Patent Trial and Appeal Board (PTAB) FAQs

Work is underway to consolidate all PTAB FAQs on the list below. In the meantime, you can find other PTAB FAQs at: Ex parte appeals, AIA trials, and Hearings.

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Appeals

In general, you, as a patent applicant, can appeal the Examiner’s final rejection of the claims in your application. These appeals are decided by the Patent Trial and Appeal Board (PTAB). You can find more information on the PTAB FAQ Page.

You can file a petition to expedite examination of your application by making it "special" under 37 CFR § 1.102. See Section 708.01 of the Manual of Patent Examining Procedure. A fillable form can be found at http://www.uspto.gov/web/forms/sb0028_fill.pdf There may also be special programs to accelerate your application. See for example the Green Technology Pilot Program described at http://www.uspto.gov/web/offices/com/sol/notices/74fr64666.pdf Additional information regarding other permanent and pilot programs for accelerated examination are described at http://www.uspto.gov/ip/global/patents/Worksharing.pdf

No, you may not try to contact a judge for help with an appeal. Other than during a hearing, judges will not discuss a particular appeal with you. Judges will rely on the written record, including a your brief(s), to decide the appeal.

If you have questions about preparing or filing documents on appeal, you can contact the examiner for the application or the Pro Se Assistance Program at 1-866-767-3848. 

If you have questions about a docketed appeal, i.e., the appeal has been assigned an appeal number, you may contact the Board’s Appeals Division at 571-272-9797 or by mail at the following address:

Appeal Related Matters
Patent Trial and Appeal Board
U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria, Virginia 22313-1450

Yes, appellant may reinstate the appeal by filing a reply brief that addresses the new ground of rejection. The appeal can also be reinstated by filing a complete new brief in compliance with 37 CFR 41.37. If instead of the Office action being mailed prior to September 13, 2004, the Office action was mailed on or after September 13, 2004, appellant cannot reinstate the appeal by filing a reply brief that addresses the new ground of rejection but instead can only be reinstated by filing a complete new brief in compliance with 37 CFR 41.37.

Yes, § 41.31 provides that an applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner to the Board by filing a notice of appeal accompanied by the fee set forth in § 41.20(b)(1) within the time period for reply provided in the non-final Office action.

If the RCE is accompanied by a proper submission and fee, the Office will enter the RCE and the submission, and reopen prosecution. If the submission is a fully responsive reply that presents an amendment under 37 CFR 1.121, an affidavit or declaration, and/or arguments, the reply would be considered by the examiner. If the reply does not place the application in condition for allowance, the Office will mail an Office action (that may include a non-final rejection or a final rejection as appropriate, but not an advisory action) in response to the reply. The Office will treat the notice of appeal as defective because it was prematurely filed before the examiner considers the RCE submission.

Ordinarily, a notice of appeal would have been proper when at least one claim has been twice rejected. In this instance, however, since applicant has elected to request reconsideration of the rejection (or further examination) by filing a reply under 37 CFR 1.111 rather than only appealing from the second non-final rejection, the notice of appeal is premature for the following reasons:
(1) The Office has not had the opportunity to consider the reply under 37 CFR 1.111 and issue an Office action in view of the reply (note that this is different than after-final situations where a reply under 37 CFR 1.116 is not entered as matter of right and applicant is appealing from the final rejection);
(2) The status of the claims are uncertain as to whether the examiner would reject the claims again in view of the reply (e.g., the appeal would be unnecessary if the reply places the claims in condition for allowance);
(3) The grounds of rejection are uncertain as to whether the examiner would apply the same grounds of rejection made in the second non-final rejection or make a new ground of rejection with or without using a new prior art reference;
(4) It is unclear which "decision" by the examiner applicant is appealing from because the second non-final rejection may no longer be relevant in view of the reply under 37 CFR 1.111 and the examiner has not issued another decision in response to the reply under 37 CFR 1.111; and
(5) A two-month time period for filing an appeal brief cannot be running against the applicant when applicant cannot determine whether the claims are under rejection again and which grounds of rejection would apply to the claims.

Accordingly, a notice of appeal is prematurely filed, and is thus defective when it is filed after a reply under 37 CFR 1.111 but before the Office issues another Office action in view of the reply. Applicant must wait to file any appeal until the examiner considers the reply and the claims are rejected again. Once the Office action mailed in response to the reply applicant may file another notice of appeal under 37 CFR 41.31. (Similarly, a notice of appeal is defective if it is filed on the same day as the reply under 37 CFR 1.111 or a request for continued examination (RCE) under 37 CFR 1.114. See Questions and Answers C8 and C9.)

Any previously paid fees for the first notice of appeal will be applied to the new notice of appeal. If, however, the appeal fee has increased, applicant is required to pay the difference between the current fee and the amount previously paid at the time of filing the second notice of appeal. Any patent term adjustment determination for a successful appellate review will begin on the date of the new notice of appeal and not on the date of the defective notice of appeal.

The examiner should fully explain how the limitations of the independent claim are rejected and address the appellant's arguments regarding the dependent claim.

Yes, the examiner may provide a copy of the claims involved in the appeal in an appendix to the examiner's answer, or object to the appeal brief and require appellant to provide the claims appendix.

The Office will treat the reply under 37 CFR 1.111. For example, if the reply is a fully responsive reply to the second non-final rejection that presents an amendment under 37 CFR 1.121, an affidavit or declaration, and/or arguments, the reply would be entered and considered by the examiner. If the reply does not place the application in condition for allowance, the Office will mail an Office action (that may include a non-final rejection or a final rejection as appropriate, but not an advisory action) in response to the reply. The Office will treat the notice of appeal as defective because it was prematurely filed before the examiner considers the reply under 37 CFR 1.111.

Yes, the examiner should check the claims presented in the claims appendix to the extent that the examiner has a reasonable assurance that the correct claims are set forth in the appendix.

An applicant can reinstate an appeal by filing a second notice of appeal in compliance with 37 CFR 41.31 and a complete new brief in compliance with 37 CFR 41.37. Any fees paid for the notice of appeal, appeal brief, and request for an oral hearing (if applicable) will be applied to the reinstated or second appeal on the same application as long as a final Board decision has not been made on the first appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have increased since they were previously paid, then applicants must pay the difference between the current fee(s) and the amount previously paid.

An applicant must follow the requirements set forth in 37 CFR § 41.31 which require that a notice be filed within the time allowed for response from the examiner's last office action, and also pay a fee. See Section 1204 of the Manual of Patent Examining Procedure. The notice of appeal and appropriate fee may be filed up to 6 months from the date of the Office action from which the appeal was taken, so long as an appropriate petition and fee for an extension of time under 37 CFR 1.136(a) is filed either prior to or with the notice of appeal. A sample form can be found at http://www.uspto.gov/web/forms/sb0031.pdf. If certificate of mailing procedures under 37 CFR § 1.8 are used, see MPEP 512. The actual receipt date of the Notice of Appeal will also be the date which is entered on Office records and from which any subsequent periods are calculated. For example, 37 CFR § 41.37 gives an appellant 2 months from the receipt date of the notice of appeal to file an appeal brief. If the last day to reply to a final Office action was January 10, 2011, and applicant deposited a Notice of Appeal with fee in the U.S. mail on January 10, 2011, and so certified using a certificate of mailing, that appeal is timely even if it is not received in the U.S. Patent and Trademark Office until January 16, 2011. Since the date of receipt of the notice of appeal is January 16, 2011, this date will be used to calculate the time at which the brief is due, and thus the brief will be due on March 16, 2011. This is 2 months after the date of receipt of the notice of appeal.

The current MPEP (Ninth Edition, March 2014, Latest Revision, February 2023) does include the revised appeal practice. 

No. Only remands which are in further consideration of a rejection shall provide appellant the right to reopen prosecution under 37 CFR 41.50. An example of a remand in further consideration of a rejection is where the Board has knowledge of a ground of rejection not involved in the appeal and remands the application for consideration of such ground of rejection. Certain remands from the Board will not give the appellant the right to reopen prosecution (e.g., administrative remands, a remand to consider an IDS submitted after the jurisdiction has shifted to the Board and a remand to consider a reply brief not addressed by the examiner).

Yes, with the Technology Center Director's, or his or her designee's, approval.

Appellant may request to reopen prosecution only if (1) a supplemental examiner's answer is written in response to a remand by the Board; (2) the remand is for further consideration of a rejection; and (3) the remand is on or after the effective date. If the Board does not remand the application to the examiner or the remand is for another reason (e.g., for consideration of a new issue raised in a reply brief), the appellant cannot request that prosecution be reopened under § 41.50(a)(2) in response to a supplemental examiner's answer.

Example 1: The rejection under 35 USC 103 over A in view of B. The brief argues that element 4 of reference B cannot be combined with reference A as it would destroy the function performed by reference A. The reply brief argues that B is nonanalogous and therefore the two references cannot be combined.

Example 2: Same rejection as Example 1. The brief argues only that the pump means of claim 1 is not taught in the applied prior art. The reply brief argues that the particular retaining means of claim 1 is not taught in the prior art.

Yes, appellant may include other new issues in a reply brief. Appellant is not limited to responding only to the new rejection or new issue raised in the examiner's answer. However, new or non-admitted amendments/affidavits must not be included. 37 CFR 41.41(a)(2).

