Earlier today a spokesman from the United States Patent and Trademark Office (USPTO) reached out with a comment regarding our recently published study showing that the Administrative Patent Judges (APJs) of the Patent Trial and Appeal Board (PTAB) are surprisingly inexperienced in comparison to federal district court judges. According to PTAB Chief Judge David Ruschke, the patent judges of the PTAB have “extensive legal and technical experience”.
Chief Judge Ruschke’s full comment reads:
“The USPTO has full confidence in the legal and technical capabilities of each Administrative Patent Judge (APJ) appointed to the Patent Trial and Appeal Board (PTAB). All of our judges have specialized technical degrees combined with extensive legal and technical experience, including that gained over many years in private practice, industry, and/or government. The judges clearly possess the required professional and technical qualifications needed to conduct Board proceedings of any type and to issue decisions addressing all issues that come before the Board.”
The problem with this view of the APJS on the PTAB is that it is simply not consistent with the data. While the APJs on the PTAB may be quite technically competent, there can be little doubt that many patent judges on the PTAB were appointed at a time when they simply did not have extensive legal experience.
Some of the key findings from our earlier study include:
- 12.64% of PTAB judges were appointed with less than 5 years of experience.
- 7.47% of APJs had 4 or less years of experience when appointed to the PTAB.
- 46.55% of PTAB judges were appointed while they were still at best senior associates.
Examiners and Agents have no litigation experience
One of the criticisms by some with respect to this study relates to how we defined “experience.” As explained in that prior article “experience” is defined by the number of years after one graduated from law school. In other words, experience is defined by the number of years one was a lawyer prior to being appointed to the PTAB. Several vehemently opposed that definition for “experience”, arguing that experience as a patent examiner or patent agent should be relevant. Perhaps that too is what Chief Judge Ruschke is trying to say without coming out and saying it directly when he says that all of the PTAB judges have extensive legal experience.
On particular anonymous comment on the previous article (comment #14) explained that he/she was a Primary Examiner for 15 years, joined a law firm as a technical specialist for 3 years, and then became a patent agent for the last 14 years. This individual just finished law school and took the bar exam in February 2018. The comment then asks:
“If I receive an offer to join the PTAB somewhere around the end of fiscal year 2018, at which point I will have less than half a year of experience as an attorney, will you list me as having 36 years of experience?”
The response to this question is very easy: No.
If someone has 6 months experience as as an attorney they should not be appointed to a position as an Administrative Patent Judge, period. Those with only 6 months of legal experience should not be conducting administrative trials, period.
If someone has 30+ years of experience as a patent examiner and patent agent that means they cannot count those years as equivalent experience of an an attorney. That likely will offend many patent examiners and patent agents, but it doesn’t change the fact that it is true. If someone has 30+ years experience as a patent agent and/or patent examiner that necessarily means that those 30+ years provided NO litigation experience, which has to be true given that patent examiners do not participate in patent litigation on any level and patent agents are prohibited from litigating matters.
PTAB judges preside over administrative trials, which have all the trappings of litigation (i.e., motions to dismiss, discovery, discovery disputes, hearings, testimony, depositions, constitutional rulings, jurisdictional matters, questions of contract interpretation and privity, and much, much more. No matter how much Ruschke and others do not want to acknowledge the truth, it is perfectly accurate to say that patent agents and patent examiners have absolutely no experience in that world. They simply can’t, unless they are engaging in the unauthorized practice of law.
Patent agents and patent examiners have never filed a motion, never argued a motion, never requested discovery, never engaged in a discovery dispute, never taken Constitutional Law, or Property Law, Contract Law or Evidence. Similarly, they have never have never taken a deposition, never argued before a court on any level, never asked questions of a witness under oath in a court of law, never prepared an expert witness to testify, never drafted or challenged an affidavit, never created and submitted exhibits for trial, never been tasked with creating a record that might support an appeal to a higher tribunal, never prepared and/or filed a motion pro hac vice. Still further, patent agents and patent examiners have no experience with protection orders, no experience with motions to exclude evidence, no experience with serving process, no experience with joinder, and they can’t possibly have any experience with the Federal Rules of Evidence, which explicitly apply in administrative trials. This list could go on and on.
If patent examiners and patent agents have never done all the things attorneys representing a client in a post grant administrative trial must be prepared to do, why would anyone ever think experience as a patent examiner or patent agent would qualify one to preside over the proceedings that will include all of those things and more?
Furthermore, it is critical to constantly remember that those with senior associate level experience (or less) could not be confirmed by the Senate to be a district court judge. This is crucially significant because the PTAB provides a district court alternative to patent litigation, and is a tribunal that decides invalidity issues that impact vested property rights. The standards are different between the PTAB and district court, but the consequences are the same for the patent owner.
This study of the experience of PTAB judges demands answer to a simple, straightforward question: Why is it appropriate for a PTAB judge who could never be confirmed by the Senate for a post on any federal district court wielding the same property taking power as a Senate confirmed Article III judge?