PTAB Operational FAQs (May 29, 2020)

PTAB Operational FAQs

1. Are paper filings available for PTAB documents?

Although electronic filings are strongly encouraged, paper filings are available if needed. Applicants and parties should be aware, however, that it is possible that delays could arise with processing paper filings, and, as a reminder, additional requirements exist when submitting paper filings in AIA and interference proceedings.

2. What are the additional requirements for paper filings in AIA and interference proceedings?

In order to file paper submissions in some PTAB proceedings, additional requirements apply. For example, AIA and interference paper submissions must be accompanied by a written explanation showing that the USPTO electronic filing systems were unavailable due to technical problems and email systems were down, or that extraordinary circumstances were present.

In addition, certain paper submissions, such as AIA petitions, must be submitted with a motion to the PTAB requesting acceptance of the paper submission and identifying a date of transmission, where a party seeks a filing date other than the date of receipt at the Board. 37 C.F.R. § 42.6(b). If you submit an AIA or interference filing on paper, you should notify the PTAB as soon as reasonably practicable by sending an email to Trials@uspto.gov.

3. Where do I go to file PTAB documents electronically?

Ex parte appeal filings may be made electronically through EFS-Web: https://www.uspto.gov/patents-application-process/file-online.

AIA proceeding filings may be made via P-TACTS: https://ptacts.uspto.gov/ptacts/ui/home.

Interference filings may be made via the Interference Web Portal: https://acts.uspto.gov/ifiling/.

4. Who do I contact if I need assistance for a matter at the PTAB, including electronic filing?

If you need assistance:

For questions relating to PTAB matters generally, and questions relating to docketed ex parte appeals (i.e., appeals in which the PTAB has issued a notice of docketing) and interferences, call 571-272-9797.

For questions relating to undocketed ex parte appeals, call 571-272-7701.

For AIA proceeding questions, including P-TACTS assistance, call 571-272-7822.

5. What happens if P-TACTS is down?

If you have a deadline for filing an AIA petition and/or other associated documents in a pending AIA case and you cannot file electronically via P-TACTS, you must use an alternative filing method. Specifically, AIA petitions and/or other associated documents may be served on opposing counsel via email. The Board should be notified of the service by email, copying opposing counsel, at Trials@uspto.gov. The email notification to the Board should NOT include attachments.

Notification to the Board of petitions served via email must include:
•   name of point of contact;
•   email address of point of contact;
•   patent number to which the petition corresponds (or application number in the case of a derivation proceeding);
•   application number of the patent;
•   petitioner’s application number (in the case of a derivation proceeding);
•   number of claims challenged;
•   type of AIA proceeding;
•   power of attorney; and
•   fee (e.g., a deposit account authorization).

In addition, if a petition or document is served via email or other means, it must be followed by a later-filed motion requesting acceptance of the submission once P-TACTS 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).

Alternatively, if P-TACTS is down during normal business hours, a party may contact the Board and request a one-day extension of time for due dates that are set by rule or orders of the Board. 37 C.F.R. § 42.5. In the unlikely event that an administrative patent judge is not available to rule on the extension, the Board may grant an extension the day after the paper is due.

In relation to extensions of time generally, please also see the USPTO announcement regarding the Coronavirus Aid, Relief, and Economic Security (CARES) Act (released March 31, 2020), the USPTO announcement extending certain patent and trademark deadlines to June 1 (released April 28, 2020), and the Notice of Extended Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act and Other Relief Available to Patent Applicants and Patentees (published April 28, 2020).

6. How can I monitor a case at the PTAB?

To monitor the status of your application or PTAB proceeding:
a)   Ex parte appeals - use Public Pair: https://portal.uspto.gov/pair/PublicPair
b)   AIA proceedings - use P-TACTS: https://ptacts.uspto.gov/ptacts/ui/home
c)   Interferences - use the Interference Web Portal: https://acts.uspto.gov/ifiling/

7. What other resources are available at the PTAB?

Additional PTAB resources include the following:
•   PTAB contact information
o   Phone: 571-272-9797 (Hours of operation: Monday through Friday 8:30 a.m. to 5 p.m. ET)
o   Email: Trials@uspto.gov (General information about PTAB AIA proceedings)
o   Email: PTAB_Appeals_Suggestions@uspto.gov (General information about PTAB ex parte appeals)
o   Email: PTABHearings@uspto.gov (Questions regarding PTAB hearings)
•   PTAB homepage: https://go.usa.gov/xdJRA
•   PTAB ex parte FAQs: https://www.uspto.gov/patents-application-process/appealing-patent-decisions/patent-trial-and-appeal-board-ptab-faqs
•   PTAB AIA trial FAQs: https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/faqs

8. May service of an AIA petition and supporting evidence be made electronically by email?

Under 37 C.F.R. §§ 42.105(a) and 42.205(a), an AIA petition and supporting evidence must be served on the patent owner at the correspondence address of record for the subject patent.

That notwithstanding, service may be made electronically by email to counsel associated with the correspondence address of record for the subject patent, but there are requirements that must be met. Electronic service of the petition and supporting evidence may be served electronically upon agreement of the parties. 37 C.F.R. §§ 42.105(b) and 42.205(b). Absent agreement, the petition must be accompanied by a motion requesting permission to serve the petition electronically and explain why electronic service is warranted as opposed to serving patent owner at the address of record for the challenged patent. Petitioner should notify the Board of electronic service of an AIA petition and supporting evidence via email to Trials@uspto.gov.

9. Does the Board require depositions to be conducted in-person?

No. Parties may conduct video and telephonic depositions as well as in-person depositions. Parties to proceedings before the Board are encouraged to meet and confer regarding appropriate means to conduct depositions consistent with their needs.

Should a party need an extension of time to conduct an in-person deposition, the party should first contact the opposing party and see if an agreement can be reached to stipulate to an extension of time. If the parties cannot agree, or if a due date cannot be extended by stipulation, the parties should contact the Board by joint email at Trials@uspto.gov. The joint email must identify the location of the deponent and the locations of deposing counsel and defending counsel, explain the steps the parties have taken to resolve the issue, identify any steps the parties have agreed upon, set forth any relief requested from the Board, and set forth any disagreements among the parties, including alternative proposals not mutually agreed upon. Additionally, a party seeking an extension of time should be prepared to explain to the Board how much of an extension is needed, why the extension is needed, and how the extension impacts the Board and parties’ ability to complete the proceeding within statutory deadlines.

10. What if my expert or affiant is unable to provide a written signature on a declaration or affidavit in a proceeding before the Board?

As with counsel, an expert or affiant may sign a document electronically by providing a typed name between two forward slashes (e.g., /Dr. James T. Jones Jr./). For further guidance, see 37 C.F.R. § 1.4(d)(2) and the Manual of Patent Examining Procedure § 502.02.

11. When filing electronically, what is the date of receipt of a document submitted to the PTAB?

Ex parte appeal filings may be made through EFS-Web. The time and date of receipt of a document filed via EFS-Web is the local time and date of receipt of the document in the USPTO headquarters in Alexandria, Virginia, which is in the Eastern Time zone. Manual of Patent Examining Procedure (“MPEP”), § 502.05(c). As such, the submission’s “date of receipt,” is the Eastern Time zone date that the document is received at the USPTO.

AIA proceeding filings may be made via P-TACTS. Interference filings may be made via the Interference Web Portal. The time and date of receipt for filings in P-TACTS and the Interference Web Portal is the local time and date of receipt of the filing in the USPTO headquarters in Alexandria VA. As such, the submission’s “date of receipt,” is the Eastern Time zone date that the document is received at the USPTO.