Patent Review Processing System (PRPS)
PRPS (Patent Review Processing System) is the Board's e-filing (EF) and case management (CM) system for trial proceedings. Direct Link.
- For questions regarding PRPS, please call the Board at (571) 272-7822. Support is provided Monday through Friday (except federal holidays) from 8:30 a.m. to 5:00 p.m. Eastern Time.
As PRPS is a developing system, suggestions for improvement provide important input into its future design. After seeing PRPS work, you may have suggestions for improving it. If you have suggestions, please send them to PRPS-Suggestions@uspto.gov.
- Quick Start Guide
- Information related to the Paper Reduction Act
- For technical reasons, the size limit for an uploaded document is currently limited to 25 megabytes. See FAQ A4.
- Internet Explorer 8 should be used for all filings as a petitioner or patent owner. A security question is asked at the initial stage (please answer “no") and the finance stage (please answer "yes"). Public documents may be viewed, however, using Internet Explorer 8, Firefox 13, Chrome 21, or Safari 6.
1. Only PDF and MPEG format files may be uploaded in PRPS. Password-protected files will not be accepted. For text documents, such as MS Word® documents, users are encouraged to convert the document directly into a text-searchable PDF file, rather than printing the document and scanning it in as a PDF file.
2. PRPS sends an automatic email notification to the parties whenever a document is filed in a case. To view the document, you must access PRPS, open the applicable case in your docket, and select the document.
3. To request a conference call for a particular case (e.g., to request authorization to file a motion), contact the Board at Trials@uspto.gov. The email should copy the other party or parties to the proceeding, indicate generally the relief being requested or the subject matter of the conference call, state whether the opposing party or parties oppose the request, and include times when all parties are available. Unless otherwise authorized, do not include attachments in the email and do not use the Trials@uspto.gov email address for substantive communications to the Board. Parties may also contact the Board by telephone at (571) 272-7822.
4. Effective March 19, 2013, new fees will be charged for filing a petition for an inter partes review, post-grant review, or covered business method patent review. See Setting and Adjusting Patent Fees, 78 Fed. Reg. 4212, 4291 (37 C.F.R. § 42.15), available at http://www.gpo.gov/fdsys/pkg/FR-2013-01-18/pdf/2013-00819.pdf; also see FAQs E6-E7.
5. Effective March 16, 2013, an applicant for a first inventor-to-file patent may file a derivation petition. See FAQs I1-I5.
6. Effective January 14, 2013 (effective date of the AIA Technical Corrections Act), a petitioner may file an inter partes review petition challenging a first-to-invent patent or reissue patent upon issuance including during the first nine months after issuance.
7. Should you encounter issues with using a particular deposit account in PRPS, please close out of the browser completely, clear the cookies in your browser, login to PRPS again, and input the correct deposit account number. If you are still unable to use the deposit account, please call the Board at (571) 272-7822.
8. PRPS will be undergoing an upgrade on February 15, 2014. Please see the FAQs below for more information following the upgrade.
Please note updated FAQs A9, B6, F8, F9, and G13 below.
Frequently Asked Questions (FAQs)
A. System Availability and General Information
B. Searching and Reviewing Documents
C. Registering as a PRPS User
D. Filing a Petition
F. Submission of Patent Owner/Respondent Information and Preliminary Response
G. Filing Other Documents
H. Joinder and Consolidation
I. Derivation Proceedings
A. System Availability and General Information
A1. How do I log on to PRPS?
Go to the Patent Trial and Appeal Board (PTAB) Web page at: http://www.uspto.gov/ip/boards/bpai/index.jsp, and then click on “Direct Link” under “Patent Review Processing System (PRPS)”.
Once you are registered, close out of the browser completely, and then bring the browser back up and go to https://ptabtrials.uspto.gov. You will receive an email containing the verification code.
On the PRPS welcoming screen, click on Login and enter your User ID and password. When the screen asks for the verification code, copy and paste the verification code from the email.
A2. If PRPS is down during normal business hours or other unscheduled outage periods, may I file a petition or other documents via email or mail?
If you have any difficulties with PRPS, please call the Board at (571) 272-7822.
However, if PRPS is unavailable during normal business hours, petitions (and other documents) may be submitted to the Board via email: Trials@uspto.gov.
Petitions submitted via email must include:
• name of point of contact;
• email address of point of contact;
• patent number to which the petition corresponds (or application number in the case of a derivation proceeding);
• application number of the patent;
• petitioner’s application number (in the case of a derivation proceeding);
• number of claims challenged;
• type of trial proceeding;
• power of attorney; and
• fee, e.g., a deposit account authorization.
In addition, a petition or document submitted via email or other means must: (1) be accompanied by a motion requesting acceptance of the submission, and (2) identify a date of transmission where a party seeks a filing date other than the date of receipt at the Board. 37 C.F.R. § 42.6(b). It is important to note that a petition will not be accorded a filing date unless it is accompanied by a payment of the appropriate fees (e.g., a deposit account authorization).
