McDermott Will & EmeryRoundtable

James Donald Smith

Chief Administrative Patent Judge

Patent Trial and Appeal Board

02/20/2013

Hiring

• Since October 2011– Reviewed nearly 1,200 applicant records– Interviewed nearly 200 candidates– Selected 80 highly qualified candidates to become new

Judges– We stand at 163 Judges as of January 28, 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 huge)– All types of industries

Members of the Board (as of 01/28/2013)

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 FY 2013– 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

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

26,854

PTAB Receipts and DispositionsPast Month

PTAB Receipts and Dispositions

Period: 01/12/2013 thru 02/12/2013

Discipline # Cases Received # Cases Disposed Difference (Disposed minus Received)

Biotech 75 69 -6

Business Methods 94 110 16

Chemical 162 179 17

Contested Cases 31 18 -13

Design 3 0 -3

Electrical 495 432 -63

Mechanical 254 311 57

***Totals*** 1114 1119 5

PTAB Receipts and DispositionsWeekly: 01/09/2013 through 02/13/2013

1/9/2013 1/16/2013 1/23/2013 1/30/2013 2/6/2013 2/13/2013 Average

-200

0

200

400

600

800

1000

1200

774797

727

956

1098 1114

870883832

710

882

1099 1119

881

109

35

-17

-74

1 5 11

Receipts & Dispositions Summary Report FY2013

Received Disposed Difference

Monthly Receipts and Dispositions – New Judge Comparison

May-12 Jun-12 Jul-12 Aug-12-200

0

200

400

600

800

1000

1200

961 982 9881062

834796

741791

110150

186235

-17 -36 -61 -36

Receipts

Experienced Judges

New Judges

Difference

Monthly Receipts and Dispositions – New Judge Comparison

Sep-12 Oct-12 Nov-12 Dec-12 Jan-13-400

-200

0

200

400

600

800

1000

1200

817

1116

841803

1031

891

575659 624

717

235 260310 292

366309

-281

128 11352

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 12/04/2012

21

6

142

32

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 15 82

Reversals 4 0 4

Remands 10 3 13

Dismissals 12 7 19

Total 93 25 118

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