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
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
"[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."