Paper filing via EXPRESS MAIL® (or by means at least as fast and reliable as EXPRESS MAIL®) is authorized only if both PRPS and the Board's email address (Trials@uspto.gov) are unavailable. The mailing address is:
Mail Stop PATENT BOARD
Patent Trial and Appeal Board
United States Patent and Trademark Office
PO Box 1450
Alexandria, Virginia 22313-1450
For hand delivery or delivery via FEDEX, UPS, etc.:
Mail Stop PATENT BOARD
Patent Trial and Appeal Board
United States Patent and Trademark Office
Madison Building (East)
600 Dulany Street
Alexandria, Virginia 22313
A3. Will extensions of time be available?
If PRPS is down during normal business hours, a party may contact the Board and request a one-day extension of time for due dates that are set by rule or orders of the Board. 37 C.F.R. § 42.5. In the unlikely event that an administrative patent judge is not available to rule on the extension, the Board may grant an extension the day after the paper is due. However, no extensions of time will be granted for any statutory time period.
A4. What is the megabyte limit for a document upload?
A single uploaded file may not exceed 25 megabytes in size. For technical reasons, PRPS is unable to accept files over 25 megabytes at this time. USPTO expects to be able to increase the limit in future releases.
If you need to file a document that exceeds 25 megabytes, please call the Board at (571) 272-7822.
Users are encouraged to reduce the file size by:
- splitting a large file into multiple smaller files; and/or
- converting MS Word® documents into PDF files, rather than printing documents and scanning them in as PDF files.
A5. Is there a limit to the number of documents that can be uploaded per filing?
A6. Are there any naming conventions for documents or character restrictions? (revised – Mar. 20, 2014)
There are no special naming conventions for documents, but the number of characters is limited. The user will be prompted to provide a name that will appear in the docket listing. This name should be simple and descriptive, such as “Jones Motion to Amend” or “Second Declaration of Dr. Smith.” Document names must be less than 255 characters.
A7. Will the Office provide forms (e.g., power of attorney or IPR transmittal) for filing documents in a proceeding?
PRPS provides screens for the parties to enter certain information (e.g., lead and back-up counsel and real party in interest). However, the Office does not have forms beyond those PRPS fillable screens. While forms may become available with future releases, most filings will be part of motion practice rather than pre-defined forms.
A8. How can I check whether I filed a document properly?
After you upload a document in the proper format (i.e., PDF or MPEG for exhibits and PDF for all other documents) and click “Submit,” you will receive an acknowledgement on the screen in PRPS and a filing receipt via email if the document is filed properly. If you did not receive an acknowledgement on the screen or a filing receipt via email, the document most likely has not been uploaded properly and you should contact the Board at (571) 272-7822. You may also check whether the document is listed in the file contents of the proceeding.
A9. If the wrong document is submitted, can it be deleted through the PRPS interface? (revised – February 14, 2014)
Yes, as long as the document has not yet been submitted. When uploading a document, users should ensure that the correct file has been selected before clicking the “Upload File” button. If the wrong document is uploaded but the “Submit” button has not yet been clicked, you may delete the document by clicking the trash can icon shown on the screen. Once all documents are uploaded, the user must click the “Submit” button to complete the submission. Documents uploaded, but not yet submitted, have not been filed with the Board.
If the wrong document was uploaded and the “Submit” button was clicked, you should file the correct document and a motion to expunge the wrong document as soon as possible. Any motion to expunge filed on the same day as the wrong document will generally be granted.
A10. Can more than one person work on a case at the same time?
Yes, more than one person may review documents or upload documents in a proceeding at the same time, even if they are sharing a user ID.
A11. Will the PAIR record for the challenged patent show whether a petition has been filed or a decision on the petition has been granted?
Yes, for example, PAIR will have entries for the following:
Petition Requesting Trial
Request for Trial Granted
Request for Trial Granted in Part
Request for Trial Denied
Request for Trial Dismissed
Trial Termination or Final Written Decision
Trial Review Certificate Issued
A12. Is there any application programming interface (API) access to PRPS?
No, API access to PRPS is not permitted at this time.
A13. Can I download information in bulk from PRPS?
PRPS is intended for use by the general public. Due to limitations of equipment and bandwidth, PRPS is not intended to be a source for bulk downloads of USPTO data. Individuals, companies, IP addresses, or blocks of IP addresses who, in effect, deny service to the general public by generating unusually high numbers of daily PRPS accesses (e.g., searches, pages, document retrievals), whether generated manually or in an automated fashion, may be denied access to PRPS without notice.
A14. How do I enter a foreign address in PRPS?
Certain screens in PRPS allow for the entering of address information (e.g., for a petitioner or patent owner/respondent’s real party in interest). In the case of a foreign address, users should select the appropriate country in the “Country” field, select the blank “-“ entry in the “State” field, and then input the next three lines of the foreign address in the “Address Line 1,” “City,” and “Postal Code” fields.
B. Searching and Reviewing Documents
B1. Can I use PRPS to search for a proceeding without registering?
Yes, a non-registered user may search for a proceeding and review documents related to a proceeding. However, if you want to file a document or submit a fee payment in a proceeding, you must be a registered PRPS user.
B2. Can I search for a proceeding by the patent owner?
No, you may search for a proceeding by the petitioner’s name, petition type, patent number, or application number (for derivation proceedings).
B3. Will PRPS collect and report statistics on the proceedings?
