Is Real and Positive Change Coming for Patent Owners?

June 11, 2018

New USPTO Director Andrei Iancu provided the Intellectual Property Track plenary lecture at the 2018 BIO International Convention last week.  As has been a common theme since being sworn in to office in February, Director Iancu’s focus was on changes to provide greater certainty and quality for applicants and patent owners.  Yes, we have heard this before, but the time is ripe for real change that positively impacts applicants and patent owners.

To his credit, Director Iancu openly admitted that the Courts have left deciphering what is patent eligible, especially in the biotechnology space, virtually impossible.  He acknowledged that the USPTO is struggling with this just as much as the remainder of the patent community, but his hands are bound by trying to reconcile the murky jurisprudence.  Director Iancu promised that cleaning up patent eligibility is among the highest priorities of his administration.  As much as the USPTO intends to clarify from within, Director Iancu stated that he has also been meeting with lawmakers to try to find a way to have Congress address and clarify this very important and confusing area of law. 

Another area of focus for Director Iancu is improvement in post-issuance contested proceedings before the Patent Trial and Appeal Board (PTAB).  Last month, the USPTO released proposed new rules that, if adopted, would replace the broadest reasonable interpretation (BRI) claim construction standard with the same standard used in Federal district courts and the International Trade Commission for construing unexpired patents in all trial matters before the PTAB, including Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method (CBM) proceedings.  Director Iancu emphasized that this is an important step towards improving the overall quality of the system and, possibly, providing better outcomes for patent owners.  

However, changing the claim construction standard was just one focus of his administration which is designed to provide greater balance and efficiency in PTAB contested proceedings.  Director Iancu also promised further proposed rules or calls for comment in the coming months which focus on improving PTAB contested proceedings.  One example he gave was that the current standard for institution lets too much in and, therefore, the USPTO may revisit the institution standard.  Director Inacu also stated that PTAB contested proceedings should not be all or nothing propositions.  As such, the USPTO is looking at ways to revamp the amendment process to allow patent owners greater opportunities for more liberal amendments thereby having a chance to rehabilitate their patents by having a narrower scope examined. 

It was quite encouraging to hear Director Iancu’s remarks.  It is very early in his tenure, but it is quite clear that Director Iancu understands that the catalyst of innovation and ultimately the economy is a strong patent system.  Future investment relies upon improved certainty and knowledge that patents have value and investors can rely upon patents for protection.  It remains to be seen whether Director Iancu can improve the current state of affairs, but it is clear that he will make every effort to do so.