Recently I was communicating with someone who char
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Posted On: 11/26/2018 8:32:47 AM
Recently I was communicating with someone who characterized the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO) as “one of the most sophisticatedadjudicative bodies ever fashioned by a civilized nation…” While that type of laudatory praise for the PTAB may be common in some corners of the industry, that feeling is most certainly not shared by everyone within the industry, which is an understatement to say the least.
As I chatted with this fellow who holds such a high opinion of the PTAB I pointed out that in many cases the Administrative Patent Judges of the PTAB have been appointed while still a senior associate, or perhaps a junior partner. The retort: “It might be an interesting study to come up with some way of objectively measuring the competence level of the APJ cadre and get more than an anecdotal gauge on its credentials.”
With this in mind I set out to identify as many patent judges on the PTAB as I could. Although the USPTO does not maintain a roster of PTAB judges (which is amazing in and of itself), I successfully identified 174 patent judges currently on the PTAB through LinkedIn and other public sources. I then created a spreadsheet showing where they went to law school, when they graduated law school, when they were appointed to the PTAB, how many years of experience as a lawyer they had at the time of their appointment to the PTAB (i.e., number of years since graduating from law school), and how many years of total xperience they will have in 2018 (i.e., total number of years since graduating from law school, including time served as a judge).
I reached out to the USPTO for comment, providing them with a copy of my spreadsheet on the 174 PTAB judges I could locate (including the name of the judges). A spokesman for the USPTO declined to comment for this story. I’ve decided not to publish the names of the PTAB judges, instead identifying them as APJ 1 through APJ 174. The point is not to embarrass any particular Administrative Patent Judge.
Notwithstanding the desire to not embarrass any particular APJ, the PTAB has become the most important and influential tribunal in the U.S. patent landscape. This Article I executive tribunal is rendering decisions on what the Supreme Court and the Patent Act explicitly refer to as being property (i.e., a patent). The experience level of the PTAB as a whole is shockingly low in comparison to federal district court judges, and the Secretary of Commerce is appointing individuals who could never win confirmation in the United States Senate to be a district court judge and investing them with extraordinary power to revoke property rights.
Patent Judges of the PTAB: Median & Average
The median number of years of experience at the time of appointment for patent judges on the PTAB was 11 years experience, with the average being 13.04 years experience. As of 2018, the median number of years of experience for patent judges on the PTAB was 17 years experience, with the average being 19.09 years experience.
The average patent judge on the PTAB had 13 years of experience or less when hired by the Secretary of Commerce (61.49%), and went to law school either at George Washington (21), Georgetown (16), George Mason (10), American University (9) or the University of Virginia (7), which were the top 5 most frequently attended law schools for PTAB judges.
Federal District Court Judges
I also identified 178 federal district court judges from the primary patent courts in the United States — Eastern District of Texas, Northern District of California, Northern District of Illinois, Central District of California, Delaware, New Jersey, and Massachusetts (Boston Division).[1] It is worth noting that all of the 178 federal district court judges in the primary patent courts were appointed with at least 11 years of experience (i.e., 11 years or more removed from graduating from law school). Indeed, 90.96% had at least 15 years of experience at the time they were appointed, and 70.06% had at least 20 years of experience at the time they were appointed. Furthermore, in 2018 all 178 federal district court judges will have at least 18 years of experience.
The median number of years of experience at the time of appointment for federal district court judges was 23 years experience, with the average being 23.38 years experience. As of 2018, the median number of years of experience for federal district court judges in the primary patent courts was 40 years experience, with the average being 39.95 years experience.
The average district court judge had 23+ years of experience at the time they were confirmed by the Senate (55.93%), and went to law school either at Harvard (30), Yale (14), the University of California at Berkeley (12), Stanford (10), or Columbia (9), which were the top 5 most frequently attended law schools for district court judges.
Inexperienced PTAB Judges
What was most astonishing is just how inexperienced many patent judges of the PTAB are compared to federal district court judges. For example, many PTAB judges were appointed to the PTAB at a time when they were associates, and in some cases junior associates.
This study uncovered several shocking revelations. First, 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.
It is also worthwhile to specifically look at the 10 year mark post-law school for an experience comparison between PTAB judges and federal district court judges. There were zero federal district court judges appointed with 10 years or less experience, while 46.55% of PTAB judges were appointed with 10 years or less experience. Those familiar with the industry will well know that at many major law firms 10 years is the tipping point between partner and associate. Thus, this would mean that 46.55% of PTAB judges were appointed while they were still at best senior associates. Worse, 4.60% of PTAB judges were appointed with 3 or fewer years of experience, which means those 4.60% of PTAB judges were appointed at a time when they were only at a junior associate level.
Several other key statistics show the tremendous disparity between experience levels of patent judges of the PTAB and federal district court judges. Only 37.71% of APJs on the PTAB were appointed having 14+ years of experience. By comparison, 96.05% of federal district court judges were appointed having 14+ years of experience.
As of 2018, there are 50.57% of patent judges on the PTAB who have 17 years or less experience. There are zero judges on the federal district court in the major patent courts that have 17 years or less experience. Indeed, 91.53% of judges on the federal district court have 25+ years of experience in 2018, while only 21.26% of APJs on the PTAB have 25+ years of experience.
Conclusion
The America Invents Act (AIA) invests PTAB judges with extraordinary powers. For example, overwhelmingly institution decisions are not appealable. Yet, there have been numerous lawyers with shockingly little experience appointed to the position of patent judge, and vested with the power to make decisions that cannot be reviewed by any Article III federal court.
What follows is a breakdown of the key findings.
PTAB Judges vs. Federal District Court Judges
PTABDistrict Court11+ years of experience at Appointment53.71%100.00%14+ years of experience at Appointment37.71%96.05%15+ years of experience at Appointment35.63%90.96%20+ years of experience at Appointment15.52%70.06%22+ years of experience at Appointment13.79%62.15%23+ years of experience at Appointment12.07%55.93%25+ years of experience at Appointment8.62%40.11%30+ years of experience at Appointment5.17%19.77%35+ years of experience at Appointment3.45%3.95%14 or less years of experience at Appointment64.94%8.47%13 or less years of experience at Appointment61.49%2.82%12 or less years of experience at Appointment55.75%2.82%11 or less years of experience at Appointment51.72%0.56%10 or less years of experience at Appointment46.55%0%9 or less years of experience at Appointment36.21%0%8 or less years of experience at Appointment27.01%0%7 or less years of experience at Appointment22.41%0%6 or less years of experience at Appointment16.67%0%5 or less years of experience at Appointment12.64%0%4 or less years of experience at Appointment7.47%0%3 or less years of experience at Appointment4.60%0%2 or less years of experience at Appointment2.30%0% break9 or less years of experience in 20181.72%0%10 or less years of experience in 20184.02%0%11 or less years of experience in 20188.62%0%12 or less years of experience in 201817.82%0%13 or less years of experience in 201827.01%0%14 or less years of experience in 201835.06%0%15 or less years of experience in 201839.66%0%16 or less years of experience in 201844.25%0%17 or less years of experience in 201850.57%0%18+ years of experience in 201849.43%100.00%20+ years of experience in 201839.66%99.44%22+ years of experience in 201827.01%97.74%25+ years of experience in 201821.26%91.53%27+ years of experience in 201816.09%87.01%30+ years of experience in 20189.20%76.84%32+ years of experience in 20186.32%70.62%35+ years of experience in 20184.02%64.97%breakAverage years of experience at Appointment13.0423.38Median at Appointment1123Average years of experience in 201819.0939.95Median in 20181740
_______________
[1] Several of the Federal District Court Judges identified come from the Eastern District of Pennsylvania, or other courts. They are included because they were listed on the District of Delaware website as visiting judges.

THE AUTHOR

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. 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. Geneis 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.
Tags:Administrative Patent Judge, APJ, CDCA, central district of california, District Court, district of delaware, District of Massachusetts, district of new jersey, Eastern District of Texas, EDTX, NDCA, NDIL, Northern District of California, patent, patent office, Patent Trial and Appeal Board, patents, post grant proceedings, PTAB, southern district of new york, USPTO
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DISCUSS THIS
There are currently 63 Comments comments.
Paul Morinville March 6, 2018 11:32 am
So is the problem corruption or inexperience/incompetence?
Federal judges are lifetime appointed. They do not have a career. But PTAB lawyers do, and they could certainly feather their future nest by invalidating the right patents for the right companies.
Any data on where PTAB lawyers go after they leave the PTAB?
I wonder
Bemused March 6, 2018 11:36 am
Gene, those are very interesting statistics so thank you for pulling them together and for sharing them with us. Out of curiosity, I wonder how many current PTAB “judges” came out of the top patent litigation firms versus small or solo practitioner firms? I ask because I’ve heard several times from several sources that many of these PTAB “judges” are really just folks who couldn’t make a living as patent lawyers so they transitioned to government work.