Yes, § 41.43 provides that the primary examiner must acknowledge receipt and entry of the reply brief (which is the same procedure as in the former § 1.193(b)(1)). A reply brief that is not filed in compliance with § 41.41(a) (e.g., the reply brief is not timely filed within two months from the date of the examiner's answer or it includes a new or non-entered amendment), however, will not be considered. The examiner will notify the appellant that the reply brief is non-compliant.

The examiner may provide a supplemental examiner's answer, with the Technology Center Director's or his or her designee's approval, to respond to the new issue(s) raised in the reply brief. The appellant cannot request that prosecution be reopened after such a supplemental examiner's answer. The appellant may file another reply brief under § 41.41 to any supplemental examiner's answer within 2 months from the date of the supplemental examiner's answer. 37 CFR 41.4(3)(b). Extensions of time under § 1.136(a) are not applicable.

The Technology Center Director, or his or her designee would indicate approval of a new ground of rejection (or a supplemental examiner's answer) by stamping or writing "New Ground of Rejection Approved" on the first page of the examiner's answer (or a supplemental examiner's answer) along with the approving person's printed name, signature and the date, or by providing a similar clear indication on the examiner's answer (or a supplemental examiner's answer) that the action has been approved.

If all of the claims under appeal are subject to the new ground of rejection, the examiner should dismiss the entire appeal by following the procedure set forth in the MPEP 1215 (e.g., if no claims stand allowed, the application is considered as abandoned on the date after the reply or reply brief is due).

If only some of the claims under appeal are subject to the new ground of rejection, the examiner should notify the appellant that the appeal as to the claims subject to the new ground of rejection is dismissed and the claims subject to the new ground of rejection are canceled. The dismissal of the appeal as to some of the claims on appeal operates as an authorization to cancel those claims and the appeal continues as to the remaining claims. Examiner may use the following draft form paragraph to notify the appellant:

Appellant failed to respond to the examiner's answer that includes a new ground of rejection mailed on [1]. Under 37 CFR 41.39, if an examiner's answer contains a rejection designated as a new ground of rejection, appellant must, within two months from the date of the examiner's answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, to address each new ground of rejection, to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection. In view of appellant's failure to file a reply or a reply brief within the time period set forth in 37 CFR 41.39, the appeal as to claims [2] is dismissed, and these claims are canceled. Only claims [3] remain in the application. The appeal continues as to these remaining claims. The application will be forwarded to the Board after mailing of this communication.

Examiner Note:
1. In bracket 1, insert the mailing date of the examiner's answer.
2. In bracket 2, insert the claim numbers of the claims subject to the new ground of rejection.
3. In bracket 3, insert the claim numbers of the claims that are not subject to the new ground of rejection.

Yes, the entire appeal will be dismissed if all of the claims under appeal are subject to the new ground of rejection. The examiner should follow the procedure set forth in MPEP 1215, e.g., if there are no allowed claims, the application would be abandoned.

No, the entire appeal should not be dismissed if there are other claims on appeal that are not subject to the new ground of rejection. Section 41.39(b) provides only for dismissal of the appeal as to the claims subject to the new ground of rejection. 

Yes, appellant may file a petition under § 1.181 within two months from the mailing of the examiner's answer (see § 1.181(f)). The petition should include reasons why the rejection should be designated as a new ground of rejection. No petition fee is required. Any allegation that an examiner's answer contains a new ground of rejection but not designated as such is waived if not timely (§ 1.181(f)) raised by way of a petition under § 1.181(a). See MPEP 1208.01.

The filing of the petition does not toll any time period running, therefore if appellant wishes to present arguments to address the rejection in the examiner's answer, appellant must also file a reply brief to an examiner's answer within two months from the mailing date of the examiner's answer. If the TC Director or designee decides that the rejection is considered a new ground of rejection, the examiner would be required to send a corrected examiner's answer that identifies the rejection as a new ground of rejection in a separate heading in the "Grounds of Rejection to be Reviewed on Appeal" and "Grounds of Rejection" sections of the examiner's answer and include the approval of the TC Director or designee. The appellant may then file a request that the prosecution be reopened by filing a reply under § 1.111, or a request that the appeal be maintained by filing a reply brief or resubmitting the previously-filed reply brief, within two months from the mailing of the corrected examiner answer.

No, such a rejection will not be considered a new ground of rejection in an examiner's answer. If such a rejection is included in an examiner's answer, the examiner will not be required to obtain the approval of the TC Director or designee, and appellant will not have the right to request that prosecution be reopened.

No, if appellant files a reply in compliance with § 1.111 in response to an examiner's answer that contains a new ground of rejection, the examiner must reopen the prosecution by entering and considering the reply.

Judges are assigned to appeals according to a PTAB standard operating procedure based upon considerations such as their educational background, experience, workload, and conflicts.

An examiner can make a new ground of rejection on appeal. The examiner must, however, clearly designate in the examiner’s answer that the answer contains a new ground of rejection, and they must provide the appellant with the option to either maintain the appeal or reopen prosecution.

If you believe an examiner’s answer includes an undesignated new ground of rejection, and you want to reopen prosecution to enter an amendment, affidavit, or evidence in response, then you may file a petition seeking to designate the examiner’s answer as containing a new ground of rejection. The filing of this petition will put the appeal on hold until the petition is decided.

If your petition is granted, the appeal is terminated and prosecution is reopened. If your petition is denied, then the appeal continues, and you have the option to file a reply brief. 

 

 

[Examiner's answer]

No, an appellant cannot include any new affidavits or evidence in the appeal brief or reply brief.

 

 

[After notice of appeal]

Yes, with certain restrictions. 

Amendments filed after a notice of appeal, but before the appeal brief, may be filed to: 

  • Cancel claims
  • Comply with any requirement of form expressly set forth in a previous action by the examiner
  • Present rejected claims in better form for consideration on appeal
  • Amend the specification or claims upon a showing of good and sufficient reasons why the amendment is necessary and was not presented earlier

Amendments filed on or after an appeal brief may be filed to: 

  • Cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding
  • Rewrite dependent claims in independent form

 

[After notice of appeal]

The average appeal takes approximately 15 months. The USPTO refers to the time from when the Board receives jurisdiction over the appeal to when a decision is issued as “appeal pendency.”  

 

 

[Timing of an appeal]

An appeal will be expedited if the examination of an application was also expedited. No separate request is required to expedite an appeal. 

If the examination of an application is not expedited, there is no process before the Board to request expedited disposition of the case.

 

 

[Timing of an appeal]

Except in unusual situations, interviews are not permitted after the appeal brief is filed. 

If you have filed a notice of appeal but have not filed an appeal brief, you normally may have one interview with the examiner. 

 

 

[After notice of appeal]

By USPTO rule, an appeal brief must include the following sections:

  1. Identification of the real party in interest
  2. Identification of related appeals, interferences, and trials
  3. A summary of claimed subject matter
  4. Arguments as to why the examiner’s rejection was in error
  5. A listing of the claims subject to appeal.  

Further details as to the requirements for each of these sections may be found at MPEP 1205.

If an appellant submits a brief lacking one of the above sections, the Office will notify the appellant of the reasons for non-compliance and give the appellant a time period to file an amended brief. If the appellant does not file an amended brief that overcomes the reasons for non-compliance within the set time period, the appeal will be dismissed.

 

 

[Appeal filing]

You are not required to file a reply brief in response to an examiner’s answer unless the examiner’s answer includes a new ground of rejection. When the examiner’s answer includes a new ground of rejection, you must either file a reply brief to maintain the appeal or file a reply to reopen prosecution.

If you fail to respond to an examiner’s answer containing a new ground of rejection, the appeal may be dismissed regarding the claims subject to the new grounds of rejection. When all appealed claims are subject to the new grounds of rejection, the entire appeal may be dismissed.

 

 

[After notice of appeal]

Yes. Even if no reply brief is filed, the appeal forwarding fee must be paid before the period of time for filing a reply brief expires. If the forwarding fee is not paid, the appeal will be dismissed.

If you wish to request an oral hearing, you must also make that request by the due date for the reply brief.

 

 

[After notice of appeal]

By USPTO rule, a reply brief must contain certain information: 

  1. An identification page setting forth the appellant’s name(s), the application number, the filing date of the application, the title of the invention, the name of the examiner, the art unit of the examiner, and the title of the paper (i.e., Reply Brief); and
  2. Arguments as to why the examiner’s rejection was in error

Generally, the arguments should not repeat those presented in the appeal brief, but instead respond to arguments made in the examiner’s answer.

 

 

[After notice of appeal]

If you believe an examiner’s answer includes an undesignated new ground of rejection, you may either:

  • File a petition seeking to designate the examiner’s answer as a new ground of rejection, which would terminate the appeal; or
  • Continue with the appeal by filing a reply brief addressing the new rejection

 

[After notice of appeal]

If your appeal is unsuccessful, you may continue to prosecute the application before the examiner, request rehearing by the Board, or seek judicial review by the federal courts.

 

 

[Appeal outcome]

Yes, the Board may raise new grounds of rejection in an appeal decision. In such cases, the Board will designate the new grounds of rejection under a subheading that says “NEW GROUNDS OF REJECTION.”

