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Judge James Smith, USPTO: Best time ever to be a chief judge

James Donald Smith, chief administrative law judge of the USPTO’s Board of Patent Appeals and Interferences, says his biggest challenges are tackling the Board’s backlog and preparing for America Invents Act implementation

Clerking to Judge Paul Michel was Smith’s biggest thrill as a lawyer

Since joining the USPTO's Board of Patent Appeals and Interferences (BPAI) as chief judge in May last year, James Smith has been enjoying what he terms a "confluence" of his many roles over the last 27 years. Having majored in electrical engineering as an undergraduate at the University of Maryland at College Park, he went on to work as a USPTO examiner, private practice attorney, clerk to Judge Paul Michel at the Federal Circuit and most recently, chief IP counsel at Baxter International – all roles that should serve him well as he leads the BPAI into its new life as the Patent Trial and Appeal Board (PTAB) beginning September 16.

So far, only his experience clerking for Michel has compared to his role on the BPAI, says Smith. "That was such a thrill as a young lawyer, but this is a high number two spot. It's the best time ever to be chief judge of this Board." That is because Smith gets to hire "102 of the best patent judges in the world – no chief judge has had that opportunity".

"I get to hire 102 of the best patent judges in the world"

As of early August the BPAI will have expanded from 98 to about 165 judges (including 11 in the new Detroit office), and Smith says they'll have 200 judges by October. "We're on track with hiring, though we're not counting our chickens before they hatch," says the chief judge. "It's a lot of work to be done, but so far it's working and we're very pleased with the caliber of judges."

In addition to experienced USPTO examiners, the new ALJs include former Department of Justice litigators, International Trade Commission investigative attorneys, three or four former managing partners of large law practices and one former US attorney, as well as a number who have held lead in-house positions in companies. About half of them have clerked for a federal appellate or district court.

That experience combined with the increased size of the Board is expected to help Smith deliver on some tough timelines and backlog management. Right now, it still takes 85.3 months to get a decision on an appeal at the BPAI and there is a backlog of 25,000 ex parte appeals. Come September, the new PTAB will be bigger, but it will also be handling inter partes review, transitional business method programme and supplemental examination applications – all of which have much tighter statutory timelines than the Board is used to.

"The two biggest challenges I have are the ex parte appeal backlog and getting ready for the AIA," says Smith. But, he adds: "The solution to both of these is expanding the size of the Board." Besides hiring, Smith has also implemented rules to streamline ex parte appeals and he is looking at ways to write decisions more efficiently. "The backlog hasn't been growing nearly as much as it was," he notes.

Whether or not Smith can help stem the tide on the backlog, he will have to be prepared for even more work very soon. While post-grant review petitions will not start to arrive until next year after the first-to-file provision of the AIA has been implemented, inter partes review, supplemental examination and the transitional programme for covered business methods will all be open for business as of September 16 this year.

"Since we don't know for sure the full extent to which post-grant and inter partes review will be used, we need to be sure we're equipped to handle what comes in the door," says Smith. Despite concerns over strict estoppel provisions attached to both of them, "these new proceedings will provide an expert and efficient way to get to a determination" says Smith, and he expects patent owners to use them.

But Smith is not deterred by the certainty of an increased workload, and says he is looking forward to three things in the years to come after the AIA: "First, I think we will see the backlog of ex parte appeal cases no longer growing and perhaps diminishing; second, that this Board will have 200 judges is very exciting; and third, the onset of the new Board proceeding and the chance to do them well is great. I'm excited beyond belief to have the privilege of being here when these changes will happen."

Further reading:

US patent reform series: How to prepare for inter partes review, June 2012
How the USPTO's Detroit patent office will work, June 2012
Why US politicians might revisit the AIA's estoppel rule, March 2012
BPAI gets nine new judges, March 2012
USPTO execs address America Invents Act concerns, February 2012
In-house patent counsel to head BPAI, May 2011

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