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Director Iancu Roundtable with BIOCOM San Diego

Andrei Iancu, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, believes that the U.S. needs a strong patent system in order to excel and thrive in the global economy.  He has made strengthening the U.S. patent system a core part of his mission responsibilities. Director Iancu has been travelling across the country and speaking with various patent stakeholders. As part of this effort, he met with BIOCOM’s Board of Directors and Intellectual Property Committee in San Diego on April 18, 2019. 

In a roundtable format, Director Iancu, along with John Cabeca (Director of the Silicon Valley USPTO), answered questions from BIOCOM members. The members asked about numerous topics, perhaps most notably patent eligibility, updating of the USPTO’s information technology systems, and the role of the USPTO regional offices.

Director Iancu focused on the importance of a strong patent system and protection of innovation to ensure a robust national economy in the “fourth industrial revolution.” One of Director Iancu’s favorite analogies is how data processing is today’s equivalent to grain milling in the 18th century. The third patent granted by the U.S. government was to an automated milling system, and, as Iancu pointed out, no one then or now would consider the processing of grain to be ineligible for patent protection. Why then, he asked, is the processing of data considered to be ineligible for patent protection? Just as the improvements to grain processing heralded by that early patent were fundamental to our country’s success in the first industrial revolution, improvements to data processing and to healthcare (e.g., diagnostics) will be critical for success today. Yet recent trends in patent eligibility preclude many patents in these areas in the U.S. Other countries without such restrictions on patent eligibility are gaining an advantage.

Director Iancu believes the 2019 Revised Patent Subject Matter Eligibility Guidance, issued by the USPTO in January, will help to clarify eligibility under section 101. In particular, patent applications directed to data processing are already being allowed in higher numbers than before this guidance was implemented.  Yet to be seen is whether the federal courts will uphold these new patents in view of existing jurisprudence.  The guidance likely will not help with certain diagnostic patents, which instead will need to wait for congressional action. Iancu referred practitioners to the recent press releases from Senators Tillis and Coons on their Section 101 patent reform framework.

Iancu also talked about last year’s Patent Application Locating and Monitoring (PALM) system outage, which led a multiday shutdown of the Patent Office IT systems, and what the USPTO is doing to avoid such shutdowns in the future. There is currently no redundancy in the USPTO system, he said. That means that any software or hardware problem could result in a shutdown of systems, especially since PALM was originally developed decades ago. The USPTO is working to modernize its systems, including adding redundant servers. It was unclear how long this process is expected to take.

Director Cabeca took a few questions from attendees, as well. He encouraged using the regional offices for examiner interviews, pointing out that they were set up to allow video conferences that were almost like being in the same room. Since a large number of the patent examining corps telework, these video conferences can be beneficial when the examiner is not available in person.

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume IX, Number 140


About this Author

Marc T. Morley Associate Mintz Patent Prosecution & Strategic Counseling Patent Prosecution Patent Portfolio Strategy Patent Opinions IP Due Diligence Licensing & Technology Transactions Trademark & Copyright

Marc works with clients to develop and implement effective intellectual property strategies and is recognized as one of San Diego’s top IP attorneys. In addition to obtaining and managing patent portfolios, he handles licensing and other IP-related transactions as well as the requisite due diligence. 

Marc provides strategic patent and trademark counseling, manages and prosecutes complex IP portfolios, and advises and counsels diverse clients ranging from early stage to established technology focused companies, research institutions, and venture...

Melissa J. Brayman Patent Lawyer San Diego Mintz

Melissa’s practice focuses on the preparation and prosecution of US and international patent applications. A registered patent attorney, Melissa has managed patent portfolios involving a wide range of technologies, including biofuels, personalized medicine, cancer therapeutics, tissue grafts, biological products, immunology, plant biotechnology, and stem cells.

Her experience includes preparing freedom to operate and patentability reports for biotechnology and pharmaceutical clients, conducting due diligence and evaluating patent portfolios in preparation for capital investment, preparing memoranda on inventorship, and interviewing cases at the USPTO. Prior to joining Mintz, she was an associate in the San Diego office of another international law firm.

Before she earned her law degree, Melissa was a postdoctoral fellow at UC San Diego, where she studied the regulation of hypothalamic GnRH neurons by steroid hormones. Her PhD thesis was titled, “Progesterone Regulation of the Human MUC1 Gene in Uterine Epithelial Cells.” She also earned an MBA with a concentration in new venture creation.

In addition to her intellectual property practice, Melissa has an active pro bono practice, and has worked on a number of immigration cases for pro bono clients.