Presentation is loading. Please wait.

Presentation is loading. Please wait.

An Inside Look at the Patent Trial and Appeal Board Scott Boalick Administrative Patent Judge Patent Trial and Appeal Board.

Published byKieran Purks Modified over 9 years ago

Similar presentations

Presentation on theme: "An Inside Look at the Patent Trial and Appeal Board Scott Boalick Administrative Patent Judge Patent Trial and Appeal Board."— Presentation transcript:

1 An Inside Look at the Patent Trial and Appeal Board Scott Boalick Administrative Patent Judge Patent Trial and Appeal Board

2 Board Hiring Since October 2011 –Reviewed nearly 1,500 applicant records –Interviewed nearly 240 candidates –Selected 85 highly qualified candidates to become new Judges –We stand at 168 Judges as of February 25, 2013. Opportunities at Detroit/Denver/Dallas/Silicon Valley Satellite Offices –Selecting candidates from previous postings now –New advertisements have been posted Goal for FY2013 - add 60 judges.

3 Board Hiring Selectees have come from the following: –USPTO Patent Examining Corps, Office of the General Counsel, and the PTAB –International Trade Commission and Department of Justice –Private Practice (solo to very large) –All types of industries

4 Board Hiring Administrative Patent Judge (Biotechnology, Chemical, Mechanical, Communication, Computer, Electrical) Announcement Number: PTAB-2013-0006 Questions about this job: –Isis Thomas Phone: 571-272-4363 Email: Isis.Thomas@uspto.govIsis.Thomas@uspto.gov Announcement set to close on Friday, April 19, 2013.

5 Members of the Board (as of 03/18/2013)

6 Board Backlog Growth of the Backlog has been halted: –Overall, for the last 4 months, more decisions issued than new appeals received –Encouraging (for now) Benefiting from numerous factors –Successful hiring in FY2012 that needs to continue in FY2013 –Somewhat lower end-of-year intake for FY2012 and beginning of FY2013 –Extraordinary efforts by current Judges Trend can still be reversed if ex parte appeal intake and AIA intake grow faster than new hires

7 Board Backlog

8 PTAB Receipts and Dispositions Past Month PTAB Receipts and Dispositions Period:02/19/2013thru03/19/2013 Discipline# Cases Received# Cases Disposed Difference (Disposed minus Received) Biotech7846-32 Business Methods859611 Chemical15719740 Contested Cases22253 Design30-3 Electrical41847052 Mechanical244379135 ***Totals***10071213206

9 PTAB Receipts and Dispositions Weekly: 01/09/2013 through 03/13/2013

10 Monthly Receipts and Dispositions – New Judge Comparison

11

12 Decisions by Type: FY2013

13 Decisions Adopting Persuasive Arguments Made in the Record Allow the Board to issue decisions based on arguments presented by Examiners or Appellants –Shorter decisions; disposed sooner; sometimes designated “Per Curiam” Arguments of record must sufficiently explain the decision Working with the offices of the Under-Secretary and Solicitor, the rules were finalized

14 “Per Curiam” Short Decisions as of 02/20/2013

15 Outcomes at the Federal Circuit Affirmances672693 Reversals415 Remands10414 Dismissals12719 Total9338131

16 Technology Breakdowns of AIA Petitions Technology Number of Petitions Percentage Electrical/ Computer 14067.6% Mechanical26 12.6% Chemical2914.0% Bio/Pharma115.3% Design10.5% As of April 1, 2013, the Office received a Total of 207 AIA Petitions: 17 CBMs and 190 IPRs Institutions: 11 CBMs and 34 IPRs Terminations (resulted from settlements): 4 IPRs

17 Post Grant Resources General information concerning implementation of the Leahy-Smith America Invents Act, including post grant reviews, may be found at: http://www.uspto.gov/aia_implementation/index.jsp Information concerning the Board and specific trial procedures may be found at: http://www.uspto.gov/ip/boards/bpai/index.jsp 17

18 Patent Corps Collaboration Continuing to explore collaboration opportunities Additional Examiner interviews during prosecution Additional Examiner review of after-final amendments before coming to the Board (on-going)

19 Published Opinions Committee established to increase designation of precedential and informative decisions Also will post informative orders from AIA proceedings Looking at optimizing manner of posting on site

20 Detroit, Michigan Elijah J. McCoy United States Patent and Trademark Office 300 River Place South Suit 2900 Detroit, Michigan 48207 Opened July 13, 2012 12 Administrative Patent Judges

21 Denver, Colorado Denver Federal Center B20/D1000 W 6th Ave & Kipling Street Lakewood, Colorado 80225 Opened January 2, 2013 5 Administrative Patent Judges

22 Dallas, Texas Santa Fe Building 1114 Commerce Street Suite 705 Dallas, TX 75202 Opened March 18, 2013 4 Administrative Patent Judges

23 Menlo Park, California ???? 345 Middlefield Road Menlo Park, CA 94025 Opening April 15, 2013 6 Administrative Patent Judges And Director Michelle K. Lee

Download ppt "An Inside Look at the Patent Trial and Appeal Board Scott Boalick Administrative Patent Judge Patent Trial and Appeal Board."

Similar presentations

The John Marshall Law School 57th Annual Intellectual Property Law Conference Post-Grant Procedures Michael P. Tierney Lead Administrative Patent Judge.

The John Marshall Law School 57th Annual Intellectual Property Law Conference Post-Grant Procedures Michael P. Tierney Lead Administrative Patent Judge.
Webinar: Request for Comments on AIA Trial Proceedings Before the PTAB July 29, 2014 1 Scott Boalick, Vice Chief Judge (Acting) Patent Trial and Appeal.