If that is true, I sure wish that most of them had submitted their applications to the post office instead of to the USPTO. At least with the post office they would have a better chance of doing their job correctly.
Gene Quinn March 6, 2018 11:40 am
Bemused-
I also looked at the firms, but didn’t publish that part yet. Over the last several years people in DC have discussed at many events how one particular firm seems to be a feeder firm for the PTAB. So far with the 174 judges I’ve located I didn’t see the amount of people from a single firm that I was expected. I think that suggests there are many more inexperienced judges on the PTAB (i.e., the other 100 or so I couldn’t identify) who may be from that particular feeder firm. So the project will continue. I am going to be filing a FOIA soon (although I’m not convinced the PTO will give me the information I’ll want, which are the names and resumes of all PTAB judges).
Gene Quinn March 6, 2018 11:42 am
Paul-
I did not look into former PTAB judges in this particular research project, so I don’t have an answer for you on that. This does, however, raise a number of questions as is probably typical when facts start to get uncovered. Will pursue various avenues.
-Gene
Thomas Pain March 6, 2018 11:43 am
Apples and oranges. Three APJs are required for a final decision at the PTAB. The median PTAB experience of 17 years results in a decision informed by 51 years in the field.
PTAB Attorney March 6, 2018 11:51 am
Respectfully, I find that younger practitioners are usually much better suited to PTAB work than seasoned district court litigators. The motivation behind the PTAB was to create an agile proceeding without the cruft of the district courts. And, to be honest, most practitioners seem to forget their technical education after about 10-20 years in the practice of law. I’d much rather have a PTAB with young, smart lawyers as APJs who are more motivated to get to the truth of a matter than old stodgy district court litigators who have spent most of their lives in discovery battles than actual, real patent law (i.e., does the prior art render this obvious?). And, if those “experienced” district court judges could do this kind of law, then the PTAB would never have been necessary. It is a remedy for an incapable judicial system at the district court level for handling patent cases.
Gene Quinn March 6, 2018 12:17 pm
Thomas Pain-
Sorry, this is not apples and oranges. Based on your logic if panels were expanded to 17 APJs then each could have 3 years of experience and you’d get the same informed consideration as a single senior judge with over 50 years of experience. It just doesn’t work that way. Nice try.
Gene Quinn March 6, 2018 12:21 pm
PTAB Attorney-
You say: “The motivation behind the PTAB was to create an agile proceeding without the cruft of the district courts.”
From the point of view of the infringers who file challenges at the PTAB I’m sure it was their intention to have an agile proceeding that was not unnecessarily complicated. But the proceedings that have emerged are unfair to patent owners and fundamentally deprive patent owners of due process. Speed and an unnecessarily complicated process is fine if it also has procedural and substantive fairness, which the PTAB lacks by any fair evaluation.
As for inexperienced judges, I don’t know that there is any wisdom associated with having judges that are so inexperienced no major law firm in the field would allow them to be first chair in a proceeding on which they are judging. If clients and firms wouldn’t allow associated to be more than a second (or third) chair to an IPR proceeding why would anyone ever appoint that same associate as a judge charged with making nonappealable decisions?
Joachim Martillo March 6, 2018 12:28 pm
Paul@1 March 6, 2018 11:32 am,
I think you don’t fully understand how to create a crooked organization. You probably don’t have the dubious benefit of having grown up in a mafia hideaway and having been a schoolmate to some of the current generation of top mafiosi.
In the USPTO scheme of things, USPTO APJs (and examiners) consult a database in order to decide how to proceed. The setting of various flags in the database by corrupt senior USPTO officials makes a big difference in outcome either of a post-grant review proceeding or of an appeal.
The USPTO has an excellent system for criminal conspiracy. The perpetrators of the final deed often don’t understand what is happening.
Thus clueless inexperienced APJs (I call them clowns) are excellent stooges.
In the case of unlawful programs, which like SAWS pertain to examination, it is helpful to hire examiners, whose English is deficient. Deficient English makes it harder to analyze files forensically in order to look for a pattern of unlawful behavior while examiners deficient in English must obey crooked senior USPTO officials because such examiners would probably have difficulty finding jobs elsewhere.
Thomas Pain March 6, 2018 12:30 pm
And another problem with the analysis is the presumption that one cannot gain experience in patent law before graduating law school. GW, Georgetown, Geo. Mason, and American (law schools you mentioned) have night programs with students who work full time in patent law.
curoius March 6, 2018 12:32 pm
Interesting data.
One note or curiousity I have – what is the breakdown based on the older APJs and the newer APJs? Prior to the huge hiring push over the last few years, many APJs were examiners turned attorneys. So some of the older APJs may have examined for 10-20 years, some even were supervisors, then the went to law school while working, and then became an APJ. So they may have only had a couple years as an attorney, but I would say that that group is more experienced than an attorney with a handful of years but no prior examining experience.
Also, the nature of ex parte and inter partes are very different. Does/is/can your data be divided by what kind of cases the judges are staffed on?
Thanks! These are the kinds of articles I like and am interested in – underlying facts that help support many of the opinions and odd phenomena we see in this realm.
Gene Quinn March 6, 2018 12:43 pm
Thomas Pain-
You say: “one cannot gain experience in patent law before graduating law school.”
The problem seems to be with your analysis, unless what you are saying is a patent agent who cannot have any litigation experience gains the same experience as a patent attorney.
Those in the industry (who aren’t making excuses) know that the knowledge one gains after graduating and practicing as an attorney is far more broad in scope. Those who haven’t gone to law school don’t really even know how to read cases, or interpret the law in the same way as an attorney, particularly a seasoned attorney. That is just the way it is, and why firms charge more per hour for a newly minted attorney fresh out of law school than even a seasoned patent agent.
Furthermore, Administrative Patent Judges are conducting trials — administrative patent trials but they are trials. There is discovery, there are depositions, there is testimony, there are motions. This is a trial, not an appellate court where the record is fixed. To hire inexperienced attorneys who are not familiar with litigation process is just inappropriate.
Furthermore, I realize APJs are not Administrative Law Judges, but ins’t that the problem? Many of the APJs appointed couldn’t qualify to become Administrative Law Judges.
See: https://www.americanbar.org/content/dam/aba/administrative/administrative_law/2017_Holmes_Chapter.authcheckdam.pdf
“An applicant must fulfill four requirements: (1) Seven years of trial experience; (2) Recommendations of fellow lawyers and/or judges; (3) Written examination; and (4) Oral examination. The seven years of trial experience must be specifically demon strated with cases cited and days and hours worked set out in detail.”
In this research study we found that 22.41% of PTAB judges have 7 or less years of experience when they are made a judge, which would make it impossible to have at least 7 years of trial experience. Indeed, many of those being appointed as APJs have very little or no trial experience. That might have been fine when the Board was made up of Examiners-in-Chief, but the PTAB conducts administrative trials with all the trappings of a real trial. How can an associate with little or no trial experience conduct an administrative trial? And don’t tell me there are 3 APJs assigned. Those familiar with the PTAB know that one judge takes the lead and the others follow along. The USPTO gives no quota credit for dissents, so there is always (or virtually always) unanimous agreement with the other two judges just going along with the judge assigned as the lead for that particular case.
Gene Quinn March 6, 2018 12:48 pm
Curious-
You can see some of that data if you look at the PDFs of the spreadsheet for PTAB.
There were actually several judges in the 1990s that were elevated to the Board years before graduating law school. And there was at least one PTAB judge who was elevated 2 years after graduating law school. This last PTAB judge (#107 on the list) became an examiner in 1993, graduated law school in 1998, and became a PTAB judge in 2000. So at least in that case the APJ had a max of 7 years as an examiner and only 2 years after graduating law school.
I realize in the past the Board was made up of senior examiners, when they were Examiners-in-Chief. But now that the PTAB conducts administrative trials, the practice of putting someone on the PTAB with very little experience would seem to need reevaluation.
FAQ for you March 6, 2018 12:51 pm
An attempt at humor, addressing what I personally feel is a flaw in the methodology. That being said, you, Mr. Quinn, are indeed clear as to the methodology you use.
FAQ
Question 1: Mr. Quinn, excluding my pre-PTO experience, my career path has been as follows: I started as a Patent Examiner, working for four years full time. Thereafter, I was a primary Examiner for 15 years. I left the PTO for a law firm, where I worked (full-time) as a technical specialist for 3 years. Thereafter, I became a patent agent, and have been working as such for the last 14 years. I recently completed attending law school while working full-time, and expect to soon receive notification that I passed the February 2018 bar examination. 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?
Answer- You will be listed as having 0 years of experience.
