Many in the IP world suspected improper influence at the U.S. Patent and Trademark Office (USPTOUnited States Patent and Trademark Office. See also PTO.) under former Director Andrew Iancu, previously a partner at a firm with a long history of representing non-practicing entities (NPEsNon-Practicing Entity. A broad term associated with trolls but now disfavored because it includes universities and legitimate technology developers that seek to license technology in advance rather than after a producing company has independently developed it. More). But a new final report by the U.S. Government Accountability Office (GAO) that covers Iancu’s tenure shows just how far he went to tilt the scales toward NPEsNon-Practicing Entity. A broad term associated with trolls but now disfavored because it includes universities and legitimate technology developers that seek to license technology in advance rather than after a producing company has independently developed it. More and his own business interests—and underscores the need for more transparency at USPTOUnited States Patent and Trademark Office. See also PTO..
I previously wrote about the GAO’s preliminary findings, which include crucial information from judges at the Patent Trial and Appeal Board (PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.), but the final report is also worth digging into – below, I’ll discuss some of the key takeaways.
Iancu Used His Power to Influence Patent Judges
The GAO shined a bright light on the extraordinary control Iancu and USPTOUnited States Patent and Trademark Office. See also PTO. leadership exercised over the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.. As part of the report, GAO conducted a survey of PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. judges, and considering the nearly 90% response rate, the judges had a lot to say. In fact, the GAO found that a vast majority – a whopping 75%– felt that directors and management had affected their independence and decision-making, especially under Iancu.
One judge said, “Under [Iancu], we had a director who want[ed] to have direct influence over cases but he refused to put his name on the decisions. To me that violates the APA [Administrative Procedures Act] because there was no notice to the parties about who was making the decision or why.”
In America Invents Act (AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding.) proceedings, nearly 70% of judges felt pressure to either change or modify their decisions based on review by USPTOUnited States Patent and Trademark Office. See also PTO. leadership. Those that didn’t comply were removed or replaced – and many worried disagreeing with management could impact their careers.
Iancu’s unprecedented influence was particularly pervasive in preliminary proceedings about whether to institute patent challenges under the AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding..
Judges said time and again that leadership influence was particularly strong in institution decisions. One judge told the GAO, “In my view, my freedom and independence is limited with respect to whether or not to exercise discretion to deny institution in an AIAAmerica Invents Act of 2011. AIA made modest reforms, most notably moving the U.S. to a first-inventor-to-file system more aligned with foreign practice, but also including expanding prior user rights to all patent-eligible subject matter, and instituting a post-grant review proceeding. proceeding.” Another reported that, “If the case presents a Fintiv factor analysis, then the decision outcome and analysis is constrained by whatever may be the current Director or management policy.”
Iancu’s Influence Benefitted Patent Holders
Iancu’s influence over the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. created a potential conflict of interest, because his policies directly and consistently benefited his former, and now current, law firm Irell & Manella.
The rule prescribing the Fintiv analysis is a prime example. That rule requires PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. judges deciding whether to review patents asserted in litigation to consider a list of factors that weigh heavily in favor of denying review.
Irell & Manella is well known for representing patent owners in high-profile and highly lucrative cases. For example, in one of patent trollAn entity in the business of being infringed — by analogy to the mythological troll that exacted payments from the unwary. Cf. NPE, PAE, PME. See Reitzig and Henkel, Patent Trolls, the Sustainability of ‘Locking-in-to-Extort’ Strategies, and Implications for Innovating Firms. VLSI’s cases against semiconductor manufacturer Intel, the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. denied one review petition on the same day Fintiv went into effect and another two weeks later – not on the merits, but because trials involving the challenged patents were scheduled. When those trials eventually took place, VLSI went on to win more than $2 billion in damages – a win that Fintiv made possible. Since then, they’ve won even more in damages thanks to the rule Iancu put in place.
The Patent Office Needs Greater Transparency
The GAO made strong recommendations to the USPTOUnited States Patent and Trademark Office. See also PTO. – including clarifying management’s engagement in reviewing PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. decisions, improving transparency about management’s interaction with judges, greater communication between PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. and stakeholders, and guidance for stakeholders on providing feedback on PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. decisions.
Everyone should embrace these recommendations wholeheartedly. Ensuring PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. proceedings are fair and transparent benefits the USPTOUnited States Patent and Trademark Office. See also PTO., PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. judges, patent owners, prospective petitioners, and members of the public affected by likely-invalid patents. Indeed, the new USPTOUnited States Patent and Trademark Office. See also PTO. Director, Kathi Vidal, has embraced these recommendations and, before their release, had already taken steps to improve transparency. I hope patent holders, who have expressed concerns about undue influence over the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA., welcome these changes.