 

 

[Appeal outcome]

If the examiner’s answer contains any new grounds of rejection, the reply brief should either request the appeal be maintained or request that prosecution be reopened.

If you request the appeal be maintained, the reply brief must address each new ground of rejection. The reply brief cannot include any claim amendments, affidavits, or other evidence. 

If you request that prosecution be reopened, you may file claim amendments, affidavits, or evidence responsive to the new grounds of rejection.

 

 

[After notice of appeal]

You should file a reply brief within two months of either:

  • The date of the examiner’s answer, or 
  • A decision refusing to grant a petition to designate a new ground of rejection in an examiner’s answer

Extensions of time are generally not permitted, but may be granted when a reply cannot be filed within two months. In such cases, the period for submitting a reply brief will be extended for sufficient cause and for a reasonable time specified. The request for an extension must be filed by the date the reply brief is due. Filing a request for an extension does not mean the extension has been granted.

 

 

[After notice of appeal]

No. The Board does not have the authority to issue a patent. If an appellant is successful on appeal, the application is returned to the examiner, who will decide whether to issue a patent for the application or to make a new rejection.

 

 

[Appeal outcome]

No, examiner’s objections are not appealable to the Patent Trial and Appeal Board. The Board’s jurisdiction is limited primarily to review of examiner’s rejections based on unpatentability. 

The Board also does not review matters of examiner procedure, such as a requirement for restriction or election of species, finality of a rejection, non-entry of claim amendments, and holdings of abandonment. Applicants can seek review of these matters by filing a petition to the Director of the U.S. Patent and Trademark Office.

 

[Appeal filing]

Appeals - Filing

Yes. The examiner must notify the applicant to explain if the paper is or is not entered for purposes of appeal.

If the reply is not fully responsive to the new ground of rejection, but the reply is bona fide, examiner should provide a 30-day or 1-month time period, whichever is longer, for appellant to complete the reply pursuant to § 1.135(c). If the reply is non-bona fide (e.g., does not address the new ground of rejection by presenting a new argument or amended claims), examiner must sua sponte dismiss the appeal as to the claims subject to the new ground of rejection if the two month time period to reply to the examiner's answer has expired. The examiner should notify the appellant that they have the balance of any remaining time period to correct the non-bona fide reply. Extensions of time under § 1.136(a) are not applicable. 37 CFR 41.39(c). It would be improper for the examiner to sua sponte dismiss the appeal until the time period for reply has expired.

Yes, the examiner may make the next Office action final unless the examiner introduces a new ground of rejection that is neither necessitated by the applicant's amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP 706.07(a).

Such an affidavit or other evidence will not be entered for purposes of appeal since it does not overcome all rejections under appeal. 37 CFR 41.33(d)(1).

Section 1.116 applies in this situation. Such an amendment filed after a final action is not entered as a matter of right. It may be admitted if it cancels claims or complies with any requirement of form expressly set forth in a previous Office action; presents rejected claims in better form for consideration on appeal; or amends the specification, including claims, upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.

No, appeal documents are not filed with the Board. You are encouraged to file appeal documents online via the Patent Center. 

Appeal documents can also be faxed to 571-272-8300 or mailed to:   

Commissioner for Patents   
P.O. Box 1450   
Alexandria, VA 22313-1450

After receiving the second rejection of a claim, you have six months to file a notice of appeal. After filing a notice of appeal, an applicant becomes an appellant. As an appellant, you have two months after filing a notice of appeal to file an appeal brief.

When the Board assumes jurisdiction of an appeal, it will issue a docketing notice to you that includes the application number for the appeal and an appeal number. This docketing notice verifies that the Board received the appeal.

You may appeal a patent application after any claim has been twice rejected (i.e., two non-final rejections) or after the claim is subject to a final rejection.

Appeals - Timing

If appellant wishes to file a second appeal, appellant must file a second notice of appeal and an appeal brief in compliance with § 41.37(c)(1). Once the notice of appeal and appeal brief fees have been paid, however, a second set of notice of appeal and appeal brief fees will not be required except if a final Board decision has been made on the first appeal. SeeRules of Practice Before the Board of Patent Appeals and Interferences, 69 Fed. Reg. 49959 [PDF], 49975 (August 12, 2004) (final rule)), answer to Comment 44. If, however, the fees set forth in 37 CFR 41.20 have increased since they were previously paid, then applicants must pay the difference between the current fee(s) and the amount previously paid.

Document

Time period for filing

Are extensions of time under
§ 1.136(a) available for patent applications

Are extensions of time under
§ 1.136(b) available for patent applications?

Are extensions of time under
§ 1.550(c) available for ex partereexamination proceedings?
Appeal brief Two (2) months from the receipt date of a notice of appeal (see § 41.37(a)(1)). Yes, up to five (5) months after the two month time period for filing the brief (see § 41.37(e)). Yes (see § 41.37(e)). Yes (see § 41.37(e)).
Amended appeal brief filed in response to a notice of non-compliant appeal brief Thirty (30) days or one (1) month, whichever is longer, from the date of mailing a notice of non-compliant appeal brief (see § 41.37(d)). Yes, up to five (5) months after the 30 days or 1 month time period for filing the amended brief (see § 41.37(e)). Yes (see § 41.37(e)). Yes (see § 41.37(e))
A reply under §1.111 or a reply brief in response to a new ground of rejection in an examiner's answer Two (2) months from the date of mailing of the examiner's answer (see § 41.39(b)). No (see § 41.39(c)). Yes (see § 41.39(c)). Yes (see § 41.39(c))
A reply brief under §41.41 or §41.43 Two (2) months from the date of mailing of the examiner's answer (see § 41.41(a)(1) or § 41.43(b)). No (see § 41.41(c) or § 41.43(c)). Yes (see § 41.41(c) or §41.43(c)) Yes(see § 41.41(c) or §41.43(c))
A reply under §1.111 or a reply brief in response to a supplemental examiner's answer written in response to a remand by the Board for further consideration of a rejection under §41.50(a)(2). Two (2) months from the date of mailing of the supplemental examiner's answer (see § 41.50(a)(2)). No (see § 41.50(f)). Yes (see § 41.50(f)). Yes (see § 41.50(f)).

37 CFR 1.136(b) provides that when a reply cannot be filed within the time period set for such reply and § 1.136(a) is not available, the period for reply will be extended only for sufficient cause and for a reasonable time specified. Any request for an extension of time under § 1.136(b) must be filed on or before the day on which such reply is due, but the mere filing of such a request will not effect any extension.

37 CFR 1.550(c) provides that the time for taking any action by a patent owner in an ex parte reexamination proceeding will be extended only for sufficient cause and for a reasonable time specified. Any request for an extension of time must be filed on or before the day on which such reply is due, but the mere filing of such a request will not effect any extension.

The date of receipt by the Office (or date of deposit with the USPS as set forth in 37 CFR 1.10) of the notice of appeal will be used as the date of filing the notice of appeal as set forth in 37 CFR 41.37(a). See MPEP § 512. The brief is required to be filed within two months from the date of filing the notice of appeal. The time period allowed for reply to the action from which the appeal was taken is no longer relevant. Appellant may petition for extensions of time under 37 CFR 1.136(a) for patent applications or 37 CFR 1.550(c) for reexamination proceedings.

Patent Trial and Appeal Board (PTAB) - Appeals

Category

Filed after a final rejection, but before or on the date of filing a notice of appeal

Filed after the date of filing a notice of appeal, but prior to the date of filing an appeal brief

Filed on or after the date of filing an appeal brief
Amendments

May be admitted only to:
* Cancel claims;
* Comply with any requirement of form expressly set forth in a previous action;
* Present rejected claims in better form for consideration on appeal; or
* Amend the specification or claims upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.
See § 1.116(b).

May be admitted as provided in § 1.116(b). See § 41.33(a) and previous column.

May be admitted only to:
* Cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding; or
* Rewrite dependent claims into independent form.
See § 41.33(b).
Affidavits or Other evidence

May be admitted upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented. See §1.116(e).

May be admitted if it:
* Overcomes all rejections under appeal; and
* Upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented.
See §41.33(d)(1).

Affidavits or other evidence may not be admitted. See §41.33(d)(2).

Yes. However, the filing of an RCE after a timely filed Request for Rehearing and prior to the Board's decision on the Request for Rehearing will result in a dismissal of the Request for Rehearing. See also MPEP § 706.07(h) and 37 CFR § 1.114(a)(3) for procedures for filing an RCE after a Board decision and before an appeal to a court.

A request to withdraw an appeal may be filed any time before the decision is rendered. Withdrawal of an appeal may result in the abandonment of some or all claims. See MPEP §§ 1215.01, 1215.02, 1215.03. Appellant should file the request by facsimile transmission to 571-273-8300 or through online filing using Patent Center. Information about Patent Center can be found at https://www.uspto.gov/patents/apply/patent-center.

A docketing notice is a notice issued by the Board assigning an appeal number to your appeal.