Yes, PRPS will collect and report statistics about the new proceedings. Currently, users may search the proceedings based on a particular trial type, party name, petition filing date, institution date, patent number, and application number (for derivation proceedings).
B4. Why are there gaps between trial proceeding numbers?
A trial proceeding will be listed in the search results only when the (multi-step) process of submitting a petition for instituting a trial proceeding via PRPS has been successfully completed. If the process of filing a petition is not yet completed or was never completed, a trial number will be provided but it will not be listed in the search results.
B5. Why have the prefixes of trial proceeding numbers changed from “2012” to “2013” (e.g., IPR2012 to IPR2013)?
The prefixes of trial proceeding numbers track the fiscal year. Fiscal year 2013 started on October 1, 2012. Thus, any petitions filed between October 1, 2012 and September 30, 2013 will receive a trial proceeding number with a prefix of “2013” (e.g., IPR2013 or CBM2013).
B6. Why are there gaps between paper numbers in some proceedings? (revised – February 14, 2014)
In some previous versions of PRPS, PRPS assigned a sequential number (Paper 1, 2, 3, etc.) to a paper immediately when the paper was uploaded. Thus, if a user uploaded a paper but then deleted it before submitting, the assigned number was not reassigned, causing a gap in the numbering of papers in that proceeding. In the current version of PRPS, papers are assigned a number only when the submission process is completed, so there are no gaps in paper numbers.
C. Registering as a PRPS User
C1. Who can register?
Anyone can register to use PRPS and obtain a user ID, such as a pro se patent owner or an attorney who is not registered to practice before the Office under 37 C.F.R. § 11.6.
C2. What information is required to register?
When you are registering to use PRPS, you have to select a unique user ID and password, and enter your name and an email address. If you are a USPTO registered practitioner, you should enter your registration number.
C3. Can I share my user ID with my paralegals or other attorneys in my organization?
Yes, a single user ID may be shared among a working group. It is important to keep in mind, however, that PRPS docket display is based on the user ID. Therefore, the registered user must ensure that sharing his or her user ID would not violate any protective order.
D. Filing a Petition
D1. When will my petition be accorded a filing date?
Once the Office reviews the petition and determines whether the petition is complete and the appropriate fees have been paid, the Office will send a notice to the petitioner and patent owner/respondent. The submission date of the compliant petition will be accorded as the filing date.
If the petition complies with all of the statutory requirements (see 35 U.S.C. 135, 312, and 322), the original submission date of the petition will be accorded as the filing date. Conversely, no filing date will be accorded if a statutory requirement is not satisfied. For example, for fee deficiencies, the Office will accord the later submission date when all appropriate fees have been paid because the fees are required by statute. See, e.g., 35 U.S.C. 312(a)(1).
In the situation where a petition complies with all of the statutory requirements but contains only regulatory defects, the Office will accord the filing date of the original submission and notify the petitioner of the defects. The regulatory defects must then be corrected within the time period set forth in the notice.
D2. Will the Office terminate the proceeding if I filed a complete petition that contains regulatory defects and failed to correct the defects within the time period set forth in the notice?
Once the time period for correcting regulatory defects has expired, the petition will be forwarded to a Board judge who may initiate a conference call and/or issue an Order to show cause. If the petitioner fails to respond to such an Order appropriately, the proceeding may be terminated. It is important to note that the petitioner will not be entitled to a refund of any fees paid because the petition was in compliance with the statutory requirements for a filing date. For petitions filed on or after March 19, 2013, however, the petitioner may file a request for a refund of any post-institution fee paid. See FAQ E7.
D3. How will the Board review petitions for statutory and regulatory compliance? (revised - March 28, 2014)
Once a petition is submitted via PRPS, a Board paralegal will review the petition for statutory and regulatory compliance.
First, there are certain statutory requirements in 35 U.S.C. 135(a), 312(a), and 322(a) that must be met for a petition to be accorded a filing date. The following is a list of the “top 5” things the paralegal will be looking for in IPR, PGR, and CBM petitions:
- Appropriate fee successfully paid,
- Identification of the patent and the specific claim(s) being challenged,
- Identification of the real party in interest,
- Copies of the patents and printed publications relied upon in the petition, and
- Evidence (e.g., certificate of service) that a copy of the petition was provided to the patent owner.
The following are the “top 4” things the paralegal will be looking for in DER petitions:
- Appropriate fee successfully paid,
- Identification of the petitioner’s pending application,
- Identification of the respondent’s earlier filed patent or application, and
- Evidence, (e.g., certificate of service) that a copy of the petition was provided to the respondent.
If any statutory requirement is not met, the petition is incomplete.
- The paralegal may call the individual who filed the petition and explain the deficiency.
- The paralegal will enter a Notice of Incomplete Petition and the individual who filed the petition will receive notification by email.
- The deficiency may be corrected within one month and the petition will be accorded the filing date of the NEW submission.
- If the deficiency is not corrected within one month, the petition will be dismissed. One exception is when the petitioner challenges more than 20 claims (15 beginning March 19, 2013) but does not pay the excess claims fees – the petitioner will receive notification and can file a request to have the Board review just the first 20 challenged claims (15 beginning March 19, 2013).
