federal-circuit
BPLA Meeting with Director Andrei Iancu
Rachel Emsley, Finnegan
On October 3, 2018, USPTO Director Andrei Iancu and his Senior Advisor, Ben Haber, met in Cambridge, MA with members of the BPLA Board of Directors and representatives from a diverse group of in-house counsel for an impromptu roundtable discussion.
Director Iancu shared his vision for the office and future of patent law with the small group of 20 individuals, and opened the floor to questions, which he answered candidly. This meeting came one week after the Director announced a new examination framework for § 101 at the IPO meeting in Chicago IL on September 24, 2018, and so it was no surprise to begin our conversation with that topic. The Director emphasized the burden § 101 has placed not only on patent applicants and owners, but on Examiners whose job satisfaction has been adversely affected by the need to navigate the difficult body of law. Performing this analysis on each-and-every application, he explained, detracts from the time spent achieving a quality examination on novelty, non-obviousness, and § 112 issues. Statutory subject matter has “taken over” ex parte appeals and injected uncertainty into the system. He hopes the new framework will be released by the end of the calendar year in the form of new Examination Guidelines. A formal 60-day comment period will follow its official release, but the USPTO welcomes comments now as the vetting continues, and as the Office develops its training materials. This push to a better framework for the examiners, the Director pitches as an effort to separate 102, 103 and 112 from the 101 analysis. While a legislative fix may be necessary, he sees a more immediate need to act at the USPTO and takes no position on the proposed legislation by the various bar organizations (ABA or Joint IPO-AIPLA proposals).
The Director spoke about the various changes to PTAB trial practice, with the revamped Trial Practice Guide, and the proposed change to the claim construction standard used in post-grant proceedings. The proposal to move away from the Broadest Reasonable Interpretation and to a Phillips construction in AIA trials, he said, elicited over 375 comments to which the USPTO had to review. This, he compared, to a mere 150 comments the Office received on the original AIA rule package. We should expect another proposal from the Office relating to Motions to Amend to be coming in the near future—a proposal that endeavors to provide an overall effort to have a fair opportunity to Patent Owners to amend claims, Petitioners to oppose, and meaningful feedback from the office, while still maintaining the statutory one-year to Final Written Decision Congressional mandate.
On the international front, the Director has been talking to various patent offices and bodies throughout the world on topics related to knowledge sharing and harmonization (i.e., patent term extension, grace periods, prior art search tools and artificial intelligence).
In response to a question noting a decline in patent asset valuation, the Director attributed this to an imbalance in our system. He posited that a relentless focus on NPEs has driven a set of policies that reduce reliability. Perhaps, he mused, that our justices have been influenced by the rhetoric and that bad polices have flowed from this, a sentiment he recently reiterated in his remarks to the Eastern District of Texas Bar Association. The Director urged that patent rights ought to be judged by an objective criterion so that they have a known boundary. Our system, he feels, should balance predictability, reliability, and enforceability so that the market can invest comfortably.
MassBio graciously hosted the hour-long meeting. In attendance were, Rory Pheiffer (BPLA President), Michael Bergman (BPLA Vice President), Keith Toms (BPLA Secretary), Monica Grewal (BPLA Immediate Past President), Josh Dalton (BPLA Board Member), Rachel Emsley (BPLA Board Member), David Thibodeau (BPLA Past President), Scott Hayden (Amazon), Jason Fiorillo (Analog Devices), Dan Lang (Cisco), Joe Benz (Ford), Michael Lee (GM), Anna Barry (Jounce Therapeutics), Sue Perkins (Paratek Pharmaceuticals), Lucy Lubashev (Raytheon), Isaac Hubner (Sanofi), Adrian Looney (Pfizer, Inc.), Jennifer Camacho (Torque), Vanessa Bailey(Intel), Dan Dardani (MIT), and John Tagliamonte (Mass Bio).
The Director’s visit to Boston began with a visit to the MIT Media Lab to discuss a collaboration between MIT and Cisco to create a prior art archive. More information on the archive project can be found at: https://www.priorartarchive.org/
NEWSLETTER ARCHIVE
Volume 49, Issue 4
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