PTAB: Past, Present, and Future

• Author: Michael R. Fleming
• Position: Michael R. Fleming is of counsel to Irell & Manella LLP. Mr. Fleming is the former Chief Administrative Patent Judge of the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO). Mr. Fleming advises and represents clients on all areas of post-grant proceedings, appeals, and USPTO practices. His primary...
• Pages: 22-25

20 LANDSLIDE n January/February 2017

Recently, the United States Patent and Trademark

Ofce’s (USPTO’s) administrative patent tri-

bunal, now named the Patent Trial and Appeal

Board (PTAB), celebrated its 155th anniversary. Over

the years, the PTAB has changed from six examiner-in-

chiefs in the 1800s to more than 230 administrative patent

judges (APJs). Because of this large inux of new APJs,

the PTAB has changed operationally. Instead of being

located in one geographic location, APJs today are work-

ing remotely in various locations in the United States.

Instead of hard copies, PTAB papers and documents are

electronic. Moreover, the role of the PTAB has expanded

greatly from just handling ex parte appeals from

examiner’s nal patentability decisions to full admin-

istrative trials determining patent validity, thereby

playing a prominent role in patent litigation. Due

to these changes, the PTAB is faced with a

myriad of challenges.

The Expansion of the Board

In the late 1940s and early 1950s, the

USPTO was inundated with a post-war

surge of patent applications. As a result, the

number of cases pending at the Board of

Patent Appeals and Interferences (BPAI)1 had

risen to an unacceptable level. As part of continuing

efforts to reduce the backlog at the BPAI, six temporary

examiners-in-chief were appointed to serve on the BPAI in

1950.2

In 1952, Congress enacted the Patent Act of 1952,

authorizing the BPAI to have up to nine examin-

ers-in-chief and the president of the United States

to appoint the examiners-in-chief.3 The 1952

act codied the past practice of having temporary

examiners-in-chief by allowing the commissioner to

temporarily designate primary patent examiners to act

as examiners-in-chief.4 The 1952 act was amended in

September 1958 to allow up to 15 examiners-in-chief.5

Several changes in the law led the way for the expan-

sion of the BPAI. In January 1975, Congress amended

35 U.S.C. §3 to authorize the secretary of commerce to

appoint examiners-in-chief instead of the president of the

United States.6 In August 1982, Congress amended the

rst sentence of 35 U.S.C. §3(a) by deleting the phrase

Past, Present,

and Future

Michael R. Fleming

TWO VIEWS OF PTAB

Continued on page 22

Viewpoint

Published in Landslide® magazine, Volume 9, Number 3 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2016 by the American Bar Association. Reproduced with permission. All rights reserved. This

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