USPTO can’t restore certainty or leadership
Andrei Iancu, 24 – Partner, Sullivan & Cromwell; former Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Responses to Questions from Senator Tillis, before the Subcommittee on Intellectual Property in the Senate Judiciary Committee, “The Patent Eligibility Restoration Act – Restoring Clarity, Certainty, and Predictability to the U.S. Patent System” 1/23, https://www.judiciary.senate.gov/imo/media/doc/2024-01-23_-_qfr_responses_-_iancu.pdf //DH
RESPONSE TO QUESTION 3: Congress needs to legislate today to ensure that the U.S. does not fall behind in the world’s leadership of innovation. The guidance that the USPTO put in place while I was Director has helped provide more certainty and clarity for examiners and patent applicants, but it necessarily had to operate within the bounds of the Supreme Court and Federal Circuit’s case law.7 It is ultimately this case law that needs to be addressed, and in my opinion, fixed, by Congress through legislation such as PERA. In addition, the courts are not bound by USPTO guidance, and legislation is the only way to reverse the confusion caused by these decisions.