John M. Rogitz March 6, 2018 12:56 pm
This is a very interesting article, but inexperience alone is not the problem. The true problem is that the judges are not applying the correct law or applying the law at all, even when put on notice. They also frequently render incomplete opinions that not only fail to address certain specific arguments but fail to address entire sections of Appeal Briefs, some of which pertain to dependent claims that might be patentable even when the PTAB holds the independent claims unpatentable. And how many times have we seen them entirely ignore the law on what is required for a legally sufficient motivation to combine and instead simply adopt the examiner’s reason without even discussing and applying the precedential cases that the Appellant has cited? There are plenty of law students who are capable of understanding and applying the law. The problem is these judges are failing to do so, maybe due to time constraints, but unacceptable nonetheless. If a private-sector lawyer approached things the way PTAB judges do, it would be malpractice. But they’re in the executive branch, and they must be satisfied that what they’re doing is “close enough for government work”.
Gene Quinn March 6, 2018 1:06 pm
FAQ for you:
You ask: ” 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?”
No. If you have 6 months as an attorney in my opinion you should not be an Administrative Patent Judge. Those with only 6 years of legal experience should not be conducting administrative trials.
If you have only 6 months as an attorney that means you have at most 6 months experience with litigation. You could not be confirmed by the Senate as a district court judge, period. And the PTAB is a district court alternative to litigation that decides invalidity issues. The standards are different, but the consequences are the same for the patent owner. I don’t see any legitimate reason to allow someone with 6 months as a lawyer to exercise the same powers as a district court judge relative to a property right.
I suspect most will agree with me, but regardless, I am entitled to my opinion. So now we wait and see if those in government and within the patent owning community believe it is appropriate to have PTAB judges who are not experienced enough to even come close to being able to be confirmed as a district court judge. It will be interesting.
Anon March 6, 2018 1:09 pm
Gene,
Your article must have hit a nerve, seeing the apologists come out as they have.
Two minor comments:
1) as for experience, perhaps a “negative count” should be given for those who have been examiners, to account for the internally myopic “just say no” Reject Reject Reject culture to which any such “experience” may subject an individual to.
2) perhaps more brute force (is there an intern available), but is not every PTAB decision made of public record, with all “judges” identified? It may even provide a benefit to see the “density” of cases per “judge.”
Keep up the excellent work, and if you go the FOIA route, please do not write in an “easy out” for the government.
Thomas Pain March 6, 2018 1:26 pm
More apples and oranges. Have you identified those APJs who lack competent legal knowledge and scientific ability? (Notwithstanding appointment by a cabinet secretary.)
Gene Quinn March 6, 2018 1:27 pm
Anon-
I did do a FOIA, and I gave them an out, although not an easy one. In order to get the documents I asked for any document that contains the name of any and/or every PTAB judge currently on the Board. In lieu of that I’d accept a complete roster of PTAB Judges along with their resumes/CVs, and specifically including the law school they attended, the year of graduation and year sworn into the PTAB. That is the information I want, so if they give me that I don’t need the documents. But as with every bit of information uncovered there will be more questions undoubtedly.
Rest assured, however, that I won’t accept an off the record conversation as satisfactory. They burned that bridge when they didn’t follow up with anything on the record.
Gene Quinn March 6, 2018 1:29 pm
Thomas Pain-
Saying my response is apples and oranges, while I’m sure it feels good, doesn’t change the facts contained in this study. They are what they are. You and others will no doubt believe that it is appropriate to have associates (even junior associates) elevated to patent judge. I suspect there will be far more people who are extremely concerned by this revelation. Time will tell. But calling it apples and oranges is simply not true.
Paul Morinville March 6, 2018 2:01 pm
FAQ for you.
I pray that you will not have an employment offer for the PTAB because by then the PTAB will no longer exist. Corruption at the level the PTAB has achieved cannot be tolerated even by the worst of corrupt officials.
Glaucon March 6, 2018 3:36 pm
Maybe not quite “apples and oranges,” but there are valid comparisons, and there are blatant omissions of facts that raise genuine questions as to the strength of those comparisons. When the omissions are this numerous, and you defiantly argue that they are justified, this becomes a propaganda piece much more than a so-called attempt at a balanced study. Throw in Morinville’s musings and support and the characterization gets worse, but I’ll leave it at that.
Here are the main criticisms I have with your methodology:
1. Experience as a patent examiner or patent agent should be credited. I’ve been both and have also been a lawyer for 10+ years (I’m not and never have been an APJ, for the record). Lawyers do not have a monopoly on understanding case law, and experience taking dozens of depositions, reviewing millions of documents, and engaging in frivolous discovery disputes with opposing counsel are only incrementally beneficial for the job of an APJ. The mechanics of prosecution get you at least 80% of the way toward understanding the necessary considerations in deciding and granting patents. Not all examiners are aimless rejection machines. Dedicated examiners and agents take the time to understand the law. Life does not begin after law school.
2. The relevant comparison of experience between APJs and district court judges should be between patent experience, not general legal practice. At the least, you should take account of the LACK of patent experience among district court judges and factor that into the methodology. I would be shocked if the district court judges were not substantially less experienced in patent matters than APJs. You’d be intellectually dishonest to omit this factor in its entirety, as you’ve done so far.
3. While we’re at it, why don’t you factor in the difference in TECHNICAL experience between district court judges and APJs? Probably same result as in point 2. General litigation experience is not nearly as important as being involved in the intricacies of technology and patent law in the context of the role of APJs.
4. So you’ve roused rabble. What’s the solution and will the market allow it? APJs make between $125-175k according to USA JOBS, and this isn’t a life appointment like district court judges. You want seasoned patent litigators to take these jobs? And also have to deal with the fluff you’re throwing in their direction?
Gene Quinn March 6, 2018 3:48 pm
Glaucon:
You say: “Experience as a patent examiner or patent agent should be credited.”
That is absolutely NOT true. You can not like it, but PTAB judges administer Administrative Trials. Patent examiners and patent agents do NOT have any experience with litigation, discovery or motions practice that is essential to any administrative trial.
You say: “APJs make between $125-175k according to USA JOBS, and this isn’t a life appointment like district court judges. You want seasoned patent litigators to take these jobs?”
That is not my problem. I didn’t create the PTAB. The judges of the PTAB were vested with district court powers. Hiring inexperienced people for a powerful position is in my opinion inappropriate.
Paul Morinville March 6, 2018 4:15 pm
Glaucon, You say “Throw in Morinville’s musings and support and the characterization gets worse, but I’ll leave it at that.”
I place my “musings and support”. I do not throw them. The PTAB however, does throw crap at me. Three Alice decisions against my patent applications in three months on highly technical middleware. Commercially valuable stuff that goes to the heart of enterprise computing, turned the market, and is in no way an abstract idea. The examiner failed to follow process or evaluate the patents properly under Alice and instead just hand waved saying “oh, there must be something in there that is abstract” and then tossed out a BS rejection. I appealed and won. Then back to the same examiner who does the same thing. I appealed and won. Then back to the same examiner who does the same thing again. Then I appeal for a third time and now (15 years since I originally filed the patent application) the PTAB says “oh there must be something in there that is abstract” and affirms the rejection.
I’m glad you have a job at the PTO – at least you get a pay check. But maybe you should venture out in the world a little bit. Perhaps try to startup a company with technology that competes with huge multinationals and see how you feel about the PTAB and examination. See if anyone else believes that the PTO is doing a good job. The best way to do that might be to check with some investors to fund your startup based on the patents produced by the PTO that will almost certainly get invalidated by the SAME PTO once they are proven to be commercially valuable.
And I “place” this comment specifically: What the PTAB is doing is nothing short of criminal. The PTAB is absolute corruption. And while I have not felt this way about the other half of the PTO, examination, until recently, it is cut from the same corrupt cloth.
Thomas Pain March 6, 2018 4:24 pm
Apples, oranges. What do you think is so difficult about “litigation, discovery or motions practice” in a PTAB “administrative trial” that it would call for years of experience in District Court litigation? The Federal Rules of Civil Procedure do not apply to PTAB trials. The “litigation” is much simpler in PTAB proceedings as compared with that in District Courts. A fact that, by the way, is a principal reason why Congress created the PTAB.
AAA JJ March 6, 2018 4:25 pm
The first Chief APJ had a hard on for candidates with judicial clerking experience. So anybody who clerked for a year or two at a USDC or circuit court of appeals got hired if they applied. Regardless of how little practice experience they had.
Glaucon March 6, 2018 4:44 pm
Paul, I appreciate your concerns about Alice. I’m going through them too with my own applications (in one case: 6 non-final rejections, 2 pre-appeal brief requests for review that withdrew all rejections, 0 RCEs…). So, no, I’m not currently a PTO employee (left over 10 years ago to prosecute and litigate in private practice). And, funny you mention it, I am currently a startup founder that competes with “huge multinationals.”
