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IPO Daily News™

Wednesday, 23 May 2018

23 May 2018


Andrei Iancu

Yesterday U.S. Patent and Trademark Office Director ANDREI IANCU testified in a House Judiciary Committee hearing on USPTO Oversight. His testimony focused on the same themes he highlighted during a Senate Judiciary hearing in April: 1) the need to extend the USPTO’s fee-setting authority before it expires on 30 September; 2) that the Patent Trial and Appeal Board has begun to review the rules for post grant proceedings to ensure that they are working as intended and appropriately balanced; and 3) that the USPTO has begun to issue “concrete guidance” for patent examiners and the public concerning patent subject matter eligibility.

The USPTO recently issued guidance in response to the U.S. Supreme Court’s decision in SAS Institute v. Iancu that it must decide the patentability of every claim challenged in a petition for inter partes review and also recently published a proposed rulemaking that would change the claim construction standard used in post grant proceedings from broadest reasonable interpretation (BRI) to the standard used in federal courts and the U.S. International Trade Commission. IP Subcommittee Chairman DARRELL ISSA (R-Calif.) and Rep. ZOE LOFGREN (D-Calif.) expressed concern about the claim construction proposal, which Lofgren said circumvented Congress’ prerogative. Iancu said that more than 80% of patents involved in IPR are involved in concurrent district court litigation and that eliminating the use of a different standard by the USPTO will increase consistency, reduce gamesmanship, and ensure that the proceedings are truly an alternative to district court litigation as Congress intended. He predicted that the change will reduce overall litigation. The USPTO is looking at a number of other possible changes to the proceedings, including simplifying the amendment process and modifying the institution process.

Rep. DOUG COLLINS (R-Ga.) asked Iancu to elaborate on the significance of the uncertainty created by the Supreme Court with regard to determining patent subject matter eligibility. Iancu said that the issue is “very significant” to the USPTO, to applicants, and to industry. In some areas of technology, he said it is unclear what is patentable and what is not and that that can depress innovation. He said the USPTO will work within the confines of the Supreme Court’s jurisprudence to provide better guidance about what is eligible for patent protection. With regard to what Congress must do, he said that 35 U.S.C. § 101 has not been amended since 1952, and that the language was largely unchanged from the original statute written by Thomas Jefferson. If Congress decides to pursue legislation, he said the USPTO will be happy to provide assistance.

Iancu also responded to questions on fee-setting authority, patent examination quality, and a variety of other topics. A copy of his written statement and a video of the hearing are available on the Committee website.


On Monday Rep. STEVE CHABOT (R-Ohio) and HANK JOHNSON (D-Ga.) introduced H.R. 5887, the Building Innovation Growth Through Data for Intellectual Property (“BIG Data for IP”) Act of 2018. The bill would extend the fee-setting authority granted to the USPTO by the 2011 Leahy-Smith America Invents Act. Its Senate companion, S. 2601, was introduced by Sens. CHRIS COONS (D-Del.) and ORRIN HATCH (R-Utah) in March.


NetSoc Sues Match for Patent Infringement

Yesterday Reuters reported that NetSoc LLC sued Tinder’s parent company Match Group Inc. for infringing its patent for “a social network to facilitate people in life issues.”

Appeals Court Upholds Viacom’s Win in “The Krusty Krab” Trademark Suit

Yesterday the Hollywood Reporter reported that a federal appeals court upheld a decision that Nickelodeon parent company Viacom’s unregistered trademark on “The Krusty Krab,” a fictional restaurant in the Nickelodeon cartoon SpongeBob Squarepants, is valid and infringed by the owner of an as-yet-unopened restaurant called “Krusty Krab.”

Law & Advocacy

Friday, February 21, 2014


During the quarterly meeting of the USPTO’s Patent Public Advisory Committee (PPAC), Chief Financial Officer TONY SCARDINO reported that the 2014 appropriations bill signed in January funds the USPTO at $3.024 billion – $90.8 million above the fiscal 2013 enacted level and $238.3 million above the fiscal 2013 sequestration level. The budget will allow the USPTO to hire 1,000 patent examiners and 63 administrative patent judges and provides funding related to opening satellite offices in San Jose, Denver, and Dallas. Projected 2014 spending is estimated at $2.948 billion. The White House will release its fiscal 2015 budget on March 4.

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