PTAB Chief Judge Smith Shares Santa’s Secrets with Boston Patent Attorneys

By Tom Engellenner
James Donald Smith, the Chief Administrative Patent Judge of the Patent Trial and Appeal Board (PTAB) was the keynote speaker at the Boston Patent Law Association (BPLA) Annual Meeting on December 11, 2013 and gave a comprehensive, albeit somewhat tongue-in-check, report on the state of the PTAB.

Judge Smith remarked that early in his career as an IP attorney he worked for Nokia and that his employment often took him to Nokia’s headquarters in Finland.  He claimed to have met Mr. and Mrs. Claus and to have spent many hours with the Clauses at their summer home and reindeer reserve in Lapland.

Santa apparently gave Judge Smith advice that he has followed in overseeing the PTAB, the new appellate body established by the America Invents Act to hear challenges to issued patents as well as patent application appeals.

Judge Smith said one of Santa’s secrets is to” hire only the best elves” – which he claimed to have taken to heart in hiring of the new administrative patent judges of the PTAB.  “Hire enough elves to get the job done right” was another lesson from Santa used by Judge Smith to explain the hiring and training of nearly 200 judges.

Diversity of elves is also an important factor, according to Santa.  Hence, the PTO has decided to go to where the elves are – establishing regional USPTO offices in Silicon Valley, Denver, Dallas and Detroit.  Judge Smith told the audience that the PTO has hired administrative patent judges for each of these regional offices and that the resident judges are already on the job.  With a major commitment to videoconferencing, the PTAB can also hear cases with one or more of the panel members in another city.

Drawing an analogy to vintage toys still being an important part of the output of Santa’s workshop every year, Judge Smith noted that the PTAB intends to continue to devote all the necessary resources to hearing ex parte appeals – the original mission of the PTAB’s predecessor.  Smith provided data showing a significant decline in pendency of appeals from 24 months to 18 months on average.

The only criticism from the audience came when the Chief Judge explained that “per curium” opinions were being used more often to dismiss appeals.  When an appeal is decided per curium, no formal opinion is written and decision often just references and adopts the reasoning of one party’s brief (most often the Examiner’s Answer).  A member of the audience remarked that per curium decisions make it harder for the losing party to appeal to the CAFC because the scant record may not directly address the losing party’s arguments.

All-in-all, the PTAB appears to be in good hands with Judge Smith holding the reins of the sled this holiday season.

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