Once a petition is submitted via PTAB E2E, a PTAB 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,
- Evidence (e.g., certificate of service) that a copy of the petition was provided to the patent owner.
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 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. 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 will receive a copy via regular mail.