USPTO Director Nominee And IP “Evangelist” Iancu Could Get Committee Approval By January

President Trump’s nominee to be the next director of the United States Patent and Trademark Office (USPTO), Andrei Iancu, could receive Senate committee approval by the holidays if things line up just right. If appointed, he told a nomination hearing today that he would “evangelize” the IP system and make possible reform of the patent review process a high priority.

The Senate Judiciary Committee held a hearing with Iancu today (29 November), and he faced relatively few questions compared with several judicial nominees in the same hearing. His reception in the hearing appeared generally positive, and the questions were straightforward. With his careful but clear statements, stakeholders from all sides could find something they liked about what he was saying.

“I understand the needs of the varying members of the IP community,” he said. For instance, he said, “the accused infringer in one case, may be the IP owner in another.” And “the patent owner in one area of technology or science, may be a member of the public trying to design around someone else’s patent in another area.”

The USPTO “houses the world’s greatest collection of intellectual property knowledge and experience,” said Iancu.

For his priorities, he said they can look at the inter partes review (IPR) process, the post-grant review process, now that we have five years of experience since the America Invents Act (AIA) that set those processes up. The patent office can work with stakeholders to assess how it’s going and determine what improvements can be made.

He also wants to look at the IP system as a whole and perhaps “provide a new paradigm,” he said, and “recognize, champion, perhaps evangelize, the IP system.” He wants to “identify the excitement of invention and the creation of new things, the benefits it brings to the economy and growth.

Iancu is the managing partner of Irell & Manella LLP. Mr. Iancu also practices full time as a member of the litigation and intellectual property practice groups. His background is largely oriented around Los Angeles, but he was born in Romania.

Sen. Coons asked a range of specific legal questions about the patent process that have been raised by users of the system, including patent invalidation.

Iancu said, “I am very much aware of, shall we say, strident criticism of some of the proceedings.” Coons countered, “Strident and well-founded, or strident and baseless?”

To which Iancu said, “In some instances well-founded, but I think we have to be careful, because the system needs to be very well balanced.” But, he went on, “it is a true fact, that the system is criticised heavily, and that is important to note because if the inventing community does not have confidence in the IP system then investments do not get made and inventions slow down, and the economy doesn’t benefit. If confirmed … I very much look forward to looking at the history that we have,” working with Congress, leaders of the office, and stakeholders, and “drill down and identify what is reality and how we can improve.”

Coons also asked about recent court decisions relating to patentability, and the negative effect on innovation, and the uncertainty that is has brought.

Current Supreme Court jurisprudence on Section 101 on patentability is “law of the land” and is what the office and courts follow. But it has introduced a “level of uncertainty,” he said. So again one of his priorities will be to work with the office to see what can be done to improve the situation.

When asked about USPTO’s revenue from fees for its services being shared with other agencies, he said he would work to use the funds for USPTO needs instead.

But in the end, Iancu stressed, “First and foremost evangelize the IP system.” He would “promote the brilliance of inventors, the excitement of invention, the great benefits it brings to the economy and society in general.” And he would work with other agencies of government to improve the level of predictability of the IP system.

At the international level, work with USTR for instance to ensure trading partners have strong corresponding IP laws that protect American companies doing business overseas, and that there are appropriate enforcement mechanisms.

On the controversial Patent Trial and Appeal Board (PTAB), he was asked about the USPTO role. He said it is a statutory role for PTO. He said he did not know if his predecessors sat on the PTAB, but said he will explore the feasibility and desirability of doing that, balancing the other responsibilities of the position.

On patent assertion entities – patent trolls – any abuse of the IP system and frankly any system should not be tolerated, he said, and it is important to have a well-functioning balanced IP system. Congress and courts over past several years have taken number of measures to address some of that abuse. Should see how that recent development in case law and acts of Congress are working out and take stock of that and see if more needs to be done. As we do that, a balance is critically important. “We really do have to be careful, as they say, not to throw out the baby with the bathwater,” he noted.

He was asked about industry concerns that IPRs and PBRs are being misused, and whether he agrees with the implementation of the America Invents Act (AIA).

“We do have quite a bit of experience with the IPR process now, there is quite a bit of criticism,” he said. “If confirmed it will be one of my priorities to work with senior leadership at the patent office, Congress, stakeholders, to identify specific issues to be addressed and address them.”

Issues to possibly look at include amendment process, standard for claim construction, type of evidence admitted at hearing, how IPR consideration is determined at the top of the proceeding. And based on experience they have to date take appropriate decisions, he said.

The Process

Now committee members will have seven days to submit written questions to the nominee, and these are generally returned within a week, a committee spokesman told Intellectual Property Watch. The written questions and answers will be posted on the committee hearing website, he said.

If there are no further questions from senators, and typically there are not, then the nomination would be scheduled for a markup in committee, which normally happens on Thursdays when Congress is in session. They are currently aiming to go out for the winter holiday break on 15 December, though they could carry over an additional week to 22 December, he said. And a last factor is that the first time an item is placed on the agenda for markup it is usually pushed to the following week.

So, the committee’s last questions will be in by Wednesday, 6 December, and if the replies are completed by Iancu by Monday, 11 December, he might get on the markup agenda for Thursday, 14 December. Then with the customary one week putting off of a new agenda item, and if Congress sticks around an extra week, the earliest markup could be Thursday 21 December. And if it doesn’t happen then, it would presumably come back up with Congress gets back from break in early January. Then it goes to the full Senate for final approval, which can happen quickly.