Judge Chen stresses importance of AIA

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Judge Chen stresses importance of AIA

In a well-received keynote at the AIPLA Annual Meeting, Judge Raymond Chen of the US Court of Appeals for the Federal Circuit shared his insights into the rapid pace of change within the US patent system

judge-chen-aipla.jpg

Chen pointed to changes at the USPTO, where he served as deputy general counsel until he assumed office at the court last August, as being particularly important. He noted that the new Patent Trial and Appeal Board (PTAB) brought about by the Leahy-Smith America Invents Act (AIA), has already received 2,000 petitions since 2012. Of the completed petitions, about 900 reviews have been granted – roughly a 75%- 80% grant rate.

Given that it will be rendering decisions on hundreds of patents a year, Chen stressed the significance of the PTAB and advised rights owners to pay close attention to its decisions.

“It’s quite a commentary it seems to me that in such a short period of time the PTAB has found that at least some claims in almost 1,000 patents are unpatentable,” he noted. “Those grants are of course non-final decisions, but the decision to grant the petition is not simply a small hurdle. It is a significant event that should get the attention of any patent lawyer.”

In addition to being a major change for the parties involved in the AIA proceedings themselves, Chen hopes that the PTAB proceedings will also be a tool to help improve USPTO practice overall. Instead of just being a “backward looking” tool for parties to challenge what may be an improperly granted patent, it is also a forward looking tool that will provide valuable data about how to improve patent quality.

“For example, when the Patent Board finds claims unpatentable in an AIA petition, how often is it that the rejections are based on United States patents that were not considered in the first instance?” Chen asked. “How often are the objections based on foreign patents? There could be opportunities to learn how to improve the examiners’ prior art searches or to improve their access to relevant prior art.”

He added: “In the next few years, the Patent Board will have created a rich source of in-house generated material that the agency can potentially use to further improve the quality of the patent system.”

In addition to his thoughts on the changes at the USPTO, Chen also shared his perspective of the patent system from behind the bench. Because he assumed his seat just a little over a year ago, many of his comments related to his transition to his new position.

For example, one issue he noted was the heavy workload that judges have to bear. Not only are they required to juggle tens of cases at once, they must also render clear and well-reasoned decisions in them. Having his attention spread out over such a large number of matters is one of the biggest adjustments that he has had to make.

“Back when I was an advocate, I was very used to knowing my individual cases inside and out; I prided myself on knowing that whenever I walked into the courtroom, nobody in that room knew that case better than I did,” Chen explained. “That goal is much harder to achieve when I have 15 or 16 oral arguments to prepare for in a single hearing week. In fact, it’s just not realistic.”

Chen also says that he has developed a better appreciation of the challenges that judges face. For example, he notes that when he was a USPTO lawyer, he wanted judicial opinions that provided bright line categorical rules that can be applied to a wide range of cases. However, since becoming a judge, he realized that courts should decide cases narrowly. While subtle and narrow decisions may be frustrating to lawyers looking for certainty for clients, courts, he noted, shouldn’t be pre-judging issues based on facts that aren’t before it.

In light of this challenging transition from advocate to judge, Chen expressed gratitude and appreciation to various people who have helped him. In addition to praising the work of fellow judges, former colleagues at the USPTO and his mentors, he also made a point of thanking his clerks.

“[My clerks] are smart; they are talented, work hard and are super motivated. They are always willing to talk to me, they help me think through issues,” he said. “They are always upbeat when I ask them to do something, and they laugh at my jokes.”

“I kind of wish my kids were a little bit more like that.”

more from across site and SHARED ros bottom lb

More from across our site

A settlement between Philips and Transsion and a loss for AstraZeneca in the UK were also among the top talking points
Working with Harvey and Microsoft, the firm has been at the forefront of developing AI tools for its lawyers, and is now exploring new projects and business models
The Emotional Perception AI case, which centres on the patentability of an artificial neural network, will be heard next week
Developments included a court order related to InterDigital’s anti-anti-suit injunction against Disney, and clarification on recoverable costs
Partners at Foley Hoag examine how recent CJEU jurisprudence may serve as a catalyst for recalibrating US judicial reluctance to entertain foreign patent claims
International law firms have high hopes for their IP practices in Saudi Arabia, with many opening offices, but recruiting and retaining talent in the Kingdom presents unique challenges
Patrick Ogola joins us for our ‘Five minutes with’ series to discuss helping African entrepreneurs on the global stage, and explains why young lawyers should speak up
Heli Pihlajamaa, the EPO’s principal director for patent law and procedures, joins us to take stock of the unitary patent following its second anniversary
Kelly Thompson, chair of South African firm Adams & Adams, discusses self-belief, self-doubt, and the importance of saying yes
The renowned food brands were represented by a host of lawyers, including members of the firms’ IP teams
Gift this article