Many considerations involved in selections for cases

Newly confirmed USPTO Director Kathi Vidal will have many responsibilities. One is the authority to designate panels of at least three administrative patent judges in cases filed with the Patent Trial and Appeal Board (PTAB).

More than 6,000 cases are filed with the PTAB each year, each one decided by a panel of these judges. How these judges are selected for panels is kind of a multi-tiered process.

The director has delegated that authority to designate panels to the chief judge, who has further delegated it to an administrative employee. This employee follows a standard operating procedure—which is available for review by the public—and considers numerous factors in selecting the judges for panels. These factors include conflicts of interest, technology, experience, related cases, and workload.

Among the considerations in empaneling judges:

  • Conflict of interest. A judge must not be paneled on any case in which the judge has a conflict of interest. Each judge provides a list of conflicts, which are compared, before a judge is assigned to a case.
  • Technology. A judge is assigned to cases matching their technology expertise—biotechnology/pharma, business methods, chemical, electrical, mechanical, or design. Each judge indicates a primary technology preference and, where appropriate, additional technology preferences.
  • Experience. Judges new to a particular type of case are assigned with more experienced judges. Generally, a given panel has at most one new judge assigned. By pairing new judges with experienced judges, the new judges learn how to handle the nuances of each type of case from experienced judges. Because judge attrition is quite low, the vast majority of judges have worked at the PTAB for at least three years and are experienced in all cases types at this point.
  • Related cases. Judges are typically assigned to related cases to facilitate efficiency and consistency in results. For example, related cases cover ex parte appeals involving that same patent as subject to a prior appeal, reexaminations involving the same patent or the same patent owner and similar subject matter, and related families of America Invents Act trial proceedings involving the same patent or the same patent owner. (An ex parte appeal is one typically made after receiving a final rejection from an examiner.)
  • Workload. Judges are assigned to cases to distribute their workloads and avoid having significant decisional writing assignment overlap. That way, judges can focus on one or two decisions at a time.

Even with the care and consideration given to assigning panels, sometimes a panel may need to be changed due to: recusal of a judge upon becoming aware of a conflict and unavailability because of, for example, approved leave, death, illness, reassignment, retirement, or departure from the agency. Additionally, a judge may be reassigned to meet PTAB deadlines.

For more information on judge paneling:

uspto.gov/patents/ptab/procedures/revisions-standard-operating