Director Iancu’s remarks suggest that the USPTO will actively try to change that narrative. Iancu explained that errors and abuse should be “identified and swiftly eliminated,” but on the whole, the focus for IP policy “must be on the positive.”
Increasing the reliability of the patent grant
Increasing predictability in the U.S. system appears to be Director Iancu’s guiding light. He identified two principal reasons for the increased uncertainty and lower reliability in U.S. patents: (1) subject matter eligibility under Section 101; and (2) post-grant procedures, such as IPR, established by the America Invents Act.
Director Iancu believes that “our current law surrounding patentable subject matter has created a more unpredictable patent landscape that is hurting innovation and, consequently, investment and job creation.” “[A] significant amount of time,” he continued, “is being spent trying to figure out where the lines should be drawn, and what’s in and what’s out.” Although bound by Supreme Court precedent and statutory mandate, the USPTO under Director Iancu will actively look for ways “to simplify the eligibility determination for [its] examiners through forward-looking guidance.” The USPTO will “lead, not just react to, every new case the courts issue.”
Inter Partes Review will be one of Director Iancu’s “highest priorities.” He noted that there are positives and negatives to the post-grant system. On the one hand, “some hate the new system with vigor, arguing that it’s an unfair process that tilts too much in favor of the petitioner.” On the other hand, “[o]thers love the system, and think it’s the best tool we have to correct errors, eliminate bad patents, and improve patent quality.” Balancing the competing interests, the USPTO will examine how and when it institutes proceedings, the standards it employs during the proceedings, and how it conducts the overall proceedings. The overarching goal will be “to increase predictability of appropriately-scoped claims.”
The new Director has his sights set on making patent eligibility determinations and IPR procedures more predictable. Although bound by statute, Supreme Court decisions, and Federal Circuit mandate, the USPTO has wide discretion in fashioning its rules and procedures. For instance, Director Iancu mentioned that he would like to narrow the gap between the prior art that is identified during initial examination and that which may be uncovered in a post-grant review several years later. Of course, these potential changes to IPR rules and procedures are contingent on the pending Supreme Court case Oil States Energy Services, LLC v. Green’s Energy Group, LLC, which may hold IPRs unconstitutional. Cert. granted, 198 L. Ed. 2d 677 (U.S. Jun. 12, 2017) (No. 16-712).
We have yet to see Director Iancu’s rhetoric translate into concrete action, but it’s clear that the new Director has bold ideas and that through his guidance we will likely see a distinct change in IP policy more friendly to patent owners.