Congratulations to Andrei Iancu, who has recently been confirmed to be the newest Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office. The agency that he will direct is among the most important in the federal government, as it administers the nation’s primary system for fostering the development of new inventions and promoting the progress of American economic strength.
Under Secretary Iancu joins the USPTO at a time when patents are important assets for inventors but also are being misused as tools of aggression, especially against small businesses and emerging startups. Under his leadership, the USPTO should continue to adhere to patent policy that protects legitimate inventions while also limiting the ability of patents to interfere wrongfully with free markets. There are several steps he can take to further this goal.
Maintaining the effectiveness of post-grant patent review procedures. The procedures introduced in 2011 with the America Invents Act — namely inter partes review, post-grant review and covered business methods review — are critical to ensuring that erroneously-granted patents can be efficiently reconsidered, limiting any damage they may cause. Already, parties have used inter partes review to challenge questionable patents on technologies such as podcasting and software activation.
Proceedings like inter partes review work well because, in large part, they are run by expert judges of an expert agency with experience in patent law and technology. Certainly, there are procedural elements for the USPTO to refine. But the agency should reject critics’ calls to eliminate the proceedings entirely, to limit severely their effectiveness, or to devolve certain disputes (such as those over pharmaceuticals) to generalist federal courts.
Improving patent quality and internal monitoring procedures. Poor-quality patents — especially those on old or obvious ideas — provide no value to innovation or the economy, and in fact can detract from economic growth. The USPTO is the first line of defense against poor-quality patents being issued, and it should dedicate resources to examiner training and internal monitoring systems that focus on the correctness of decisions to grant patents.
Advocating for correction of the standards of patent law. Even the best training and monitoring cannot ensure patent quality if there are defects in the baseline law that the USPTO must follow. Most prominently, the bar for determining what ideas are too obvious to be patented is currently set too low, such that even very simple inventions end up being patented. This error in the law is well-known and was even recently acknowledged by the Department of Justice in a brief to the Supreme Court.
The USPTO is in a unique position to appeal decisions on patent applications to the federal courts, and that is a key way to correct obviousness law. The agency should take advantage of this position to the fullest extent that it can.
Calling for patent reform to enhance global competitiveness. The president’s State of the Union address called for protecting American intellectual property from theft by foreign competitors. This is an important issue with regard to trade secrets, which can be and have been wrongfully stolen. But “theft” of patents is less clear-cut, since U.S. patents generally do not apply outside the United States. Additionally, ideas in patents are printed in public records and thus cannot be “stolen.”
The real risk of “theft,” when it comes to patents, is loss of American industries to foreign countries when domestic patent law threatens to tangle those industries in unending and costly litigation. The USPTO should, as it has before, call for reform ensuring that patent litigation cannot be used as a tool against valuable businesses, thereby discouraging them from operating within the United States.
Working with all sides of the patent stakeholder community. The community of those who come before the USPTO is small, made up largely of patent applicants and their attorneys. But the actual stakeholder community of those affected by patents is large — big companies, small businesses, technology startups, individual consumers, civil society, academia and think tanks, among others. Patents affect this wide community because patents affect all technology, and technology is ubiquitous today, from smartphones to cellphone towers to pharmaceuticals — things that touch every person every day.
The USPTO has always taken pride in its partnership with the entire stakeholder community, and the community has long appreciated the agency’s receptiveness to public input. We hope that Under Secretary Iancu will continue this tradition of partnering with the entire community and working toward a patent system that brings benefits to everyone.