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IPO Daily News™

Thursday, 14 March 2019 8:28 am

USPTO DIRECTOR TESTIFIES AT SENATE HEARING

Yesterday the Senate Judiciary Committee’s Intellectual Property Subcommittee held a hearing on “Oversight of the United States Patent and Trademark Office.” The sole witness was USPTO Director ANDREI IANCU. In opening remarks, Chairman THOM TILLIS (R-N.C.) applauded the Director for recent changes he has implemented that contributed to the U.S. Chamber of Commerce ranking the U.S. patent system second in the world in its 2019 IP Innovation Index, up from 12th place in 2018. Tillis specifically noted the issuance of revised subject matter eligibility examination guidance and reforms to the Patent Trial and Appeal Board. Ranking Member CHRIS COONS (D-Del.) echoed Tillis’s praise. They noted that they have convened a series of roundtable meetings to receive input from industry on the proper standard for patent subject matter eligibility, and Tillis said that he plans to unveil a draft bill to revise section 101 of the Patent Act by the summer. Tillis also noted that the Subcommittee will hold a hearing on Women in IP in April.

In his testimony, Iancu said that he was pleased the USPTO continued to be given access to all anticipated fee collections and that he was grateful Congress had extended the Office’s fee setting authority last year. He also discussed the USPTO’s work to highlight gender disparity in inventing. He said that the Office continued to assess issues surrounding PTAB practice, but that the changes that had been implemented so far had been successful. He said the revised patent subject matter eligibility examination guidance issued earlier this year attempted to synthesize the relevant case law, clarify the analysis, and should lead to more successful results. He also noted the USPTO’s recent notice of proposed rulemaking to require U.S. licensed counsel for foreign domiciled trademark applicants and said that the Office was studying options for decluttering the trademark register. Finally, he said modernization and stabilization of the USPTO’s IT infrastructure was a top priority. The Office had an internal task force dedicated to the issue, as well as a task force dedicated to developing artificial intelligence tools to assist in patent examination.

Members of the Subcommittee asked Iancu a number of questions, many focused on how patent protection affects drug pricing. In response to whether changes he had made to PTAB rules in the last year should be codified, Iancu said that he wanted to assess whether the changes were working appropriately before taking any additional steps; he also noted that the Supreme Court’s decision in SAS v. Iancu had had a significant impact on PTAB operations.

With regard to patent subject matter eligibility, Iancu acknowledged the difficulty in finding medical diagnostics eligible for patent protection under current Supreme Court precedent. He said that although the revised patent subject matter eligibility examination guidance had had a positive effect at the USPTO, among patent examiners and the PTAB, he was concerned about how the courts would continue their analysis under section 101 moving forward because they were not bound by the guidance.

Iancu’s written testimony and a video of the hearing are available on the Senate Judiciary Committee’s website.

USPTO APPOINTS SCOTT BOALICK TO BE PTAB CHIEF JUDGE; BONILLA TO BE DEPUTY CHIEF

Yesterday USPTO Director ANDREI IANCU announced the appointment of SCOTT BOALICK to be the Chief Judge of the Patent Trial and Appeal Board (PTAB), effective immediately. IPO congratulates Boalick on his appointment and looks forward to continuing to work with him in his new position.

Boalick has served as Acting Chief Judge since the departure of former Chief Judge DAVID RUSCHKE in September 2018. He was appointed to the Board in 2007 and has served in a number of leadership positions since then. Before coming to the USPTO, he was a patent attorney with the Department of the Navy. He holds a law degree from Georgetown University and an M.S.E. in Systems Engineering from the University of Pennsylvania.

The USPTO also announced the appointment of JACQUELINE BONILLA to be the Deputy Chief Judge of the PTAB, effective immediately. Bonilla has served as Acting Deputy Chief Judge since September 2018. She was appointed to be an administrative patent judge in 2012, and was previously an attorney in private practice. She holds a law degree from the University of Virginia School of Law and a Ph.D. in pharmacology from the University of Virginia.

REGISTER FOR IPO’S EUROPEAN PRACTICE CONFERENCE ON 2 MAY IN BASEL, SWITZERLAND

For the 8th year, IPO’s European Practice Committee is organizing a conference titled “The Ever-Changing IP Landscape: Patents, Trademarks, and Trade Secrets in 2019 and Beyond.” The 2019 event will take place on 2 May and is being organized in cooperation with the Law Faculty of the University of Basel, Switzerland. Topics include how to protect your data after the Trade Secrets Directive, equivalent patent infringement, the current critique of the patent system, and trademark matters. The conference includes presentations from in-house and outside counsel as well as experts from academia and the courts. For more information or to register, visit www.ipo.org/Europe19.

IP IN THE MASS MEDIA

IV Awarded $43 Million in Patent Suit against T-Mobile, Ericsson

Yesterday Seattle Weekly reported that a jury in Texas returned a $43 million verdict for Intellectual Ventures after finding that T-Mobile and Ericsson infringed its patents for wireless transmissions on the LTE network.