On March 13, 2019, Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, testified before the U.S. Senate’s Committee on the Judiciary’s subcommittee on Intellectual Property to discuss the USPTO and the current state of patent and trademark law in the United States. In their introductions, Chairman Thom Tillis and Ranking Member Chris Coons both lauded the work of Director Iancu, specifically citing the harmonization of PTAB claim construction with the ITC and District Court, the §101 patent subject matter eligibility guidance issued by the USPTO to improve reliability and predictability for inventors, and the 10 millionth issued patent celebration as noteworthy successes over the last year. Between Iancu’s opening statement and the ensuing discussions with the committee, the hearing highlighted several areas of improvement for Iancu and the legislature to focus on in the near future.
Modernization of the USPTO
One of the most involved discussions of the day was the modernization of the USPTO. Citing the continual game of catch-up in technology that the government faces, Iancu identified his goal of leapfrogging the current industry standards to help the USPTO keep pace as things continue to change. Specifically, Iancu aims to 1). Stabilize the infrastructure itself and 2). Implement new measures like Artificial Intelligence into the USPTO procedures.
Stabilizing the infrastructure has the dual goals of both reducing the likelihood of system shutdowns and increasing the speed of getting it back online. These are both vital as more of the submissions and communications rely on the electronic submission standards and as more examiners work remotely.
Regarding Artificial Intelligence, Iancu identified multiple uses for the USPTO to stay ahead of the standards. First, he cited the ability to use AI to clean up the Trademark Registry. Recent focus has been placed on foreign filings of trademark applications in bad faith with photoshopped use submissions. Iancu referenced new programming that could identify photoshopped applications and help flag them for review and reduce the clutter on the Registry. Additionally, Iancu referenced the potential use of AI to identify prior art during the patent prosecution process, to greatly reduce the burden on examiners to manually go through the related art.
In achieving these goals, Iancu referenced specific task forces for these projects, a new CIO specifically tasked with overseeing the infrastructure review and upgrade, and outside contractors assisting in all efforts.
Spurred by a recently released USPTO analysis on female inventorship, Senator Mazie Hirono and Director Iancu discussed the issues of equal representation both in inventorship and at the USPTO itself. Citing the report’s findings, the two identified problematic statistics where only 21% of patents included at least one female inventor and only 12% of named inventors were female in 2016. Especially troubling, as noted by Director Iancu, is the fact that even when normalized for representation in the field, there is still a gap between industry representation and inventorship. These numbers are echoed in other underrepresented populations of minorities, while low income patent owners are especially exposed to serial PTAB petitions from patent trolls and deep pocket entities.
Director Iancu advocated for steps that would highlight the issue, promote national debate, and begin working on programming to bridge the gap. Noteworthy is that the most growth has occurred in isolated fields where female inventorship already existed, suggesting mentorship programs may be an effective piece of a potential solution to help guide female and minority inventors through the process. Senator Hirono referenced bills she has introduced to support minorities and women in STEM to curb the dropouts at each level of education, while Chairman Tillis emphasized the need to address the issue further while highlighting a “Women in IP” hearing this coming April.
Further Clarity On §101
Despite praising the USPTO Guidance on §101 subject matter eligibility, both Director Iancu and the committee highlighted the need for further work on the issue. While the guidance has been met with success at the USPTO in both examination and at the PTAB, uncertainty over how it will be met in the Federal Circuit could pose issues in the future.
Tillis and Coons identified forthcoming legislation as soon as this summer that may bring clarity to the issue, which Director Iancu appreciated, deferring decision making on whether codification of his decisions regarding §101, the Trial Guide, etc would be of benefit for the patent system as a whole.
All parties involved agreed that the chilling effect of uncertainty and unpredictability with respect to subject matter eligibility was a threat to the continued growth of the patent system, and in turn the economic growth and stability for the U.S. Coons was especially concerned about the area of medical diagnostics with respect to subject matter eligibility, while general agreement highlighted the impact on computer implemented devices as well.
Among the other topics discussed were the success of the TEAPP program and potential expansion for examiners in Hawaii and Alaska, protocol for Iancu to address ethical concerns as a political appointee, and the balance between fueling medicinal innovation and preventing astronomical drug pricing.
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