“In a place where Congress spoke expressly and it’s in the statute, it seems that the better course of action is for Congress to address it.” – Andrei Iancu
Former Director of the U.S. Patent and Trademark Office (USPTO) Andrei Iancu, who is now a partner with Irell & Manella, told attendees of an Orrin G. Hatch Foundation webinar today that many of the proposals in the USPTO’s recent Advance Notice of Proposed Rulemaking (ANPRM) on Patent Trial and Appeal Board (PTAB) practices should be legislated by Congress. Particularly on issues that were statutorily prescribed, such as the standard patents are reviewed under at the PTAB versus the courts, the timing for filing petitions, and who can bring an inter partes review (IPR) proceeding, Iancu said the better route to certainty is through Congress.
“The statute does say that anyone can bring an IPR,” Iancu said. “I think the PTO has discretion on institution…and the Supreme Court said specifically that the discretion is broad, but in a place where Congress spoke expressly and it’s in the statute, it seems that the better course of action is for Congress to address it,” he added.
While Iancu said he personally thinks there should be a standing requirement, Congress should be the entity to codify that. Similarly, he said he believes the standard of review should be clear and convincing evidence, “but if you want to change that it is up to Congress to debate that issue and pass that legislation.”
On the other hand, Iancu said, repeated attacks on the same patent in multiple fora “is expressly contrary to what the AIA was meant to be, which was for IPRs to be an alternative to district court litigation, not in addition to district court litigation, therefore I do think the PTO needs to exercise its discretion there.”
Matt Sandgren, Executive Director of the Orrin G. Hatch Foundation, asked the panelists about the ANPRM and whether the proposals should be the purview of the Office or Congress. Goodlatte, who was active in passage of the America Invents Act (AIA) as Chairman of the IP Subcommittee at the time, expressed concern, saying the PTAB was “well-designed” and the Office should not be able to decide on its own that it wants to change key provisions passed by Congress.
Jonathon Johnson, Chief Executive Officer at Overstock, said the ANPRM creates uncertainty for business and that patent trolls have become emboldened again since Fintiv, and now with the recent proposals. “One thing businesses crave is certainty and I think the AIA created more certainty around patent litigation,” Johnson said.
Senator Thom Tillis (R-NC), the current Ranking Member of the Senate IP Subcommittee, also participated on the panel and told attendees that he “expect[s] good things this year.” At a recent IPWatchdog event, Retired Federal Circuit Chief Judge Paul Michel said that Tillis and Coons are working on legislation to fix many of the problems with the U.S. patent system, including the PTAB. While quick passage of such bills is unlikely, Michel said the mere introduction of legislation could build momentum. “The three biggest problems are all about to be the subject of bipartisan bills in the Senate, and the House will follow suit,” Michel said. “I think when the bills are introduced and get cosponsored by numerous people of both parties, and then they start holding hearings, that will create a huge amount of momentum, and when the courts see the momentum, they will start acting on their own – particularly the Federal Circuit.”
Tillis commented that he likes some of the direction of the ANPRM, “but there needs to be certainty. If we vetted something that we feel like is going to be promulgated as a rule, we have to look at that as potential candidate for codification.”
Tillis also alluded to looking at legal decisions that need to be abrogated and said that he has no agenda “except to get something passed.”
The webinar panelists also discussed artificial intelligence, another hot topic in Congress. While they acknowledged the need for caution and legislation, Goodlatte warned against jumping on legislation too quickly that ultimately fails to keep up with the technology, and Tillis said he would disabuse people of the notion that AI is bad. Iancu added that “AI is a tool” and “we have a lot of experience in the IP world on how to treat tools.”
Iancu explained: “We will do a disservice to the innovation ecosystem if we do not recognize patent or copyright protection for the results [of AI creations]….. Protection is really important because IP is the currency of innovation and creativity, and without it it’s much more difficult to engage in trade of those creative works, the transfer of those creative works to the public and the growth of the innovation economy.”