Iancu Seen as Industry ‘Neutral’ PTO Director Pick

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By Malathi Nayak

Intellectual property attorney Andrei Iancu’s broad litigation experience for diverse clients on both sides of patent fights likely means he will take an even-handed approach to leading the Patent and Trademark Office, intellectual property attorneys and professionals told Bloomberg BNA.

Iancu, the managing partner of Los Angeles-based Irell & Manella LLP, will, if confirmed by the Senate, succeed Michelle K. Lee, who came to the agency from Alphabet Inc.'s Google and was popular among Silicon Valley technology companies.

“The private practitioner by necessity has a more balanced perspective on the role of the patent system in terms of stimulating innovation and economic growth,” Brian P. O’Shaughnessy, a Washington D.C.-based partner at Dinsmore & Shohl LLP, said. Most former PTO directors have come from within the agency, government or an industry, O’Shaughnessy said, and intellectual property law practitioners have been few and far between.

Iancu will be industry “neutral,” as he has represented clients from a wide range of businesses and is a “solid choice,” Q. Todd Dickinson of Polsinelli P.C. in Washington, a former PTO director, said.

Iancu didn’t immediately respond to Bloomberg BNA’s request for comment.

Ariosa Litigation

The pharmaceutical and biotechnology industries have been keenly watching to see if the Trump administration will favor giving them more patent protection. That industry may have some concerns about Iancu.

Iancu represented Ariosa Diagnostics Inc. in patent litigation against Sequenom Inc., which lead to a U.S. Court of Appeals for the Federal Circuit ruling in 2015 that a method for detecting paternity-identifying DNA in a serum or plasma sample from a pregnant female was not eligible for patenting.

The biotech industry saw the ruling as a blow that would mean their future innovations were ineligible for patenting. The life sciences industry took another big hit in 2016, when the U.S. Supreme Court denied Sequenom’s petition for review. ( Ariosa Diagnostics, Inc. v. Sequenom, Inc., 2015 BL 394898, Fed. Cir., No. 2014-1139, 12/2/15).

“Bio and pharma may be tentative in the beginning,” Robert L. Stoll, former PTO Commissioner for Patents and a partner at Drinker Biddle & Reath LLP, Washington, said. But Iancu “is going to be well received by the entire patent community.”

The Pharmaceutical Research and Manufacturers of America, the main pharmaceutical industry group, said in a statement “we look forward to continuing to work with the Administration to ensure strong and reliable intellectual property protections.”

The Biotechnology Innovation Organization, a biotech trade group, didn’t immediately respond to a Bloomberg BNA request for comment.

PTO Management

Iancu has strong credentials and will likely be confirmed without serious challenge, said Paul R. Michel, the former chief judge of U.S. Court of Appeals for the Federal Circuit.

“But there’s a question about how effective his experience prepares him to manage 13,000 employees at the patent office compared to about 100 attorneys at his law firm, " Michel said. “The challenge seems to be the training and supervision of the examiners.”

The next PTO director will take over as the U.S. Supreme Court is weighing the constitutionality of the agency’s patent validity challenge process in Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC.

The America Invents Act of 2011, a sweeping overhaul of U.S. patent law, created administrative patent reviews as an alternative to more costly litigation in federal district court. But patent holders say those proceedings, including inter partes review (IPR), make it too easy for those accused of infringement to counterattack by persuading the PTO to invalidate patents.

Inventor’s groups had criticized Lee not reining in the PTAB, which they say has been overly aggressive in invalidating patents.

“As far as I’m aware, he has not gone on record with respect to defects in the IPR procedures.” Michel said. “It is unclear whether he will seek to change them and rectify the defects.”

To contact the reporter on this story: Malathi Nayak in Washington at mnayak@bna.com

To contact the editor responsible for this story: Mike Wilczek at mwilczek@bna.com

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