PTAB E2E frequently asked questions

1. Go to the PTAB E2E login page and select "Create an Account”
2. Enter the required information on the next screen
3. Check the I'm not a robot box to verify the Captcha images
4. Select Register
5. Check your email inbox to validate your new PTAB account. A new browser window should open when you click on the hyperlink in the email. If Chrome is your default browser, select Submit. If the hyperlink opens in a different browser, copy and paste the hyperlink from the email into a Chrome browser and select Submit. This will activate your account

Notification to the Board of petitions served via email must include:

1. Name of point of contact
2. Email address of point of contact
3. Patent number to which the petition corresponds (or application number in the case of a derivation proceeding)
4. Application number of the patent
5. Petitioner's application number (in the case of a derivation proceeding)
6. Number of claims challenged
7. Type of trial proceeding
8. Power of attorney
9. Fee (e.g., a deposit account authorization)

In addition, if a petition or document is served on another party via email or other means it must be followed by a later-filed motion requesting acceptance of the submission once PTAB E2E is available. The petition or document will be accorded the date on the certificate of service as the identified filing date.  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 overnight delivery is authorized only if both PTAB E2E 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

If you need to file a document that exceeds 25 megabytes, please follow the instructions below.

You can reduce the file size by:

1. Splitting a large file into multiple smaller files; and/or
2. Converting Microsoft Word documents into searchable PDF files, rather than printing documents and scanning them in as flat PDF files.
   

Or:

When filing a petition:

1. Upload a document in the proper format (i.e., PDF or MPEG for exhibits and PDF for all other documents)
2. Select Add
3. Look for an acknowledgement in the upper right of the PTAB E2E screen. A green check indicates the desired documents are attached; a red x indicates they are not attached.

When filing a document after the petitions is submitted:

1. Filing a document uploaded via the AIA Review Actions menu – File a Preliminary Response, File a Motion, View a Motion (and then select View Details), File a Rehearing or File an Appeal (for Notice of Appeal), enter the relevant information
2. Select Add after each document is uploaded, one at a time.
3. Look for an acknowledgement in the upper right on PTAB E2E screen.
4. When you have added all your documents, select Submit.
5. Once the documents are submitted, you will receive an email notification with a list of your documents filed.

To upload a document, other than a Preliminary Response, Motion, Rehearing Request, or Notice of Appeal:

1. Select the Edit icon next to the Documents tab.
2. Select the paper type.
3. Enter the relevant data and choose one document to be uploaded, then select Add.
4. Look for an acknowledgement in the upper right on the PTAB E2E screen.
5. When you are finished adding all your documents, you must select Done to receive any email listing your documents filed.

Do NOT upload a Preliminary Response, Motion, Rehearing Request, or Notice of Appeal using the document edit icon. Instead, use the AIA Review Actions menu as described above.

If you see “There is an issue saving document” in red in the upper right after adding your document, please refresh your screen and try to add your document again until you see a green check indicating a successful document upload.

If you did not receive an acknowledgement on the screen or a filing receipt via email, the document most likely did not upload properly and you should contact PTAB at 571-272-7822. You may also check whether the document is listed in the file contents of the AIA Review.

• 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

1. Select the appropriate country in the Country field
2. Select the blank - entry in the State field
3. Input three lines of the foreign address in the Address Line 1, City, and Postal Code fields

1. Appropriate fee successfully paid
2. Identification of the patent and the specific claim(s) being challenged
3. Identification of the real party in interest
4. Copies of the patents and printed publications relied upon in the petition,
5. 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.

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 § 42.06F
8. ailure 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)
10. The petition and supporting documents are served on the patent owner later than the filing of the petition.

Petition Document

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 Declaration), click on the Petition Documents, enter the document information and select Add.

File a Motion

To file a motion request document accompanying the petition (e.g., a motion to seal), the petition must be submitted prior to filing a motion request. To submit a motion request after the petition has been submitted, you can

1. Login to PTAB E2E
2. Go to My Docket
3. Locate the AIA Review case and open it by clicking on the petition number
4. Select the AIA Review Actions menu on the top right
5. Select File a Motion
6. From the Motion Type menu, select Motion to Seal
7. Upload the appropriate request
8. Select Add, and Submit

• Design - D followed by 6 digit number like D123456, d235126 etc.
• Plant - PP followed by 5 digit number like PP12456, pp14728 etc.
• Reissue - RE followed by 5 digit number like RE12345, re78945 etc.

• The inter partes request fee (§ 41.15(a)(1)): $19,000
• The inter partes post-institution fee (§ 41.15(a)(2)): $22,500
• Excess claims fee ($375 for each claim in excess of 20), example: for requesting 5 claims in excess of 20 (§ 41.15(a) (3)): $1,875
• Post-institution excess claims fee ($750  for each claim in excess of 20) for requesting 5 claims in excess of 20 (§ 41.15(a)(4)): $3,750 • Total: $47,125.00

Counsel cannot be changed after the petition has been filed and the Enter Appearance As Ptaent Owner has been approved. 

1. Login to PTAB E2E
2. Go to My Docket
3. Select the AIA review case and click to open the case
4. Find the AIA Review Actions dropdown menu on the top right and select File a Preliminary Response
5. On the next screen, reply No to the question: Are you uploading a Preliminary Response Waiver at this time?
6. Select “Choose File” to attach a document, enter the document name, select the availability of the document and Add.

1. Login to PTAB E2E
2. Go to My Docket
3. Select the  AIA Review case; and click to open the case
4. Find the AIA Review Actions dropdown menu on the top right, select File a Preliminary Response
   1. On the next screen, reply Yes to the question: Are you uploading a Preliminary Response Waiver at this time?
5. Select “Choose File” to attach a document, enter the document name, select the availability of the document and Add. 

To file a document after the petition is submitted:

1. Login to PTAB E2E and locate and open your case from My Docket
2. Go to the AIA Review Actions menu at the top right
3. Select File a Preliminary Response, File a Motion, File a Rehearing or File an Appeal (for Notice of Appeal)
4. Enter the relevant information and Select Add button after each document is uploaded one at a time
5. Look for an acknowledgement of success on the upper right of the PTAB E2E screen after adding each document.
6. After adding all of your documents, select Submit button

After the documents are submitted, then you will receive an email notification with a list of your documents filed. 

1. Login to PTAB E2E
2. Go to My Docket
3. Select the AIA Review number and click on to open the case
4. Go to the AIA Review Actions menu on the top right and select File a Motion
5. Select either one of the following based on case status:
   1.  Motion to Dismiss – Before Institution or
   2.  Motion to Terminate – After Institution
6. Enter the required information, and select a Paper type 
7. Choose the confidential settlement agreement and select Add button
8. Enter the required information for the document; in the Availability, enter Parties and Board Only
9. Select Add and Submit
10. Lastly, upload the settlement agreement document as well and select availability as 'parties and board only' to keep it confidential. See 37 C.F.R. § 42.74(c). 

1. Select Initiate New Petitions to get to the Initiate New Petition wizard
2. Select DER - Derivation Proceeding on the folowing screen and enter the information for the petition. For further information, see the PTAB E2E External User Guides.

• 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.