About two weeks ago I received an anonymous letter from “A concerned observer” regarding the Board of Patent Appeals and Interferences (BPAI). I realize that anonymous tips can be dubious, but the more I write about the Patent Office the more anonymous tips I get, and the more anonymous comments are made to various posts. Some of the comments and tips are easy to dismiss, and others seem to have unique knowledge about how things work within the Patent Office and beg to be followed up. This particular letter I received was one of those that begged to be investigated because I was not aware that the Patent Office had been hiring patent attorneys to function as clerks for the Judges on the Board, and many of my top sources were also either unaware or only vaguely familiar with the program. What follows is a detailed description of the patent attorney program and my thoughts on the program.
First, the BPAI does have a patent attorney program, and they have, in fact, have had it for several years. The program is designed to provide assistance to the BPAI judges so they can increase the amount of work that they do, while still maintaining a high level of quality. This program was started at least in part to get ready for implementation of the Final Rules on claims and continuations, which have famously been held up by a challenge from GSK and Dr. Tafas. When the final rules became implemented the Patent Office anticipated that there would be a greater number of appeals, and that it would be necessary to prepare a plan of action to allow the BPAI to handle a larger number of appeals. While most outside the Office did not know about the program it does not appear as if there was any attempt to keep the program secret, and it does seem to be a responsible step on the part of the Patent Office.
The patent attorney program is modeled after the clerkship program at the Court of Appeals for the Federal Circuit, although the number of clerks for the BPAI is far less than the number of clerks available for the Judges on the Federal Circuit. For example, a judge at the Federal Circuit may have up to 4 clerks, while the 83 judges at the BPAI share a total of only 30 patent attorney clerks. The Patent Office does want to hire more patent attorney clerks, but the current budget crisis has put a hold on such hiring plans. Patent attorneys selected for the patent attorney clerkship program may come from the patent corps, or from outside the Patent Office. If selected from the patent bar, the attorney must be registered to practice according to the rules set forth by the Office of Enrollment and Discipline.
One of the things that the anonymous letter suggested was a big concern was the fact that Judges on the BPAI will significantly have their workload increased, and in order to accommodate this increased workload the Judges on the Board may defer to their patent attorney clerks. On this point the letter states:
An APJ assigned a patent attorney must still author at least 75 opinions outside of the cases assigned to his or her patent attorney to meet a minimum acceptable performance level. And then that APJ must also review an additional 65 to 100 cases researched, reported, and drafted by the patent attorney. So now that APJ, who, prior to the patent attorney program, would have been researching, reviewing and authoring 100 cases and opinions and joining in 200 other opinions authored by other APJs, is purportedly carefully reviewing or back-checking 140 to 175 case files, and authoring or reviewing for accuracy 140 to 175 opinions, in addition to the 280 to 350 opinions of other APJs that must be reviewed and signed per year… In summary, the same APJ who had previously been involved with 300 cases per year will now be involved with 420 to 525 cases per year.
There is a lot of data here, and I frankly do not know what is correct, incorrect or potentially exaggerated. What does seem clear to me is that whoever wrote this letter has a lot of information about the particulars involved. I am fully aware of the old saying “figures lie and liars figure,” but I do think this bears watching to see what develops moving forward. From what I have been told the number of appeals already filed in FY 2009 is equal to the number of appeals filed in FY 2008, and we are only half way through FY 2009. So it seems that even without the implementation of the claims and continuations rules appeals are growing at an alarming rate, which is not surprising given the low allowance rate and despair among applicants and the patent bar.
I have also been informed that all the BPAI judges have recently received training on opinion writing. The hope of the Office is that a standardized format is designed to make sure all issues are addressed in an efficient and expedient manner. Further, while the patent attorney clerk does discuss each case with the assigned Judge on the Board, the Judges have been directed provide the clerk specific direction to draft the decision within the guidelines given by the Judge, which seems in keeping with the role played by judicial clerks in other courts, including at the CAFC. Once a draft opinion has been completed it would go to the panel for a decision to be made, so the patent attorney clerks will not have decision making authority. While some Judges on the Board may wish to defer to the patent attorney clerk, it is important to note that the BPAI has its own Peer Quality Review program in effect whereby the Judges rate other judges on their quality. Thus BPAI Judges who rely on their patent attorney clerks will be putting their performance at risk since it is the Judge who is to be held accountable for the position taken and the draft opinion presented to the other panel members. The question does remain whether the growing workload will cause Judges to increasingly defer to their patent attorney clerks. I suspect it is far to early to tell, but this bears watching.
In discussing the patent attorney program with some former PTO Officials, retired examiners and retired members of the BPAI, the one thing that came up over and over again was that this program seems to be sound and workable, but the one thing that perhaps should be changed is that the Judges on the BPAI should be able to select their own patent attorney clerk rather having a clerk assigned to them. The assignment of clerks without input is quite different than the CAFC model, and the model followed by the United States District Courts and other Courts I am familiar with. It was suggested to me that if a Judge is being asked to increase output and necessarily rely on a clerk to at least some extent, the Judge should have the ability to select someone they feel comfortable working with and relying upon. It was put point blank to me by one former PTO employee: “It would be easier for me to do the work myself rather than rely on someone I don’t completely trust.” I think this is a valid criticism and something the USPTO should take into consideration if and when additional patent attorneys can be hired for the Board.
Another former PTO Official told me via e-mail:
I am not surprised, and would not expect to be surprised, to hear that the patent attorney program has some problems, but I would not come to any quick judgments that the program is not, on the whole, working out essentially as it has been designed, namely, to increase overall output (productivity) while keeping the quality and consistency level high.
I would agree with these assessments. It seems to me that the patent attorney clerk program is a very good idea. It is in keeping with Patent Office attempts to create a high quality, uniform, judicial review of applications. With any new program there will be bumps and hurdles along the way, and improvements that can and should be made. It is to early to tell whether this program will work as designed, but we do need to stay mindful of quality and do not want to overwork good Judges on the BPAI. We also do not want to transfer the backlog from the examiner docket to the BPAI docket because those cases that are taken up on appeal are disproportionately the ones related to commercially relevant innovations.