My only point in referring to your comments was that, having been at the PTO and known many good people there, I prefer to apply Hanlon’s razor than make accusations of corruption. Particularly against an agency whose integrity is so important to innovators in this country. The PTO is far from perfect (and I have the same frustrations with them as do you). But if we tear down the patent office, it will only undermine our progress.
My preference is to improve policy and practice through careful and deliberate thought upon fair and honest assessment, not over-reactions. If you talk to leaders at the PTO, they are quick to admit shortcomings and are very open to feedback on how they can improve. Misaligned incentives between PTO employees and applicants is the primary cause for perceived incompetence, but they can never by truly aligned so we must figure out a way to work around that.
Gene,
Well I suppose we’ll just disagree on those points. I’ve litigated patent cases for a number of years and personally feel that generic trial practice skills are not nearly as important as a strong foundation in patent law. At the least, patent law knowledge should not be completed disregarded, as you are doing. Motions practice at the PTAB level is JV stuff compared to district court. Nothing that can’t be sufficiently learned in a 3L trial skills class and a year in practice.
Name withheld to protect the innocentMarch 6, 2018 4:48 pm
Three APJs are required for a final decision at the PTAB. The median PTAB experience of 17 years results in a decision informed by 51 years in the field.
Oh please. You think the non-drafting APJs give more than a cursory look at the briefs? There was a memo circulated some time ago to all the APJs that basically said that if you file a dissenting opinion, you won’t get work credit for it. As such, why even bother looking at the file if your opinion doesn’t matter and you aren’t going to get any credit for even having it.
The near unanimity of PTAB decisions reflects that lack in involvement of the other APJs.
Name withheld to protect the innocentMarch 6, 2018 5:03 pm
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?
Patent experience is not the same as legal experience. The M.P.E.P. is rife with misleading statements as to the holdings of the case law discussed therein. Most examiners I have interacted with have never read most of the case law that they cited.
As an attorney, when I see an examiner cite some case law I haven’t seen before (or haven’t seen in awhile), I’ll go and find and read the case. I’ll look at the fact pattern and try to understand whether it applies to the facts of my application. The vast majority of times it doesn’t because the one sentence snippet about the case presented in the MPEP overgeneralizes the salient points made by the Court. An examiner or a patent agent just isn’t trained to read case law and understand the difference between a holding and dicta. Sure, they’ll pick up some of it through osmosis, but their understanding of the law has been so twisted, from the very beginning, by the MPEP and (bad) advice from their (non-legal) peers that it’ll be very difficult for them to put away their preconceived notions of what constitutes a good rejection.
As for you, you’ve now made it through law school. This means your legal education has JUST BEGUN.
Gene Quinn March 6, 2018 5:04 pm
Name withheld-
Do you happen to have a copy of that memo? I’ve heard from reliable sources that dissenting opinions cannot count toward the quota of PTAB judges, but I don’t believe I’ve ever seen a memo to that effect. I would really like to get my hands on that memo. Feel free to contact me privately and directly.
Paul Morinville March 6, 2018 5:08 pm
Glaucon, You say: “Particularly against an agency whose integrity is so important to innovators in this country.”
That is incredibly important in any government. Taken to the extreme, if the people do not trust government institutions, the government cannot stand without exerting force against the people.
The PTO is NOT trusted by a large number of inventors and others in the industry. I continue to hold out hope that Iancu will address this within the scope of his power. But his scope is limited.
Congress must take action to eliminate the PTAB, eliminate Alice, restore injunctive relief, bring sense to venue, and fix other issues. There is no patent system today. Filing a patent is a stupid thing to do. It brings no value, takes your ability to trade secret the invention and gives it to huge multinational corporations for free. And it leaves you with a liability because anyone can challenge your patent to PTAB death squads costing you hundreds of thousands of dollars. If I planned to crash the patent system, I could not have devised a better way to do it.
I completely agree with Gene’s point in this article. PTAB lawyers have awesome and unparalleled power to invalidate property rights without due process and without a jury. That means they need to be every bit as experienced or more as an Article III judge. They are not.
Anon March 6, 2018 5:15 pm
Nwtpti @ 29,
I agree with you – in spades.
Within the last month I dealt with a “form paragraph” from the MPEP that was exactly opposite of the proper take away, given a near perfect alignment of facts in not one but two cases and how that MPEP paragraph attempts to spin those cases.
I guarantee you that the examiner knew nothing more than “here is a form paragraph if you make this rejection.”
As I mentioned to Gene at 17, experience as an examiner may very well (or should very well) count as a Negative years to be removed from an overall proficiency metric based on years (both for the lack of actual learning during that time, and for the subsequent required time to unlearn the bad habits and misplaced “beliefs.” I would daresay that time as a SPE may need to even employ a multiplier on the negative treatment (of course, these are general comments, and individuals may well vary).
curoius March 6, 2018 5:49 pm
Anon @32 – On one hand, i agree that examining can actually be a negative for some applicants for an APJ job. BUT, I don’t think that the kinds of examiners you are thinking of are the ones applying for the APJ job. I may be wrong, but the examiners that just throw out crap and reject whatever with no reason – they have no need or motivation to change jobs. They have it made. I feel like the type of examiner that is going for an APJ job is one that is more thorough, and would find the APJ job more challenging and professionally fulfilling.
And to your point about the MPEP, I agree that few examiners know more than the snippets of cases in the MPEP. But I’ve seen the same from attorneys. I had a case cited against me in a response that I’d never seen. So I looked up the case, and the attorney was grossly mischaracterizing the case. Fortunately for the attorney, they made a separate, convincing argument on other grounds. So I allowed the case. But the mischaracterization still bothered me. But, whatever, I have to move on and keep getting counts. Only so much time in a day for me to do my best, then I check out and enjoy life.
Anon March 6, 2018 7:57 pm
curious,
You raise some good points. Thank you.
Pro Se March 6, 2018 9:38 pm
Reading these comments:
I feel so sorry for the kid in a garage, that discovered a new novel invention, still believing that the U.S. patent system can technically protect his/her discovery… all to borrow, work and save $30k to draft and submit a patent application…
To have it downright mangled by senseless legalese.
The USPTO should only be employing senior inventors with 10 year minimum issued patent(s) in the field of art.
How do anyone know invention that never invented anything?
A good Bayesian March 7, 2018 2:26 am
Another apples and oranges comment: due to truncation bias you should only compare APJs to DC judges who were appointed in the last 5 years. PTAB has only been around for 5 years and doors not have the statistical benefit of judges who are lifers.
Name withheld to protect the innocentMarch 7, 2018 8:54 am
Sorry Gene — the only thing I have is this article, which I know that you are already aware of.https://patentlyo.com/jobs/2009/05/bpai-shuts-down-dissent-in-favor-of-efficiency.html
Regardless, if someone has the data, I’m sure someone could put together a comparison of the % of dissents in the 3-judge panel of the Federal Circuit with the % of dissents in the 3-APJ panel at the PTAB. If I was to have access to the data, I would also break it out by IPRs and ex parte appeals.
Joachim Martillo March 7, 2018 9:01 am
Hanlon’s Razor asks: “Has the PTAB made the USPTO the Village Idiot of Administrative Agencies?”
After applying Hanlon’s Razor, we are forced to invoke Occam’s Razor. There is a corrupt group of senior USPTO officials orchestrating a good number of APJ stooges or clowns.
If the USPTO dealt with valuable financial instruments instead of potentially valuable intellectual property, the FBI and the SEC would long ago have been crawling all over the USPTO records.
I have done work in forensic accounting. Forensic accountants have rule that is much better than Hanlon’s Razor. I will christen it Enron’s Razor.
“If there is a way to make a dishonest buck, someone will try it.”
“Not only is dishonest work easier than honest work, but it pays off unless one gets caught.”
I have been collecting evidence since 2007. 1994 seems the start of the corruption, and the reason should be obvious to everyone.
Returning to pre-GATT law (FI, 17 year term from date of issuance, and secret applications) will solve a lot of the problem. The rest of the world should follow the US example.
Just add a rule that the date of invention is the effective filing date unless the Inventor has diligently maintained a blockchain ledger for reduction to practice.
The USPTO could offer a blockchain invention ledger service.
Anon March 7, 2018 9:49 am
“1994 seems the start of the corruption, and the reason should be obvious to everyone.”
Should? Sorry Mr. Martillo, but you are going to have to help me out on that one.
Further, the return to pro-GATT from date of issuance is a non-starter. Tying the term to the application date (with strict adherence to timing guarantees) is an easy solution to then problem of submarining.
Your reference again to blockchain is interesting. How would you propose a blockchain for family items, some of which would be published, and some not?
