Fee diversion looms as Iancu appointment approaches

With the US Senate set to decide on Monday, February 5 whether to select Andrei Iancu as the next director of the US Patent and Trademark Office (USPTO), fee diversion is one of the main problems facing the agency.

Iancu is expected to be confirmed as USPTO chief, after the Senate Judiciary Committee gave its backing in December.

But he will immediately face several major challenges, one of them stemming from the diversion of USPTO fees to other functions within the Department of Commerce (DOC).

Many of the previous directors were successful in preventing what has become “a fairly recent occurrence”, according to Bob Stoll, partner at Drinker Biddle and a former USPTO commissioner for patents. He says the problem has reared its head partly because there has been no powerful director at the USPTO stopping it from happening.

The USPTO has not had a permanent director since Michelle Lee left her post in June 2017.

Despite arguing that Iancu has some chance at addressing the issue, Stoll concedes that Iancu would be “going against the tide because that ship is beginning to sail already”.

Van Lindberg, a member at Dykema, adds that dealing with fee diversion is going to involve “a lot of political work”, both at the DOC and in Congress.

“Ultimately the decision to keep the USPTO independent will need to be made by political means. In the meantime, however, the best thing Iancu can do is show technical excellence in administering the USPTO’s technical infrastructure.”

Lindberg notes that if the USPTO’s fees are diverted, the recent increase in some prices “just turns into a back-door tax on inventive activity, which will not help promote technology or job growth”.

In January, the cost of requesting an inter partes review increased to $15,500 (a jump of $6,500), as part of several changes to fees.

The soon to be published January/February issue of WIPR will be covering the challenges facing Iancu if he is confirmed as USPTO director.

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