“The LEAP training focused on ex parte appeals to the Board from an examiner, which PTAB Chief Judge Scott Boalick characterized as “the bread-and-butter work” of the PTAB.”
On Friday, March 26, the United States Patent and Trademark Office (USPTO) conducted virtual LEAP training. LEAP stands for Legal Experience and Advancement Program and is a series the USPTO is fostering in order to help inexperienced practitioners develop the skills and practical experience necessary to effectively advocate on behalf of clients. Previously, the USPTO had offered LEAP training with respect to contested cases challenging patents post grant. On this day, however, the training focused on ex parte appeals to the Board from an examiner, which Patent Trial and Appeal Board (PTAB) Chief Judge Scott Boalick characterized as “the bread-and-butter work” of the PTAB.
Indeed, this LEAP training marks the first time the USPTO has ventured into the ex parte appeal waters, but not the last. Participants “asked how practitioners who are more experienced would handle these issues,” Boalick explained. So, in order to provide the new practitioners participating with the greatest learning opportunity, the same appeal that they argued on March 26 will be the subject of the training argument that will take place on April 5, but this time with an experienced patent professional with years of appeals practice before the Board making the argument.
“This morning I was in my own training for myself,” explained Commissioner for Patents Drew Hirshfeld, who is currently heading the USPTO during the transition from the Trump Administration to the Biden Administration. Hirshfeld explained that the day was a “no meeting day” at the USPTO, which gave him the opportunity to take some training opportunities himself. “The more training we can do the better,” Hirshfeld explained.
Not only does Commissioner Hirshfeld walk-the-walk on training, but in recent years the USPTO has been all-in on training of various kinds. “The Aspiring Manager program is about two years old,” Hirshfeld explained. “When I was put into management I was just thrown in without training, feedback or mentoring.” The Aspiring Manager program is designed specifically for those considering and aspiring toward leadership positions. “We literally get hundreds of applicants every time we run that program,” Hirshfeld told those attending the LEAP training. “It is a way to pay it forward to those who have less experience,” very similar to LEAP.
Although LEAP training was off-the-record in order for participants to be both encouraged to participate and to be unafraid to make mistakes in front of senior partners or hiring partners, IPWatchdog was invited to the opening remarks made by Boalick and Hirshfeld. During his opening comments, Boalick quickly rattled off statistics about ex parte appeals at the Board, including:
- The PTAB affirmed an examiner’s decision in whole or part 65.5% of the time; reversed 33%, and remanded less than 1%, and dismissed less than 1% of the time.
- Following a Board reversal of an ex parte appeal, approximately 95% go on to issue as a patent, with only approximately 5% moving forward with continued prosecution.
- If the Board affirms the examiner in an ex parte appeal, continued prosecution of the application occurs in approximately 30% of cases and abandonment occurs in approximately 70% of cases.
- When there is a partial affirmance of an ex parte appeal, there is a 50-50 split between allowance and continued prosecution.
- Oral hearings are requested in just under 10% of all appeals.
- Currently, the PTAB decides over 7,000 ex parte appeals per year. That number represents about two-thirds of total output.
- The PTAB has a pendency goal of 12 months. Right now, the average pendency of decided appeals is about 13 months: “a significant reduction from our all-time pendency high of 30 months in 2015.”
Boalick also said that, as of early March 2021, the PTAB has received 131 request for fast-track review under the Fast Track Appeals Pilot, and decided a total of 96 appeals, 23 of which included an oral hearing.