Nwtpti @ 36,
Thanks for the link – the lack of sunshine does extend back well past several of the Secretaries chosen to run the Office (indicating that behind-the-scenes power players have their fingers on the pulse of what happens – and what does not happen – in the
As I chatted with this fellow who holds such a high opinion of the PTAB I pointed out that in many cases the Administrative Patent Judges of the PTAB have been appointed while still a senior associate, or perhaps a junior partner. The retort: “It might be an interesting study to come up with some way of objectively measuring the competence level of the APJ cadre and get more than an anecdotal gauge on its credentials.”
With this in mind I set out to identify as many patent judges on the PTAB as I could. Although the USPTO does not maintain a roster of PTAB judges (which is amazing in and of itself), I successfully identified 174 patent judges currently on the PTAB through LinkedIn and other public sources. I then created a spreadsheet showing where they went to law school, when they graduated law school, when they were appointed to the PTAB, how many years of experience as a lawyer they had at the time of their appointment to the PTAB (i.e., number of years since graduating from law school), and how many years of total xperience they will have in 2018 (i.e., total number of years since graduating from law school, including time served as a judge).
I reached out to the USPTO for comment, providing them with a copy of my spreadsheet on the 174 PTAB judges I could locate (including the name of the judges). A spokesman for the USPTO declined to comment for this story. I’ve decided not to publish the names of the PTAB judges, instead identifying them as APJ 1 through APJ 174. The point is not to embarrass any particular Administrative Patent Judge.
Notwithstanding the desire to not embarrass any particular APJ, the PTAB has become the most important and influential tribunal in the U.S. patent landscape. This Article I executive tribunal is rendering decisions on what the Supreme Court and the Patent Act explicitly refer to as being property (i.e., a patent). The experience level of the PTAB as a whole is shockingly low in comparison to federal district court judges, and the Secretary of Commerce is appointing individuals who could never win confirmation in the United States Senate to be a district court judge and investing them with extraordinary power to revoke property rights.
Patent Judges of the PTAB: Median & Average
The median number of years of experience at the time of appointment for patent judges on the PTAB was 11 years experience, with the average being 13.04 years experience. As of 2018, the median number of years of experience for patent judges on the PTAB was 17 years experience, with the average being 19.09 years experience.
The average patent judge on the PTAB had 13 years of experience or less when hired by the Secretary of Commerce (61.49%), and went to law school either at George Washington (21), Georgetown (16), George Mason (10), American University (9) or the University of Virginia (7), which were the top 5 most frequently attended law schools for PTAB judges.
Federal District Court Judges
I also identified 178 federal district court judges from the primary patent courts in the United States — Eastern District of Texas, Northern District of California, Northern District of Illinois, Central District of California, Delaware, New Jersey, and Massachusetts (Boston Division).[1] It is worth noting that all of the 178 federal district court judges in the primary patent courts were appointed with at least 11 years of experience (i.e., 11 years or more removed from graduating from law school). Indeed, 90.96% had at least 15 years of experience at the time they were appointed, and 70.06% had at least 20 years of experience at the time they were appointed. Furthermore, in 2018 all 178 federal district court judges will have at least 18 years of experience.
The median number of years of experience at the time of appointment for federal district court judges was 23 years experience, with the average being 23.38 years experience. As of 2018, the median number of years of experience for federal district court judges in the primary patent courts was 40 years experience, with the average being 39.95 years experience.
The average district court judge had 23+ years of experience at the time they were confirmed by the Senate (55.93%), and went to law school either at Harvard (30), Yale (14), the University of California at Berkeley (12), Stanford (10), or Columbia (9), which were the top 5 most frequently attended law schools for district court judges.
Inexperienced PTAB Judges
What was most astonishing is just how inexperienced many patent judges of the PTAB are compared to federal district court judges. For example, many PTAB judges were appointed to the PTAB at a time when they were associates, and in some cases junior associates.
This study uncovered several shocking revelations. First, 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.
It is also worthwhile to specifically look at the 10 year mark post-law school for an experience comparison between PTAB judges and federal district court judges. There were zero federal district court judges appointed with 10 years or less experience, while 46.55% of PTAB judges were appointed with 10 years or less experience. Those familiar with the industry will well know that at many major law firms 10 years is the tipping point between partner and associate. Thus, this would mean that 46.55% of PTAB judges were appointed while they were still at best senior associates. Worse, 4.60% of PTAB judges were appointed with 3 or fewer years of experience, which means those 4.60% of PTAB judges were appointed at a time when they were only at a junior associate level.
Several other key statistics show the tremendous disparity between experience levels of patent judges of the PTAB and federal district court judges. Only 37.71% of APJs on the PTAB were appointed having 14+ years of experience. By comparison, 96.05% of federal district court judges were appointed having 14+ years of experience.
As of 2018, there are 50.57% of patent judges on the PTAB who have 17 years or less experience. There are zero judges on the federal district court in the major patent courts that have 17 years or less experience. Indeed, 91.53% of judges on the federal district court have 25+ years of experience in 2018, while only 21.26% of APJs on the PTAB have 25+ years of experience.
Conclusion
The America Invents Act (AIA) invests PTAB judges with extraordinary powers. For example, overwhelmingly institution decisions are not appealable. Yet, there have been numerous lawyers with shockingly little experience appointed to the position of patent judge, and vested with the power to make decisions that cannot be reviewed by any Article III federal court.
What follows is a breakdown of the key findings.
PTAB Judges vs. Federal District Court Judges
PTABDistrict Court11+ years of experience at Appointment53.71%100.00%14+ years of experience at Appointment37.71%96.05%15+ years of experience at Appointment35.63%90.96%20+ years of experience at Appointment15.52%70.06%22+ years of experience at Appointment13.79%62.15%23+ years of experience at Appointment12.07%55.93%25+ years of experience at Appointment8.62%40.11%30+ years of experience at Appointment5.17%19.77%35+ years of experience at Appointment3.45%3.95%14 or less years of experience at Appointment64.94%8.47%13 or less years of experience at Appointment61.49%2.82%12 or less years of experience at Appointment55.75%2.82%11 or less years of experience at Appointment51.72%0.56%10 or less years of experience at Appointment46.55%0%9 or less years of experience at Appointment36.21%0%8 or less years of experience at Appointment27.01%0%7 or less years of experience at Appointment22.41%0%6 or less years of experience at Appointment16.67%0%5 or less years of experience at Appointment12.64%0%4 or less years of experience at Appointment7.47%0%3 or less years of experience at Appointment4.60%0%2 or less years of experience at Appointment2.30%0% break9 or less years of experience in 20181.72%0%10 or less years of experience in 20184.02%0%11 or less years of experience in 20188.62%0%12 or less years of experience in 201817.82%0%13 or less years of experience in 201827.01%0%14 or less years of experience in 201835.06%0%15 or less years of experience in 201839.66%0%16 or less years of experience in 201844.25%0%17 or less years of experience in 201850.57%0%18+ years of experience in 201849.43%100.00%20+ years of experience in 201839.66%99.44%22+ years of experience in 201827.01%97.74%25+ years of experience in 201821.26%91.53%27+ years of experience in 201816.09%87.01%30+ years of experience in 20189.20%76.84%32+ years of experience in 20186.32%70.62%35+ years of experience in 20184.02%64.97%breakAverage years of experience at Appointment13.0423.38Median at Appointment1123Average years of experience in 201819.0939.95Median in 20181740
_______________
[1] Several of the Federal District Court Judges identified come from the Eastern District of Pennsylvania, or other courts. They are included because they were listed on the District of Delaware website as visiting judges.

THE AUTHOR

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. 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. Geneis 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.
Tags:Administrative Patent Judge, APJ, CDCA, central district of california, District Court, district of delaware, District of Massachusetts, district of new jersey, Eastern District of Texas, EDTX, NDCA, NDIL, Northern District of California, patent, patent office, Patent Trial and Appeal Board, patents, post grant proceedings, PTAB, southern district of new york, USPTO
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DISCUSS THIS
There are currently 63 Comments comments.
Paul Morinville March 6, 2018 11:32 am
So is the problem corruption or inexperience/incompetence?
Federal judges are lifetime appointed. They do not have a career. But PTAB lawyers do, and they could certainly feather their future nest by invalidating the right patents for the right companies.
Any data on where PTAB lawyers go after they leave the PTAB?
I wonder
Bemused March 6, 2018 11:36 am
Gene, those are very interesting statistics so thank you for pulling them together and for sharing them with us. Out of curiosity, I wonder how many current PTAB “judges” came out of the top patent litigation firms versus small or solo practitioner firms? I ask because I’ve heard several times from several sources that many of these PTAB “judges” are really just folks who couldn’t make a living as patent lawyers so they transitioned to government work.
