Change is afoot at the U.S. Patent and Trademark Office (USPTO).  Since Director Andrei Iancu took office in February and declared “creating a new pro-innovation, pro-IP dialogue” a top priority, the agency has experienced a flurry of activity.  Beyond the significant shift in its rhetoric on intellectual property, the USPTO has moved to “increase predictability of appropriately-scoped claims,” and has initiated a full review of the process governing the Patent Trial and Appeal Board (PTAB).  In addition, the Patent Office continues to reduce delays accompanying patent applications and issue guidance on new judicial developments.

Recently, the USPTO addressed a key feature of the PTAB trial process:  the standard governing claim construction.  Last month, the agency issued a notice of proposed rulemaking to change the PTAB claim construction standard from the “broadest reasonable interpretation” standard to the “Phillips standard” used in district court and at the International Trade Commission.  According to Director Iancu, this change “aims to improve the consistency and reliability of the patent system” by harmonizing the standards used at the PTAB and in federal court.

The USPTO also has taken steps to reduce delays associated with pending patent applications.  The backlog of unexamined applications has been decreased—down from a peak of approximately 750,000 applications in 2009 to around 540,000 applications today.  Director Iancu’s stated goal is to achieve “optimal pendency,” or around 400,000 unexamined patent applications, with a pendency period of less than 24 months by 2019.

In April, the Supreme Court issued its decision in SAS Institute Inc. v. Iancu, holding that the America Invents Act requires the PTAB to institute review on all claims raised in a challenger’s petition if it institutes review on any of them.  Shortly thereafter, the USPTO issued implementing guidance, which requires the PTAB to institute a proceeding on all claims raised in a challenger’s petition or none at all.  The SAS Institute decision likely will increase the stakes of the institution stage of PTAB proceedings for patent owners, because a decision to institute will put the entire patent at risk.  Conversely, the decision may encourage the PTAB to deny review outright in a greater number of cases, putting additional pressure on parties at the institution phase.  As a practical matter, the holding in SAS Institute likely will result in a heavier workload for the PTAB and increase the time it takes the Board to resolve challenges, as institution now requires a final written decision on every claim.

The USPTO also is issuing guidance on patent subject matter eligibility.  Director Iancu recently acknowledged that the current standards governing eligibility “are difficult for all,” and committed the agency to work on developing forward-looking guidance that simplifies the eligibility determination for patent examiners and other stakeholders.  To that end, in April, the USPTO issued guidance on the “conventionality” analysis in step two of the Mayo/Alice test, in light of the Federal Circuit’s decision in Berkheimer v. HP Inc.  Director Iancu has committed the Patent Office to developing additional concrete tests that guide examiners and stakeholders in conducting eligibility analyses.

Considering the high activity level in Director Iancu’s short tenure, we expect the USPTO to initiate additional administrative changes in the coming months.  Covington will monitor developments closely, particularly concerning further anticipated changes to the PTAB.

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Photo of Holly Fechner Holly Fechner

Holly Fechner advises clients on complex public policy matters that combine legal and political opportunities and risks. She leads teams that represent companies, entities, and organizations in significant policy and regulatory matters before Congress and the Executive Branch.

She is a co-chair of…

Holly Fechner advises clients on complex public policy matters that combine legal and political opportunities and risks. She leads teams that represent companies, entities, and organizations in significant policy and regulatory matters before Congress and the Executive Branch.

She is a co-chair of the Covington’s Technology Industry Group and a member of the Covington Political Action Committee board of directors.

Holly works with clients to:

Develop compelling public policy strategies
Research law and draft legislation and policy
Draft testimony, comments, fact sheets, letters and other documents
Advocate before Congress and the Executive Branch
Form and manage coalitions
Develop communications strategies

She is the Executive Director of Invent Together and a visiting lecturer at the Harvard Kennedy School of Government. She serves on the board of directors of the American Constitution Society.

Holly served as Policy Director for Senator Edward M. Kennedy (D-MA) and Chief Labor and Pensions Counsel for the Senate Health, Education, Labor & Pensions Committee.

She received The American Lawyer, “Dealmaker of the Year” award in 2019. The Hill named her a “Top Lobbyist” from 2013 to the present, and she has been ranked by Chambers USA – America’s Leading Business Lawyers from 2012 to the present. One client noted to Chambers: “Holly is an exceptional attorney who excels in government relations and policy discussions. She has an incisive analytical skill set which gives her the capability of understanding extremely complex legal and institutional matters.” According to another client surveyed by Chambers, “Holly is incredibly intelligent, effective and responsive. She also leads the team in a way that brings out everyone’s best work.”

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Photo of Matthew Shapanka Matthew Shapanka

Matthew Shapanka practices at the intersection of law, policy, and politics. He advises clients before Congress, state legislatures, and government agencies, helping businesses to navigate complex legislative, regulatory, and investigations matters, mitigate their legal, political, and reputational risks, and capture business opportunities.

Drawing…

Matthew Shapanka practices at the intersection of law, policy, and politics. He advises clients before Congress, state legislatures, and government agencies, helping businesses to navigate complex legislative, regulatory, and investigations matters, mitigate their legal, political, and reputational risks, and capture business opportunities.

Drawing on more than 15 years of experience on Capitol Hill and in private practice, state government, and political campaigns, Matt develops and executes complex, multifaceted public policy initiatives for clients seeking actions by Congress, state legislatures, and federal and state government agencies. He regularly counsels and represents businesses in legislative and regulatory matters involving intellectual property, national security, regulation of critical and emerging technologies like artificial intelligence, connected and autonomous vehicles, and other tech policy issues. He also represents clients facing congressional investigations or inquiries across a range of committees and subject matters.

Matt rejoined Covington after serving as Chief Counsel for the U.S. Senate Committee on Rules and Administration, where he advised Chairwoman Amy Klobuchar (D-MN) on all legal, policy, and oversight matters before the Committee, particularly federal election and campaign finance law, Federal Election Commission nominations, and oversight of the legislative branch. Most significantly, Matt led the Committee’s staff work on the Electoral Count Reform Act – a landmark bipartisan law that updates the procedures for certifying and counting votes in presidential elections—and the Committee’s bipartisan joint investigation (with the Homeland Security Committee) into the security planning and response to the January 6th attack.

Both in Congress and at Covington, Matt has prepared dozens of corporate and nonprofit executives, academics, government officials, and presidential nominees for testimony at congressional committee hearings and depositions. He is a skilled legislative drafter who has composed dozens of bills and amendments introduced in Congress and state legislatures, including several that have been enacted into law across multiple policy areas. Matt also leads the firm’s state policy practice, advising clients on complex multistate legislative and regulatory matters and managing state-level advocacy efforts.

In addition to his policy work, Matt advises and represents clients on the full range of political law compliance and enforcement matters involving federal election, campaign finance, lobbying, and government ethics laws, the Securities and Exchange Commission’s “Pay-to-Play” rule, and the election and political laws of states and municipalities across the country.

Before law school, Matt served in the administration of former Governor Deval Patrick (D-MA) as a research analyst in the Massachusetts Recovery & Reinvestment Office, where he worked on policy, communications, and compliance matters for federal economic recovery funding awarded to the state. He has also staffed federal, state, and local political candidates in Massachusetts and New Hampshire.

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