Patents: The Road Ahead

by Richard E. Parke, Lief Parke LLP

2020. What a year—one best looked at in the rearview mirror. Despite the profound upheavals that COVID-19 and the measures employed to combat it brought to all aspects of our lives, there were some bright spots. One was the continuing revitalization of the American patent system by the United States Patent and Trademark Office, which is important and relevant to many who follow Microwave Product Digest.

As this publication’s readers know, a patent—a type of intellectual property—is an exclusive right that a government (or sovereign) grants for an invention, which is itself a product or process that teaches a new way of doing something or offers a new technical solution to a problem.¹ The awarding of a patent is a quid pro quo, of sorts, between the inventor/applicant and the government, namely, the government conditions issuing a patent on the inventor publicly disclosing sufficient technical information about the invention. A patent gives its owner “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States. Put differently, patents do not grant the right to make, use, offer for sale, sell, or import, but rather to stop others from doing so without the owner’s permission. With some exceptions, a patent generally expires 20 years from the application’s filing in the United States or, in some cases, from the filing of an earlier related application. 

Patents have been part of the American legal landscape since the nation’s beginning. The United States Constitution provides: “The Congress shall have Power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries . . . .” Under current law, the United States Patent and Trademark Office, an agency in the Department of Commerce, is the issuing authority for patents. The federal courts are where patents are enforced against infringers.

Where We Are

As this article comes to press, the Biden Administration is in its early days. Keeping with custom, the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office, Andrei Iancu, resigned upon inauguration of the new president. Director Iancu served nearly three years and many in the innovation community—attorneys, scientists, and executives—believe he instituted policies that largely benefitted patentees while making USPTO procedures clearer and more predictable. Changes and developments that occurred on his watch include:

• Reducing the average time (a) for getting a patent application through the USPTO to 23 months, the lowest in almost 20 years, and (b) for appeal to 13 months, down from 30 months in 2015
• Implementing new patent eligibility guidelines aimed at elucidating a less-than-clear area of law that have reportedly led to fewer patent application rejections
• Revising post-grant proceedings (i.e., patent validity challenges brought after issuance) by, for example, having the USPTO’s administrative courts use the same claim construction standard as the federal courts, along with other steps designed to bring more balance to those proceedings (which, given an earlier significant patent invalidation rate, had prompted a former chief judge of the nation’s highest patent court, the U.S. Court of Appeals for the Federal Circuit, to bestow on these USPTO courts the unfortunate moniker of “death squads”)
• Encouraging inventor diversity and inclusion
• Efficiently transitioning the USPTO to a virtual environment during the pandemic

Where Might We Go?

A new director is not expected to be selected and confirmed for at least several months. Drew Hirshfeld, the USPTO Commissioner of Patents, currently helms the agency. Typically, interim leaders are caretakers, so it is likely that in the short term the USPTO will function as it had under Director Iancu. But a new permanent director, once installed, will be able to evaluate the USPTO’s direction and potentially chart a new course.

The patent system also has strong congressional supporters. One such stalwart is Senator Chris Coons (D-DE),² who in the previous congressional term had sponsored the bipartisan Support Technology and Research for Our Nation’s Growth and Economic Resilience (STRONGER) Patents Act, S. 2082 (116th Congress).³ In general, the STRONGER Patents bill contained measures to fortify individual patents—thus enhancing their value—by making invalidation harder and enforcement easier. The bill was drafted in response to a “number of changes over the past decade [that] have weakened the U.S. patent system, from Supreme Court decisions to the unintended consequences of new post-grant administrative proceedings at the U.S. Patent and Trademark Office (USPTO).”⁴ Senator Coons also stated that those “changes risk undermining investor confidence in technology-intensive small businesses, ceding our nation’s historic edge in innovation to Europe or China.”⁵ The four strategies presented to “enact balanced reforms to restore the U.S. patent system to the world’s gold standard” were:

• Protecting American inventors from illegal infringement by enhancing a patent owner’s access to injunctive relief both while cases are pending and after a judgment that a patent is both valid and infringed
• Ensuring fairness in USPTO administrative challenges to patent validity by enacting further changes designed to limit repetitive challenges against patent owners and ensure the proceedings are fair to all parties, including solo inventors and small businesses
• Protecting small businesses and consumers from bad-faith patent demand letters
• Ensuring that patent application fees remain at the USPTO and not be used to fund other government agencies

While the STRONGER Patents Act did not pass during the 116th Congress, the new IP Subcommittee will likely continue this discussion on strengthening patent rights and keeping the U.S. patent system competitive globally. Washington watchers predict that while Senator Coons is no longer on the IP Subcommittee, he is still on the Judiciary Committee and is expected to submit a version of the STRONGER Patents Act. Additionally, several of the IP Subcommittee’s returning members are known for their keen interest in these reforms. Chief among them is Ranking Member Senator Thom Tillis (R-NC)—the IP Subcommittee’s previous Chair—who has worked closely with Senator Coons on these issues.⁶

As noted, the USPTO falls under the Commerce Department. The nominee for Secretary of Commerce is Gina Raimondo, the Governor of Rhode Island. Prior to becoming governor, she founded an early-stage venture capital firm that invested in and helped launch companies in various industries, including high tech and health care. While that is no guarantee of her priorities if confirmed, there is indeed reason to believe that her policies would be pro-patent.

Takeaways

The future landscape looks promising for inventors and companies seeking to secure patent rights. Recent reforms indicate a commitment to and emphasis on bolstering the strength of patents. Though there are industries where acquiring those rights is less certain (e.g., medical diagnostics), there is room for cautious optimism that the debate on reforming patent eligibility to make such patents obtainable will continue. Meanwhile, for inventors in technical fields that have historically received more favorable attitudes regarding patentability—which includes many technologies relevant to MPD’s readers—the recent focus on improving the quality and timeliness of patent examination at the USPTO should make the process more accessible and attractive. While not every invention justifies the expenditures required to secure a patent, for those discoveries with real economic potential, the value in getting a U.S. patent is a smart bet—a strong patent remains a valuable arrow for a business to have in its quiver. 

About the Author

Richard E. Parke is an intellectual property attorney, and former U.S. Army Air Defense Artillery officer, with the New York-based law firm Lief Parke LLP (www.liefparke.com). He may be reached at rparke@liefparke.com.

1 There are three types of patents: utility, design, and plant patents. The most prevalent, and most relevant to MPD readers, is utility patents, which is the focus of this article.

2 Senator Coons was expected to be the Chair of the Senate Judiciary Committee’s Intellectual Property Subcommittee in the 117th Congress, but that just changed. Senator Leahy (D-VT) was given the post, while Senator Coons was made the Chair of the newly revived Subcommittee on Privacy, Technology, and the Law.

3 The co-sponsors were Senators Cotton (R-AR), Cramer (R-ND), Durbin (D-IL), Hirono (D-HI), and Kennedy (R-LA). Representative Steve Stivers (R-OH) introduced an identical version in the House of Representatives (H.R. 3666).

 4 www.coons.senate.gov/imo/media/doc/STRONGER%20Patents%20-%20one%20pager%20(2019-07-02).pdf 

5 Id.

6 Senator Tillis’s continuing interest in buttressing American IP rights was evident in a February 16, 2021 letter to President Biden. In the letter, Senator Tillis laid out what “views and characteristics” the incoming USPTO Director should have—and they essentially paralleled those of former USPTO Director Andrei Iancu.

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