If that is true, I sure wish that most of them had submitted their applications to the post office instead of to the USPTO. At least with the post office they would have a better chance of doing their job correctly.
Gene Quinn March 6, 2018 11:40 am
Bemused-
I also looked at the firms, but didn’t publish that part yet. Over the last several years people in DC have discussed at many events how one particular firm seems to be a feeder firm for the PTAB. So far with the 174 judges I’ve located I didn’t see the amount of people from a single firm that I was expected. I think that suggests there are many more inexperienced judges on the PTAB (i.e., the other 100 or so I couldn’t identify) who may be from that particular feeder firm. So the project will continue. I am going to be filing a FOIA soon (although I’m not convinced the PTO will give me the information I’ll want, which are the names and resumes of all PTAB judges).
Gene Quinn March 6, 2018 11:42 am
Paul-
I did not look into former PTAB judges in this particular research project, so I don’t have an answer for you on that. This does, however, raise a number of questions as is probably typical when facts start to get uncovered. Will pursue various avenues.
-Gene
Thomas Pain March 6, 2018 11:43 am
Apples and oranges. Three APJs are required for a final decision at the PTAB. The median PTAB experience of 17 years results in a decision informed by 51 years in the field.
PTAB Attorney March 6, 2018 11:51 am
Respectfully, I find that younger practitioners are usually much better suited to PTAB work than seasoned district court litigators. The motivation behind the PTAB was to create an agile proceeding without the cruft of the district courts. And, to be honest, most practitioners seem to forget their technical education after about 10-20 years in the practice of law. I’d much rather have a PTAB with young, smart lawyers as APJs who are more motivated to get to the truth of a matter than old stodgy district court litigators who have spent most of their lives in discovery battles than actual, real patent law (i.e., does the prior art render this obvious?). And, if those “experienced” district court judges could do this kind of law, then the PTAB would never have been necessary. It is a remedy for an incapable judicial system at the district court level for handling patent cases.
Gene Quinn March 6, 2018 12:17 pm
Thomas Pain-
Sorry, this is not apples and oranges. Based on your logic if panels were expanded to 17 APJs then each could have 3 years of experience and you’d get the same informed consideration as a single senior judge with over 50 years of experience. It just doesn’t work that way. Nice try.
Gene Quinn March 6, 2018 12:21 pm
PTAB Attorney-
You say: “The motivation behind the PTAB was to create an agile proceeding without the cruft of the district courts.”
From the point of view of the infringers who file challenges at the PTAB I’m sure it was their intention to have an agile proceeding that was not unnecessarily complicated. But the proceedings that have emerged are unfair to patent owners and fundamentally deprive patent owners of due process. Speed and an unnecessarily complicated process is fine if it also has procedural and substantive fairness, which the PTAB lacks by any fair evaluation.
As for inexperienced judges, I don’t know that there is any wisdom associated with having judges that are so inexperienced no major law firm in the field would allow them to be first chair in a proceeding on which they are judging. If clients and firms wouldn’t allow associated to be more than a second (or third) chair to an IPR proceeding why would anyone ever appoint that same associate as a judge charged with making nonappealable decisions?
Joachim Martillo March 6, 2018 12:28 pm
Paul@1 March 6, 2018 11:32 am,
I think you don’t fully understand how to create a crooked organization. You probably don’t have the dubious benefit of having grown up in a mafia hideaway and having been a schoolmate to some of the current generation of top mafiosi.
In the USPTO scheme of things, USPTO APJs (and examiners) consult a database in order to decide how to proceed. The setting of various flags in the database by corrupt senior USPTO officials makes a big difference in outcome either of a post-grant review proceeding or of an appeal.
The USPTO has an excellent system for criminal conspiracy. The perpetrators of the final deed often don’t understand what is happening.
Thus clueless inexperienced APJs (I call them clowns) are excellent stooges.
In the case of unlawful programs, which like SAWS pertain to examination, it is helpful to hire examiners, whose English is deficient. Deficient English makes it harder to analyze files forensically in order to look for a pattern of unlawful behavior while examiners deficient in English must obey crooked senior USPTO officials because such examiners would probably have difficulty finding jobs elsewhere.
Thomas Pain March 6, 2018 12:30 pm
And another problem with the analysis is the presumption that one cannot gain experience in patent law before graduating law school. GW, Georgetown, Geo. Mason, and American (law schools you mentioned) have night programs with students who work full time in patent law.
curoius March 6, 2018 12:32 pm
Interesting data.
One note or curiousity I have – what is the breakdown based on the older APJs and the newer APJs? Prior to the huge hiring push over the last few years, many APJs were examiners turned attorneys. So some of the older APJs may have examined for 10-20 years, some even were supervisors, then the went to law school while working, and then became an APJ. So they may have only had a couple years as an attorney, but I would say that that group is more experienced than an attorney with a handful of years but no prior examining experience.
Also, the nature of ex parte and inter partes are very different. Does/is/can your data be divided by what kind of cases the judges are staffed on?
Thanks! These are the kinds of articles I like and am interested in – underlying facts that help support many of the opinions and odd phenomena we see in this realm.
Gene Quinn March 6, 2018 12:43 pm
Thomas Pain-
You say: “one cannot gain experience in patent law before graduating law school.”
The problem seems to be with your analysis, unless what you are saying is a patent agent who cannot have any litigation experience gains the same experience as a patent attorney.
Those in the industry (who aren’t making excuses) know that the knowledge one gains after graduating and practicing as an attorney is far more broad in scope. Those who haven’t gone to law school don’t really even know how to read cases, or interpret the law in the same way as an attorney, particularly a seasoned attorney. That is just the way it is, and why firms charge more per hour for a newly minted attorney fresh out of law school than even a seasoned patent agent.
Furthermore, Administrative Patent Judges are conducting trials — administrative patent trials but they are trials. There is discovery, there are depositions, there is testimony, there are motions. This is a trial, not an appellate court where the record is fixed. To hire inexperienced attorneys who are not familiar with litigation process is just inappropriate.
Furthermore, I realize APJs are not Administrative Law Judges, but ins’t that the problem? Many of the APJs appointed couldn’t qualify to become Administrative Law Judges.
See: https://www.americanbar.org/content/dam/aba/administrative/administrative_law/2017_Holmes_Chapter.authcheckdam.pdf
“An applicant must fulfill four requirements: (1) Seven years of trial experience; (2) Recommendations of fellow lawyers and/or judges; (3) Written examination; and (4) Oral examination. The seven years of trial experience must be specifically demon strated with cases cited and days and hours worked set out in detail.”
In this research study we found that 22.41% of PTAB judges have 7 or less years of experience when they are made a judge, which would make it impossible to have at least 7 years of trial experience. Indeed, many of those being appointed as APJs have very little or no trial experience. That might have been fine when the Board was made up of Examiners-in-Chief, but the PTAB conducts administrative trials with all the trappings of a real trial. How can an associate with little or no trial experience conduct an administrative trial? And don’t tell me there are 3 APJs assigned. Those familiar with the PTAB know that one judge takes the lead and the others follow along. The USPTO gives no quota credit for dissents, so there is always (or virtually always) unanimous agreement with the other two judges just going along with the judge assigned as the lead for that particular case.
Gene Quinn March 6, 2018 12:48 pm
Curious-
You can see some of that data if you look at the PDFs of the spreadsheet for PTAB.
There were actually several judges in the 1990s that were elevated to the Board years before graduating law school. And there was at least one PTAB judge who was elevated 2 years after graduating law school. This last PTAB judge (#107 on the list) became an examiner in 1993, graduated law school in 1998, and became a PTAB judge in 2000. So at least in that case the APJ had a max of 7 years as an examiner and only 2 years after graduating law school.
I realize in the past the Board was made up of senior examiners, when they were Examiners-in-Chief. But now that the PTAB conducts administrative trials, the practice of putting someone on the PTAB with very little experience would seem to need reevaluation.
FAQ for you March 6, 2018 12:51 pm
An attempt at humor, addressing what I personally feel is a flaw in the methodology. That being said, you, Mr. Quinn, are indeed clear as to the methodology you use.
FAQ
Question 1: Mr. Quinn, excluding my pre-PTO experience, my career path has been as follows: I started as a Patent Examiner, working for four years full time. Thereafter, I was a primary Examiner for 15 years. I left the PTO for a law firm, where I worked (full-time) as a technical specialist for 3 years. Thereafter, I became a patent agent, and have been working as such for the last 14 years. I recently completed attending law school while working full-time, and expect to soon receive notification that I passed the February 2018 bar examination. 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?
Answer- You will be listed as having 0 years of experience.
