Great news today for our patent fight!
Senate IP Subcommittee Hears Testimony from Iancu, Debates IP Issues
By Steve Brachmann
March 20, 2019
www.ipwatchdog.com/2019/03/20/senate-ip-subcommittee-hears-testimony-iancu-debates-ip-issues/id=107468/
“Iancu said that, while it was important to prevent abuse in the system, he took issue with the use of pejorative terms like ‘patent troll’ that fail to identify specific issues that could be solved.”
https://www.senate.gov/artandhistory/art/comm...0503.htmOn the afternoon of Wednesday, March 13, the Senate Judiciary Committee’s Subcommittee on Intellectual Property held an oversight hearing of the U.S. Patent and Trademark Office featuring testimony from and questioning of USPTO Director Andrei Iancu. While this hearing was relatively short by Congressional standards, the Senate IP Subcommittee explored recent changes instituted during Iancu’s tenure as USPTO Director and also got into the debate on pharmaceutical patents—a topic that has been front and center for both houses of Congress in recent weeks.
Chairman Tillis, Ranking Member Coons Encouraged by Subject Matter Eligibility Guidance
In his opening statement, Senate IP Subcommittee Chairman Sen. Thom Tillis (R-NC) expressed his support of Director Iancu’s efforts to harmonize the clam construction standard utilized in America Invents Act (AIA) trials occurring at the Patent Trial and Appeal Board (PTAB) with the Phillips construction standard used in Article III federal courts , adding that this helped to ensure that patent owners were being treated fairly regardless of the forum where validity was being challenged. Tillis also said he was “glad to see” the USPTO issue revised guidance on subject matter eligibility under the Alice/Mayo framework, a framework that Tillis noted had created massive uncertainty for every industry that relies on patents . Although Tillis expressed concerns about the legacy tech systems still being used at the USPTO, he added that he was encouraged by Iancu’s efforts to make modernization at the agency a priority.
Ranking Member Sen. Chris Coons (D-DE) was also supportive of changes made by Iancu since he became the USPTO Director, noting that those changes helped the U.S. patent system rise to tie for 2nd place in the 2019 version of the U.S. Chamber of Commerce’s International IP Index up from its previous position of 12th place. However, Coons expressed his concern that current case law on patent eligibility dis-incentivizes research into critical areas of innovation, such as personalized medicine. Coons acknowledged that the USPTO couldn’t solve this problem on its own and said that efforts were being made to work towards a legislative solution to what he called this “thorny challenge.”
Iancu Highlights Recent Agency Actions in His Testimony
Director Iancu began his statement by highlighting some of the changes implemented at the USPTO, which were covered in more detail in his written testimony, including the change to the Phillips claim construction standard and the recently revised subject matter eligibility guidelines. He expressed his satisfaction with the recent passage of the SUCCESS Act, which extended the fee setting authority of the USPTO for an additional eight years when it was passed into law last October. Under the terms of that law, the USPTO was directed to study and report on the number of patents obtained by women, minorities and veterans, and Iancu pointed to a USPTO report released last month which showed that the number of women named as inventors had not been increasing at the same rate as the number of women who were now in STEM professions. Iancu also discussed a recent notice of proposed rulemaking that would require foreign domiciled trademark applicants to use U.S. licensed counsel—a measure to reduce the number of trademark applications from overseas that are filed in bad faith.
Iancu Discusses Telework, Bad Faith Trademark Applications and Serial PTAB Challenges
Sen. Mazie Hirono questioned Iancu about the USPTO’s Telework Enhancement Act Pilot Program (TEAPP), which in general is very beneficial to the Office but requires teleworking employees stationed in Hawaii to make a monthly trip back to the agency’s headquarters in Alexandria, Virginia. Although the agency was still assessing the technology needed to facilitate teleworkers in Hawaii and Alaska without such commuting requirements, Iancu said that he was hoping to be able to make those changes soon. Hirono also asked about the report on women inventors and asked what steps were being taken to close the gaps shown in that study. Iancu cited a roundtable discussion in Silicon Valley with companies and academics that occurred soon after the report came out to discuss actions that can be taken. Iancu said that he thought one of the most important factors to encourage inventions from women and minority groups was to have appropriate role models and mentors so they can see people like themselves participating in the U.S. patent system. Sen. Tillis followed by noting that the Senate IP Subcommittee would be holding a hearing in April on this particular issue.
Other issues discussed during the hearing included problems with an influx of trademark applications from China, many of which are questionable in nature. Iancu discussed a pilot program recently put in place to expedite trademark cancellations but added that this program was fairly new. He also discussed new software developed for the agency that can help trademark examiners determine whether any specimens of use provided as part of the application have been Photoshopped in any way.
Asked about issues surrounding the current state of Section 101 patent eligibility, which Sen. Coons said continued to preclude significant advances in medical diagnostics, Iancu said that the recently revised subject matter eligibility guidance was well received by examiners, but it remained to see how the courts would interpret it. He cited the Federal Circuit’s recent decision in Athena Diagnostics v. Mayo Collaborative Services where the panel majority felt its hands were tied by Supreme Court precedent despite their belief regarding the importance of the technology . Iancu also answered concerns from Sen. Hirono about serial challenges at the PTAB filed by major firms like Apple or Google, which present a particular hardship for small patent owners. Iancu noted positive results from a revised trial practice guide issued by the USPTO a few months ago and said that the agency would continue to take a further look at situations where multiple petitions challenging the same claims would be inappropriate.