Second, there are certain regulatory requirements in part 42 of 37 C.F.R. that must be met (e.g., page limits, font size, signature, identification of lead and back-up counsel).
If any regulatory requirement is not met, the petition is defective.
- The paralegal may call the individual who filed the petition and explain the defect.
- The paralegal will enter a Notice of Filing Date Accorded to Petition and the individual who filed the petition will receive notification by email.
- While the petition will be accorded the filing date of the ORIGINAL submission, the defect must be corrected within one week.
- If the defect is not corrected within one week, the petition will be forwarded to a Board judge who may initiate a conference call and/or issue an Order to show cause, and terminated if the petitioner fails to respond to such an Order.
If there are no statutory or regulatory errors with the petition, the paralegal will enter a Notice of Filing Date Accorded to Petition, the petitioner will receive notification by email, and the patent owner/respondent will receive a copy via regular mail.
D4. If the correspondence address of record for the subject patent or application is not up to date, can the petitioner serve the petition on the patent owner/respondent at a different address?
Yes, the petition and supporting evidence must be served on the patent owner/respondent at the correspondence address of record for the subject matter. The petitioner may additionally serve the petition and supporting evidence on the patent owner/respondent at any other address known to the petitioner as likely to effect service. See §§ 42.105(a), 42.205(a), and 42.406(a).
D5. After I file a petition, how do I file a follow-on document (e.g., a motion to expunge)?
You must use the lead counsel’s user ID to submit any document in the proceeding, even when you used a different user ID to file the petition. To upload the document, see FAQ G1.
D6. If a petition is incomplete, how much time do I get to complete it?
The Office will provide the petitioner one month from the Notice of Incomplete Petition to correct the petition. Please see 37 C.F.R. §§ 42.106(b), 42.206(b), and 42.407(b), and FAQ D3.
D7. Can I present claim charts and arguments in landscape orientation?
No. All documents, other than drawings, must be written in portrait orientation including claim charts and arguments. The Board previously accepted a few petitions with claim charts written in landscape orientation because the procedure for filing AIA petitions is new.
Switching from portrait orientation to landscape orientation within a document (e.g., a petition) creates inefficiency for the reviewing officials at the Board. Therefore, correction is now required when a document or portions thereof (e.g., claim charts) are written in landscape orientation. This is consistent with the policy set forth in § 42.1(b) and the practice set forth in § 1.52(a)(1)(iii) for filing papers that are to become a part of the permanent record in the application or patent files within the USPTO.
D8. Can a petitioner file mandatory notices in a separate document?
No. The petitioner’s mandatory notices must be filed as part of the petition itself. See §§ 42.8(a)(1), 42.104, 42.204, 42.304, and 42.405. The Board previously accepted a few improper mandatory notices because the procedure for filing AIA petitions is new. However, correction is now required when a petitioner’s mandatory notices are not filed as part of the petition.
D9. If I am filing two petitions challenging the same patent, should I use the same exhibit numbers in both cases?
No. In the situation where a petitioner files multiple petitions challenging the same patent, the petitioner should number its exhibits uniquely for both cases, such as 1001-1099 for case #1 and 1101-1199 for case #2. See § 42.63(c). Similarly, the patent owner in such situation should number its exhibits uniquely for both cases, such as 2001-2099 for case #1 and 2101-2199 for case #2. Therefore, if the Board decides to consolidate the cases, the exhibits would continue to be uniquely numbered in the consolidated proceeding.
D10. What are the most common errors found in petitions? (revised – February 11, 2014)
The following are the top 10 common errors:
1. Improper usage of claim charts by including arguments, claim construction, and/or legal analysis in a claim chart (see FAQ D12);
2. Failure to set forth claim construction of disputed or important claim terms expressly in a claim construction section;
3. Exhibits do not match the documents listed in the Exhibit List;
4. Failure to identify related matters or provide a statement that there are no related matters;
5. Exhibits are not sequentially numbered in the 1001-1999 range;
6. Failure to identify lead or back-up counsel as required by §§ 42.8 and 42.10;
7. Margins less than 1 inch as required by § 42.06;
8. Failure to certify that the petitioner is not barred or estopped from requesting a review as required by § 42.104(a) or § 42.204(a);
9. The petition and supporting documents are served on the patent owner at an address that is not the correspondence address of record for the subject patent as required by § 42.105(a) or § 42.205(a); and
10. The petition and supporting documents are served on the patent owner later than the filing of the petition.
D11. Can I file a petition seeking an inter partes review of a plant patent?
Yes, 35 U.S.C. § 311(a) provides that, subject to certain requirements, “a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent.” This provision is not limited to utility patents.
D12. Can claim charts include claim constructions, arguments, and explanations as to how the claims are unpatentable? (revised – February 11, 2014)
No. Extensive usage of claim charts in a petition is discouraged.
The rules require that a petition identify how the challenged claims are to be construed and how the claims are unpatentable under the statutory grounds raised. This information is to be provided pursuant to the page limit requirements, which require double spacing. Additionally, the rules require that the petition specify where each element of a challenged claim is to be found in the prior art. The element by element showing may be provided in a claim chart, which is permitted to be written with single spacing. See § 42.6(a)(2)(iii). Placing one’s argument and claim construction in a claim chart to circumvent the double spacing requirement is not permitted, and any such argument or claim construction may not be considered by the Board.