An appellant must follow the requirements set forth in 37 CFR § 41.37 which require a brief to be filed within 2 months from the filing date of the notice of appeal, and payment of a fee. All requirements of the brief are set forth in 37 CFR § 41.37. The time periods set forth in 37 CFR § 41.37 are extendable under the provisions of 37 CFR § 1.136 for patent applications and 37 CFR § 1.550(c) for ex parte reexamination proceedings. The See also Section 1205 of the Manual of Patent Examining Procedure (MPEP) for additional guidance. To avoid common pitfalls in preparing an appeal brief, see also http://www.uspto.gov/ip/boards/bpai/procedures/guidance_noncompliant_briefs.jsp

A notice of appeal may be filed after any of the claims has been twice rejected in applications for patent, including reissue or in an ex parte reexam based on a request filed before November 29, 1999. The limitation of "twice rejected" does not have to be related to a particular application. For example, if any claim was rejected in a parent application, and the claim is again rejected in a continuing application, then applicant can choose to file an appeal in the continuing application, even if the claim was rejected only once in the continuing application. Applicant cannot file an appeal in a continuing application, or after filing a request for continued examination (RCE) under 37 CFR 1.114, until the application is under a rejection. For ex parte reexaminations based on requests filed on/after November 29, 1999, the claims must be finally rejected - see 37 CFR § 41.31 (a)(3). To appeal, an applicant must file a notice of appeal followed by an appeal brief.

37 CFR 1.111 would apply to such an amendment. 37 CFR 1.116 would not apply since it is limited to amendments and affidavits or other evidence filed after final action and prior to or with any appeal. If the amendment were filed after a notice of appeal, 37 CFR 41.33 would apply.

The term, "other evidence," includes: declarations and exhibits, but it does not include information disclosure statements (IDS).

No, the Office will accept an appeal brief filed before September 13, 2004, that complies with either former 37 CFR 1.192(c) or new 37 CFR 41.37(c), even if the fee for the brief was timely filed on or after September 13, 2004.

No, appellant may not request that prosecution be reopened under § 41.50(a)(2)(i) in response to the supplemental examiner's answer since the Board remanded the application before the effective date. Appellant may request that prosecution be reopened in response to a supplemental examiner's answer written in response to the remand by the Board, only if: (1) the remand is on or after the effective date, and (2) the remand is for further consideration of a rejection. The Board should indicate in the remand if § 41.50(a)(2)(i) applies. Thus, appellant may not request that prosecution be reopened under § 41.50(a)(2)(i) if the remand is for another reason.

Yes, the examiner may provide a supplemental examiner's answer (with Technology Center Director or designee approval) if it is mailed on or after September 13, 2004 in response to any new issue raised in a reply brief, even if the reply brief was filed before September 13, 2004. Appellant may file another reply brief in compliance with § 41.41 to reply to the supplemental examiner's answer within two months from the date of mailing of the supplemental examiner's answer. Extensions of time under § 1.136(a) are not applicable to the two-month time period.

Yes, an examiner's answer mailed on or after September 13, 2004 may include a new ground of rejection (with Technology Center Director or designee approval) in compliance with § 41.39. Any examiner's answer mailed before September 13, 2004, however, may not include a new ground of rejection. See former § 1.193.

Any affidavit or other evidence filed after a final rejection, or an appeal, on or after the effective date, will be subject to the revised or new rules (i.e., the revised § 1.116 or new § 41.33).

No, an amended appeal brief, based on an appeal brief originally filed prior to September 13, 2004, would be acceptable if it complies with either former § 1.192 or § 41.37(c), regardless of when the Office mailed a Notice requiring correction of the noncompliant appeal brief.

Yes, a brief filed before September 13, 2004 that is compliant with the new § 41.37(c) will be acceptable.

Yes, any appeal brief filed on or after September 13, 2004 must be in compliance with the requirements set forth in § 41.37(c) and be accompanied by the appropriate fee under § 41.20(b)(2). If the brief does not comply with § 41.37(c), an amended brief will be required under § 41.37(d).

Exception: If the appeal brief is filed with a certificate of mailing or transmission under § 1.8 and the date on the certificate of mailing or transmission is before September 13, 2004, the appeal brief may comply with either former § 1.192 or new § 41.37, even if the appeal brief is received by the Office on or after September 13, 2004.

Yes, extensions of time under § 1.136(a) are required for filing an RCE or amendment after two months from the filing of the notice of appeal, even if the RCE or amendment is filed within the three months from the mailing of the action from which the appeal was taken.

Appellant must file the second appeal brief (in compliance with the format and content requirements of § 41.37(c)) within two months from the date of filing the second notice of appeal, even if the first notice of appeal and the first brief were filed before the effective date. The two month time period is extendable under the provisions of § 1.136 for patent applications and § 1.550(c) for ex parte reexamination proceedings. See § 41.37(e).

If the notice of appeal is filed before September 13, 2004, the time period for filing an appeal brief will be the time period set forth in former § 1.192(a) which provides that the appellant must file an appeal brief: (1) within two months from the date of filing of the notice of appeal; or (2) within the time allowed for reply to the action from which the appeal was taken, if such time is later.

The time period set forth in former § 1.192(a) also applies if the notice of appeal is filed with a certificate of mailing or transmission in compliance with § 1.8 and the date on the certificate of mailing or transmission is before the effective date of September 13, 2004, but the notice of appeal is received by the Office on or after September 13, 2004. The two month time period will begin on the date of receipt of the notice of appeal.

Appellant can notify the Board of recent decisions by filing a communication listing the caption of the case, proceeding number and decision date and including a copy of the decision. An example of such circumstances would be where a pertinent decision of a court or other tribunal was not published until after the brief or reply brief was filed. If you need further information, contact either Dale Shaw or Kimberly Jordan at 571-272-9797.

Yes. Appellant may file an RCE within the 2 month period after the decision is entered. See MPEP §§ 1215.01, 1215.02, 1215.03. See also MPEP § 706.07(h) and 37 CFR § 1.114(a)(3) for procedures for filing an RCE after a Board decision and before an appeal to a court.

Yes. Applicants should advise the Board when an RCE is filed in an application containing an appeal awaiting decision. Failure to exercise appropriate diligence in this matter may result in the Board refusing an otherwise proper request to vacate its decision. If the appeal has not been decided, the filing of the RCE will result in dismissal of the appeal. See MPEP §§ 1215.01, 1215.02, 1215.03. See also MPEP § 706.07(h) for procedures for filing an RCE after appeal but before Board decision.

If you received a Notice of Non-Compliance regarding your appeal brief, the relevant contact information for the paralegal or supervisory paralegal is included on the Notice. If you are unable to contact either, contact Merrell Cashion at 571-272-9797. For reexamination appeal briefs, please contact Merrell Cashion.

Appellant must notify the Board of changes in the real party in interest by filing a communication indicating the new real party in interest as well as when the change took effect. The identification of the real party in interest allows members of the Board to comply with ethics regulations associated with working in matters in which the member has a financial interest to avoid any potential conflict of interest. If you need further information, contact either Dale Shaw or Kimberly Jordan at 571-272-9797.

Information on the brief review checklists can be found at the following link: http://www.uspto.gov/ip/boards/bpai/procedures/guidance_noncompliant_briefs.jsp

Information on the federal register notices concerning the streamlined brief review can be found at the following link: http://www.uspto.gov/ip/boards/bpai/procedures/guidance_noncompliant_briefs.jsp

LEAP

To request LEAP participation, please complete a LEAP Practitioner Request for Oral Hearing Participation and Verification Form, available at the LEAP website, www.uspto.gov/leap.  

The Verification Form requires you, as a LEAP practitioner, to affirm your eligibility for the program, and must include your name, email, telephone, firm name (if applicable), address, scheduled hearing date, and signature. The Request for Oral Hearing Participation must include the scheduled hearing date, your name, email, telephone, firm (if applicable), address, and signature.

Substantive oral argument appearances, in the context of the Patent Trial and Appeal Board, generally include substantive oral arguments made during an ex parte appeal hearing or oral hearing for a post grant proceeding, wherein the arguments go to the merits of the case. 

In a federal tribunal, such as a U.S. district court or a U.S. court of appeals, substantive oral argument appearances generally include substantive oral arguments that go to the merits of the case, rather than to ancillary issues that arise, such as during status conferences or during discovery disputes. 

If you doubt as to whether an appearance qualifies as a substantive oral argument for purposes of determining LEAP eligibility, you can email LEAP@USPTO.gov

We have two main goals for our Leap into Experience Advancement Program (LEAP):

  • The intellectual property (IP) law community needs highly skilled practitioners, and the United States Patent and Trademark Office heavily invests in the success of America’s IP law community. LEAP helps train junior practitioners who will become the next generation of IP lawyers. 
  • It can be difficult for practitioners to gain court experience, especially for underrepresented groups such as women and minorities. LEAP provides unique access and training opportunities for every demographic.

Please visit the LEAP website, www.uspto.gov/leap, to obtain a LEAP Practitioner Request for Oral Hearing Participation and Verification Form.

No, a conference call where you addressed the PTAB does not count as a substantive oral argument for purposes of determining LEAP eligibility.

No, the Patent Trial and Appeal Board does not draw any inference about the importance of an issue, or the merits of the party’s arguments regarding that issue, from the party’s decision to have (or not to have) a LEAP practitioner argue.

The seven years started on the date you first became licensed or registered, whichever occurred earlier. In this case, the seven-year eligibility period started the day you first became licensed to practice law, i.e., when you were admitted to a U.S. state or District of Columbia Bar, 10 years ago.

