On January 8th, the Dallas Regional Office of the USPTO held the first of a planned series of monthly information sessions. The subject of the presentation was the Patent Trial and Appeal Board.
Formed in 2012 as the successor to the Board of Patent Appeals and Interferences, the PTAB is formed of two groups of administrative patent judges: those that hear appeals by patent applicants from final rejections in ex parte patent application examination proceedings, and those that hear the administrative trials on the validity of issued patents that began in 2013. The ex parte proceedings involve reviews initiated by patent applicants of a decision by a patent examiner regarding the patentability of inventions claimed in a pending patent application. The administrative trials are adversarial proceedings initiated by one or more parties to contest the validity of a granted patent, usually as a result of efforts by the patent owner to enforce the patent. PTAB decisions in both types of matters may be appealed to the Court of Appeals for the Federal Circuit.
Thirteen administrative patent judges are currently based in the Dallas Regional Office, with the numbers approximately evenly split between those reviewing ex parte applications and those presiding over administrative trials. The technology expertise of the APJs currently based in the Dallas Regional Office is predominantly in the telecommunications and computer systems areas, but includes judges with expertise in semiconductors, software, chemistry and biotechnology. The Dallas Regional Office continues to seek to fill its initially-authorized complement of up to 20 APJs.
The Dallas Regional Office includes a PTAB hearing room for oral arguments in matters pending before locally-based APJs, with videoconferencing capability so that one member of the three judge panel may participate from a remote location. The videoconferencing could also allow attorneys to appear in the Dallas office when attending oral arguments in other USPTO offices. Future plans by the USPTO include the ability to request, when requesting oral argument in a proceeding, a specific office at which either the oral argument will be held or at which the requesting party will appear.
The PTAB presentation featured four break-out sessions lead by local APJs to discuss (1) AIA trials; (2) ex parte appeals; (3) successful briefing; and (4) oral advocacy skills. Attendees had the opportunity to participate in two of the four break-out sessions. The briefing and oral advocacy skills sessions focus on several key take-away points. With respect to briefing, the APJs emphasized the importance of identification and concise discussion of the key issues relating to the claims under review and the asserted prior art. With respect to oral advocacy, the APJs provided insights on the best use of hearing time and identified failure to answer questions asked by the APJs as the most common mistake by practitioners.
To complete the PTAB presentation, closing remarks were made by the new Dallas Regional Office Director, Hope Shimabuku, on her very first day in that position. Preparations were apparent within the Dallas Regional Office facilities for training, to begin the following Monday, of the first 25 patent examiners out of an initially-authorized 100.
The presentation on the PTAB will be followed next month by a presentation on trademarks, moderated by the current Commissioner for Trademarks, Mary Boney Denison. A planned future presentation will address use of the public search room at the Dallas Regional Office, where members of the public can use the same electronic patent search tools internally available at the USPTO to patent examiners: the Examiner Automated Search Tool (EAST), the Web-Based Examiner Search Tool (WEST), the online catalog of the Scientific and Technical Information Center (STIC), and Foreign Patent Information Access (FPIAS). Future presentations by the Dallas Regional Office are planned for Austin, Houston and Oklahoma.