The Board previously accepted a few petitions with claim charts that included claim constructions, arguments, and explanations as to how the claim is unpatentable because the procedure for filing AIA petitions was new. However, correction is now required when a petition includes improper usage of claim charts.
D13. What is the preferred format for claim charts?
Claim charts should be presented in a readable format so that a reader (e.g., the patent owner or a deciding official) is able to locate the disputed claim limitations and the relied-upon portions of the prior art quickly. Presenting claim limitations and prior art teachings in a single column format and/or without appropriate spacing creates inefficiency and, at times, appears to circumvent the page limit set forth in 37 C.F.R. § 42.24. Claim limitations should be presented in a separate column (e.g., claim limitations in the left column and prior art teachings in the right column), and each claim should be presented in a separate chart.
D14. How do I submit additional documents along with a petition?
Various screens are provided in PRPS for submitting a petition, including “Party Information,” “Petition Documents,” “Payment,” “Counsel Information,” “Related Matters,” and “Review Petition.” A petition and all exhibits to the petition should be uploaded using the “Petition Documents” screen. To submit a document accompanying the petition (e.g., a motion to seal), click on “Upload Document” at the top-left of the screen, enter the document information in the following screen, and click “Submit.” The “Upload Document” function, however, should not be used for the petition itself and any exhibits to the petition.
D15. Should I list in my petition other related inter partes reviews, post-grant reviews, or covered business method patent reviews? (new – May 28, 2013)
A. Yes, the petitioner should list other related review proceedings, as related matters, including those that are being filed concurrently or subsequently. This will promote administrative efficiency as the Board may assign the same panel to all related review proceedings.
E1. Can I pay the fees in PRPS using multiple forms of payment?
No, petitioners must pay the full amount in PRPS using one form of payment. Petitioners with a special need to use multiple forms of payment (e.g., deposit account and credit card) to pay the fees for a single IPR, PGR, or CBM petition should contact the Board at (571) 272-7822. Petitioners will be asked to provide written authorization to charge the requested forms of payment. Transfer will then occur as soon as practicable. The date when transfer is completed will be used for purposes of according a filing date to the petition. See FAQ D1.
E2. Can I pay the fees using multiple credit cards for one transaction?
No, only one credit card may be used. Parties may not split payment over multiple credit cards. Further note that Treasury Department regulations limit a credit card payment to a $49,999.99 per day transaction.
E3. If I filed an incomplete petition with a payment of the appropriate fees and decided not to correct the petition, can I request a refund of the fees?
Yes, a petitioner may file a request for a refund of the petition fees when the petition is not accorded a filing date for a failure to meet a statutory requirement.
E4. If I paid the base petition fee for a petition that challenges 25 patent claims, but failed to pay the excess claims fees upon filing, will the petition be accorded a filing date?
A fee is currently required for each claim in excess of 20 claims. Beginning March 19, 2013, separate fees will be required for each claim in excess of 15 claims and 20 claims, respectively. See http://www.uspto.gov/aia_implementation/fees.jsp. The Office will notify the petitioner of any fee deficiencies. When the petitioner pays the required excess claims fees within the time period set forth in the notice, the Office will accord the date on which the fees are paid as the filing date.
E5. When the Office notifies me of a fee deficiency for excess claims, can I file a corrected petition without excess claims rather than paying the excess claims fees, so that the petition will be entitled to a filing date as of the original submission date?
Yes, the corrected petition must be filed within the time period set forth in the notice. Such a corrected petition must merely delete the portions related to the excess claims, and not add new arguments or make other substantive changes (e.g., new grounds). The original submission date of the petition will be accorded as the filing date.
E6. Do I need to pay both the request fee and the post-institution fee when I file an inter partes review petition on or after March 19, 2013?
On filing a petition for inter partes review, payment of both the inter partes request fee ($9,000) and post-institution fee ($14,000) are due. In addition, the appropriate request excess claims fee is required on filing if the petition is challenging more than 20 claims, and the appropriate post-institution excess claims fee is required on filing if the petition is challenging more than 15 claims. A filing date would not be accorded unless the required fees are paid.
For example, for a petition that is challenging 25 claims, the following fees are required on filing:
The inter partes request fee (§ 41.15(a)(1)): $9,000
The inter partes post-institution fee (§ 41.15(a)(2)): $14,000
Excess claims fee ($ 200 for each claim in excess of 20) for requesting 5 claims in excess of 20 (§ 41.15(a)(3)): $1,000
Post-institution excess claims fee ($ 400 for each claim in excess of 15) for requesting 10 claims in excess of 15 (§ 41.15(a)(4)): $4,000
E7. If I filed an inter partes review petition on or after March 19, 2013, may I request a refund of the post-institution fee paid if the Board decides not to institute a review?
Yes, in such a situation, the petitioner may file in PRPS a request for a refund of any post-institution fee paid. For the example in FAQ E6, a total of $18,000 ($14,000 + $4,000) may be refunded if the petition is denied. The petitioner should specify in the request what amount it believes should be refunded and why.
