Fifteen Minutes With Andrei Iancu

Law Week asks the USPTO director about training patent examiners, balancing interests and thinking like an engineer

Before his appointment as USPTO Director, Andrei Iancu practiced intellectual property law out of Southern California and was an engineer at Hughes Aircraft. / LAW WEEK, DOUG CHARTIER

LAW WEEK: How would you characterize the IP community in the Rocky Mountain area? Do you notice distinctions in terms of the industries, the types of professionals that tend to congregate here?

IANCU: So historically, especially lately in the United States, IP had been, and continues to be to some extent, highly concentrated. It is not dispersed equally to the same level that the U.S. population is dispersed, unfortunately. So you have innovation and entrepreneurship, and therefore IP creation, highly concentrated in places like Silicon Valley, the Boston-Philadelphia corridor, Seattle lately.

What’s happened more recently, and it’s a very good thing to see, is that other communities have gotten into the innovation and entrepreneurship ecosphere. Denver in particular is one such example. Denver right now is very different than it was, let’s say 20 years ago. A lot more technology here now. As a result, quite a few more patent lawyers and IP lawyers than there used to be. And that is a sign that innovation is happening here in Colorado.

I saw the same thing elsewhere in the region. I went to Fargo, North Dakota, at an innovation event there, and it was an amazing event. The innovation that’s taking place in Fargo is remarkable. We also went to Salt Lake City. And likewise, we saw an increase that was really remarkable.

And it’s one of the major goals of mine — of the administration’s — to broaden the innovation ecosphere in the United States as much as possible. We want to broaden geographically, we want to broaden demographically so that more women, racial minorities, and other underrepresented classes participate. And we want to broaden economically so that folks from all types of economic communities participate. And the fact that we’re seeing this diversification in the region, is a very good thing to see. 

LAW WEEK: What I find interesting as a non-lawyer is how many IP attorneys enter law by way of an engineering or science career, and how that maybe informs their approach to law and policy. Given your engineering background with Hughes Aircraft, how much of “the engineer” is still with you in your work out in D.C.? 

IANCU: Quite a bit, I would say. I really love science and technology. I love any new gadgets that are out there. And it’s what keeps me really interested in this field. I’m biased, of course, but I believe IP law is one of the best fields of law to be in. It is so interesting, there’s always something new, something exciting.

When it comes to the PTO itself, we see the future. Through the hands of our examiners come these inventions that will become public, at some point in the future. We see all that stuff first. It’s really, really remarkable and exciting. 

Having said all that, I don’t at all believe that you have to be an engineer or scientist to be in the IP field. Some of the best lawyers that I have come across in my career don’t have a technical degree. As long as you have an open mind and interest in science and technology and it excites you, I think you can be a great IP practitioner without necessarily having those degrees.

LAW WEEK: When the USPTO issues guidance on issues as complicated as Section 101 patent eligibility, how do you promote consistency among so many patent examiners who have to follow it?

IANCU: It’s a constant struggle, and you always have to work at it. One of the most difficult areas is Section 101 subject matter. In January of this year, we issued new guidance to 8,500 examiners, give or take, and almost 300 PTAB judges. They all got it at the same time. But that guidance had been in the works for months. And we worked on detailed training materials that we wanted to be ready the day the guidance was issued. So all that work was pre-done anticipating this issue. We immediately begin training. Within a few weeks, everybody, basically, is trained. And that’s the type of thing that helps with consistency.

With anything new, there’s going to be a learning curve and room to improve. But everybody getting a clear piece of guidance that is understandable to them, and then everybody being trained by the same materials on the same piece of guidance should lead to increased consistency. 

In addition, with respect to 101, we continue to have a 101 committee that includes folks from many areas of the Patent Office, including examiners, or supervising examiners, and all the way up — I’m on this committee, for example. We meet regularly, and if there’s a difficult problem that gets surfaced, it gets brought to this committee, and we talk about it. So this effort generally helps disseminate a consistent approach.

Another thing that we did is to say that the guidance applies to everybody. Not just the examiners, but also judges, because the judges are in a separate body — the PTAB. 

They get appeals from the examining activity. So you want to make sure that they’re all working with the same set of materials and same set of guidance that improves consistency.

LAW WEEK: In your role you have to balance a lot of competing interests. How do you go about that as the office proposes or implements reforms?

IANCU: The patent system, frankly, any IP system — patents, trademarks, copyrights — it’s really important to have balance. Anytime you’re off balance, especially if you’re way off balance, you create perverse incentives that can destabilize the system. So in my view, it is not good for an IP system on important issues to be way to one side, or way to the other side.

For example, at the post-grant proceedings, such as inter partes review, the public views on those had become so polarized in the past seven years or so since their implementation. Some people love them and they thought they were great and perfect and should in fact be extended. Other people thought the whole thing, the whole system should be abolished completely and it was a complete mistake to institute it to begin with. But the fact of the matter is that we have a system. There’s a statute that we have to administer and we have to do it in a balanced manner.

So I don’t believe it is good to have a system that is or at least perceived to be all in favor of the petitioner or a system that is or is perceived to be all in favor of the patent owner on a particular matter. You need to have a fair approach that people think, “Oh, yeah, you know what, I might have won, I might have lost, but the system was fair, and it was balanced.” 

Some folks are calling for certain reforms that will completely gut the congressional intent. 

As long as we have a statute, probably it’s not wise to go that far. Because again, we can create perverse incentives. And the same is true the other way. Some people believe that post-grant proceedings should be dramatically expanded and anything goes, that you can file as many petitions against one patent, for example, as you want. Well, that’s also probably problematic, and it creates potential for abuse and perverse incentives that way. So issue by issue, we need to work really hard to have a balanced approach and the steady hand on the keel. 

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