This week on IPWatchdog Unleashed I speak with my long-time friend Jim Carmichael, who is a former Administrative Patent Judge and the founder of Carmichael IP. Jim was on the Board of Appeals and Interferences at the United States Patent and Trademark Office (USPTO), which was the predecessor to the Patent Trial and Appeal Board (PTAB). Today Jim and his firm exclusively represent patent owners in post-grant proceedings, including inter partes review (IPR), post-grant review (PGR) and reexamination proceedings. In fact, year in and year out Carmichael IP ranks first or second in terms of win-rate on behalf of patent owners at the PTAB.
Over the years we have had many conversations about the patent system, about patent litigation and of course about the PTAB, which is his particular area of interest and specialization. The purpose of this conversation was to attempt to capture these conversations and in light of where the industry is today to create a list of things that we think the Patent Office can and should do to create a better, fairer PTAB process.
In this extended 75-minute conversation Carmichael discusses ten ways the USPTO could and should fix the PTAB.
1. Fully reclaim institution authority.
2. Eliminate expert witnesses.
3. Eliminate supplemental preliminary briefing.
4. Presume nexus for secondary considerations.
5. When evaluating 325(d), the Office should credit 1449 and 892 forms.
6. Terminate VLSI v. Opensky.
7. Eliminate reliance on common knowledge.
8. RPX and Unified should disclose list of members.
9. Require petitioners to justify reexam after IPR.
10. Settled expectations should mean explaining late challenges.
In addition to the ten fixes the Office can itself undertake, Carmichael also mentions several things Congress can do, and why it is important for the Trump Administration to appoint judges to the Federal Circuit who will show respect to granted patents and patent owners.
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