The Patent Trial and Appeal Board’s Need for Transparency

Feb 10

A recent report from the U.S. Government Accountability Office (GAO) found that oversight of the Patent Trial and Appeal Board (PTAB) may be affecting the independence of the judges and their decisions. The GAO is an independent, non-partisan agency that works to gather and provide information to Congress so that it can make better decisions. The GAO is often tasked with investigating federal spending and performance. The PTAB is a body in the Patent Office that conducts post-grant reviews of patents and hears appeals of patent applications among other proceedings.

“If PTAB judges do not feel they can make independent decisions on the cases and appeals brought before them, then who is making the decisions and why would a patent holder or applicant decide to use the PTAB system?”

In 2022 the GAO investigated the United States Patent and Trademark Office (USPTO) and more specifically the PTAB. The GAO performed a survey of PTAB judges asking various questions about the effectiveness and consequences of oversight practiced by office directors and board management. In the results of the survey, released on December 22, 2022, the GAO noted that a majority of the responding judges (75 percent) stated that oversight at the USPTO and PTAB management has affected their independence in decision-making. Beyond the 75 percent who feel their independence has been affected, 67 percent of the responses indicated they felt pressure to change or modify at least parts of their decisions based on management review.

These results are quite a potential red flag. If PTAB judges do not feel they can make independent decisions on the cases and appeals brought before them, then who is making the decisions and why would a patent holder or applicant decide to use the PTAB system? 67 percent, while a majority, is not all judges, and other surveyed judges stated that management got involved in a limited number of cases and, when they did get involved, there were focused comments on issues such as eligibility. Whichever side a judge came down on, the survey found judges were not always clear about who in management was reviewing draft decisions. The judges also noted it was often not clear to the parties involved in the case that the decision had undergone special management review and, if it had, what aspects of the decision were affected by the review. While the USPTO may feel this provides a more unified front, it can affect the decisions the parties to the case make upon receiving a decision, such as whether to appeal the decision.

The information gathered from the GAO survey paints a picture of a process that is often shrouded and inconsistent. The very judges making the decisions feel their independence is affected and that their decisions are being altered based on the oversight and review of the USPTO. Why do a majority of judges feel their decisions are being altered, while a few see little oversight? Is this oversight based on the judges or the subject matter of the patent or application at hand? Does the Director of the USPTO have a hand in making any of these decisions? The PTAB has rather quickly worn out its welcome within the patent community, with some even alleging the body quashes innovation from small startups. Evidence of a lack of independence among the judges could further lead to calls to get rid of the body altogether. With more transparency, the PTAB could use the oversight processes to reassure applicants and patentees of consistent and quality reviews.