USPTO Ignores FOIA Requests on PTAB and PTAB Judges

By Gene Quinn
April 24, 2018

USPTO Ignoring FOIA Requests on PTAB and PTAB JudgesIn March 2018, I made three separate FOIA requests of the United States Patent and Trademark Office, with the overwhelming bulk of requested documents relating to the Patent Trial and Appeal Board (PTAB). In each case, on the day the document production was originally due I received a letter from the Office via e-mail notifying me that a ten working day extension was being invoked. In each situation the deadline on that ten working day extension has not come and gone and I have yet to receive anything from the Office. Indeed, I have not even received an explanation as to why the production is late, or a request for more time. It seems my request is simply being ignored.

Prior to the publication of this article I reached out to the Office for comment, or to see if they wanted to take the opportunity to inquire about what might be going on with these FOIA requests. The Office declined to comment.

FOIA Request #1

On March 6, 2018, we published an article detailing how shockingly inexperienced many Administrative Patent Judges of the Patent Trial and Appeal Board (PTAB) are when they are appointed judges.

Indeed, 12.64% of PTAB judges were appointed with less than 5 years of experience prior to their appointment as APJs (i.e., 5 years or less removed from graduating from law school), while some PTAB judges were appointed with as little as 2 years of experience. Indeed, 7.47% of APJs had 4 or less years of experience when they were appointed to the PTAB. More than one-third (36.21%) of PTAB judges were appointed with 9 years or less of experience.

Our study managed to locate information on 174 current PTAB judges, but we know there are at least 100 more PTAB judges who remain unidentified. For that reason, on March 6, 2018, I sent a Freedom of Information Act (FOIA) Request to the United States Patent and Trademark Office requesting information relating to PTAB Judges. My request read:

I request:

1. Any document (including printed, handwritten or electronic) that contains the names of any and/or every Administrative Patent Judge currently serving on the PTAB at the time of this request.

2. Any document (including printed, handwritten or electronic) that includes biographical information (such as but not limited to Law School(s) attended, Law School graduation year, and date sworn in to the PTAB) for any and/or every Administrative Patent Judge currently serving on the PTAB at the time of this request.

3. Any document (including printed, handwritten or electronic) which might be commonly referred to as a resume and/or curriculum vitae for each Administrative Patent Judge currently serving on the PTAB at the time of this request.

In the alternative, if the Office does not wish to go through the time and expense of searching for and collecting the documents requested in this FOIA request, I will consider the FOIA request fully satisfied if the Office provides a list including all of the names of Administrative Patent Judges on the PTAB as of the time of this request AND the resume and/or curriculum vitae for each named Administrative Patent Judge on the PTAB at the time of this request AND the Law School(s) attended, Law School graduation year, and date worn into the PTAB for each Administrative Patent Judge currently serving on the PTAB at the time of this request.

A response was due on April 3, 2018, but I was notified on April 9, 2018 that the Office was extending the deadline by an additional ten working days until April 17, 2018, pursuant to 37 CFR 102.6(c). This deadline came and went, and I have still heard nothing from the Office.

FOIA Request #2

UPDATE: June 6, 2018: See USPTO responds to FOIA Request #2

On March 7, 2018, I sent a second FOIA Request, this time asking for documents relating to training materials and production credit. My request was for:

1. Any document (including printed, handwritten or electronic) that contains any information, discussion or mention relating to Administrative Patent Judges receiving credit toward their production goals (or quota) for writing a dissenting opinion. This should be interpreted to include (although not be limited to) document(s) (including printed, handwritten or electronic) that include information, discussion or mention of the circumstances an Administrative Patent Judge will receive credit toward their production goals (or quota) for writing a dissenting opinion.

2. Specifically, it is my understanding that one or more memos to Administrative Patent Judge(s) explain that credit toward production goals (or quota) does not include dissenting opinions unless prior permission is sought and the request to dissent approved. I specifically seek any memoranda or document (including printed, handwritten or electronic) that discusses this policy or any document (including printed, handwritten or electronic) that might refute the existence of such policy.

Please note that electronic documents in this request are intended to include (although not be limited to) e-mail communications.

