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Ex-USPTO GC Nick Matich on Rulemaking & the PTAB

Ex-USPTO GC Nick Matich on Rulemaking & the PTAB

USPTO Director Kathi Vidal’s decision to issue the Advance Notice of Proposed Rulemaking (ANPRM) is the latest major controversy surrounding the Patent Trial and Appeal Board (PTAB).  The American Invents Act (AIA) created the PTAB to supposedly provide a cheaper, faster alternative to district court patent litigation.  However, the PTAB quickly gained a reputation for being a patent “death squad” that allows defendants to repeatedly challenge the same patents until those patents are invalidated.

During the last administration, former USPTO Director Andrei Iancu tried to correct that by limiting when patents could be challenged at the PTAB.  Because those changes never finished going through the federal government’s rulemaking process, Vidal was able to quickly roll them back.  The ANPRM now presents a litany of its own proposals for fixing fix how the PTAB operates and heated opposition on all sides.

Nicholas Matich joins Eli to talk about the ANPRM and what’s likely to happen with its proposals.  Nick, who is now Principal at the patent litigation powerhouse McKool Smith, served as USPTO’s general counsel under Iancu after working at the White House and as Deputy GC of the OMB.  This provides him with an unmatched understanding of how the rulemaking process actually works for proposals emanating from the USPTO. 

Nick and Eli also discuss:

  • What Nick learned from working with Viet Dinh and/or Paul Clement at Bancroft PLLC

  • How the OMB reviews & approves agency rules

  • Serving as USPTO’s GC

  • Advice for influencing USPTO’s rules

  • Iancu’s Fintiv factors & how to explain swift reversal

  • Why the ANPRM was a mistake

  • Advice for future USPTO Directors

Voice of IP
Clause 8
The podcast listened to by sophisticated in-house counsel, judges from around the world, IP policymakers, senior USPTO officials, and top patent dealmakers and attorneys to stay ahead of the curve by understanding the personalities and forces shaping IP.
Eli Mazour’s love of talking to people – along with his belief in the importance of America’s patent system – led him to start Clause 8. Clause 8 features conversations that provide strategic insights about how to best deal with various patent-related issues. Some of the previous guests include America’s great innovators, federal judges, USPTO Directors, top IP staffers on Capitol Hill, and Carole Baskin’s attorney from the documentary Tiger King.
It's the #1 podcast about IP and is in the top 2.5% of all podcasts according to Listen Score. The podcast has been covered and cited in many publications, including Bloomberg, Law360, Courthouse News Service, Above the Law, IAM, and Original Jurisdiction.