Director of U.S. Patent Office has positive words for Akron Law and ‘patent eligibility’ reform at annual IP Symposium03/07/2019
This was the second trip to Akron and first speaking engagement in Ohio for the Hon. Andrei Iancu since he was unanimously confirmed by the Senate as Under Secretary of Commerce and Director of the U.S. Patent and Trademark Office (USTPO) one year ago.
Iancu began his remarks as the keynote speaker on March 4 at The University of Akron School of Law 21st Annual Intellectual Property Law and Technology Symposium by noting the Akron area was recently recognized as one of the top 50 places in America based on the number of patents granted by the USPTO between 2000 to 2015, per 10,000 residents.
I was told, Iancu said, “that the unbelievable patent lawyers who practice here were not one of the reasons for this great honor. But there is no question that the IP (intellectual property) bar has a huge impact on the innovation ecosystem here. We know that, beginning with the school you have here. You have one of the top IP programs in the nation, with half-a-dozen full-time IP professors and a dozen, nearly two dozen IP courses. The program you have here is amazing,” he said.
“And it’s not surprising all this is happening in Akron, with such a proud history of innovation over the last century or more. And it’s also not surprising that the National Inventors Hall of Fame is headquartered here. I visited the National Inventors Hall of Fame last summer. The USPTO co-founded this incredible institution in 1973.”
The Director focused his remarks on reform initiatives the USPTO began rolling out this year. Recent federal judicial decisions introduced a degree of uncertainty to the application of patent law under Section 101 of the Patent Act, he told the audience, which has led to confusion for applicants, attorneys, and patent examiners.
The uncertainty relates largely to the question of whether many computer-based inventions should be ineligible for a patent because they are “abstract ideas.” Iancu put the controversy in historical context.
Beginning In 1790, Iancu related, an automated milling system invented by American entrepreneur and engineer Oliver Evans began revolutionized grain milling and flour-making in the Delaware Valley and beyond. President George Washington was an early adopter, installing Evans’ equipment at his milling operation at Mount Vernon in 1791—to great success. Washington first learned of Evans' improvements in 1790, when he reviewed and signed the patent application Evans submitted to the newly established United States Patent Office. It was the third U.S. patent.
“I suspect that nobody—then and now—would think that Evans’ automated manufacturing method for processing flour would be abstract and therefore ineligible to be patentable under Section 101 of the patent code,” said Iancu.
Although things are very different today, he continued, “we need to be careful not to decide that automation, which is at the heart of the technologies of the future, is somehow no longer eligible for patenting. Just because we are no longer automating [with] large machines that are tangible and easy to see and feel does not mean that today’s machines and processes should be any less eligible.”
What the court never said
The patent at issue in the landmark Supreme Court case Alice v. CLS Bank, Iancu explained, covered a computer-based method of facilitating escrow transactions that mitigated the risk of only one party fulfilling its obligation. The high court invalidated the patent not because it involved a computer, but because it dealt with a fundamental economic practice. That is what made it ineligible, he emphasized.
“Some have concluded that ‘doing it on a computer’ is not eligible for patenting, without any reference to what the ‘it’ might be. The court did not necessarily go that far,” he said.
“Put differently, the court never said that all automation with computers is per se ineligible. And why would it be? Where is the statutory authority to draw an eligibility line between automation by computers on the one hand and automation with other machines on the other?”
Director Iancu said the U.S. patent system has bogged down over this issue of patent eligibility as a result of “an over-reading” of Alice and other patent eligibility cases. “We at the USTPO are working to change that.”
He outlined the new eligibility guidelines and analytical framework the USTPO issued in January to clarify patentable subject matter under Section 101. Iancu said that virtually all patent examiners and judges have now been trained on the new guidance, and they welcomed the approach.
“This is the analytical framework for a stable and predictable system,” he said. “It drastically improves the analysis. It streamlines the process, it clarifies the approach, and it leads to more consistent results. I hope that other authorities will help us in this effort. It is critically important for the American patent system.”
Read details on Law360.com about the keynote remarks by The Honorable Andrei Iancu, Under Secretary of Commerce and Director of the United States Patent and Trademark Office (USPTO), at the Annual Symposium on Intellectual Property (IP) Law and Policy.
“We were delighted to host Director Iancu as the keynote speaker at the Symposium,” said Professor Ryan T. Holte, David L. Brennan Associate Professor of Law and Director of the Akron Law Center for Intellectual Property Law & Technology.
“Despite the cold weather and snow the night before, this was the best-attended IP Symposium in 21 years. We had a packed house of over 250 people, and I’m sure having Director Iancu as our keynote speaker had much to do with that. I received comments from all involved that they were very appreciative of the Director making his way to Akron and saying all the great things he did about the city and the Akron Law IP Center.”