A response was due on April 5, 2018, but I was notified on April 5, 2018 that the Office was extending the deadline by an additional ten working days until April 19, 2018, pursuant to 37 CFR 102.6(c). This deadline, like the deadline for the first FOIA request above, has come and gone without any communication from the Office.

FOIA Request #3

On March 12, 2018, I sent a third FOIA Request, this time asking for documents relating to examiner appraisal plans and production goals, as well as training materials and timesheets for APJs. My request was for:

1. A copy of any or all performance appraisal plans, criteria or documents (whether handwritten, printed or electronic) used to evaluate patent examiners, or which explain the expectations patent examiners are to meet to satisfactorily perform their jobs.

2. A copy of any or all performance appraisal plans, criteria or documents (whether handwritten, printed or electronic) used to evaluate Administrative Patent Judges, or which explain the expectations Administrative Patent Judges are to meet to satisfactorily perform their jobs.

3. A copy of any and all documents (whether handwritten, printed or electronic) that relate to or explain the quota (i.e., work production goals) for patent examiners.

4. A copy of any and all documents (whether handwritten, printed or electronic) that relate to or explain the quota (i.e., work production goals) for Administrative Patent Judges.

5. A copy of all training materials used by the Patent Office to train Administrative Patent Judges.

6. A copy of any and all timesheets for each Administrative Patent Judge from October 1, 2012 to present.

Please note that electronic documents in this request are intended to include (although not be limited to) e-mail communications.

A response was due on April 9, 2018, but I was notified on April 9, 2018 that the Office was extending the deadline by an additional ten working days until April 23, 2018, pursuant to 37 CFR 102.6(c). Like the other deadlines, this one too has come and gone without a word from the USPTO.

What is Happening at the USPTO?

It is difficult to understand why the USPTO will not respond to simple, direct FOIA requests. If they do not want to produce there are procedures for them to follow, and they can always do what they seem so fond of doing, which is produce hundreds of pages of completely redacted, blank pages. That at least would allow me to file a lawsuit and proceed in court to obtain this information.

Still, why should I or anyone have to sue the USPTO to obtain this information? Everything I’m asking for should be readily available. It is not onerous to prepare and produce. Frankly, this information should already be on the USPTO website. Why the USPTO goes to such great lengths to hide what is going on at the PTAB is a mystery, ridiculous and sadly pathetic. It is this type of government by ambush mentality that has so convincingly led the community to rightly determine that the PTAB is the root of all the problems with the patent system today in America.

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 21 Comments comments.

  1. Valuationguy April 24, 2018 9:27 am

    Gene,
    They are COUNTING on you not plunking down the cash to sue them for these records…which is why you are being ignored.

    And the reason they haven’t already refused to provide you anything is that they are testing how far you will pursue this (and it buys them as much time as you allow them to have before pressing forward).

    Obviously the PTO doesn’t want you to shine your light on their ALJs and the procedures which show that the ALJs have little to no independence in deciding cases….especially given the ongoing reviews going on by Director Iancu. If the PTO can change these procedures before anyone KNOWS FULLY the extent of the problem….most of the problem will be safely buried (under the rug) and forgotten.

    (Note….most of the above is based on speculation…but logical ones.)

  2. Gene Quinn April 24, 2018 9:33 am

    Valuationguy-

    I think your speculation is correct. I am going to shine light on this, and will be taking it up with the PTO. I’ll probably do a counter for days late on the FOIA or something like that, and eventually I will sue the USPTO if I don’t get anything. Stay tuned.

    -Gene

  3. Anon2 April 24, 2018 9:58 am

    IMHO this is a great opportunity for new Director Iancu and the USPTO under his direction to “shine”, i.e. the credit deserved for the work in fixing the morass will only become that much more apparent in light of how bad the morass was prior to the fixing.

    IMHO it can only be a help to Iancu and a credit the new work he is doing, to show how dismal the task he is/was faced with, in fixing the USPTO.

  4. Name withheld to protect the innocent April 24, 2018 10:29 am

    I think I found one of the documents.

