USPTO boss Andrei Iancu: in-tray on day one
For many observers, it was the first time they had heard him speak publicly since being nominated to his new role.
In a Senate Judiciary Committee hearing on November 29, 2017, all eyes fell on Andrei Iancu, who has been appointed the next director of the US Patent and Trademark Office (USPTO).
Iancu revealed that tackling the issue of subject matter eligibility (section 101) is one area that requires attention. However, section 101 is just one of several problems that Iancu, who will replace Michelle Lee after his nomination was confirmed by the full Senate in February, needs to address on day one.
Bob Stoll, partner at DrinkerBiddle and a former USPTO commissioner for patents, says several US Supreme Court rulings on section 101, including Alice v CLS Bank (2014), AMP v Myriad Genetics (2013) and Mayo v Prometheus (2012), have been implemented too broadly by the courts.
“There is a significant problem with respect to subject matter eligibility to the extent it is driving research out of the US to Europe and Asia,”
Stoll argues.
While the USPTO can’t change how courts rule on section 101, Stoll believes Iancu can update the section 101 guidelines used by USPTO examiners, to “provide some cover for the Federal Circuit to differentiate between the issues the Supreme Court mandated we must undertake”, and provide a mechanism at the USPTO with respect to patents that are “not being issued today”.
He argues that many applications are not being filed because they don’t meet the guidelines on section 101 and that “we don’t know how badly we’re being harmed at this point”.
During the hearing in November, Iancu vowed to tackle the uncertainty around section 101, despite admitting that “the lower courts are still working through drawing the lines, and it is important to see how it develops”.
John Pegram, senior principal at Fish & Richardson, says Iancu must develop a consensus of user groups on a revision of section 101, because Congress is unlikely to act without such agreement.
