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Andrei Iancu of Irell & Manella. HANDOUT.

President Trump has announced his intention to nominate Irell & Manella partner Andrei Iancu to be director of the U.S. Patent and Trademark Office.

Iancu would succeed Michelle Lee, who resigned in June. Joseph Matal is leading the office on an interim basis.

Iancu’s name has been mentioned for months as a possible PTO director, along with former Johnson & Johnson IP chief Philip Johnson and others. He brings big chops as patent litigator, with much of it on behalf of patentees. For Irell, the appointment means the loss of one of its top rainmakers.

Iancu represented TiVo Corp. in a decade-long fight to enforce a patent on a key component of DVR technology. The company collected $1.6 billion from defendants including EchoStar, AT&T, Motorola, Microsoft and Cisco.

He’s also helped defend companies such as B/E Aerospace and Ariosa Diagnostics from patent infringement actions, and succeeded in canceling patent claims via inter partes review at the PTO.

Drinker Biddle IP partner Robert Stoll said Iancu is well-known in the patent bar and has a track record of management skill from running Irell.

“He may have a little trouble with the biotech and pharma folks because he represented Ariosa” in its successful Section 101 challenge to a diagnostic patent, Stoll said. “But I don’t think he should be penalized for being an attorney who—very well—represented a client.”

It’s unclear how quickly a formal nomination will come or how fast one could move through the Senate. IP lobbyist and consultant Peter Harter said the Senate has few days available in September and a budget to pass, then the debt ceiling and a current backlog of nominees in October.

Unless the Trump administration were to package Iancu with a nominee attractive to Democratic senators, it might be December or next year before a PTO nominee can be confirmed, Harter said.

Harter also noted that any PTO nominee will likely face challenging questions about the administration’s probe into China’s IP system, the PTO’s budget, and a Supreme Court case that could render administrative challenges to patent validity unconstitutional.

Scott Graham writes about intellectual property and the U.S. Court of Appeals for the Federal Circuit. Contact him at sgraham@alm.com. On Twitter: @ScottKGraham


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