Webinar: Request for Comments on AIA Trial Proceedings Before the PTAB July 29, Scott Boalick, Vice Chief Judge (Acting) Patent Trial and Appeal.
The Board of Patent Appeals and Interferences AIPLA S PRING M EETING 2012 James Donald Smith Chief Administrative Patent Judge Board of Patent Appeals.

The Board of Patent Appeals and Interferences AIPLA S PRING M EETING 2012 James Donald Smith Chief Administrative Patent Judge Board of Patent Appeals.
© Kolisch Hartwell 2013 All Rights Reserved, Page 1 America Invents Act (AIA) Implementation in 2012 Peter D. Sabido Intellectual Property Attorney Kolisch.

© Kolisch Hartwell 2013 All Rights Reserved, Page 1 America Invents Act (AIA) Implementation in 2012 Peter D. Sabido Intellectual Property Attorney Kolisch.
America Invents Act (AIA): Overview of Key Provisions SLA Annual Conference June 10, 2013 Janet Gongola Patent Reform Coordinator and Associate Commissioner.

America Invents Act (AIA): Overview of Key Provisions SLA Annual Conference June 10, 2013 Janet Gongola Patent Reform Coordinator and Associate Commissioner.
Update on USPTO Activities November 18, 2014 Drew Hirshfeld Deputy Commissioner for Patent Examination Policy 1.

Update on USPTO Activities November 18, 2014 Drew Hirshfeld Deputy Commissioner for Patent Examination Policy 1.
What Do In-House Counsel Need to Know? AIA Proceedings Molly Kocialski, Senior Patent Counsel, Oracle Dion Messer, General Counsel - IP, Limelight Networks.

What Do In-House Counsel Need to Know? AIA Proceedings Molly Kocialski, Senior Patent Counsel, Oracle Dion Messer, General Counsel - IP, Limelight Networks.
PROSECUTION APPEALS Presented at: Webb & Co. Rehovot, Israel Date: February 14, 2013 Presented by: Roy D. Gross Associate St. Onge Steward Johnston & Reens.

PROSECUTION APPEALS Presented at: Webb & Co. Rehovot, Israel Date: February 14, 2013 Presented by: Roy D. Gross Associate St. Onge Steward Johnston & Reens.
The America Invents Act: Approaching the Finish Line January 29, 2013 Janet Gongola Patent Reform Coordinator Direct dial: 517-272-8734.

The America Invents Act: Approaching the Finish Line January 29, 2013 Janet Gongola Patent Reform Coordinator Direct dial:
Appeal Practice Before Board of Patent Appeals and Interferences

Appeal Practice Before Board of Patent Appeals and Interferences
Connecticut Intellectual Property Law Association Scott E. Kamholz, M.D., Ph.D. Administrative Patent Judge Patent Trial and Appeal Board September 25,

Connecticut Intellectual Property Law Association Scott E. Kamholz, M.D., Ph.D. Administrative Patent Judge Patent Trial and Appeal Board September 25,
Standing Sentinel Over Innovation: The Importance of a Balanced and Effective IP System Andrew C. Byrnes Chief of Staff to the Under Secretary of Commerce.

Standing Sentinel Over Innovation: The Importance of a Balanced and Effective IP System Andrew C. Byrnes Chief of Staff to the Under Secretary of Commerce.
Patent Trial and Appeal Board Update October 22, 2014 1 Chief Judge James Donald Smith Patent Trial and Appeal Board United States Patent and Trademark.

Patent Trial and Appeal Board Update October 22, Chief Judge James Donald Smith Patent Trial and Appeal Board United States Patent and Trademark.
John J. Calvert Administrator, Inventor Assistance Program John J. Calvert Administrator, Inventor Assistance Program Patents – Past, Present and Future.

John J. Calvert Administrator, Inventor Assistance Program John J. Calvert Administrator, Inventor Assistance Program Patents – Past, Present and Future.
Patent Term Adjustment (Bio/Chem. Partnership) Kery Fries, Sr. Legal Advisor Phone: (571) 272-7757

Patent Term Adjustment (Bio/Chem. Partnership) Kery Fries, Sr. Legal Advisor Phone: (571)
USPTO Implementation of the America Invents Act Teresa Stanek Rea Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the.

USPTO Implementation of the America Invents Act Teresa Stanek Rea Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the.
1 United States Patent and Trademark Office Revised PCT International Search and Preliminary Examination Guidelines Biotech/ChemPharm Customer Partnership.

1 United States Patent and Trademark Office Revised PCT International Search and Preliminary Examination Guidelines Biotech/ChemPharm Customer Partnership.
Board of Patent Appeals and Interferences Michael R. Fleming Chief Administrative Patent Judge United States Patent and Trademark Office.

Board of Patent Appeals and Interferences Michael R. Fleming Chief Administrative Patent Judge United States Patent and Trademark Office.
David S. Langdon Senior Economist U.S. Department of Commerce Economics and Statistics Administration Intellectual Property and the U.S. Economy: Industries.

David S. Langdon Senior Economist U.S. Department of Commerce Economics and Statistics Administration Intellectual Property and the U.S. Economy: Industries.
How do you get there? The Supreme Court. Let’s start with a little vocabulary… Writ of certiorari : an order by a higher court directing a lower court.

How do you get there? The Supreme Court. Let’s start with a little vocabulary… Writ of certiorari : an order by a higher court directing a lower court.

Similar presentations

Ads by Google