Should Iancu’s successor take a softer tone on China?
Iancu resigns, calls for end to ‘state-sponsored theft’
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Andrei Iancu’s departure last week marked the end of a turbulent three year-tenure at the US Trademark and Patent Office.
In his farewell address at a US Chamber of Commerce event, Iancu outlined his achievements, declaring that his tenure had delivered a “pro-innovation” culture.
“I said that we must reclaim our nation’s IP leadership and, to do so, we must focus on two high-level issues: first, creating a new, pro-innovation, pro-IP dialogue. And, second, balancing our systems and increasing the reliability of the patent grant. This is precisely what we have done,” he said.
Theodore Essex, senior counsel at Hogan Lovells, said Iancu’s record in improving the USPTO and IP in the US was “enviable”.
“[He] achieved a great deal in strengthening IP leadership, and dealing with the many issues thrust upon the USPTO by the America Invents Act and the courts,” said Essex, who previously spent ten years as a judge at the International Trade Commission.
“One of the great strengths of director Iancu was his belief in the people of the USPTO and others in the field. He was a great listener and willing to question others that might have ideas to improve the system.”
From other quarters, however, the reaction to Iancu’s legacy is less positive.
Former USPTO director and partner at Faegre Drinker Biddle & Reath Robert Stoll cast doubt on Iancu’s ‘pro-innovation culture’ claim.
“I think we have had a pro-innovation dialogue for some time,” said Stoll. “I do believe that Iancu was a good shepherd of the IP system, but the IP community has been looking to improve the system as long as I can remember.”
He added that Iancu could have done more to improve the quality of the patent grant by providing more training and tools to examiners.
These sentiments were echoed by Saul Ewing Arnstein & Lehr partner, Darius Gambino, who believes that Iancu’s measures were not as drastic as stated. “Former USPTO directors also made innovation a priority from 2009 to 2017,” he said, adding that it was under their leadership that the US Supreme Court decision in Alice v CLS Bank (2014) was first addressed and dealt with in terms of subject matter eligibility guidance.
More 'logical focus'
Stoll added that as a former patent litigator, Iancu was able to bring more of “a logical focus of litigation” to patent procurement. He highlights that, in the wake of Alice, patents on computer-implemented inventions had become difficult to obtain, to the point where the USPTO was “turning away” great inventions.
“This resulted in fewer patent applications being filed. Iancu focused on that point and did what he could to bring more clarity, and I think that will result in more patent applications being filed in these areas going forward,” said Stoll.
John Lu, partner at Milbank, agreed that the office under Iancu saw an increase in the reliability of the patent grant and created a more pro-IP environment. “Principally, post-grant proceedings such as inter partes reviews are statistically less likely to invalidate patents, and therefore patentees can more confidently rely on granted patents,” he said.
However, Iancu was ultimately unable to rectify the increasingly murky situation created by the controversial section 101. Both Stoll and Lu point out that while he issued guidelines two years ago, Iancu failed to persuade the US courts to implement them.
“The one area where the USPTO was not able to increase the reliability of the patent grant is on section 101 risk,” confirmed Lu.
In April 2019, the US Court of Appeals for the Federal Circuit in Cleveland Clinic Found v True Health Diagnostics held that the guidance was not controlling and went on to invalidate a patent that would have withstood a challenge under the USPTO guidance, Lu explained.
Stoll concluded that this failure represented a significant blow to Iancu.
“While I do think the 101 guidelines Iancu issued in 2019 were good, he did not get them adopted outside of the office nor get the legislature to introduce legislation to fix the problem,” he said.
Congressional action over section 101
While Iancu has continually called on the courts to address issues stemming from section 101 patent, he has raised eyebrows in the patenting community by calling for the US Congress to step in to address the “quandary” created by section 101 and “liberate” the patenting system.
“If history tells us anything it is that the courts almost always get IP issues right, and Congress almost always gets them wrong,” argued Gambino.
“This is mainly because the courts can focus on distinct issues, whereas Congress often tries to address multiple, and distinctly different, issues in a single piece of legislation. Quite honestly, I was surprised to hear a former patent litigator suggest that Congress is more well-equipped to handle patent reform than the courts or the USPTO.”
He also disagreed with Iancu’s position that the situation with section 101 represented a major “quandary”. He said: “It is a slow process, but we are making strides towards reaching the correct balance between granting too many invalid patents, and denying too many great ones.”
Collen IP partner Jess Collen expressed concern about Iancu’s strong pro-Congress legacy, arguing that while there may be a “practical value” to congressional action, legislation on this issue could lead to dramatic and unintended consequences.
“A court which regularly grapples with IP issues might be generally viewed as a “safer” choice to craft a better solution, but a resolution through legal precedent is still a long and more tendentious road. Legislation could give certainty, but any new law will require years of litigation before parameters of a new law become clear,” he said.
However, others support Iancu’s rallying cry for congressional intervention, and the legacy it leaves. “We do need Congress to step in on the section 101 quandary, said David Gindler, partner at Milbank.
The international stage
In his farewell speech, Iancu raised the problems that China presented during this directorship. Iancu called for the end to “state-sponsored theft of IP” and a “cavalier attitude toward the proliferation of fakes and counterfeits”.
He alluded to the US’ success last year in preventing the election of Wang Binying, a World Intellectual Property Office deputy director and a former Beijing trade official, as a means of securing that aim.
John Lu, partner at Milbank, hailed this achievement as a significant feat by Iancu. ”During a period when the Trump administration was exiting from international organisations and treaties, such as the Paris Agreement on climate change and later the World Health Organization, and the Chinese government was exerting more international influence, it was an accomplishment for the US-backed candidate to prevail,” he said.
According to Collen, President Trump’s “America First” policy that prevailed during Iancu’s tenure led to a regression in international IP cooperation along with a stall in the harmonisation of global IP laws.
“It is clear that in any case, the new director of the USPTO, will be challenged to re-engage foreign IP offices and governments while also trying to enlist their support to defend against state [bad] actors,” concluded Collen.
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Andrei Iancu, USPTO, IP, China, patent, Section 101, Robert Stoll, Darius Gambino