PTAB E2E Frequently Asked Questions


G10. How do I notify the Board that the parties have settled and request that the proceeding be terminated?

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 PTAB. 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 PTAB E2E 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? (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? (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?

The email addresses of all counsel listed on the "Counsel" tab 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.

For cases that were migrated from PRPS, the counsel tab will have the email listed on the counsel tab from PRPS.

For all newly filed AIA Reviews in PTAB E2E, the counsel’s email address (their email user ID) will receive notifications from PTAB E2E.

G14. Does metadata remain in a file after it is uploaded to PTAB E2E? (August 12, 2014)

Yes. A PDF or MPEG file uploaded to PTAB E2E is maintained in its original form (i.e., including metadata if the file originally contained metadata). Only the content of the file itself is part of the record, however, not the metadata. Parties may remove metadata from files prior to uploading.

G15. How do I receive notifications to a shared docketing email address?

Currently, PTAB E2E does not permit an additional email address to the case to receive notifications. The individual receiving the email must set up a rule in their mail service to forward the emails received from to a shared email address.

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 PTAB, 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)?

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 PTAB E2E?

Petitions for derivation proceedings may be filed beginning on March 16, 2013. Click on the "Initiate New Petitions" from the menu and you will be taken to the "Initiate New Petition" wizard. 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 PTAB E2E?

No, the petitioner's patent application must be filed with the Office like any other application. PTAB E2E 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.