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James Smith, the PTAB’s “managing partner”, pitches for work


Chief Administrative Patent Judge James D Smith told the AIPLA Annual Meeting that his job is akin to being managing partner of a first-rate, prominent, multi-city patent law firm awash with work

Keynote speaker Smith described the lunch as similar to a law firm retreat, in which he had the opportunity to convince clients why they should keep sending work to his firm and his judges/partners. And in a speech-long analogy, he did just that.


Why did he describe the “PTAB firm” as first-rate, he asked? Because one measure of first-rate firms is their clients. “I believe many of you here are among them,” Smith said. “And I refuse to think of any of you as less than first rate.”

The Chief Judge then went on to explain why patent attorneys in the room should not be tempted to take their work elsewhere.

“We’ll assign three qualified “partners” to each of your cases. Which of your firms can say that?” he asked, to laughter from the audience.

He said that his “firm” was expanding to keep up with its growing workload, bringing in new “partners” to help PTAB bring 10,200 matters to completion in FY2012. He reassured his “clients” that the new hires were more than up to the job, explaining that over 1100 people had applied for the new “partnership” positions and that a typical new hire has a Ph.D. and/or a J.D. qualification, has clerked for a judge and has more than 10 years’ legal practice.

Smith then explained his “firm’s” expansion plans, revealing that its new Dallas-Fort Worth, Denver and Silicon Valley offices are set to have at least 12 partners in place by FY2013.

Finally he raised the issue of fees. “I was hoping you were going to ask me that,” he joked, adding that in the past, the fees for ex parte proceedings were less than it cost the Office to run them. “We hope to reduce our losses. It’s all about correct decisions being delivered quickly. Ultimately we’re looking to keep and expand the work we perform for you.”

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