Patent Office proceedings: Assessing USPTO Director Andrei Iancu’s tenure, part IV

In our previous three posts, we explored the legacy of outgoing
United States Patent and Trademark Office (USPTO) Director Andrei Iancu in the
areas of computer-generated inventionspatent eligibility, and USPTO priorities.

Iancu also spoke with me about the progress the Patent Office made
in the controversial realm of the Patent Trial and Appeals Board (PTAB), which
was established by the America Invents Act of 2011 as a faster, cheaper, and
easier way to challenge patent validity. The experiment has proven successful,
although critics argue it’s been too successful,
resulting in the overactive invalidation of otherwise worthy patents.

Former USPTO Director Andrei Iancu (right) signs an agreement with the leader of Mexico’s Institute of Industrial Property in Mexico City, Mexico, January 28, 2020, via Reuters

“When I first came in,” he told me, “there was at least a
perception that trials at the PTAB were unbalanced and they systematically
favored the petitioner and disfavored the patent owner.” He therefore came to
recognize that “it was really important
that we address the balance at the PTAB” in a systematic way, even though this
means “you’re always in the mode of making adjustments and it will never end.”

Iancu set about first to change the standard for “claim construction,” or
the manner in which patent claim terms are interpreted, aligning it with the
somewhat narrower standard used in district court litigation. “After all,” Iancu
explained, “the vast majority of the patents reviewed in post-grant proceedings
are involved in parallel litigation in district court.” This change made it
moderately harder for challengers to invalidate patents.

Second, Iancu asserts that the Patent Office
“dramatically improved the amendment process” within PTAB proceedings.
Previously, patent owners could amend their claims during PTAB proceedings, but
certain restrictions meant they did so sparingly. But Iancu loosened those
restrictions and instructed trial judges to provide initial insight into
potential amendments. Sure enough, according to preliminary results of a study
the USPTO commissioned, “Patent owners now are at least twice as likely to be
successful in obtaining amended claims during an [inter partes review] than
before, and almost three times as likely if they take advantage of the early
guidance.”

Finally, and perhaps most importantly, the USPTO under Iancu labored to improve the predictability of PTAB proceedings. As he explained:

We have 270 judges or so, we have over 1000 decisions that come out every year, and we want to ensure that we have as much consistency as possible so that practitioners, petitioners, [and] patent owners can predict the way things are going to go.

To that end, the PTAB has increased the proportion of
decisions deemed precedential, which “provides more clarity and more guidance
to those who appear before us.”

Moreover, the USPTO has published standard operating procedures
and an updated trial practice guide that “lets people know
with as much clarity as we can how our operations work inside here, how judges
are assigned to a case, and what the proceedings should be.” This manual covers
everything from whether an attorney is “allowed to consult with her witness
during a break in a deposition or not, to more complicated things such as
judicial assignments.”

In addition, Iancu justifiably takes pride in having
reduced the pendency of appeals at the PTAB. (The PTAB decides roughly 9,000
appeals and 1,000 trials every year.) These “took on average 30 months just a
few years ago,” but “we have brought this down today to 13 months, basically on
average just about a year, and we are going to very soon get it down to 12
months or thereabouts,” he added.

He’s also pleased to have shortened the time it takes to
examine patents in the first instance:

For the first time in a very, very long time, last year, 2019, we broke 24 months. . . . and in 2020 we went down to 23.3 months. Keep in mind that this is during a pandemic year where there were significant disruptions, with everyone having to work at home.

Indeed, “when you combine the phenomenal improvements in
examination pendency with the dramatic improvements in appeal pendency, the
overall pendency for the US Patent Office has improved dramatically in recent
years, and we’re very proud of that.”

Finally, during Iancu’s tenure, the PTAB established
the Legal Experience and Advancement Program, which “provides the
opportunity for skill development of the next generation of practitioners” by
encouraging and providing “incentives for clients and senior lawyers on a case
to allow the most junior lawyers on the case to argue in front of our judges.”
This program has been popular among younger practitioners and mirrors similar
efforts in federal courts to advance the career development of more junior
attorneys.

Thus, overall, Iancu’s Patent Office stint saw the
introduction of numerous important advances within the PTAB.

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