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Friday May 02, 2014

Progress Continues with Our Patent Trial and Appeal Board

Blog by Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO Michelle K. Lee

Transparency and public involvement in building an even better patent system are hallmarks of this administration and pervade all aspects of the USPTO. A current example of that is the ambitious outreach the Patent Trial and Appeal Board, or PTAB, is conducting with the public. The Board is in the middle of a series of eight roundtables to engage the public about our AIA trial proceedings, our continued hiring of new judges, and our redesigned PTAB web pages, which contain decisions, operating procedures, and interesting statistics to date. Several hundred engaged individuals have already attended our first few roundtables over the last two weeks, and we look forward to seeing more of you at our remaining roundtables in Dallas and Denver.  If you can’t make any of the remaining roundtables in person, our May 8 event in Denver will also be webcast.

At these roundtables, we’re particularly focused on receiving feedback on our new trial proceedings created by the Leahy-Smith America Invents Act of 2011. The statute set the framework for these trial proceedings, and the agency promulgated rules and issued guidance thereafter. In promulgating those rules and guidance, the agency worked carefully and diligently, issuing final rules and guidance in a mere one year after the AIA became law. Those rules and guidance were implemented after the USPTO visited 18 cities to solicit input from our stakeholders, just as we are doing now. Also, when we issued the AIA final rules, we committed to re-visiting the rules and guidance after both the Board and the public operated under them for some period. 

The time to revisit the rules is upon us. PTAB began conducting inter partes review and covered business method review proceedings nearly 18 months ago. During this time, the Board has received more than 1,200 petitions, issued more than 500 decisions on whether to institute a trial, and released more than 40 final written decisions following a trial. For such a short period of time, that is a lot of hands-on experience, and the Board has gained a fair amount of wisdom about these processes as a result. But we know that participants in these new AIA proceedings, as well as seasoned observers of our patent system, have also been focused on these new trials and have their own wisdom to share. Through these roundtables, we are hearing from interested parties their thoughts on what we can do to make trial proceedings even more effective going forward by adjusting the rules and guidance where necessary.

Each roundtable is staffed by at least five administrative patent judges per city (APJs). The roundtables begin with an overview of trial statistics and lessons learned followed by a mock conference call centered on motions for discovery and amendments. The overview provides a framework for the trials, while the mock conference call showcases successful techniques for winning a motion as well as missteps to avoid. The roundtables end with a panel discussion featuring APJs and local practitioners with experience and knowledge about the AIA trials. The purpose of the panel discussion is to break down the trial process and identify strengths and places for improvement. Nothing about the AIA trials is carved in stone, so the opportunity is upon us to work together to hone the AIA trials system into a true alternative to district court litigation for challenging patent validity. 

Apart from the roundtables, I’m pleased to note that PTAB continues to have great success in hiring talented new judges with strong and relevant technical and legal backgrounds. We are moving fast toward our goal of adding 60 new judges for a grand total of 200 by June 1st. New judges are joining not only at the Alexandria headquarters but also at all of the satellite office locations, namely Detroit, Denver, Dallas, and Silicon Valley. As the first director of our Silicon Valley office, I was honored to work beside the stellar judges that had already joined PTAB in service to the innovation community. If you think you have what it takes to make an excellent PTAB judge, we encourage you to apply. To learn more please visit

Speaking of the web, PTAB has overhauled its pages on our website, making it easier to locate information about AIA trials, ex parte appeals, statistics, operating procedures, and rulings. Additionally, PTAB is posting timely articles, such as tips for filing a preliminary patent owner statement in an AIA trial and testimonials about life as a PTAB judge. 

This is an exciting time for PTAB, and for this agency. We’d love to see you at one of our remaining PTAB roundtables. But, even if you’re unable to attend one, I encourage you to join the Denver roundtable via webcast and share your thoughts on our progress. Together we can make the PTAB proceedings even more effective for you.


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