Please email your completed Verification Form and Request for Oral Hearing Participation to PTABHearings@uspto.gov.

LEAP practitioners may participate in conference calls, pre-hearing conferences, and depositions. We encourage LEAP practitioners to participate in all aspects of PTAB proceedings as part of our commitment to fostering the next generation of IP lawyers.

A LEAP Practitioner Request for Oral Hearing Participation and Verification Form must be completed for each individual proceeding in which LEAP participation is desired. You remain eligible for LEAP as long as you have seven or fewer years of experience and three or fewer prior substantive oral arguments.  

Requiring a new Request and Verification Form for each proceeding ensures that you confirm your eligibility and continue to meet these requirements.

Maybe. If you are permitted to argue at an oral hearing—e.g., you are admitted pro hac vice as backup counsel and lead counsel is present at the hearing—and you otherwise meet the requirements for LEAP eligibility, then you may argue as a LEAP practitioner.

On the day of their LEAP request, a practitioner must have seven or fewer years of experience as a licensed attorney or registered agent. Seven years begins on the date the practitioner is first licensed or registered, meaning the date the practitioner is admitted to a U.S. state or District of Columbia Bar or becomes a registered patent agent at the United States Patent and Trademark Office, whichever occurs earlier.

The purpose of LEAP is to encourage parties to utilize the skills of practitioners without extensive oral advocacy experience.  If a party does not have an eligible LEAP practitioner, then this program is not available to that party, and additional oral argument time may not be requested on that basis.  

However, at the start of the oral hearing, you may inform the panel of judges if there are issues you believe requires additional oral argument time, beyond the amount previously allocated.  

No. You may quality as a LEAP practitioner only if you are otherwise eligible to practice before the PTAB. A law student who is not registered with the USPTO or admitted as an attorney to a U.S. state or District of Columbia bar is not eligible to practice before the PTAB, and thus, cannot qualify as a LEAP practitioner.

There is no minimum amount of time for which a LEAP practitioner must speak to receive the additional 15 minutes of argument time, as long as the LEAP practitioner has a substantive role in the argument. It is up to the party to decide how to apportion the argument time between the LEAP practitioner and other counsel. 

A practitioner may submit a LEAP request after the date for oral hearing has been set.  If a practitioner submits a LEAP request before the hearing date is set, the Board will decline the request as premature and ask the practitioner to resubmit the request once a hearing date is available.

No. We are not allowing for exceptions to the LEAP eligibility requirements at this time. However, the Board encourages participation and involvement in oral arguments even if the practitioner does not quality as a LEAP practitioner.  

A practitioner may request to share oral argument time as well as confer with more experienced counsel during the argument.  Additionally, the Board encourages other forms of participation in Board proceedings, including handling conference calls and sharing cross examination of a witness with other counsel upon agreement by the other party.

Yes, LEAP practitioners may argue at hearings for appeals that are part of the Fast-Track Appeals Pilot Program.

P-TACTS

Without logging in: 

You may search for the AIA Review case number by using the "Search P-TACTS" tool and selecting the “View documents” button to see if your public documents were uploaded as you intended. 

Alternatively, for cases where the petition has already been submitted, locate your AIA Review Number from your case docket or through the "Search P-TACTS" tool and open the Case Viewer to review all papers and exhibits within the documents listing.

When logged in and:

Initiating a petition

  1. Upload a paper in the proper format (i.e., PDF) and exhibits in one of the proper formats (e.g., PDF, video/mp4, video/x-m4v, etc.).
  2. Select the “Add to list” button.
  3. Your document will be displayed in the "List of documents" table with an upload date and timestamp when the document was successfully uploaded to the Create New Petition Wizard. Note that these documents will not be filed until the petition has been successfully submitted.

Returning to an initiated petition before submission

  1. The AIA Review case number is accessible from the external user's "My Docket - Unsubmitted petitions" tab.
  2. In this tab, you have the option to select "Continue in the Action" column and view previously added document content and information, including the date and times of addition. 
  3. Upon petition submission, you will receive an email with a "Patent Review Petition Filing" receipt.

Filing an Initial Appearance as a patent owner or respondent

  1. The user that submitted the Initial PO Mandatory Notice will receive an email confirmation of a Patent Owner Mandatory Notice Submission.
  2. Once the PO Mandatory Notice has been approved, the case will be displayed on patent owner's docket in the "Pending AIA reviews" tab, the "All AIA reviews" tab, and Case Viewer.

Filing a document (other than Initial PO Mandatory Notice) after the petition has been submitted and you are a party to the case

  1. The AIA Review case number is accessible from the party's "My Docket/Pending AIA reviews" tab, the "All AIA reviews" tab, and the Case Viewer. 
  2. Once the Case Viewer is displayed, all previously added document content and information is shown, including the document date and time of addition. 
  3. When you file the document, an email confirmation is sent with a listing of the filed documents.


See P-TACTS User Guide, System availability and general information, A12.

No, you can only use one credit/debit card. Treasury Department regulations limit credit card payments to a maximum of $24,999.99 per day transaction.

See P-TACTS User Guide [Fees E2]

You can access various screens in P-TACTS to submit a petition, including Patent Verification, Petition Information, Claims Challenged, Petition Documents, Required Information, Real Party, Additional Real Party, Counsel Information, and Review Petition.

A petition, all exhibits, and any other documents accompanying the petition (for example, Power of Attorney or Motion), should be uploaded using the Create New Petition Wizard. 

See P-TACTS User Guide, Filing a petition, D11. 

P-TACTS does not permit an additional email address to the case to receive notifications. As the person receiving the email, you must set up a rule in your mail service to forward emails received from PTABE2E_System@uspto.gov to a shared email address.

See P-TACTS User Guide [Filing Other Documents G7]

No. P-TACTS will not recognize the document you have uploaded as a preliminary response because the correct paper type must be used, and P-TACTS will assume a preliminary response was not filed. This will result in an improper date accorded to the preliminary response in computing the institution decision date.

See P-TACTS User Guide [Submission of patent owner/respondent information and preliminary response F6]

The Board will consider such an incorrectly filed preliminary response for purposes of the institution decision. However, if the preliminary response is filed early (i.e., before the last date on which such response may be filed), the incorrectly filed preliminary response will be treated as if it was filed on the last day on which such a response may be filed for purposes of the statutory deadline (i.e., the incorrectly filed preliminary response will be treated as if it was filed three months after the last day on which the preliminary response may be filed) (see 35 U.S.C. §§ 314(b)(1), 324(c)(1)); 37 C.F.R. §§ 42.5(a), 42.6(b).

See P-TACTS User Guide [Submission of patent owner/respondent information and preliminary response F7]

Yes, when the patent owner identifies its real party in interest or files a power of attorney, the Board will check the information with the assignment record (if any) to verify that the information is correct, the paper is signed properly, and whether the patent or application has been assigned. Therefore, patent owners are encouraged to keep assignment records up to date.

See P-TACTS User Guide [Submission of patent owner/respondent information and preliminary response F2]

You can file papers in America Invents Act trial proceedings by using Patent Trial and Appeal Case Tracking System (P-TACTS), the electronic filing system for the Patent Trial and Appeal Board. You can review the electronic filing guide for P-TACTS for more information. 

You can view documents after the payment of the petition is confirmed. After the petition is filed, the documents are available once they are uploaded into P-TACTS.

See the P-TACTS User Guide, Filing a petition, D15.

No, the petitioner's patent application must be filed with the USPTO like any other application through Patent Center. P-TACTS 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.

See P-TACTS user guide, Derivation proceedings, H3.

Anyone can register to use P-TACTS and create a user ID with their email address via MyUSPTO. This includes pro se patent owners and attorneys who are not registered to practice before the USPTO under 37 C.F.R. § 11.6.

 

See P-TACTS User Guide, Registering as a P-TACTS user, C1.

In order to have a P-TACTS account, you must have a MyUSPTO account. To register for a MyUSPTO account, you must enter your name, phone number, and email address and create a password. To log in to your P-TACTS account, you must enter your MyUSPTO credentials using your registered email and password.

 

See P-TACTS User Guide, Registering as a P-TACTS user, C2.

You can associate your USPTO registration number when you enter a case as a patent owner or petitioner. When the user is added as counsel, the user will be prompted to enter their USPTO registration number. P-TACTS will then save the registration number with the associated account for future use.

Note: This information is not captured when you register for a MyUSPTO account.

 

See P-TACTS User Guide Registering as a P-TACTS user, C3.

After you log into MyUSPTO and access the P-TACTS system, please file the 'Other Documents' by following these steps:. 

