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Inexperienced Attorneys Tax PTAB Resources

Posted On: Jun. 11, 2014   By: Scott A. McKeown
Growth in PTAB Post-Grant Filings May Require Changes to Workflow

PTABThis time last year, the Patent Trial & Appeal Board (PTAB) had about 250 Inter Partes Review (IPR) and Covered Business Method (CBM) petitions pending. Only half that number were in the trial phase.

One year later, the PTAB has received 1500 IPR and CBM petitions, roughly half of which are now in trial phase. The surge in filings over the past two months has been especially pronounced, averaging 150 petitions per month. This is the new normal.

The chart below is from June 6, 2014. (Click to Enlarge)


As explained at the PTAB roadshow, the Trial Section of the PTAB consists of roughly 70 judges at present. (with plans to add another 52 by October). While the influx of judges will certainly help handle the growing workload, given the magnitude of trials that will soon be pending, the PTAB will need to adjust the daily workflow to maintain their 12 month trial mandate.

One unfortunate side effect of the number of proceedings, is the number of attorneys now practicing before the USPTO that have no experience at all in USPTO proceedings. While in the early days of IPR and CBM administrative patent judges had the luxury of conducting teleconferences to sort out confusion, answer questions, instruct on amendment practices, and referee disputes, those days are now long gone. Yet, if anything, there is now a greater demand for teleconferences on such mundane disputes as font size, page margins, scheduling disputes, unauthorized filings, etc. Certainly the parties are encouraged to work such disputes out themselves, but that is rarely the end result — especially for those more attuned to litigation style antics.

Given the growing workload, it makes absolutely no sense for the merits panel of a given IPR/CBM to be distracted by routine procedural disputes. Instead, it makes far more sense for the PTAB to adopt a filtering structure similar to that used by other courts. For example, every month the Court of Appeals for the Federal Circuit (CAFC) assigns a lead motion judge to decide routine issues. The merits panel is not disturbed for routine matters of procedure. The PTAB could implement a similar structure, or utilize their staff attorneys in a similar fashion.

Another benefit of such a structure would be a reduced demand for such teleconferences. That is, without access to the merits panel, some attorneys will be less inclined to grandstand on a particular issue of little practical import.

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