John M. Rogitz March 6, 2018 12:56 pm
This is a very interesting article, but inexperience alone is not the problem. The true problem is that the judges are not applying the correct law or applying the law at all, even when put on notice. They also frequently render incomplete opinions that not only fail to address certain specific arguments but fail to address entire sections of Appeal Briefs, some of which pertain to dependent claims that might be patentable even when the PTAB holds the independent claims unpatentable. And how many times have we seen them entirely ignore the law on what is required for a legally sufficient motivation to combine and instead simply adopt the examiner’s reason without even discussing and applying the precedential cases that the Appellant has cited? There are plenty of law students who are capable of understanding and applying the law. The problem is these judges are failing to do so, maybe due to time constraints, but unacceptable nonetheless. If a private-sector lawyer approached things the way PTAB judges do, it would be malpractice. But they’re in the executive branch, and they must be satisfied that what they’re doing is “close enough for government work”.
Gene Quinn March 6, 2018 1:06 pm
FAQ for you:
You ask: ” 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?”
No. If you have 6 months as an attorney in my opinion you should not be an Administrative Patent Judge. Those with only 6 years of legal experience should not be conducting administrative trials.
If you have only 6 months as an attorney that means you have at most 6 months experience with litigation. You could not be confirmed by the Senate as a district court judge, period. And the PTAB is a district court alternative to litigation that decides invalidity issues. The standards are different, but the consequences are the same for the patent owner. I don’t see any legitimate reason to allow someone with 6 months as a lawyer to exercise the same powers as a district court judge relative to a property right.
I suspect most will agree with me, but regardless, I am entitled to my opinion. So now we wait and see if those in government and within the patent owning community believe it is appropriate to have PTAB judges who are not experienced enough to even come close to being able to be confirmed as a district court judge. It will be interesting.
Anon March 6, 2018 1:09 pm
Gene,
Your article must have hit a nerve, seeing the apologists come out as they have.
Two minor comments:
1) as for experience, perhaps a “negative count” should be given for those who have been examiners, to account for the internally myopic “just say no” Reject Reject Reject culture to which any such “experience” may subject an individual to.
2) perhaps more brute force (is there an intern available), but is not every PTAB decision made of public record, with all “judges” identified? It may even provide a benefit to see the “density” of cases per “judge.”
Keep up the excellent work, and if you go the FOIA route, please do not write in an “easy out” for the government.
Thomas Pain March 6, 2018 1:26 pm
More apples and oranges. Have you identified those APJs who lack competent legal knowledge and scientific ability? (Notwithstanding appointment by a cabinet secretary.)
Gene Quinn March 6, 2018 1:27 pm
Anon-
I did do a FOIA, and I gave them an out, although not an easy one. In order to get the documents I asked for any document that contains the name of any and/or every PTAB judge currently on the Board. In lieu of that I’d accept a complete roster of PTAB Judges along with their resumes/CVs, and specifically including the law school they attended, the year of graduation and year sworn into the PTAB. That is the information I want, so if they give me that I don’t need the documents. But as with every bit of information uncovered there will be more questions undoubtedly.
Rest assured, however, that I won’t accept an off the record conversation as satisfactory. They burned that bridge when they didn’t follow up with anything on the record.
Gene Quinn March 6, 2018 1:29 pm
Thomas Pain-
Saying my response is apples and oranges, while I’m sure it feels good, doesn’t change the facts contained in this study. They are what they are. You and others will no doubt believe that it is appropriate to have associates (even junior associates) elevated to patent judge. I suspect there will be far more people who are extremely concerned by this revelation. Time will tell. But calling it apples and oranges is simply not true.
Paul Morinville March 6, 2018 2:01 pm
FAQ for you.
I pray that you will not have an employment offer for the PTAB because by then the PTAB will no longer exist. Corruption at the level the PTAB has achieved cannot be tolerated even by the worst of corrupt officials.
Glaucon March 6, 2018 3:36 pm
Maybe not quite “apples and oranges,” but there are valid comparisons, and there are blatant omissions of facts that raise genuine questions as to the strength of those comparisons. When the omissions are this numerous, and you defiantly argue that they are justified, this becomes a propaganda piece much more than a so-called attempt at a balanced study. Throw in Morinville’s musings and support and the characterization gets worse, but I’ll leave it at that.
Here are the main criticisms I have with your methodology:
1. Experience as a patent examiner or patent agent should be credited. I’ve been both and have also been a lawyer for 10+ years (I’m not and never have been an APJ, for the record). Lawyers do not have a monopoly on understanding case law, and experience taking dozens of depositions, reviewing millions of documents, and engaging in frivolous discovery disputes with opposing counsel are only incrementally beneficial for the job of an APJ. The mechanics of prosecution get you at least 80% of the way toward understanding the necessary considerations in deciding and granting patents. Not all examiners are aimless rejection machines. Dedicated examiners and agents take the time to understand the law. Life does not begin after law school.
2. The relevant comparison of experience between APJs and district court judges should be between patent experience, not general legal practice. At the least, you should take account of the LACK of patent experience among district court judges and factor that into the methodology. I would be shocked if the district court judges were not substantially less experienced in patent matters than APJs. You’d be intellectually dishonest to omit this factor in its entirety, as you’ve done so far.
3. While we’re at it, why don’t you factor in the difference in TECHNICAL experience between district court judges and APJs? Probably same result as in point 2. General litigation experience is not nearly as important as being involved in the intricacies of technology and patent law in the context of the role of APJs.
4. So you’ve roused rabble. What’s the solution and will the market allow it? APJs make between $125-175k according to USA JOBS, and this isn’t a life appointment like district court judges. You want seasoned patent litigators to take these jobs? And also have to deal with the fluff you’re throwing in their direction?
Gene Quinn March 6, 2018 3:48 pm
Glaucon:
You say: “Experience as a patent examiner or patent agent should be credited.”
That is absolutely NOT true. You can not like it, but PTAB judges administer Administrative Trials. Patent examiners and patent agents do NOT have any experience with litigation, discovery or motions practice that is essential to any administrative trial.
You say: “APJs make between $125-175k according to USA JOBS, and this isn’t a life appointment like district court judges. You want seasoned patent litigators to take these jobs?”
That is not my problem. I didn’t create the PTAB. The judges of the PTAB were vested with district court powers. Hiring inexperienced people for a powerful position is in my opinion inappropriate.
Paul Morinville March 6, 2018 4:15 pm
Glaucon, You say “Throw in Morinville’s musings and support and the characterization gets worse, but I’ll leave it at that.”
I place my “musings and support”. I do not throw them. The PTAB however, does throw crap at me. Three Alice decisions against my patent applications in three months on highly technical middleware. Commercially valuable stuff that goes to the heart of enterprise computing, turned the market, and is in no way an abstract idea. The examiner failed to follow process or evaluate the patents properly under Alice and instead just hand waved saying “oh, there must be something in there that is abstract” and then tossed out a BS rejection. I appealed and won. Then back to the same examiner who does the same thing. I appealed and won. Then back to the same examiner who does the same thing again. Then I appeal for a third time and now (15 years since I originally filed the patent application) the PTAB says “oh there must be something in there that is abstract” and affirms the rejection.
I’m glad you have a job at the PTO – at least you get a pay check. But maybe you should venture out in the world a little bit. Perhaps try to startup a company with technology that competes with huge multinationals and see how you feel about the PTAB and examination. See if anyone else believes that the PTO is doing a good job. The best way to do that might be to check with some investors to fund your startup based on the patents produced by the PTO that will almost certainly get invalidated by the SAME PTO once they are proven to be commercially valuable.
And I “place” this comment specifically: What the PTAB is doing is nothing short of criminal. The PTAB is absolute corruption. And while I have not felt this way about the other half of the PTO, examination, until recently, it is cut from the same corrupt cloth.
Thomas Pain March 6, 2018 4:24 pm
Apples, oranges. What do you think is so difficult about “litigation, discovery or motions practice” in a PTAB “administrative trial” that it would call for years of experience in District Court litigation? The Federal Rules of Civil Procedure do not apply to PTAB trials. The “litigation” is much simpler in PTAB proceedings as compared with that in District Courts. A fact that, by the way, is a principal reason why Congress created the PTAB.
AAA JJ March 6, 2018 4:25 pm
The first Chief APJ had a hard on for candidates with judicial clerking experience. So anybody who clerked for a year or two at a USDC or circuit court of appeals got hired if they applied. Regardless of how little practice experience they had.
Glaucon March 6, 2018 4:44 pm
Paul, I appreciate your concerns about Alice. I’m going through them too with my own applications (in one case: 6 non-final rejections, 2 pre-appeal brief requests for review that withdrew all rejections, 0 RCEs…). So, no, I’m not currently a PTO employee (left over 10 years ago to prosecute and litigate in private practice). And, funny you mention it, I am currently a startup founder that competes with “huge multinationals.”