To file a document, after the petition has been submitted, not including a motion or rehearing request:

  • Log into P-TACTS
  • Go to My Docket
  • Select the AIA review case number to open Case Viewer
  • Select the “Add” button and select “File other documents” from the menu option

To file a motion, after the petition has been submitted:

  • Log into P-TACTS
  • Go to My Docket
  • Select the AIA review case number to open Case Viewer
  • Select the “Add” button and select “File a motion” from the menu option
  • Select the sub-menu option: File a motion, File an opposition, or File a reply

To file a rehearing request, after a decision has been entered:

  • Log into P-TACTS
  • Go to My Docket
  • Select the AIA review case number to open Case Viewer
  • Select the “Add” button and select “File a rehearing request” from the menu option

See P-TACTS User Guide [Filing Other Documents G1]

  • Log into P-TACTS
  • Go to My Docket
  • Select the AIA review case number to open Case Viewer
  • Select the “Add” button and File a Preliminary Response menu option
  • Enter information into all required fields marked by a red asterisk beginning with Paper type
  • Select POPR: waived

See P-TACTS User Guide [Submission of patent owner/respondent information and preliminary response F4]

No. If a petitioner files multiple petitions challenging the same patent, the petitioner should number the exhibits uniquely for both cases, such as 1001-1099 for case #1 and 1101-1199 for case #2. See 37 C.F.R. § 42.63(c). 

Similarly, the patent owner in this situation should number the exhibits uniquely for both cases, such as 2001-2099 for case #1 and 2101-2199 for case #2. Therefore, if the Board consolidates the cases, the exhibits will be uniquely numbered in the consolidated AIA reviews.

See P-TACTS User Guide, Filing a petition, D9.

No, you may search for a proceeding by the petitioner's name, petition type, patent number, or application number (for derivation proceedings).

If a document is mistakenly filed, please contact PTAB AIA Trials at 571-272-7822 or at trials@uspto.gov.

 

See P-TACTS User Guide [System availability and general information A13] 

PRPS provides screens for the parties to enter certain information (e.g., lead and back-up counsel and real party in interest). While forms may become available with future releases, most filings will be part of motion practice rather than pre-defined forms.

P-TACTS is only compatible with Google Chrome (version 91.0.4472.77 or higher) browser or Microsoft Edge (102.0.1245.39 and higher) browser.  Other browsers, such as Firefox, are not supported. We highly encourage using Google Chrome as your browser. Additionally, display resolution settings at 1600 pixels are recommended for viewing the search window and results table.

To sign in for the first time, go to the USPTO website and create an account in MyUSPTO.

  1. Click on “MyUSPTO”
  2. Click on “Create a USPTO.gov account”
  3. Enter the required information in MyUSPTO.

After your account has been successfully verified, access the PTAB P-TACTS system link and sign in with your same MyUSPTO account information. The next time you log into the P-TACTS system, you will be automatically logged in if you have previously logged into your MyUSPTO account.

If cases are not displayed in your My Docket interface, please contact the Patent Trial and Appeal Board (PTAB or Board) at 571-272-9797 or PTABP-TACTSAdmin@uspto.gov and request a docket transfer for your MyUSPTO registered email address. 

See P-TACTS User Guide [System availability and general information A2] 

  1. Select "Initiate New Petitions" to access the Create New Petition Wizard.
  2. Select "DER - Derivation Proceeding" on the following screen and enter the information for the petition. 

See the P-TACTS User Guide, Derivation proceedings, H1.

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

You must file a motion for confidential settlement agreement by following these steps:

  1. Log into P-TACTS
  2. Go to My Docket
  3. Select the AIA review case number to open Case Viewer
  4. Select the “Add” button and "File a motion" menu option
  5. Select the motion type from the menu option: Motion type
  6. Enter the required information
  7. Click on "Add to list" button
  8. Click on "Submit" button

See the P-TACTS User Guide, Filing Other Documents, G2.

  • Log into P-TACTS
  • Go to My Docket
  • Select the AIA review case number to open Case Viewer
  • Select the “Add” button and File a Preliminary Response from the menu option
  • Enter information into all required fields marked by a red asterisk beginning with Paper type
  • Select POPR: filed

See P-TACTS User Guide [Submission of patent owner/respondent information and preliminary response F3]

The next available exhibit number will be listed when you select Type as Exhibits; however, you can change the exhibit number before selecting the “Add to list” button.

See the P-TACTS User Guide, Filing a petition, D13. 

You must pay the full amount in Financial Manager using one form of payment. As a petitioner, if you need to use multiple forms of payment (for example, direct deposit account and credit card) to pay the fees for a single IPR or PGR, call the Board at 571-272-7822. You must provide written authorization to charge the requested forms of payment. The transfer will occur as soon as possible. The date when transfer is completed will be used to accord a filing date to the petition. 

See the P-TACTS User Guide, Fees, E1. 

P-TACTS links to Financial Management Systems, Fee Processing Next Generation (FPNG) for payment of America Invents Act Review cases.

See P-TACTS User Guide [Fees E8]

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 all appropriate counsel are listed and their email addresses are correct. 

For all newly filed America Invents Act Review cases in P-TACTS, the counsel’s email address (their email user ID) will receive notifications from P-TACTS.

See P-TACTS User Guide [Filing Other Documents G5]

Yes. A PDF or MPEG file uploaded to P-TACTS maintains its original form, meaning it will include any metadata in the original file. 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.

See the P-TACTS User Guide, Filing Other Documents, G6.

An attorney admitted to appear pro hac vice in a proceeding is not automatically designated as backup counsel. To do so, the interested party uses P-TACTS to file a notice updating its Mandatory Notice information to designate the attorney as backup counsel, include a new power of attorney (unless the power of attorney filed previously includes the attorney), file a Motion to appear Pro Hac Vice, and pay the fee. See 37 C.F.R. §§ 42.8(b)(3), 42.10(c), 42.15(e). The party should also contact PTAB at 571-272-7822 and request to have their counsel information updated in P-TACTS.

See P-TACTS User Guide [Submission of patent owner/respondent information and preliminary response F5]

The system will generate the next available exhibit number; however, you can override the exhibit number with a number that is within a range based on the party you represent. 

  • Petitioner: 1000-1999
  • Patent Owner: 2000-2999

See the P-TACTS User Guide, Filing a petition, D14.

No. The petitioner's mandatory notices must be filed as part of the petition itself. See 37 C.F.R. §§ 42.8(a)(1), 42.104, 42.204, 42.304, and 42.405.

See P-TACTS User Guide, Filing a petition, D8.

The USPTO will provide the petitioner one month from the Notice of Incomplete Petition to correct the petition. Please see 37 C.F.R. §§ 42.106(b), 42.206(b), and 42.407(b), and the P-TACTS User Guide, FAQ, section D3.

See P-TACTS User Guide, Filing a petition, D6. 

You must use the lead counsel's email address user ID or first backup counsel email address user ID to submit any document in the proceeding, even if a different email address user ID was used to file the petition. To upload the document, see How do I file other documents (e.g., a motion to seal or proposed protective order)?

See P-TACTS User Guide, Filing a petition, D5. 

Yes, the petition and supporting evidence must be served on the patent owner at the correspondence address of record for the subject matter, but the petition and supporting evidence may also be served on the patent owner at any other address known to the petitioner as likely to effect service under §§ 42.105(a), 42.205(a), and 42.406(a).

 

See P-TACTS User Guide, Filing a petition, D4. 

No, it is not.

 

See P-TACTS User Guide, Searching and reviewing documents, B4.

Yes. PTAB publishes performance benchmarks for dispositions, pendency, inventory, and other tracking measures on the USPTO PTAB Statistics webpage.

 

See P-TACTS User Guide [Searching and reviewing documents B3]

Yes, you can search for an AIA Review by the AIA Review case number, Party Name, AIA Review/Case type, Patent Number, Application Number, or Technology Center.

 

See P-TACTS User Guide [Searching and reviewing documents B2]

Yes. All public AIA Review cases can be searched in P-TACTS without registering. All public documents associated with the public cases can be viewed. Please be aware that: 1) scanned PDF documents are not converted to an optical character recognition (OCR) PDF and any text contained in a scanned PDF document is not searchable; and 2) nonpublic documents will be listed when conducting a case search, but the document contents will not be viewable.  

 

See P-TACTS User Guide [Searching and reviewing documents B1]

You can access P-TACTS at https://ptacts.uspto.gov/ptacts/ui/home.

 

See P-TACTS User Guide [System availability and general information A1] 

You must update your MyUSPTO email address first. Once your new email address is verified, access the PTAB P-TACTS system link and sign in using your MyUSPTO account information. The next time you log into the P-TACTS system, you will be automatically logged in if you have previously logged into your MyUSPTO account. 

To transfer your P-TACTS case docket or particular AIA Review cases, contact PTAB P-TACTS Admin at PTABP-TACTSAdmin@uspto.gov and request a docket transfer for your MyUSPTO registered email address.

 

See P-TACTS User Guide, System availability and general information A4

Please call the Board at 571-272-9797 if you are unable to access the system. 

If P-TACTS is unavailable, parties may notify the Board of the service of petitions or other associated documents 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 trial proceeding
  • Power of attorney
  • 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 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).

Paper filing via overnight delivery is authorized only if both P-TACTS and the Board's email address at 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 St.
Alexandria, Virginia 22313

 

 

See P-TACTS User Guide [System availability and general information A6] 

A single file may not exceed 25 megabytes in size when uploading. 

If you need to file a document and it exceeds 25 megabytes, please follow the instructions below to reduce the file size.

  • Split a large file into multiple smaller files; and/or
  • Convert Microsoft Word documents into searchable PDF files, rather than printing documents and scanning them as flat PDF files.

See P-TACTS User Guide [System availability and general information A8] 

No. However, only certain document types are allowed to be uploaded during a specialized process, such as initiating a new petition or entering an appearance as patent owner or respondent.

