A Meeting with the Director

Volume 51, Issue 2

A Meeting with the Director

Recap of the BPLA Webinar with USPTO Director Iancu

On May 14, 2020, BPLA President Michael Bergman hosted Andrei Iancu, the Director of the United States Patent and Trademark Office, for the webinar equivalent of a fireside chat. In a conversation moderated by Professor David Olson of Boston College, who is also the co-chair of the BPLA’s Law School Committee, Director Iancu spoke on a number of topics, including providing insight into how the Office is dealing with the challenges of the COVID-19 pandemic.

Director Iancu began by saying how pleased he was with the USPTO’s seamless transition to fully remote working. He mentioned that productivity had actually gone up because many examiners and judges in the Office were postponing their vacation plans due to stay-at-home orders. Even before the current challenges, 85% of the Office worked remotely in some capacity, so the USPTO already had solid technological and cultural foundations on which to transition the rest of its workforce. Likewise, the USPTO’s recent efforts, such as making trademark e-filing mandatory and enhancing video conference capabilities, has helped the Office overcome the challenges posed by COVID-19 with minimal disruption to service.

When asked about the impact of COVID-19 on the USPTO’s finances, the Director explained that the office was experiencing a decline in trademark filings, which have historically been closely correlated with the nation’s gross domestic product. Changes in patent filing levels typically lag changes in the economy and have thus far remained stable. His office, however, continues to monitor the USPTO’s financial health daily.

Director Iancu also discussed some of the USPTO’s newest initiatives, including:

The USPTO’s Legal Experience and Advancement Program (“LEAP”):
This program is designed to create opportunities for newer attorneys to gain valuable practice experience at the Patent Trial and Appeal Board. Director Iancu appreciates that most proceeding before the USPTO are of significant importance to clients, so it is challenging to find opportunities for less experienced practitioners to have meaningful speaking roles in PTAB proceedings. To counteract this, the Office is creating an incentive for junior-practitioner involvement. It particular, it will give a party fifteen extra minutes of oral argument if a junior practitioner has a meaningful speaking role. More senior counsel will also have an opportunity to assist the junior practitioner and clarify the record should it be necessary to do so. (You can find more information about this program later in this issue of the BPLA Newsletter.)

Patents 4 Partnerships IP Clearinghouse:
The USPTO also has unveiled a new clearinghouse platform to facilitate voluntary licensing of patented technology pertinent to COVID-19. Director Iancu explained that this was a new initiative for the USPTO to test the waters for a USPTO-run patent licensing database. He noted that, should this initiative gain marketplace traction, it may be expanded to other technology areas as well. More information on the Patents 4 Partnership platform can be found
here
.

Prioritized Examination for COVID-19 Inventions:
Director Iancu also discussed the USPTO’s expedited examination program for COVID-19 relevant technologies, which will effectively waive the fees for Track 1 examination for small entities. More information on this program can be found
here
.

Director Iancu also fielded several questions from BPLA members, the highlights including:

Director Iancu continues to see Section 101 jurisprudence to be the most important substantive issue in U.S. patent law. He was pleased, however, by the recent findings that the Office’s educational efforts, including the Berkheimer Memo, has largely ended examiner’s struggles with this issue, which has lead to increased predictability in examination.

In response to a question on whether there was tension between the TRIPS treaty and the current U.S. stance on the unpatentability of diagnostic methods, the Director disagreed with the contention that there was as categorical exclusion for diagnostic methods under the current case law.

For trademarks, Director Iancu commented that an increased scrutiny of specimens of use and the U.S. Counsel Rule, which requires foreign applicants to have U.S. counsel representation, have been effective at reducing fraudulent specimens of use.

When asked to shed any further light on the “materially interfered” standard for the deadline extension provided by the CARES act, the Director noted that the guidelines themselves provide suitable guidance, as does the recently released form declaration for taking advantage of this extension. He further noted that it was not the USPTO’s policy to require that the requestor state how COVID-19 materially interfered in meeting the original deadline.

Director Iancu sees AI-assisted examination tools as a “must have” not a “like to have.” AI-related tools are currently under consideration to help with examination aspects such as patent technology classification and trademark imaging searches. AI assisted prior art searching also has great potential and is being explored.

As always, the BPLA sincerely thanks Director Iancu for his time and his dedication to improving intellectual property policy in the United States.

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