The Senate Judiciary Committee is due to hold Andrei Iancu’s confirmation hearing for USPTO Director today. Iancu will appear alongside three nominees for federal judgeships so it remains to be seen how much time the senators will have to question him. To help out the committee members we drew up a list of five questions that we think he should be asked to answer.
1) Does Congress need to act to clear up the uncertainty around 101?
Thanks to a succession of decisions from the Supreme Court a cloud of uncertainty continues to hang over just what is patent eligible in the US. That is particularly true in medical diagnostics, but has also affected parts of the tech industry. There is a growing sense that Congress needs to take action to bring greater clarity to section 101 of the US patent statute — the part that focuses on patent eligible subject matter — but just six years after the America Invents Act, does Iancu agree that more legislation is needed?
2) Is inter partes review constitutional and, if so, what steps can and should be taken to assuage concerns that the odds are stacked against patent owners at the PTAB?
IPRs are firmly in the headlines thanks to the recent oral arguments in Oil States and SAS Institute in the Supreme Court. Assuming that SCOTUS finds the process constitutional then patent stakeholders will be looking to see what changes Iancu might consider to what remains one of the most controversial parts of the patent system.
3) Your predecessor placed a lot of emphasis on improving patent quality – does the US still have a quality problem and, if so, what additional steps can you take to help remedy it?
An issue that Michelle Lee championed was improving patent quality at the USPTO. She launched the Enhanced Patent Quality Initiative and appointed the first deputy commissioner for patent quality as she responded to claims that the agency had been issuing too many low quality rights. It will be interesting to see the extent to which Iancu shares that vision or regards it as a false narrative, as the likes of former Chief Judge of the Federal Circuit Paul Michel have claimed.
4) Do you share the concerns of some in the IP community over the PTO’s participation in the Department of Commerce’s Enterprise Services initiative?
The Department of Commerce, which is home to the USPTO, as well as a host of other government agencies, has for several years been pushing an initiative for its various constituencies to share functions such as HR and IT. To critics in the patent community, who point out that the USPTO is a revenue generating body, it is fee diversion by another name. As Iancu looks to win over patent stakeholders, much will depend on how he confronts this thorny issue
5) What role can you play in ensuring that confidence is restored in the US patent system on the world stage?
At a time when confidence in the US patent regime has waned considerably and other jurisdictions have focused on strengthening their own systems, the USPTO badly needs strong leadership on the world stage. Assuming that he’s confirmed, it’s not just patent owners across the US who will be looking for guidance from Iancu.