Many law firms are starting to contemplate the new business opportunity that will arise on September 16, 2012, when the new post grant review procedures are ushered into effect thanks to the America Invents Act. The next wave of changes in patent law go into effect on September 16, 2012, which is one year to the day that President Obama signed the bill.
Section 7 of the Leahy-Smith America Invents Act changes the name of the current “Board” from the Board of Patent Appeals and Interferences to the Patent Trial and Appeal Board. The AIA also dictates that the Patent Trial and Appeal Board members will include the Director, Deputy Director, Commissioner for Patents, Commissioner for Trademarks, and Administrative Patent Judges. The duties of the Patent Trial and Appeal Board are to: (1) Review adverse decisions of examiners upon an application for patent; (2) review appeals of reexaminations pursuant to section 134(b); (3) conduct derivation proceedings pursuant to 35 U.S.C. 135; and (4) conduct inter partes reviews and post-grant reviews pursuant to chapters 31 and 32 of title 35, United States Code. The AIA further requires that each appeal, derivation proceeding, post-grant review including covered business method patent review, and inter partes review shall be heard by at least 3 members of the Board, who shall be designated by the Director.
The Patent Office has been hiring new Administrative Patent Judges at an astounding rate. Regarding APJ hiring, Deputy Director Teresa Rea told me in January 2012: “This year we hope to hire approximately 100 administrative patent judges and it is possible next year to hire another 100 administrative patent judges, which will result in a completely new complexion for the board.” See Part 1 of Rea Interview. Indeed, it seems each month brings another swearing in of approximately 10 new APJs. See, for example, Meet the USPTO’s New APJs and 9 New APJs. There have been other swearing in ceremonies, and I have heard from at least one new APJ hire that he will be starting at the end of July 2012. By the end of fiscal year 2012 the number of APJs will have nearly doubled compared with the same time the year before, and there is still some hope it seems that another 100 APJs will be hired during fiscal year 2013. This doubling or tripling in the size of the Board should allow for smooth transition to whatever comes next as the AIA is fully implemented. It will also hopefully cut into the long appeal backlog that continues to dog the Patent Office.
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The fact that the new Patent Trial and Appeal Board will be more like a judicial tribunal or even an appellate tribunal has caused many experienced practitioners to apply for positions. The crop of incoming APJs are very accomplished and highly educated. What I hear repeatedly is that the chance to be a part of the Patent Office coupled with the chance to be on the front lines of decision-making relative to the newly implemented laws of the AIA has proved very tempting for many patent attorneys.
Generally speaking, the proceedings of the Patent Trial and Appeal Board will begin with the filing of a petition that identifies the claims challenged, the grounds for the challenge and the supporting evidence on a claim-by-claim basis. In instituting a trial, the Board will narrow the issues for final decision by authorizing the trial to proceed only on the challenged claims for which the threshold requirements for the proceeding have been met. Further, the Board will identify which of the grounds the trial will proceed upon on a claim-by-claim basis. The Board will enter a Scheduling Order concurrent with the decision to institute the proceeding. The Scheduling Order will set due dates for the proceeding taking into account the complexity of the proceeding but ensuring that the trial is completed within one year of institution. Once instituted, absent special circumstances, discovery will proceed in a sequenced fashion. Thus, practice before the Patent Trial and Appeal Board will look in many ways like a trial in federal court.
The one thing that will be markedly different from federal court practice, however, is that for the most part only registered Patent Attorneys or Patent Agents will be able to appear before the Patent Trial and Appeal Board. The Patent Office considered broadly permitting practitioners not registered to practice by the Office to represent parties at the Patent Trial and Appeal Board. Notwithstanding, the Patent Office decided against allowing non-registered practitioners from representing parties at the Patent Trial and Appeal Board the proposed rules set forth in February 2012. The USPTO explained this was because they believed that making the practice open to non-registered attorneys would present burdens on the Office in administering the trials and in completing the trial within the established timeframe and Office rules.
When the proposed rules associated with the new Patent Trial and Appeal Board were released it was announced that the Patent Office decided to allow pro hac vice admission on a case by case, discretionary basis. The Office explained this was in keeping with current practice at the USPTO and was viewed internally as striking an appropriate balance between allowing parties to be represented by who they wish while still ensuring that attorneys are either members of the Patent Bar or sufficiently qualified to represent parties before the Patent Trial and Appeal Board.
The Board’s past pro hac vice practice has required the filing of a motion by a registered patent practitioner that explains: (1) The qualifications of the unregistered practitioner to represent the party in the proceeding when measured against a registered practitioner; and (2) Whether the party has a genuine need to have the particular unregistered practitioner represent it during the proceeding. In the Proposed Rules of Practice for Trials Before the Patent Trial and Appeal Board the Patent Office explained that these rules have proven workable, but they also pointed out that the Board has rarely granted pro hac vice motions. Specifically, the USPTO said: “This practice has proven effective in the limited number of contested cases where such requests have been granted.”
In the Practice Guide for Proposed Trial Rules the Patent Office further explained:
Proceedings before the Office can be technically complex. For example, it is expected that amendments to a patent will be sought. Consequently, the grant of a motion to appear pro hac vice is a discretionary action taking into account the specifics of the proceedings. Similarly, the revocation of pro hac vice is a discretionary action taking into account various factors, including incompetence, unwillingness to abide by the Office’s Rules of Professional Conduct, and incivility.
“It is safe to say the PTO pro hac will be astoundingly conservative and, even then, case by case and probably based on some hardship notion that will seem bizarre to most experienced patent litigators,” says John White, patent attorney and creator of the PLI patent bar review course. “Most Federal District Courts are pretty reasonable as long as litigators promise to read the local rules and keep local counsel. There is no correlary at the PTO to this practice in Federal Courts.”
Thus, it seems virtually certain that pro hac vice practice before the new Patent Trial and Appeal Board will be very different than the practice most litigators are accustomed to in federal court. In federal court you file a motion simple motion and as long as you are admitted to one other federal court somewhere and promise to read the local rules you are good to go. Of course, these statements were just in proposed rules and they could change when they are made final, but I wouldn’t hold my breath. That means that for those who will want to represent parties at the Patent Trial and Appeal Board it will be essential to obtain registration as a member of the Patent Bar. For those who are not Patent Attorneys or Patent Agents it seems as if it will be a substantial uphill battle to demonstrate superior skill compared with available registered practitioners, some of whom are themselves highly skilled trial and appellate attorneys.Time will tell, of course.
When USPTO Director David Kappos was testifying before the Senate Judiciary Committee last week he told the Senators that the USPTO is on track to have all of the rules related to the September 16, 2012 changes go final on or before August 16, 2012. Previously, Director Kappos, Commissioner Peggy Focarino and others from the USPTO were saying in various public forums that Office was on tract to wrap up the rules and have them go final sometime in July. The Kappos statement to the Senate seemed precautionary and not necessarily backtracking. It would be prudent, of course, to be cautious when testifying before the Senate. Nevertheless, I expect the USPTO will easily make the August 16, 2012 date and will start to release final rules in the coming weeks. Then we will get our first concrete glimpse of what practice before the Office, and specifically before the new Board will be like.
My guess, however, is that the new Board rules will largely look the same as the proposed rules, perhaps with some improvement around the edges.