Senate IP Subcommittee Hears Testimony from Iancu, Debates IP Issues
By Steve Brachmann
March 20, 2019
www.ipwatchdog.com/2019/03/20/senate-ip-subcommittee-hears-testimony-iancu-debates-ip-issues/id=107468/
“Iancu said that, while it was important to prevent abuse in the system, he took issue with the use of pejorative terms like ‘patent troll’ that fail to identify specific issues that could be solved.”
https://www.senate.gov/artandhistory/art/comm...0503.htmOn the afternoon of Wednesday, March 13, the Senate Judiciary Committee’s Subcommittee on Intellectual Property held an oversight hearing of the U.S. Patent and Trademark Office featuring testimony from and questioning of USPTO Director Andrei Iancu. While this hearing was relatively short by Congressional standards, the Senate IP Subcommittee explored recent changes instituted during Iancu’s tenure as USPTO Director and also got into the debate on pharmaceutical patents—a topic that has been front and center for both houses of Congress in recent weeks.
Chairman Tillis, Ranking Member Coons Encouraged by Subject Matter Eligibility Guidance
In his opening statement, Senate IP Subcommittee Chairman Sen. Thom Tillis (R-NC) expressed his support of Director Iancu’s efforts to harmonize the clam construction standard utilized in America Invents Act (AIA) trials occurring at the Patent Trial and Appeal Board (PTAB) with the Phillips construction standard used in Article III federal courts , adding that this helped to ensure that patent owners were being treated fairly regardless of the forum where validity was being challenged. Tillis also said he was “glad to see” the USPTO issue revised guidance on subject matter eligibility under the Alice/Mayo framework, a framework that Tillis noted had created massive uncertainty for every industry that relies on patents . Although Tillis expressed concerns about the legacy tech systems still being used at the USPTO, he added that he was encouraged by Iancu’s efforts to make modernization at the agency a priority.
Ranking Member Sen. Chris Coons (D-DE) was also supportive of changes made by Iancu since he became the USPTO Director, noting that those changes helped the U.S. patent system rise to tie for 2nd place in the 2019 version of the U.S. Chamber of Commerce’s International IP Index up from its previous position of 12th place. However, Coons expressed his concern that current case law on patent eligibility dis-incentivizes research into critical areas of innovation, such as personalized medicine. Coons acknowledged that the USPTO couldn’t solve this problem on its own and said that efforts were being made to work towards a legislative solution to what he called this “thorny challenge.”
Iancu Highlights Recent Agency Actions in His Testimony
Director Iancu began his statement by highlighting some of the changes implemented at the USPTO, which were covered in more detail in his written testimony, including the change to the Phillips claim construction standard and the recently revised subject matter eligibility guidelines. He expressed his satisfaction with the recent passage of the SUCCESS Act, which extended the fee setting authority of the USPTO for an additional eight years when it was passed into law last October. Under the terms of that law, the USPTO was directed to study and report on the number of patents obtained by women, minorities and veterans, and Iancu pointed to a USPTO report released last month which showed that the number of women named as inventors had not been increasing at the same rate as the number of women who were now in STEM professions. Iancu also discussed a recent notice of proposed rulemaking that would require foreign domiciled trademark applicants to use U.S. licensed counsel—a measure to reduce the number of trademark applications from overseas that are filed in bad faith.
Iancu Discusses Telework, Bad Faith Trademark Applications and Serial PTAB Challenges
Sen. Mazie Hirono questioned Iancu about the USPTO’s Telework Enhancement Act Pilot Program (TEAPP), which in general is very beneficial to the Office but requires teleworking employees stationed in Hawaii to make a monthly trip back to the agency’s headquarters in Alexandria, Virginia. Although the agency was still assessing the technology needed to facilitate teleworkers in Hawaii and Alaska without such commuting requirements, Iancu said that he was hoping to be able to make those changes soon. Hirono also asked about the report on women inventors and asked what steps were being taken to close the gaps shown in that study. Iancu cited a roundtable discussion in Silicon Valley with companies and academics that occurred soon after the report came out to discuss actions that can be taken. Iancu said that he thought one of the most important factors to encourage inventions from women and minority groups was to have appropriate role models and mentors so they can see people like themselves participating in the U.S. patent system. Sen. Tillis followed by noting that the Senate IP Subcommittee would be holding a hearing in April on this particular issue.
Other issues discussed during the hearing included problems with an influx of trademark applications from China, many of which are questionable in nature. Iancu discussed a pilot program recently put in place to expedite trademark cancellations but added that this program was fairly new. He also discussed new software developed for the agency that can help trademark examiners determine whether any specimens of use provided as part of the application have been Photoshopped in any way.
Asked about issues surrounding the current state of Section 101 patent eligibility, which Sen. Coons said continued to preclude significant advances in medical diagnostics, Iancu said that the recently revised subject matter eligibility guidance was well received by examiners, but it remained to see how the courts would interpret it. He cited the Federal Circuit’s recent decision in Athena Diagnostics v. Mayo Collaborative Services where the panel majority felt its hands were tied by Supreme Court precedent despite their belief regarding the importance of the technology . Iancu also answered concerns from Sen. Hirono about serial challenges at the PTAB filed by major firms like Apple or Google, which present a particular hardship for small patent owners. Iancu noted positive results from a revised trial practice guide issued by the USPTO a few months ago and said that the agency would continue to take a further look at situations where multiple petitions challenging the same claims would be inappropriate.
10