    YEARLY GOALS AND EXPECTATIONS
    ******REDACTED*******
    7) With no exceptions, for Decisions assigned to the APJ, the percentage of these Decisions reversed must be lower in the current Fiscal Year than the percentage was in the prior Fiscal Year.
    ******REDACTED*******
    15) Explanations of APJ’s analysis are NOT encouraged.
    ******REDACTED*******
    21) If in doubt, affirm.
    22) If not in doubt and you are contemplating reversing a rejection, roll six-sided dice and affirm on all even numbers. No explanation is needed for affirming.
    ******REDACTED*******
    32) You are encouraged to keep contact with prior clients that are serial filers of IPRs. Please let them know that the Patent Office is looking out for their interests.

    I had to go to great lengths (and danger) to obtain this. Please don’t ask me for anything more.

  5. Anon April 24, 2018 10:43 am

    Apparently (although admittedly not always the case), those afraid of the sunshine have reasons to be afraid of the sunshine.

  6. PTO-Indentured April 24, 2018 11:01 am

    Don’t Spare PTO’s ‘Secret SAWS’ Either

    My recollection is that a similar FOIA stone-walling by the PTO occurred with its Secret SAWS program as well. Look up SAWS at USPTO.gov and note the PTO’s thinnly-veiled attempt to minimize SAWS impact / untold damage (over years) rationalizing: ‘it was only’ 0.04% U.S. patents affected (Uhhh, do the math — that’s thousands of patents).

    You only have to hobble one or more pending CBMs (“liberally” sought out by SAWS) that could’ve provided a healthy-competition Next Amazon, Apple and/or Google and U.S. Elite-Tech wins big time (for ALL of the SAWS years / for ALL of such patents that were secretly ‘processed’ into oblivion).

    Takeaway: Elite Tech must have found PTO’s ‘Secret SAWS’ — poured on to thousands of U.S. patents including their ‘special treatment’ side-lining of CBMs — Mmm, mmm, quite tasty.

    Bring on PTO transparency. bring on PTO accountability. bring on the FOIAs.

    Go Gene! (It’s like you were some kind of IP watchdog or something).

  7. Scott April 24, 2018 11:10 am

    Gene–we are looking forward to you doing a post on Oil States (affirmed) and SAS (reversed) asap.

  8. Anon2 April 24, 2018 12:07 pm

    Just saw how Oil Street was decided.

    It would appear that the onus of protecting individual patent rights now falls on Iancu, since Congress, SCOTUS, and everyone else are not prepared to do so.

    Now that they have punted the job to Iancu, I can only hope that to the extent he is able to do so under his authority, and in accordance with the current law of the land, and in the spirit of the best principles since the Founding, that he makes up for the clear lack of regard for this important right shown by the other government bodies.

  9. Valuationguy April 24, 2018 12:41 pm

    Don’t worry about his AUTHORITY….as it IS vested in him to change PTO procedures. It might take some time….since the bureaucracy is rife with efficient infringer (i.e. Google, Apple, Facebook, etc.) lobby appointments made during the last administration who won’t “go quietly into the night”.

    Frankly…I worry more about his personal SAFETY…given the monetary stakes of the policies he is trying to change. (Opps…all his personal info…including banking records…were accidentally released in a data leak by Google…..because he used Chome to log into his bank online, etc.)

    Big Brother isn’t just the gov’t these days….

  10. Curious April 24, 2018 12:49 pm

    It would appear that the onus of protecting individual patent rights now falls on Iancu, since Congress, SCOTUS, and everyone else are not prepared to do so.
    I saw that as well. As for Iancu, I’ve seen little from him except for window dressing. I’m not getting my hopes up.

    Now that IPRs have been blessed by SCOTUS, I think independent inventors will soon be extinct or effectively extinct. Between the IPR killing fields and 101 (“abstract idea”) killing fields of the Federal judiciary, the average independent inventor stands little to no chance of having their patent survive a challenge.

    I see no help from Congress anytime soon either. Both conservatives and liberals have large, moneyed interests lining their pockets, and these moneyed interests are anti-patent. This is a sad, sad day for invention and inventors in the United States.

    It is going to be quite disconcerting for me, when I’m giving perfectly guidance to a prospective client, to tell them that the patent system is broken and that unless this client/company has millions of dollars to spend amassing and defending their patent portfolio then their money is unlikely to be well spent on obtaining patent protection. In essence, I will be telling them that any money spent upon my services is likely to be wasted.

  11. Pro Se April 24, 2018 1:10 pm

    No more partial institutions either, all claims go into the grinder now.

