Senate Confirms USPTO Director


Andrei Iancu was confirmed by the United States Senate on February 5 to become Under Secretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office.

Joe Matal, who has been in charge at the USPTO in a quasi-Acting capacity is expected to ultimately become the next Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office.

The Iancu vote, as expected, resulted in a unanimous confirmation. The final vote in the Senate in favor of Iancu’s nomination was 94 to 0.

Iancu was originally nominated by President Trump on August 25, 2017, and he had his confirmation hearing before the Senate Judiciary Committee on November 29, 2017.

Andrei Iancu comes to the agency after most recently serving as the managing partner of Irell & Manella LLP  (appointed to that position by the firm in 2012) and practicing full time with the firm’s litigation and intellectual property practice groups. According to his firm profile, Iancu’s practice focus was intellectual property litigation, but he also involved himself with all aspects of intellectual property practice, including patent and trademark prosecution, due diligence and licensing. While at Irell & Manella, Iancu represented clients in various technological fields, including genetic testing, the Internet, medical devices, therapeutics, telephony, TV broadcasting, video game systems and computer peripherals.

One of Iancu’s major successes during his private practice career was his work in securing large settlements for TiVo Corporation in 2012. That year, TiVo secured a $250 million settlement from NYC-based telecommunications giant Verizon. Months before that settlement, Dallas-based telecom firm AT&T agreed to a $215 settlement to end litigation surrounding digital video recording technology. The total payments to TiVo from these settlements, and those from Microsoft, Cisco and others, exceeds $1.6 billion.

On the other side of the coin, Iancu’s work in the biotechnology sector has created an air of skepticism among some within the industry. Iancu represented Ariosa Diagnostics in a patent litigation matter against Sequenom, the patent owner. The discovery at the heart of the innovation patented by Sequenom resulted in a test for detecting fetal genetic conditions in early pregnancy that avoided dangerous, invasive techniques that are potentially harmful to both the mother and the fetus. The invention, which became embodied in U.S. Patent No. 6,258,540, claimed certain methods of using cffDNA. The patent taught technicians to take a maternal blood sample, keep the non-cellular portion (which was “previously discarded as medical waste”), amplify the genetic material that only they had discovered was present, and identify paternally inherited sequences as a means of distinguishing fetal and maternal DNA.

Although the claimed method does not preempt other demonstrated uses of cffDNA, the Federal Circuit still concluded (see here, here and here) that the discovery was not patent eligible, although it was “a significant contribution to the medical field.”  The United States Supreme Court refused to take the case to reconsider or elaborate on patent eligibility of medical breakthroughs such as the Sequenom innovation.

Tags: , , ,

Leave a Reply

You share in the PLI Practice Center community, so we just ask that you keep things civil. Leave out the personal attacks. Do not use profanity, ethnic or racial slurs, or take shots at anyone's sexual orientation or religion. If you can't be nice, we reserve the right to remove your material and ban users who violate our Terms of Service.

You must be logged in to post a comment.