See P-TACTS User Guide, System availability and general information, A9. 

You must update your MyUSPTO email address. Once your new email address is verified, access the PTAB P-TACTS system link and sign in with your same MyUSPTO account information. The next time you log into the P-TACTS system, you will be automatically logged in if you have previously logged into your MyUSPTO account. To transfer your P-TACTS case docket or particular AIA Review cases, contact PTAB P-TACTS Admin at PTABP-TACTSAdmin@uspto.gov and request a docket transfer for your MyUSPTO registered email address.

Please note, inactive cases will not be transferred to your new account. If you need full access to any of the inactive cases not transferred, contact PTAB P-TACTS Admin at PTABP-TACTSAdmin@uspto.gov.

 

See P-TACTS User Guide [System availability and general information A5] 

There are no special naming conventions for documents, but document names must be 75 characters or less. Use the name that will appear in the docket listing. It should be simple and descriptive, such as "Jones Motion to Amend" or "Second Declaration of Dr. Smith." 

 

See P-TACTS User Guide [System availability and general information A10] 

Yes, more than one person can review documents or upload documents in a proceeding at the same time, even if they are sharing a user ID.

 

See P-TACTS User Guide [System availability and general information A14] 

Yes, for example, Patent Center will have entries for the following:

  • Petition Requesting Trial
  • Request for Trial Granted
  • Request for Trial Denied
  • Request for Trial Dismissed
  • Trial Termination or Final Written Decision
  • Trial Review Certificate Issued

 

See P-TACTS User Guide [System availability and general information A15] 

Yes, we provide API access to the P-TACTS data through the Open Data Portal. To access the PTAB API, visit the USPTO API Catalog.

 

See P-TACTS User Guide [System availability and general information A16] 

P-TACTS is intended for the general public. Due to limitations of equipment and bandwidth, P-TACTS is not intended to be a source for bulk downloads of USPTO data. Individuals, companies, IP addresses, or blocks of IP addresses who, in effect, deny service to the general public by generating unusually high numbers of daily P-TACTS accesses (e.g., searches, pages, document retrievals), whether manually or in an automated fashion, may be denied access to P-TACTS without notice.

For a single AIA Review case number, all proceeding documents may be downloaded in bulk by accessing the USPTO PTAB Decisions portal.

 

See P-TACTS User Guide [System availability and general information A17] 

To enter a foreign address, input values in the address fields. Address Line 1, Address Line 2, City, and Postal Code (Zip) fields are not required. 

 

See P-TACTS User Guide [System availability and general information A18] 

As long as the idle time during your session is within 30 minutes, you are not required to remain active. After the 30-minute time limit on continuous inactivity has been reached, you will be logged out of MyUSPTO and P-TACTS and will be required to log back into the system. To remain active, any key stroke, clicks, mouse movement, etc., will maintain your current working session.

 

See P-TACTS User Guide [System availability and general information A19] 

When initiating a new petition, any document uploaded in the Create New Petition Wizard using the “Add to list” button on the Petition documents section will be saved and may be accessed at a later time from the List of Documents table. 

For motions and rehearing requests, you must select the “Save documents” button within the "File a motion" or "Rehearing request" modal to save uploaded documents. You can access saved documents from the Motions and/or Rehearing tabs. 

All other documents currently do not have a save option within the "File other documents" modal and must be resubmitted. 

 

See P-TACTS User Guide [System availability and general information A20 

Any information entered on the current page will be lost unless the “Save” or “Add” button has been selected.

 

 

See P-TACTS User Guide [System availability and general information A21] 

P-TACTS provides screens for the parties to enter certain information, such as lead and backup counsel and real party in interest. However, the USPTO does not have forms beyond those P-TACTS fillable screens.

See P-TACTS User Guide, System availability and general information, A11. 

The My Docket portal provides a Motions tab and a Rehearing Requests tab that show content across all of your cases. Within each of these tabs, three groupings of Pending, All, and Unsubmitted are provided for quickly locating the document for an America Invents Act (AIA) Review case. 

Additionally, Case Viewer includes the same Motions tab and Rehearing Requests tab but is AIA Review case number specific.

 

See P-TACTS User Guide, System availability and general information, A24

Yes, a single user ID may be shared among a working group. It is important to keep in mind, however, that P-TACTS docket display is based on the user ID. Therefore, the registered user must ensure that sharing his or her user ID would not violate any protective order.

You will have to close your browser and reopen your browser to access the PRPS website. You can open the case again from "My Docket" and locate the hyperlink under "My Pending Tasks" to continue working on the case. Once you have uploaded all your documents, then you can submit them.

P-TACTS - Initiate Petition

Initiated petitions are saved for 45 days in your docket. After 45 days of inactivity, an initiated petition will be deleted.

See the P-TACTS User Guide, Filing a petition, D12. 

No. All documents, other than drawings, must be written in portrait orientation including claim charts and arguments. The Board previously accepted a few petitions with claim charts written in landscape orientation. Switching from portrait orientation to landscape orientation within a document (e.g., a petition) creates inefficiency for the reviewing officials at the Board. Therefore, correction is now required when any part of a document is written in landscape orientation. 

This is consistent with the policy set forth in 37 C.F.R. § 42.1(b) and the practice set forth in 37 C.F.R. § 1.52(a)(1)(iii) for filing papers that are to become a part of the permanent record in the application or patent files within the USPTO.

 

 

See P-TACTS User Guide, Filing a petition, D7 

P-TACTS - User Roles and Privileges

For a particular AIA Trials Review case, any registered P-TACTS user account can be one of the four types of user roles:

  • Submitter role – The user can submit a petition or enter an appearance as a patent owner, and designate counsel within these processes for the associated AIA Review number. The submitter role is not a party to the AIA Review case unless designated as counsel or real party pro se.
  • Lead Counsel role – The user designated as Lead Counsel for an AIA Review case can view and submit documents, and add, delete, or make updates to the new staff role.
  • Backup Counsel role – For a party to a PTAB Trial case, all counsel that are not Lead Counsel must be designated as Backup Counsel. There is no longer a separate role for a First Backup Counsel. Users designated as Backup Counsel for an AIA Review case can view and submit documents but will not have the ability to add, delete, or make updates to the new staff role.
  • Staff role – This new role allows a user to view and submit documents for an AIA Review case. This role is only visible to the party who submitted the staff role for the particular AIA Review case.

 

See P-TACTS User Guide, System availability and general information, A3. 

P-TACTS - General Navigation

You must log in again to access your P-TACTS account. Once you're logged back in, access My Docket to locate a particular AIA Review case number and open Case Viewer to resume your work.

 

See P-TACTS User Guide, System availability and general information, A22. 

P-TACTS - My Docket view

The default view is 25 cases. To view more cases, you can change the page quantity selection on the bottom right of the My Docket interface.

See P-TACTS User Guide, System availability and general information, A23

Hearings

Yes, the PTAB has a laptop (does not have internet capabilities - any information will need to be stored on a flash drive or CD), projector, and screen. You must request the audio visual equipment in writing at least three days in advance of the scheduled hearing, so it can be set up prior to your hearing. No new evidence is permitted. You can send your request by facsimile transmission to 571-273-0299.

You will need to file a petition under 37 CFR § 41.3 and the requisite fee under 37 CFR § 41.20(a) requesting that the hearing request be accepted. Such petition is due within 14 days from the Order Denying Oral Hearing or other time period set by the Board in writing. See 37 CFR § 41.3(e). The Chief Administrative Patent Judge or his/her designee will decide the petition.

The USPTO will issue a Notice of Oral Hearing setting forth the date, time, and hearing room location. This notice is typically issued a few weeks before the scheduled date of the hearing.

Although an examiner can attend a hearing, it is rare that an examiner appears. If the examiner will appear at the hearing, the Board will notify the appellant in advance.

The Board will typically hold a hearing if at least one party requests it.

Witnesses are generally not permitted in appeal hearings. Witnesses may be permitted in an AIA trial hearing subject to authorization by the Board. 

Yes, if an appellant finds it absolutely necessary to request a hearing be rescheduled, then the appellant may respond to a Notice of Hearing by confirming attendance for the originally scheduled hearing and submitting a request to reschedule the date of the hearing. 

The rescheduling request may be submitted either simultaneously with the response to the Notice of Hearing, or subsequently. Rescheduling and postponement requests are, however, discouraged.

Yes, the Board provides court reporters for all hearings. Transcripts are available to parties, usually within four weeks of the hearing.

You must file a written request for an oral hearing within two months of the date of the examiner’s answer or the date of filing a reply brief, whichever is earlier. The written request must be in a separate paper captioned “REQUEST FOR ORAL HEARING.” The request must be filed with the appropriate fee.

Most hearings are open to the public and anyone may attend as long as there is space in the hearing room. Some hearings may be designated non-public, with only parties associated with the case allowed to observe.

If an appellant requests a hearing, then the Board typically honors that request and schedules a hearing. However, in the unusual circumstance that the Board decides that a hearing is not necessary, the Board will notify the appellant. For example, an oral hearing may not be not necessary if the Board has become convinced, prior to a hearing, that the examiner’s position cannot be sustained.

