PTAB Ethics Accusations Are Misguided

Critics of the Patent Trial & Appeal Board (PTAB) are not hard to find — attorneys especially hate change.  Since the start of AIA trial proceedings in 2012, we have seen a never ending stream of challenges to these proceedings as “unfair,” “unconstitutional,” “violating due process,” and employing the “wrong litigation standards.” All of these challenges failed at either the Federal Circuit, Supreme Court, or both. (not at all surprisingly, given similar challenges to the patent reexamination system decades earlier)

Perhaps as a result of the failed judicial challenges, criticism of the agency has now turned far more virulent and personal.

To be clear, I’m a fan of having contributed to its content on occasion. Gene’s spirited dialogue is a refreshing change of pace and helps draw attention to important issues. Recently, however, some of his guest commentators have exceeded the bounds of professional decency.

In a series of posts over the past week, a specific PTAB judge was branded as unethical for presiding over a case involving an old client of his former firm.  Yet, this conclusion is completely divorced from published ethics guidelines of the Dept. of Commerce. Thus, aside from being unprofessional in the first instance, the commentator’s conclusions are simply wrong.

The Dept. of Commerce provides the below graphic to illustrate its rules on the appearance of bias. In short, since PTAB judges are not political appointees; a new PTAB judge is free to preside over the case of a former client after being with the agency for one (1) year. Taking on a case of a former client some 18 months after joining the PTAB is well within the agency’s ethical guidelines.  Moreover, additional controls are at work within the agency to ensure that closer questions are considered prior to authorizing work on a given case.

To be diplomatic, impugning a practitioner’s professional reputation without reference to the applicable ethical standards, or facts, is…. imprudent.

appearances of bias eaag 2017 copy
The USPTO explains the chart above as follows: You cannot work on a matter in which one of the parties is (or is represented by) someone with whom you were employed or served as an agent, attorney, consultant, contractor, director, general partner, or trustee during the past year. (emphasis added)

Whether or not one believes that the Commerce regulations should be changed, or are out of line with Article III practices is irrelevant to the actions of a judge following the applicable agency rules. Commentary attacking a practitioner for not following inapplicable standards (including the comments section of that post), and publicly calling out that practitioner as unethical may very well be an actionable ethical violation itself.

USPTO/PTAB ethical requirements are public (here) as are that of the Dept. of Commerce (here).