In the situation where the Board decides to institute a review for fewer claims than requested, the petitioner may request a refund for each denied claim, post-institution excess claims fee paid. For the example in FAQ E6, if the Board decides to institute a review for only 16 claims out of the 25 challenged claims, a total of $3,600 ($400 x 9 denied claims, post-institution excess claims fee paid) may be refunded.
F. Submission of Patent Owner/Respondent Information and Preliminary Response
F1. How does a patent owner or respondent inform the Board that I want to participate in an AIA proceeding and provide mandatory notice information under § 42.8? (revised – June 26, 2013)
The patent owner/respondent must first register as a PRPS user and get a user ID. After logging on to PRPS using the user ID, the patent owner/respondent should click on the “New Petitions” tab and select “Patent Owner/Respondent Participation” to begin the process. PRPS will provide screens to search for the proceeding by patent or application number and enter mandatory notice information (e.g., identifying the real party in interest, lead and back-up counsel, and related matters). Once the patent owner/respondent submits the mandatory notice information and a Board paralegal verifies the information, the patent owner/respondent will receive an email notification and may then upload documents (e.g., preliminary response, motions). Note that preliminary responses are not permitted in derivation proceedings.
The “New Petitions” and “Patent Owner/Respondent Participation” options should only be used to begin participating in a proceeding as the patent owner/respondent. Once a patent owner/respondent has been verified and is participating in a proceeding, the verification process should not be used again. Instead, the patent owner/respondent should access the proceeding from the “My Docket” tab.
F2. Can a patent owner/respondent file a power of attorney appointing a new attorney in a proceeding?
Yes, if the patent owner/respondent wishes to designate a lead counsel or a back-up counsel who is not already counsel of record in the subject patent, a power of attorney must be filed with the designation of counsel. See § 42.10. The power of attorney must be signed properly, such as signed by the assignee of the entire interest of the patent (see § 1.32(b)), and uploaded as a PDF file.
F3. Can a patent owner/respondent identify the attorney of record in the subject patent or application as the lead or back-up counsel in the proceeding?
Yes, the patent owner/respondent may designate the attorney of record in the subject patent or application as the lead or back-up counsel. See § 42.8(b)(3). Therefore, the attorney of record in the subject patent or application, acting as a representative of the patent owner/respondent, may logon to PRPS and designate himself or herself as lead or back-up counsel for the proceeding.
F4. Can a power of attorney using a customer number be submitted in a proceeding?
Yes, a party may file a power of attorney using a customer number, and identify a specific registered patent practitioner that is associated with the customer number as lead or back-up counsel. See § 1.32.
Note that the party is required to identify a specific registered practitioner as lead counsel in a proceeding. § 42.10. Further, the party must ensure that using a customer number in a power of attorney would not violate any protective order because all of the registered patent practitioners that are associated with the customer number may have access to the file records of the proceeding.
F5. Will the Office check the patent owner/respondent’s real party in interest information and power of attorney against the assignment recorded in the Office?
Yes, when the patent owner/respondent identifies its real party in interest or files a power of attorney, the Board will check the information with the assignment record (if any) to verify that the information is correct and that the paper is signed properly, if the patent or application has been assigned. Therefore, patent owners/respondents are encouraged to keep assignment records up to date.
F6. If the patent owner/respondent’s real party in interest is different than the assignee of record in the subject patent or application, can the patent owner/respondent submit the new assignment with the identification of the real party in interest?
Yes, when the patent owner/respondent identifies the real party in interest in PRPS, the patent owner/respondent may upload a file (in PDF format) that contains the new assignment. The patent owner/respondent should also file a copy of the new assignment with the Office’s Assignment Recordation Branch.
F7. When can I file a patent owner preliminary response?
The three-month time period for filing a patent owner preliminary response runs from the date on which the Board enters a Notice of Filing Date Accorded to Petition. If the patent owner wishes to file a preliminary response or elect to waive the preliminary response, the patent owner must do so within the three-month time period.
F8. How do I file a patent owner preliminary response in PRPS? (revised – February 14, 2014)
To file a patent owner preliminary response, open the case in PRPS, click on “Upload Document,” and select “Preliminary Response.” On the following screen, select “Filing” in response to the question “Is the patent owner filing or waiving the preliminary response?” Then upload the document and click “Submit.” Note that preliminary responses are not permitted in derivation proceedings.
Do not click on the “New Petitions” tab and select “Patent Owner/Respondent Participation.” Those options are only used to begin participating in a proceeding as the patent owner/respondent and should not be used once a patent owner/respondent is already verified for a proceeding.
F9. How do I waive a patent owner preliminary response in PRPS? (revised – February 14, 2014)
To waive the filing of a patent owner preliminary response, open the case in PRPS, click on “Upload Document,” and select “Preliminary Response.” On the following screen, select “Waiving” in response to the question “Is the patent owner filing or waiving the preliminary response?” Then upload a document stating affirmatively that the patent owner intends to waive the preliminary response, and click “Submit.”
F10. Can an inventor appear pro se as the patent owner/respondent in a proceeding?
