The Patent Trial and Appeal Board: Who are they and what do they do?

The Patent Trial and Appeal Board: Who are they and what do they do?

The Patent Trial and Appeal Board (PTAB) is an adjudicative body within the U.S. Patent and Trademark Office (USPTO). The PTAB decides appeals from the decisions of patent examiners, and adjudicates the patentability of issued patents challenged by third parties in post-grant proceedings. The Board has existed in some form since the 1800s.

The PTAB consists of statutory members and administrative patent judges. The statutory members include the Director of the USPTO, the Deputy Director of the USPTO, the Commissioner for Patents, and the Commissioner for Trademarks. In addition to the statutory members, the PTAB includes a number of administrative patent judges (APJs) who are appointed by the Secretary of Commerce in consultation with the Director of the USPTO. Administrative patent judges are required by statute to be “persons of competent legal knowledge and scientific ability.” Thus, every APJ must have a technical background, in addition to a law degree, and experience in the legal field. Many APJs also have had distinguished engineering or scientific careers in addition to their extensive legal experience.

If an applicant for a patent receives a second or final rejection by an examiner, the applicant may seek review of that rejection by the PTAB. The applicant may file written briefs to explain why he/she believes that the examiner made an error in declining to grant a patent. An applicant also may request a hearing to orally explain his/her position to the PTAB. The PTAB will then issue a decision, either affirming or reversing the examiner’s decision.   

The PTAB also conducts trials under the America Invents Act (AIA); these include inter partes review, covered business method review, post grant review, and derivation proceedings. For the first three types of proceedings, a member of the public can challenge the patentability of claims in an issued patent in a petition to the PTAB. For example, in inter partes reviews, a petition may challenge an issued patent on grounds of anticipation or obviousness. These petitions often identify prior art patents and publications that might not have been considered by the examiner. Other post grant proceedings may present other challenges to patentability. For example, post grant review proceedings may challenge the written description support or subject matter eligibility of claims. In addition, in a derivation, the PTAB determines whether one party derived a claimed invention from another.

In proceedings under the AIA, there are two phases. In the first phase, the PTAB decides whether to institute a trial based upon the petition and any preliminary response that the patent owner may file. In the second phase, if instituted, the trial is conducted. Based upon the totality of the arguments and evidence, the PTAB will issue a final written decision as to whether claims of the patent should stand.

The AIA trial proceedings were intended to be an alternative to district court litigation with several key differences from district court proceedings. For instance, AIA trials are conducted before a panel of three technically-trained administrative patent judges whereas district court litigation may be in front of a jury. Also, while discovery is available in both forums, discovery before the PTAB is more limited in scope, thereby costing the parties less to litigate. Finally, PTAB trials conclude normally within 12 months from institution; district court litigation, in contrast, may take several years to conclude.

Currently, the PTAB decides about 12,000 appeals and 1,500 trial proceedings per year. Decisions of the PTAB may be appealed to the U.S. Court of Appeals for the Federal Circuit. More information about PTAB is available from the USPTO Inventors Assistance Center at https://www.uspto.gov/InventorAssistance

 

Disclaimer
The USPTO gives you useful information and non-legal advice in the areas of patents and trademarks. The patent and trademark statutes and regulations should be consulted before attempting to apply for a patent or register a trademark. These laws and the application process can be complicated. If you have intellectual property that could be patented or registered as a trademark, the use of an attorney or agent who is qualified to represent you in the USPTO is advised.

The USPTO gives you useful information and non-legal advice in the areas of patents and trademarks. The patent and trademark statutes and regulations should be consulted before attempting to apply for a patent or register a trademark. These laws and the application process can be complicated. If you have intellectual property that could be patented or registered as a trademark, the use of an attorney or agent who is qualified to represent you in the USPTO is advised.

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