By Nithya Pathalam JD Candidate L'23
The Penn Intellectual Property Group (PIPG) held their annual symposium on March 25, 2021. With the AIA’s 10th anniversary upcoming, the symposium—entitled America Invents Act: Mission Accomplished or Promise Unfulfilled?—examined the AIA’s effect on patent law and explored how our view of innovation might have changed over the past ten years.
The symposium opened with a conversation about the real world. Former USPTO Director Andrei Iancu chatted with Penn alum Marc Hankin on a wide range of topics from pendency (the amount of time it takes to get a patent or trademark), technology integration at the USPTO, and controversies regarding the Patent Trial and Appeals Board (PTAB).
Director Iancu began by stressing the bipartisan nature of intellectual property and his goal, as director, of increasing efficiency at the Office. For patents, Iancu noted that the Office reduced pendency to under 24 months for the first time in the modern era. But lately, there has been a larger pendency delay for trademarks. Even though telework is the norm for a majority of trademarks examiners, which served to curb the impact of COVID-related delays, a dramatic increase in Chinese applications coupled with changing economic situations caused the delays. Nonetheless, Iancu was optimistic about the Office’s ability to meet the demand. Iancu discussed the future of the Office as well, stressing the need for new technology tools and AI integration to speed up the IP applications process. Last, he briefly waded into the controversies regarding inter-partes review and the PTAB.
The first panel discussion, between Detkin IP Clinic’s Professor Cynthia Dahl and Dr. Benjamin Dibling, Deputy Managing Director of the Penn Center for Innovation, centered on the AIA’s impact on technology transfer, university innovation, and the relations between academia and commercial markets. First, Professor Dahl spoke about her upcoming paper regarding the impact of AIA on technology transfers. Then, panelists examined the AIA’s impact on university innovation.
How did the first-to-file system change innovation and patent law in the US? Our neighbor’s to the North, Canada, changed their patent system to first-to-file in 1989, providing a unique opportunity for retrospection. Penn’s Professors Polk Wagner and David Abrams wrote a paper analyzing how first-to-file impacted innovation in Canada, especially among small-time inventors. Professor Abrams discussed the paper during the second panel and received excellent commentary from Sean McEldowney, a partner at Kirkland & Ellis, and Marc Hankin the founding partner at Hankin Patent Law.
The final panel discussion, featuring Professor Saurabh Vishnubhakat of Texas A&M University School of Law, examined the efficiency and economic benefits of non-Article III options for patent revocation. Commentary from Marissa Ducca, a partner at Quinn Emanuel, and Matthew Johnson, a partner at Jones Day, highlighted how radical it was to move validity questions from Article III courts.