Yes, an inventor may appear pro se if he or she is the owner of the challenged patent (or application in the case of a derivation proceeding).
F11. Can an organization (e.g., corporation) appear pro se as the patent owner/respondent in a proceeding?
No, organizations must be represented by counsel. The party’s mandatory notice information should specify both lead and back-up counsel. See 37 C.F.R. § 42.8(b)(3).
F12. How does an attorney appear in a proceeding as back-up counsel after being recognized pro hac vice? (new – August 22, 2013)
An attorney admitted to appear pro hac vice in a proceeding is not designated automatically as back-up counsel in the proceeding. If a party seeks to have an attorney who has been admitted to appear pro hac vice as back-up counsel, the party should file in PRPS a notice updating its mandatory notice information to designate the attorney as back-up counsel and a new power of attorney (unless the power of attorney filed previously includes the attorney). See 37 C.F.R. § 42.8(b)(3). The party also should update its counsel information in PRPS by selecting the appropriate case from the “My Docket” tab, clicking on “Update Information” at the top-left of the screen, and selecting “Counsel Information.” On the following screen, click on “Add Back Up Counsel.” Doing so will ensure that the new attorney receives email notifications for the proceeding.
G. Filing Other Documents
G1. How do I file other documents (e.g., a motion to seal or proposed protective order)? (revised – Mar. 20, 2014)
After you logon to PRPS using your user ID,
- select the relevant proceeding number from the “My Docket” tab;
- click on the “Upload Document” tab;
- select a file and document type (Notice is the default);
- enter a descriptive document name (less than 255 characters);
- select availability; and
- click on “Upload File” and then “Submit.”
Once the transaction is completed, you will receive an email acknowledgement.
G2. How do I file a confidential settlement agreement?
To file a confidential settlement agreement, select the appropriate case from the “My Docket” tab and click on “Upload Document.” Enter the information for the document in the next screen. In the “Availability” field, enter “Parties and Board Only.” Click on “Upload File” and then “Submit.” The filer should also upload a request that the settlement agreement be treated as business confidential information and be kept separate from the files of the involved patent or application. See 37 C.F.R. § 42.74(c). The party should also mark the settlement agreement confidential.
G3. When is the appropriate time to object to evidence submitted during a preliminary proceeding?
Any objection to evidence submitted during a preliminary proceeding (e.g., evidence submitted with a petition or a preliminary response) must be served on the opposing party within ten business days of the institution of the trial. 37 C.F.R. § 42.64(b)(1). The objection must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence. Id. The party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days of service of the objection. 37 C.F.R. § 42.64(b)(2).
G4. When is the appropriate time to object to evidence submitted after a trial has been instituted?
Any objection to evidence submitted after a trial has been instituted (e.g., evidence submitted with a patent owner response or a reply) must be served on the opposing party within five business days of service of evidence to which the objection is directed. 37 C.F.R. § 42.64(b)(1).
G5. What is the page limit on a request for rehearing?
For the purpose of page limits, a request for rehearing of a decision under 37 CFR § 42.71(d) must be filed in the form of a motion, which is limited to 15 pages (see 37 CFR § 42.24(a)(v)).
G6. How do I seek a waiver of the 15-page limit for a request for rehearing?
A party may contact the Board to seek a waiver of the 15-page page limit. Please note that any prior authorization to extend the page limit on a motion does not apply to a request for rehearing on the decision of that motion.
G7. May I submit a redacted version of a document that contains non-useful personal confidential information?
Yes, evidence and other documents should not include non-useful personal confidential information, such as social security or taxpayer-identification numbers, dates of birth, names of minor children, financial account numbers, or full driving record. The Office will accept a redacted version and the submission should be accompanied by a paper noting the reasons for the redaction. See IPR2012-00001, Paper 36, pages 6-8.
G8. How do I add additional counsel when there are multiple petitioners for the same proceeding?
The user designated as lead counsel should select the appropriate case from the “My Docket” tab, click on “Update Information” at the top-left of the screen, and select “Counsel Information.” On the following screen, click on “Add Back Up Counsel.” Note that lead counsel’s user ID must be used to submit documents in the proceeding and that the user ID may be shared. See FAQs C3, D5.
G9. What heading should I use on the first page of papers filed in a case?
Parties are encouraged to use the heading appearing on papers entered by the Board in the case, which includes the name of the petitioner(s), name of the patent owner/respondent, case number, patent number, and title of the paper. A sample heading is provided here.
G10. How do I notify the Board that the parties have settled and request that the proceeding be terminated? (new – June 6, 2013)
The parties should request a conference call and seek authorization to file a joint motion to terminate the proceeding. See 37 C.F.R. §§ 42.72, 42.74. The motion will need to be accompanied by a true copy of the settlement agreement, which can be filed confidentially in PRPS. See 37 C.F.R. § 42.74(b); FAQ G2. If the proceeding is terminated before institution and the petition was filed on or after March 19, 2013, the petitioner may file a request for a refund of the post-institution fee paid. See FAQ E7. The request for a refund should be filed separately in PRPS after the proceeding is terminated.
