Report Indicates PTAB Judges Will Soon Be Required to Return to In-Person Work

According to Bloomberg Law, the administrative patent judges (APJs) of the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB) will be asked to return to the office as soon as February 24—a move which former USPTO Director Kathi Vidal said would make the PTAB inefficient and unable to keep up with its current timelines for decisions.

The information was reportedly relayed by Chief APJ Scott Boalick on a USPTO call with the APJs yesterday. The USPTO did not confirm the report and said it had no comment in response to a request by IPWatchdog on Wednesday.

Donald Trump mandated via a January 20 Executive Order that federal government employees come back to the Office five days per week, something that would be virtually impossible for the USPTO overall, which has remote workers all over the country. The Office began its telework program in 1997 and, as of 2023, nearly 13,000 of the USPTO’s approximately 14,000 employees worked remotely.

The Office of Personnel Management (OPM) subsequently issued implementation guidance that urged near immediate changes to telework policies and said that “[f]airness requires that federal office employees show up to the worksite each day like most other American workers.” However, the Commerce Department said in a January 24 memo that the return to work policy does not apply to the USPTO. And the head of the Patent Office Professional Association (POPA), Kathy Duda, also said in an email that was posted to LinkedIn  that the collective bargaining agreement (CBA) POPA has with USPTO management exempts POPA members.

PTAB judges and certain other USPTO staff are not covered by the POPA CBA. “Examiners seem safe,” said IPWatchdog Founder and CEO Gene Quinn during IPWatchdog’s recent PTAB Masters Program, “but that leaves the PTAB judges and [Supervisory Patent Examiners] SPEs a little bit in limbo. The memo says it doesn’t apply to the patent office but there does seem to be this push [for staff to return to the office].”

The Commerce memo also seemed skeptical of CBAs that exempt employees from the Order, stating: “In collaboration with Department leadership, bureaus with employees covered by collective bargaining agreements addressing telework and remote work should continue to explore methods for maximizing in-person work.”

At PTAB Masters, Quinn questioned whether PTAB judges would just quit if they had to return to the Office and asked the panel how that would affect the disposition of inter partes reviews (IPRs). Retired U.S. Court of Appeals for the Federal Circuit Chief Judge Paul Michel said in response that if judges quit en masse the PTAB would need to focus on the “front end” in order to reduce its workload, namely, using its discretion to hear only the most important cases. The number of cases the PTAB sees already far exceeds that predicted by the AIA and while “it’s admirable that the Board has met the one-year deadline, so far,” if a lot of judges quit that’s going to be a big problem, Michel added.

In a comment submitted to IPWatchdog, Vidal, who resigned from the USPTO in December and is now a partner with Winston & Strawn, said the directive would threaten the PTAB’s role and that IP stakeholders should speak up on the issue. She explained:

“Because of the ability to work remotely, the PTAB has been able to attract highly skilled, passionate, and dedicated judges and personnel. Requiring PTAB judges to go back to the office (including for many who are nowhere near a USPTO office and who would have to relocate their entire families) threatens the PTAB’s critical role. It will either force additional discretionary denials on patent challenges the PTAB was designed to address and/or will force the PTAB to avail themselves of the additional six months to issue decisions, detracting from the PTAB’s ability to be a more efficient way of addressing validity challenges. I would encourage those with a stake in this decision to speak up. While I was the Director, we would regularly receive input directly or through communications with the administration including with the Secretary of Commerce, and often written by CEO’s or industry groups.”

Former USPTO Commissioner for Patents Bob Stoll also told IPWatchdog that the return to office order is causing “havoc”. “These blanket demands to return to the office without understanding the roles of the judges, the needs of the organization and the disruptions in peoples’ lives are causing unnecessary havoc,” Stoll said. “Better that the Administration study the problem and test solutions, than just mandate in a vacuum.”

The Upside

But Gene Quinn, IPWatchdog Founder and CEO, said “it makes sense that the Department of Commerce would require APJs to return to the office,” considering they are not covered by the CBA. Quinn said the policy is not likely to have a far-reaching effect and, in any case, it may be time for a PTAB “reset”. Quinn explained:

“While some will no doubt blow this out of proportion, there are only approximately 250 APJs currently, maybe even less. And by this time next week there will likely be far fewer APJs with the Trump Administration offering eight-months severance for those federal employees who resign by February 6. I am told there is a meaningful percentage of APJs assigned to inter partes cases who are at or near retirement age, so it would seem logical many—perhaps even all—of those in that category will elect to take the severance and enter the private sector. Former APJs are generally in very high demand.

The question is what will an exodus of APJs mean for the PTAB? At inception of the PTAB, the USPTO predicted that there would be 400 to 500 inter partes patent challenges filed a year. For a variety of reasons, including how easy it is to invalidate patents at the PTAB, the number of challenges per year has been three to four times the number predicted. If the PTAB loses significant numbers of APJs, and with a statute that requires cases to be completed preferably within 12 months, but in no case later than 18 months, it is easy to predict that a smaller PTAB would need to be more discerning with respect to what challenges are instituted, which was always what was envisioned by the creators of the PTAB in Congress, and the Kappos Administration that implemented the intent of Congress. So, a return to what everyone believed the PTAB would do and would become—for whatever reason—hardly strikes me as an apocalyptic disaster. It is precisely what was intended before the PTAB grew beyond anything anyone ever envisioned.

And, let’s face it, the PTAB was created to get rid of ‘bad patents.’ Given the incentives and purpose of this entirely new bureaucracy does it really shock anyone that they see bad patents everywhere all the time? And sadly, the PTAB never seems able to achieve its stated intent—to get rid of ‘bad patents.’ Despite touting the high-quality examination and low error rate of examiners year after year, the PTAB continues to see bad patents worthy of challenge in far greater numbers than ever predicted. Something doesn’t seem quite right, and there probably should be a reset.”

The Senate Commerce Committee also today approved the nomination of Howard Lutnick for Secretary of Commerce, moving him one step closer to full confirmation. Once Lutnick is in office, a nominee for a permanent USPTO Director is likely to surface more quickly. The Office will need stable leadership to promulgate new rules, guidance and policies for the many changes that seem likely in the near future.

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This article was updated after publication to include Bob Stoll’s comments.