an inside look at the patent trial and appeal board scott boalick administrative patent judge patent...
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An Inside Look at the Patent Trial and Appeal Board
Scott Boalick
Administrative Patent Judge
Patent Trial and Appeal Board
Board Hiring
• Since October 2011– Reviewed nearly 1,500 applicant records– Interviewed nearly 240 candidates– Selected 85 highly qualified candidates to become new
Judges– We stand at 168 Judges as of February 25, 2013.
• Opportunities at Detroit/Denver/Dallas/Silicon Valley Satellite Offices – Selecting candidates from previous postings now– New advertisements have been posted
• Goal for FY2013 - add 60 judges.
Board Hiring
• Selectees have come from the following:– USPTO Patent Examining Corps, Office of
the General Counsel, and the PTAB– International Trade Commission and
Department of Justice– Private Practice (solo to very large)– All types of industries
Board Hiring
Administrative Patent Judge(Biotechnology, Chemical, Mechanical, Communication, Computer, Electrical)
• Announcement Number: PTAB-2013-0006• Questions about this job:
– Isis ThomasPhone: 571-272-4363Email: [email protected]
• Announcement set to close on Friday, April 19, 2013.
Members of the Board (as of 03/18/2013)
1900 1920 1940 1960 1980 1990 2000 2010 2012 2013 Goal
0
50
100
150
200
250
Judges
Board Backlog
• Growth of the Backlog has been halted:– Overall, for the last 4 months, more decisions issued than
new appeals received– Encouraging (for now)
• Benefiting from numerous factors– Successful hiring in FY2012 that needs to continue in
FY2013– Somewhat lower end-of-year intake for FY2012 and
beginning of FY2013– Extraordinary efforts by current Judges
• Trend can still be reversed if ex parte appeal intake and AIA intake grow faster than new hires
Board Backlog
7/5/
2012
8/5/
2012
9/5/
2012
10/5
/201
2
10/1
6/20
12
10/2
3/20
12
10/3
0/20
12
11/6
/201
2
11/1
3/20
12
11/2
0/20
12
11/2
7/20
12
12/0
4/20
12
12/1
1/20
12
12/1
8/20
12
12/2
5/20
12
01/0
1/20
13
01/0
8/20
13
01/1
5/20
13
01/2
2/20
13
01/2
9/20
13
02/0
5/20
13
02/1
2/20
13
02/1
9/20
13
02/2
6/20
13
03/0
5/20
13
03/1
2/20
13
03/1
9/20
13
26,300
26,400
26,500
26,600
26,700
26,800
26,900
27,000
27,100
27,200
26,80726,832
26,858
26,702
27,029
27,12627,105
26,915
27,05127,023
26,950
26,734
26,89426,859
26,734
26,644
26,786
26,82826,82526,807
26,664
26,85426,86926,896
26,618
26,80226,802
PTAB Receipts and DispositionsPast Month
PTAB Receipts and Dispositions
Period: 02/19/2013 thru 03/19/2013
Discipline # Cases Received # Cases Disposed Difference (Disposed minus Received)
Biotech 78 46 -32
Business Methods 85 96 11
Chemical 157 197 40
Contested Cases 22 25 3
Design 3 0 -3
Electrical 418 470 52
Mechanical 244 379 135
***Totals*** 1007 1213 206
PTAB Receipts and DispositionsWeekly: 01/09/2013 through 03/13/2013
1/9/2013 1/16/2013 1/23/2013 1/30/2013 2/6/2013 2/13/2013 2/20/2013 2/27/2013 3/6/2013 3/13/2013 3/20/2013 Average
-200
0
200
400
600
800
1000
1200
1400
774 797
727
956
1098 11141084
1136
949
10481007
972
883832
710
882
1099 11191077
1206
1053 1065
1213
1013
109
35
-17-74
1 5
-7
70104
17
206
41
Receipts & Dispositions Summary Report FY2013
Received Disposed Difference
Monthly Receipts and Dispositions – New Judge Comparison
May-12 Jun-12 Jul-12 Aug-12 Sep-12-200
0
200
400
600
800
1000
1200
961 982 9881062
817834796
741791
891
110150
186235 235
-17 -36 -61 -36
309
Receipts
Experienced Judges
New Judges
Difference
Monthly Receipts and Dispositions – New Judge Comparison
Oct-12 Nov-12 Dec-12 Jan-13 Feb-13-400
-200
0
200
400
600
800
1000
1200 1116
841803
1031 1023
575659 624
717675
260310 292
366 359
-281
128 11352
11
Receipts
Experienced Judges
New Judges
Difference
Decisions by Type: FY2013
54%
13%
30%
0%1%
2%
Decisions
AffirmedAffirmed-in-PartReversedPanel RemandAdministrative RemandDismissed
Decisions Adopting Persuasive Arguments Made in the Record
• Allow the Board to issue decisions based on arguments presented by Examiners or Appellants– Shorter decisions; disposed sooner;
sometimes designated “Per Curiam”• Arguments of record must sufficiently explain
the decision• Working with the offices of the Under-Secretary
and Solicitor, the rules were finalized
“Per Curiam” Short Decisionsas of 02/20/2013
21
6
142
47
0
20
40
60
80
100
120
140
160
FY2010 FY2011 FY2012 FY2013 (to date)
Per Curiam Decisions
Outcomes at the Federal Circuit
FY2012 FY2013 (to date) Total
Affirmances 67 26 93
Reversals 4 1 5
Remands 10 4 14
Dismissals 12 7 19
Total 93 38 131
Technology Breakdowns of AIA Petitions
TechnologyNumber of Petitions Percentage
Electrical/Computer 140 67.6%
Mechanical 26 12.6%
Chemical 29 14.0%
Bio/Pharma 11 5.3%
Design 1 0.5%
As of April 1, 2013, the Office received a Total of 207 AIA Petitions: 17 CBMs and 190 IPRs
Institutions: 11 CBMs and 34 IPRsTerminations (resulted from settlements): 4 IPRs
17
Post Grant Resources
• General information concerning implementation of the Leahy-Smith America Invents Act, including post grant reviews, may be found at:
http://www.uspto.gov/aia_implementation/index.jsp
• Information concerning the Board and specific trial procedures may be found at:
http://www.uspto.gov/ip/boards/bpai/index.jsp
Patent Corps Collaboration
• Continuing to explore collaboration opportunities
• Additional Examiner interviews during prosecution
• Additional Examiner review of after-final amendments before coming to the Board
(on-going)
Published Opinions
• Committee established to increase designation of precedential and informative decisions
• Also will post informative orders from AIA proceedings
• Looking at optimizing manner of posting on site
Detroit, Michigan
Elijah J. McCoy United States Patent and Trademark Office
300 River Place SouthSuit 2900
Detroit, Michigan 48207
Opened July 13, 2012
12 Administrative Patent Judges
Denver, Colorado
Denver Federal Center
B20/D1000W 6th Ave & Kipling Street Lakewood, Colorado 80225
Opened January 2, 2013
5 Administrative Patent Judges
Dallas, Texas
Santa Fe Building
1114 Commerce StreetSuite 705
Dallas, TX 75202
Opened March 18, 2013
4 Administrative Patent Judges
Menlo Park, California
????
345 Middlefield RoadMenlo Park, CA 94025
Opening April 15, 2013
6 Administrative Patent JudgesAnd Director Michelle K. Lee