G11. May an attorney who is not designated as lead or back-up counsel take a deposition of a witness or represent a witness at a deposition in an AIA proceeding? (new – July 25, 2013)
Yes, the attorney, however, must be a registered patent practitioner or recognized by the Board to appear pro hac vice in the proceeding under 37 C.F.R. § 42.10(c).
G12. What font size should I use in my documents? (new – November 7, 2013)
Petitions and other documents created for a proceeding must be in either (A) a proportional font that is 14-point or larger, or (B) a monospaced font that does not contain more than four characters per centimeter (ten characters per inch). See 37 C.F.R. § 42.6(a)(2)(ii). Certain 14-point proportional fonts are so narrow that they cannot be read easily. When using a 14-point proportional font, parties should select a font of sufficient width that the words can be read easily (e.g., Times New Roman).
G13. What email addresses receive email notifications when something happens in a case? (new – February 14, 2014)
The email addresses of all counsel listed on the “Counsel” screen for a case receive email notifications when something happens (e.g., a document is filed) in a case. Thus, parties should make sure that all appropriate counsel are listed and that their email addresses are correct.
H. Joinder and Consolidation
H1. How do I request a joinder?
Any request for joinder must be filed as a motion under § 42.22, no later than one month after the institution date of any IPR or PGR for which joinder is requested. See 35 U.S.C. §§ 315(c) and 325(c), and 37 C.F.R. §§ 42.122(b) and 42.222(b). To upload a motion using PRPS, see FAQ G1.
Only joinder of like review proceedings of the same patent is permitted. See 35 U.S.C. §§ 315(c) and 325(c). For example, an instituted IPR may be joined with another IPR, but not with a PGR or reexamination.
H2. Does the one-year statutory bar under 35 U.S.C. 315(b) apply if I file a request for joinder with an inter partes review petition?
No, the second sentence of 35 U.S.C. § 315(c) provides that the time limitation set forth in the first sentence of 35 U.S.C. § 315(c) does not apply to a request for joinder.
H3. How do I request a consolidation of multiple proceedings involving the same patent (e.g., a reexamination and an inter partes review)? (revised – May 28, 2013)
A party seeking authorization to file a request for consolidation should contact the Board and request a conference call with the other party or parties and the judge assigned to the Board proceeding. If authorized, a request for consolidation must be filed as a motion. See 37 C.F.R. §§ 42.20 and 42.22.
H4. When may I file a motion for joinder?
Any request for joinder must be filed, as a motion under 37 C.F.R. § 42.22, no later than one month after the institution date of any inter partes review or post-grant review for which joinder is requested. See 37 C.F.R. §§ 42.122(b) and 42.222(b).
H5. Do I need to file a petition with a motion for joinder?
Yes, a party who wishes to join an inter partes review or post-grant review should file a petition accompanied by a motion for joinder. The motion should address the reasons why joinder is appropriate, identify any new ground(s) of unpatentability asserted in the petition, and explain what impact (if any) joinder would have on the schedule for the existing review. No prior authorization is required for filing the motion for joinder with the petition. However, the party seeking to join the review is encouraged to contact the Board in advance of filing to arrange a conference call with the parties and Board to discuss the joinder request.
H6. May I include merely the instituted grounds in my petition with a motion for joinder?
Yes, the petition accompanied by a motion for joinder may include merely the instituted grounds or, alternatively, a new ground of unpatentability.
I. Derivation Proceedings
I1. How do I file a petition for a derivation proceeding in PRPS?
Petitions for derivation proceedings may be filed beginning on March 16, 2013. Click on the “New Petitions” tab and select “Create New Petition.” Select “DER – Derivation Proceeding” on the following screen and enter the information for the petition. For further information, see the Quick Start Guide above.
I2. What happens to a petition for a derivation proceeding after it is filed?
Once a petition for a derivation proceeding has been reviewed and accorded a filing date, the Board may enter an order returning jurisdiction to the examiner of the petitioner’s application until such time as the petitioner’s claims are in condition for allowance (absent the derivation proceeding). Once the claims are in condition for allowance, the Board may determine whether to institute the derivation proceeding.
I3. How do I indicate that the record of a derivation proceeding should not be available to the public?
A petitioner should inform the Board in the petition when an involved patent application is not available to the public. See 37 C.F.R. § 42.412. Derivation proceedings are kept confidential until reviewed by a Board judge. Also, a petitioner filing confidential information with the petition should file a concurrent motion to seal. See 37 C.F.R. § 42.55.
I4. As a petitioner for a derivation proceeding, should I file my application in PRPS?
No, the petitioner’s patent application must be filed with the Office like any other application. PRPS should only be used to file the petition for a derivation proceeding with the Board. A petitioner should, however, file a copy of its application as an exhibit to the petition.
I5. How are derivation proceedings different from other AIA proceedings?
Below are some of the main differences between derivation proceedings (DER) and other AIA proceedings (IPR, PGR, and CBM):
- Petitioner must have a pending application.
- Respondent may have either a pending application or an issued patent.
- A petition with respect to an invention that is the same or substantially the same invention as a claim contained in a patent issued on an earlier application, or contained in an earlier application, must be filed during the one-year period following the date on which the patent was granted or the earlier application was published, whichever is earlier (35 U.S.C. § 135(a)(2)).
- Preliminary responses are not permitted.