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What is PTAB?

 

The Patent Trial and Appeal Board (PTAB) is a tribunal within the United States Patent and Trademark Office (USPTO) that reviews rejections made by examiners in proceedings called ex parte appeals and decides patentability questions for issued patents raised by third parties in proceedings called AIA trials. 

The America Invents Act (AIA) created the PTAB or the Board. It was known previously as the Board of Patent Appeals and Interferences or BPAI.

The Board includes statutory members and administrative patent judges. The statutory members of the Board are the USPTO Director, Deputy Director, Commissioner for Patents, and Commissioner for Trademarks.  

Administrative patent judges are appointed by the Secretary of Commerce and are legally and technically trained.  Judges have extensive patent legal experience prior to their appointment on the Board, for example, in private practice, in government practice (e.g., at the Department of Justice or the International Trade Commission), and as in-house counsel in companies. Many also have served as USPTO examiners or judicial law clerks.  

The Board also includes patent attorneys, law clerks, and paralegals along with support staff to administer proceedings and hearings.

Learn more about the Board, its composition, history, and areas of jurisdiction.

 

What are ex parte appeals?

If a patent examiner twice rejects or issues a final rejection in a patent application, the applicant can seek review of the rejection by the Board. The Board calls such an applicant by the title appellant. 

An appellant and the examiner may submit written papers called briefs to explain their respective positions. An appeal brief contains certain required information to help the Board understand the invention and the arguments for patentability.  For help in preparing an appeal brief, the Board offers an appeal brief template and instructions to guide appellants; these documents featured on the Preparing an Ex Parte Appeal Brief Webpage.

In addition, the appellant also may request to make an oral presentation to the Board in what is called an oral hearing.  

The Board will review the briefs, attend the oral hearing, and then render a decision. The Board will either affirm or reverse, in part or whole, the examiner’s rejection. If the appellant is not successful in securing reversal of the examiner’s rejection from the Board, the appellant may seek reconsideration by the Board or federal court review or both.

The appeal process involves nine steps and is explained in these videos below:

 

Inventor Info Chat (Appealing a Final Rejection to the Patent Trial and Appeal Board: What you need to know, August 15, 2019) 

Boardside chat: (Appeals Made Easy, November 7, 2019)

 

Learn more about ex parte appeals on the PTAB's Appeal webpage. Also, feel free to use our resources for independent inventors and those new to appeals.

 

What are AIA proceedings? 

A third party who is not the patent owner, called a petitioner, may challenge the validity of the claims in an issued patent in an AIA proceeding before the Board. There are three main types of AIA proceedings: inter partes review, post grant review, and covered business method review. A patent owner may respond to the petition, and then the Board will determine whether to institute an AIA trial.  

If the Board institutes a trial, the petitioner and the patent owner will have opportunities to gather evidence and present additional briefing to the Board. The parties also may request an oral hearing before the Board. At the conclusion of the trial, the Board will issue a final written decision, determining whether the challenged claims are unpatentable.  An unsatisfied party may seek reconsideration by the Board or federal court review or both.

The AIA process involves two phases: an institution phase and trial phase. The institution phase runs from the filing of a petition to the Board’s decision on institution. The trial phase involves nine steps is explained in the video below:

BOARDSIDE CHAT (The Basics of AIA Trials, November 21, 2019)

Learn more about AIA trials on the PTAB's Trial webpage.

 

What can I expect from a hearing?

An appellant in an ex parte appeal and the parties in an AIA trial may request an oral hearing to explain their position before the Board. An oral hearing gives the Board an opportunity to ask questions of the parties to aid the Board in deciding the case.  An oral hearing may be held in a courtroom with a court reporter present to prepare a transcript of the proceeding.  

Learn more about oral hearings on the PTAB's Hearings webpage.

 

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