My only point in referring to your comments was that, having been at the PTO and known many good people there, I prefer to apply Hanlon’s razor than make accusations of corruption. Particularly against an agency whose integrity is so important to innovators in this country. The PTO is far from perfect (and I have the same frustrations with them as do you). But if we tear down the patent office, it will only undermine our progress.
My preference is to improve policy and practice through careful and deliberate thought upon fair and honest assessment, not over-reactions. If you talk to leaders at the PTO, they are quick to admit shortcomings and are very open to feedback on how they can improve. Misaligned incentives between PTO employees and applicants is the primary cause for perceived incompetence, but they can never by truly aligned so we must figure out a way to work around that.
Gene,
Well I suppose we’ll just disagree on those points. I’ve litigated patent cases for a number of years and personally feel that generic trial practice skills are not nearly as important as a strong foundation in patent law. At the least, patent law knowledge should not be completed disregarded, as you are doing. Motions practice at the PTAB level is JV stuff compared to district court. Nothing that can’t be sufficiently learned in a 3L trial skills class and a year in practice.
Name withheld to protect the innocentMarch 6, 2018 4:48 pm
Three APJs are required for a final decision at the PTAB. The median PTAB experience of 17 years results in a decision informed by 51 years in the field.
Oh please. You think the non-drafting APJs give more than a cursory look at the briefs? There was a memo circulated some time ago to all the APJs that basically said that if you file a dissenting opinion, you won’t get work credit for it. As such, why even bother looking at the file if your opinion doesn’t matter and you aren’t going to get any credit for even having it.
The near unanimity of PTAB decisions reflects that lack in involvement of the other APJs.
Name withheld to protect the innocentMarch 6, 2018 5:03 pm
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?
Patent experience is not the same as legal experience. The M.P.E.P. is rife with misleading statements as to the holdings of the case law discussed therein. Most examiners I have interacted with have never read most of the case law that they cited.
As an attorney, when I see an examiner cite some case law I haven’t seen before (or haven’t seen in awhile), I’ll go and find and read the case. I’ll look at the fact pattern and try to understand whether it applies to the facts of my application. The vast majority of times it doesn’t because the one sentence snippet about the case presented in the MPEP overgeneralizes the salient points made by the Court. An examiner or a patent agent just isn’t trained to read case law and understand the difference between a holding and dicta. Sure, they’ll pick up some of it through osmosis, but their understanding of the law has been so twisted, from the very beginning, by the MPEP and (bad) advice from their (non-legal) peers that it’ll be very difficult for them to put away their preconceived notions of what constitutes a good rejection.
As for you, you’ve now made it through law school. This means your legal education has JUST BEGUN.
Gene Quinn March 6, 2018 5:04 pm
Name withheld-
Do you happen to have a copy of that memo? I’ve heard from reliable sources that dissenting opinions cannot count toward the quota of PTAB judges, but I don’t believe I’ve ever seen a memo to that effect. I would really like to get my hands on that memo. Feel free to contact me privately and directly.
Paul Morinville March 6, 2018 5:08 pm
Glaucon, You say: “Particularly against an agency whose integrity is so important to innovators in this country.”
That is incredibly important in any government. Taken to the extreme, if the people do not trust government institutions, the government cannot stand without exerting force against the people.
The PTO is NOT trusted by a large number of inventors and others in the industry. I continue to hold out hope that Iancu will address this within the scope of his power. But his scope is limited.
Congress must take action to eliminate the PTAB, eliminate Alice, restore injunctive relief, bring sense to venue, and fix other issues. There is no patent system today. Filing a patent is a stupid thing to do. It brings no value, takes your ability to trade secret the invention and gives it to huge multinational corporations for free. And it leaves you with a liability because anyone can challenge your patent to PTAB death squads costing you hundreds of thousands of dollars. If I planned to crash the patent system, I could not have devised a better way to do it.
I completely agree with Gene’s point in this article. PTAB lawyers have awesome and unparalleled power to invalidate property rights without due process and without a jury. That means they need to be every bit as experienced or more as an Article III judge. They are not.
Anon March 6, 2018 5:15 pm
Nwtpti @ 29,
I agree with you – in spades.
Within the last month I dealt with a “form paragraph” from the MPEP that was exactly opposite of the proper take away, given a near perfect alignment of facts in not one but two cases and how that MPEP paragraph attempts to spin those cases.
I guarantee you that the examiner knew nothing more than “here is a form paragraph if you make this rejection.”
As I mentioned to Gene at 17, experience as an examiner may very well (or should very well) count as a Negative years to be removed from an overall proficiency metric based on years (both for the lack of actual learning during that time, and for the subsequent required time to unlearn the bad habits and misplaced “beliefs.” I would daresay that time as a SPE may need to even employ a multiplier on the negative treatment (of course, these are general comments, and individuals may well vary).
curoius March 6, 2018 5:49 pm
Anon @32 – On one hand, i agree that examining can actually be a negative for some applicants for an APJ job. BUT, I don’t think that the kinds of examiners you are thinking of are the ones applying for the APJ job. I may be wrong, but the examiners that just throw out crap and reject whatever with no reason – they have no need or motivation to change jobs. They have it made. I feel like the type of examiner that is going for an APJ job is one that is more thorough, and would find the APJ job more challenging and professionally fulfilling.
And to your point about the MPEP, I agree that few examiners know more than the snippets of cases in the MPEP. But I’ve seen the same from attorneys. I had a case cited against me in a response that I’d never seen. So I looked up the case, and the attorney was grossly mischaracterizing the case. Fortunately for the attorney, they made a separate, convincing argument on other grounds. So I allowed the case. But the mischaracterization still bothered me. But, whatever, I have to move on and keep getting counts. Only so much time in a day for me to do my best, then I check out and enjoy life.
Anon March 6, 2018 7:57 pm
curious,
You raise some good points. Thank you.
Pro Se March 6, 2018 9:38 pm
Reading these comments:
I feel so sorry for the kid in a garage, that discovered a new novel invention, still believing that the U.S. patent system can technically protect his/her discovery… all to borrow, work and save $30k to draft and submit a patent application…
To have it downright mangled by senseless legalese.
The USPTO should only be employing senior inventors with 10 year minimum issued patent(s) in the field of art.
How do anyone know invention that never invented anything?
A good Bayesian March 7, 2018 2:26 am
Another apples and oranges comment: due to truncation bias you should only compare APJs to DC judges who were appointed in the last 5 years. PTAB has only been around for 5 years and doors not have the statistical benefit of judges who are lifers.
Name withheld to protect the innocentMarch 7, 2018 8:54 am
Sorry Gene — the only thing I have is this article, which I know that you are already aware of.https://patentlyo.com/jobs/2009/05/bpai-shuts-down-dissent-in-favor-of-efficiency.html
Regardless, if someone has the data, I’m sure someone could put together a comparison of the % of dissents in the 3-judge panel of the Federal Circuit with the % of dissents in the 3-APJ panel at the PTAB. If I was to have access to the data, I would also break it out by IPRs and ex parte appeals.
Joachim Martillo March 7, 2018 9:01 am
Hanlon’s Razor asks: “Has the PTAB made the USPTO the Village Idiot of Administrative Agencies?”
After applying Hanlon’s Razor, we are forced to invoke Occam’s Razor. There is a corrupt group of senior USPTO officials orchestrating a good number of APJ stooges or clowns.
If the USPTO dealt with valuable financial instruments instead of potentially valuable intellectual property, the FBI and the SEC would long ago have been crawling all over the USPTO records.
I have done work in forensic accounting. Forensic accountants have rule that is much better than Hanlon’s Razor. I will christen it Enron’s Razor.
“If there is a way to make a dishonest buck, someone will try it.”
“Not only is dishonest work easier than honest work, but it pays off unless one gets caught.”
I have been collecting evidence since 2007. 1994 seems the start of the corruption, and the reason should be obvious to everyone.
Returning to pre-GATT law (FI, 17 year term from date of issuance, and secret applications) will solve a lot of the problem. The rest of the world should follow the US example.
Just add a rule that the date of invention is the effective filing date unless the Inventor has diligently maintained a blockchain ledger for reduction to practice.
The USPTO could offer a blockchain invention ledger service.
Anon March 7, 2018 9:49 am
“1994 seems the start of the corruption, and the reason should be obvious to everyone.”
Should? Sorry Mr. Martillo, but you are going to have to help me out on that one.
Further, the return to pro-GATT from date of issuance is a non-starter. Tying the term to the application date (with strict adherence to timing guarantees) is an easy solution to then problem of submarining.
Your reference again to blockchain is interesting. How would you propose a blockchain for family items, some of which would be published, and some not?
Nwtpti @ 36,
Thanks for the link – the lack of sunshine does extend back well past several of the Secretaries chosen to run the Office (indicating that behind-the-scenes power players have their fingers on the pulse of what happens – and what does not happen – in the
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