    The U.S. patent system, as of today, is fully destroyed.

  12. Evan April 24, 2018 1:21 pm

    @7. the Trollists have won.

  13. Ternary April 24, 2018 1:35 pm

    Justice Gorsuch (and Roberts) dissenting in Oil States: “But by the 18th century, inventors were busy in Britain and invention patents came to be seen in a different light. They came to be viewed not as endowing accidental and anticompetitive monopolies on the fortunate few but as a procompetitive means to secure to individuals the fruits of their labor and ingenuity; encourage others to emulate them; and promote public access to new technologies that would not otherwise exist.“

    We are back at the state wherein patents again are endowing anticompetitive monopolies, but not so accidentally. This is part of a concerted effort to make patents only work for incumbent institutions which for some weird reason are assumed by many to be the deserving parties to own and assert patents.

  14. B April 24, 2018 1:50 pm

    “My recollection is that a similar FOIA stone-walling by the PTO occurred with its Secret SAWS program as well”

    I had that EXACT thing happen as did Dr. Kate Goudry. The PTO decried that, even letting one know your case was under SAWS exposed internal decision making.

    I didn’t pursue it court, but should have. So much for transparency.

  15. Anon2 April 24, 2018 1:51 pm

    Pro Se @10

    Just because there are no partial institutions does not mean all claims must die.

  16. PatentAtt April 24, 2018 2:11 pm

    Maybe it’s because your FOIA request is comically over-broad. Take, for instance, the first item:

    1. Any document (including printed, handwritten or electronic) that contains the names of any and/or every Administrative Patent Judge currently serving on the PTAB at the time of this request.

    This would include pretty much everything: “contains the names of any … [APJ]” would include just about every email sent from or to every APJ. Not to mention drafts of opinions that are not yet released, internal emails between judges regarding past opinions, etc.

    It’s impossible to comply with your FOIA request, and even if they wanted to, you couldn’t afford to pay the army of reviewers that it would take to comb through the production to make sure no confidential information is released. And you know that, because you’re not dumb. Look, I get your crusade against the PTAB, but this is just pure nonsense.

    Perhaps you could request a current roster of all APJs, that seems reasonable, doesn’t it?

  17. Anon April 24, 2018 3:26 pm

    With the “win” for the administrative state,….

    If you thought that you were being ignored before, just wait until you see how much more you are going to be ignored.

    Who are you going to take your beef to? To whom, will that body tell you to go and talk with?

  18. Anon April 24, 2018 3:28 pm

    PatentATT @ 16,

    A current roster does not even come close to the level of sunshine that is needed.

  19. mike April 24, 2018 4:45 pm

    @PatentAtt at 16,

    I thought he did make that request?

    “In the alternative, if the Office does not wish to go through the time and expense of searching for and collecting the documents requested in this FOIA request, I will consider the FOIA request fully satisfied if the Office provides a list including all of the names of Administrative Patent Judges on the PTAB as of the time of this request AND the resume and/or curriculum vitae for each named Administrative Patent Judge on the PTAB at the time of this request AND the Law School(s) attended, Law School graduation year, and date worn into the PTAB for each Administrative Patent Judge currently serving on the PTAB at the time of this request.”

  20. Joachim Martillo May 6, 2018 4:39 pm

    If I were still doing research at MIT and working with Sloan professors, I would see if I could get funded to write a web app that uses the USPTO public API to obtain and grovel through all PTAB final written decisions and decisions on appeal to identify active APJs over a specified period. Once I had the list of active APJs, I could set up a custom search application to extract useful information on each APJ. A third application could massage the info obtained into a useful format. The results would probably be quite interesting, more useful than the documents the USPTO would provide, and cost less than suing for records.

    To some extent Gene seems to have executed the procedure manually in the past. I would automate the manual search and analysis procedure in order to make it more comprehensive.

    Once I have such data it might be possible to make some very targeted FOIA requests that could fill in any gaps.

  21. Damien May 22, 2018 3:13 pm

    Perhaps its exemption 2 to FOIA requests “Exemption Two: Records related solely to the internal personnel rules and practices of the USPTO.” That seems to be exactly what you are asking for…

    A scarier question may be why these documents are outright exempted from being disclosed…