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A Surprising Insight About the USPTO’s “Patent Death Squad”

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Under the America Invents Act, the United States Patent and Trademark Office (USPTO) was given broad new powers to “correct” past mistakes in issuing patents through the power given to the PTAB, the Patent Trials and Appeals Board. The PTAB is an administrative law that decides issues of patentability, formed on September 16, 2012 under the America Invents Act. Their impact on patents, innovation, and the US economy has far exceeded anything contemplated when Congress debated this provision. They have become the “go to” route almost anytime significant patent litigation is underway, and the results have been devastating to patent holders. Large numbers of seemingly valuable patents have been invalidated and patent holders have faced huge costs and losses as opponents can launch repetitive assaults that need to be defended at great cost. For many of us in the innovation and IP communities, the term “patent death squad” sadly seems appropriate.

The PTAB consists of numerous “judges” who conduct trials on the patentability of patents that have already gone through years of examination at the USPTO. It’s a painful burden that often results in the USPTO saying, “Sorry — we messed up completely when we granted your patent that you struggled so many years to prosecute. Should never have been issued in the first place.”

But who are these “judges” that are causing such havoc? Gene Quinn of has done some great investigative journalism and revealed that these judges are a far cry from what one would expect in terms of their legal experience. Many have just a few years of experience, which helps explain some of the surprising decisions they have rendered.

See “PTAB Judges Shockingly Inexperienced Compared to District Court Judges” by Gene Quinn at IP Watchdog, March 6, 2018. A short excerpt follows, but see the original article for key data and some incisive comments afterwards.

Inexperienced PTAB Judges

What was most astonishing is just how inexperienced many patent judges of the PTAB are compared to federal district court judges. For example, many PTAB judges were appointed to the PTAB at a time when they were associates, and in some cases junior associates.

This study uncovered several shocking revelations. First, 12.64% of PTAB judges were appointed with less than 5 years of experience prior to their appointment as APJs (i.e., 5 years or less removed from graduating from law school), while some PTAB judges were appointed with as little as 2 years of experience. Indeed, 7.47% of APJs had 4 or less years of experience when they were appointed to the PTAB. More than one-third (36.21%) of PTAB judges were appointed with 9 years or less of experience….

The America Invents Act (AIA) invests PTAB judges with extraordinary powers. For example, overwhelmingly institution decisions are not appealable. Yet, there have been numerous lawyers with shockingly little experience appointed to the position of patent judge, and vested with the power to make decisions that cannot be reviewed by any Article III federal court.

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The Most Painful Innovation Fatigue Factor: Innovator Deficiencies

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Fatigue Factor #2: Innovator Deficiencies

Fatigue Factor #2: Innovator Deficiencies

Among the many barriers that we inventors, entrepreneurs and would-be innovators face is the one we can’t blame on others. Fatigue Factor #2 in our grid of fatigue factors is innovator deficiencies. It refers to the barriers we create for ourselves through excessive pride, unreasonably high valuation of the invention, arrogance, unwillingness to share or collaborate, stubbornness, unwillingness to delegate or gain the help of experts, and a host of other personal weaknesses. So many good ideas are killed by these personal flaws. They are painful to admit and recognize, but an awareness of our own weaknesses is not only the beginning of wisdom, it’s the beginning of innovation success.

The icon for this fatigue factor was designed by Mark Benyo, an artist in Appleton, Wisconsin (owner of Benyo Designs). It depicts a long chain (wrapping back and forth across the window of the icon) in which one of the links is replaced with a paperclip. The individual innovator/inventor in this case is the weak link in the cain of innovation. Unless that link is strengthened (perhaps with the help of strong allies or experienced guides), failure is likely. We offer more detail in the book, of course, and outline some steps that can be taken. Prospective innovators, take note. Look to yourself first to understand why your innovation goals are not being reached, and then find the right help to take you to the next level.

One of the most common innovator deficiencies involves excessive pride, which translates into unreasonable expectations regarding the value of an early-stage invention or concept. Valuation of inventions is always difficult. However, if you think your embryonic invention is worth many millions or even billions, chances are you’re way out of line at this point. An idea alone usually has very little marketable value. An idea converted into working prototypes and a valid patent has more value, but the real value comes only by addressing the many risks that potential licensees or acquirers face. Can it be produced economically? Is it safe? Does it meet unmet needs? Can it be marketed successfully? Will it sell in the marketplace? Can it withstand the competitive response? These risk factors take time and money to address. The idea may ultimately be worth billions, but no one is going to hand you a truck load of money for something that is just a twinkle in your eye and maybe a piece of government paper on your wall. Not yet. It will take time, diligence, and investment for the potential to be discovered. Until then, have reasonable expectations as you collaborate to bring your concept to the market place, so that ultimately you can enjoy a cut of the potential returns your innovation can bring.

Icon for Fatigue Factor #2

Icon for Fatigue Factor #2

Erratum in the book: An unfortunate but minor error in the printed book is that the icon for innovator deficiencies (shown at the left) is not at the beginning of the chapter on Fatigue Factor #2, as it should be. Instead the icon shown there is the one for Factor #5, “Flaws in Judgment and Decision Making.” Sorry about that! The icons in the fatigue factor grids are correctly displayed.

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