No, pursuant to 37 CFR § 1.26(a), a change of purpose after the payment of a fee, such as when a party desires to withdraw a patent filing for which the fee was paid, including an application, an appeal, or a request for an oral hearing, will not entitle a party to a refund of such fee. See 37 CFR § 1.26(a) Refunds.

Please refer to the Notice of Oral Hearing which sets forth the date, time and hearing room location for your hearing. If you have not received one, one will be issued in due course.

Yes. A request for oral hearing must be filed as a separate paper (i.e. not within the notice or any other paper), and the required fee must be paid, in accordance with 37 CFR § 41.47 within 2 months from the date of the examiner's answer or supplemental examiner's answer. See also Section 1209 of the Manual of Patent Examining Procedure for additional guidance. A PTO Form can be found at http://www.uspto.gov/web/forms/sb0032.pdf. In due course the Board will send a notice of hearing indicating when the oral hearing is scheduled. Further hearing information can be found at http://www.uspto.gov/ip/boards/public_hearing_info.jsp

Yes. A written request for a telephonic or video hearing must be filed with the Board. This can be part of the hearing request, or filed upon receipt of the Board's notice of hearing. The request should be sent by facsimile transmission at 571-273-0299, if sent in response to the notice of hearing.

Hearings may be held in-person at USPTO headquarters in Alexandria, Virginia, or at any of the USPTO regional outreach offices located in Detroit, Denver, Dallas, and San Jose. 

The location for the hearing depends on where the judges on the panel are located. For example, if two judges on the panel are in Alexandria and one judge is in Dallas, then the parties may request that the hearing be held either in Alexandria or Dallas.

 

[Hearings]

Yes, hearing rooms are outfitted with A/V equipment for presenting slides. Appellants must request the audio visual equipment in writing and provide the slides at least five days in advance of their scheduled hearing.  No new evidence is permitted.

 

[Hearing]

Trials

Yes. A patent can be challenged after it is issued in one of two ways:  (1) by filing a petition requesting a post-grant review within the first nine months after issuing the patent; or (2) by filing a petition requesting an inter partes review, generally when the nine month post-issuance time period has expired. These proceedings are filed with—and decided by—the Patent Trial and Appeal Board. You can find more information on the PTAB FAQ Page

Yes, either party may request rehearing of the Board's decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed in the petition.

Yes, in such a situation, you may file a request in P-TACTS for a refund of any post-institution fee paid. You should specify in the request what amount you believe should be refunded and why.

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 P-TACTS. 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 G2. The request for a refund should b efiled separately in P-TACTS after the proceeding is terminated.

Yes, you must file the corrected petition within the time period set forth in the notice. Such a corrected petition must merely delete the portions related to the excess claims and not add new substantive arguments or make other substantive changes (e.g., new grounds). The original submission date of the petition will be accorded as the filing date.

See P-TACTS User Guide [Fees E5]

Any objection to evidence submitted during a preliminary proceeding (e.g., evidence submitted with a petition or a preliminary response) must be served on the opposing party within ten business days of the institution of the trial. 37 C.F.R. § 42.64(b)(1). The objection must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence. Id. The party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days service of the objection. 37 C.F.R. § 42.64(b)(2).

A Notice of Appeal document may be filed for an America Invents Act (AIA) Review case after the Board has filed a Final Written Decision or Termination decision. To file a Notice of Appeal:

  1. Locate the AIA Review case number and open Case Viewer. 
  2. Select the “Add” button and the "File a notice of appeal" menu option. The add document modal will be displayed.
  3. Enter information for all required fields marked by a red asterisk beginning with "Date appeal filed."
  4. Select "Availability" and enter the document name. 
  5. Select the file to upload and the “Add to list” button. 
  6. File the Notice of Appeal by selecting the “Submit” button. Your filed Notice of Appeal will be displayed on the "My Docket, AIA reviews on appeal" tab.

See P-TACTS User Guide, System availability and general information, A25. 

Yes, there are timing deadlines to file a petition set by statute, and the deadlines vary depending on the type of AIA trial proceeding. 

For an IPR, the petition cannot be filed until the later of either: 

  • Nine months after the grant of the patent; or 
  • If a post-grant review is instituted, after the end of the post-grant review proceeding. 

Additionally for an IPR, if the petitioner, a real party in interest, or a privy of the petitioner is served with a complaint alleging infringement of the patent, the party must file the petition within one year of being served with the complaint. 

For a PGR, the petition must be filed within nine months of the patent grant. 

Once the USPTO reviews the petition and determines whether the petition is complete and the appropriate fees have been paid, the USPTO will send a notice to the petitioner and patent owner. 

If the petition complies with all of the statutory and regulatory requirements, the original submission date of the petition will be accorded as the filing date. 

Conversely, in a situation where a petition does not comply with all the statutory requirements, no filing date will be accorded. 

In the situation where a petition complies with all of the statutory requirements but contains only regulatory defects, the USPTO will accord the filing date of the original submission and notify the petitioner of the defects. The regulatory defects must then be corrected within the time period set forth in the notice.

 

See P-TACTS User Guide, Filing a petition, D1. 

During rulemaking, the Board received and took into account comments from the public, including independent inventors and small companies. The Board's proceedings are intended to provide a quicker, less expensive alternative to district court patent litigation. Discovery is limited and deadlines are established for the completion of trials. The Board believes this is to the benefit of all parties, including independent inventors and small companies.

The definition for a covered business method patent provided in the AIA provides that a covered business method patent is “a patent that claims a method or corresponding apparatus for performing data processing . . . , except that the term does not include patents for technological inventions.”  (Emphasis added.)  The determination of whether a patent is a covered business method patent subject for review therefore will be based on what the patent claims.

In administering the program, the Office will consider the legislative intent and history behind the public law definition and the transitional program itself.  For example, the legislative history explains that the definition of covered business method patent was drafted to encompass patents “claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity.”  157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Senator Schumer).  This remark tends to support the notion that “financial product or service” should be interpreted broadly. 

In determining whether a patent is for a technological invention, the following will be considered on a case-by-case basis:  whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution. 

Yes, a patent holder may challenge the standing of a petitioner in the preliminary response. For example, a patent holder may provide evidence that the petitioner has filed a civil action challenging patentability prior to filing the petition or that the petitioner otherwise is estopped from challenging the patent owner's claims.

A party may be authorized to file a motion to submit supplemental information belatedly. A party will not be permitted to submit supplemental information belatedly except upon a showing that the information could not have been earlier presented and that it is in the interests of justice for the Board to consider the information.

No, a patent owner does not have to file a preliminary response. If the petition does not meet the standard set for instituting the proceeding, then the petition will be denied even if there is no preliminary response from the patent owner. The patent owner may, but is not required to, inform the Board if it does not intend to file a preliminary response.

A patent owner will have three months to submit a preliminary response.

The three-month time period for filing a patent owner preliminary response runs from the date on which the Board enters a Notice of Filing Date Accorded to Petition. If the patent owner wishes to file a preliminary response or elect to waive the preliminary response, the patent owner must do so within the three-month time period.

The Board considers and applies the precedent of the Federal Circuit and the Supreme Court to the facts of the particular cases before it.  The Board strives to decide cases following the closest precedent.  The Board looks for guidance from Supreme Court precedent when Federal Circuit decisions do not provide guidance on a particular issue.

Yes, the petition accompanied by a motion for joinder may include merely the institued grounds or, alternatively, a new ground of patentability.

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).

Any objection to evidence submitted after a trial has been institued (e.g., evidence submitted with a patent owner response or a reply) must be served on the opposing party within five business days of service of evidence to which the objection is directed. 37 C.F.R § 42.64(b)(1).

The three-month time period for filing a patent owner preliminary response runs from the date on which the Board enters a Notice of Filing Date Accorded to Petition. If the patent owner wishes to file a preliminary response or elect to waive the preliminary response, the patent owner must do so within the three-month time period.

Yes, when the patent owner/respondent identifies the real party in interest in PRPS, the patent owner/respondent may upload a file (in PDF format) that contains the new assignment. The patent owner/respondent should also file a copy of the new assignment with the Office's Assignment Recordation Branch.

The following are common errors:

  • Failure to set forth claim construction of disputed or important claim terms expressly in a claim construction section
  • Exhibits do not match the documents listed in the Exhibit List
  • Failure to identify related matters or provide a statement that there are no related matters
  • Exhibits are not sequentially numbered in the 1001-1999 range
  • Failure to identify lead or backup counsel as required by 37 C.F.R. §§ 42.8 and 42.10
  • Margins less than 1 inch as required by 37 C.F.R. § 42.6(a)
  • Failure to certify that the petitioner is not barred or estopped from requesting a review as required by 37 C.F.R. § 42.104(a) or § 42.204(a)
  • 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 37 C.F.R. § 42.105(a) or § 42.205(a)
  • The petition and supporting documents are served on the patent owner later than the filing of the petition

See P-TACTS User Guide, Filing a petition, D10.

Once the time period for correcting regulatory defects has expired, the petition will be forwarded to a Board judge who may initiate a conference call and/or issue an Order to show cause. If the petitioner fails to respond to sch an Order appropriately, the proceeding may be terminated. It is important to note that the petitioner will not be entitled to a refund of any fees paid because the petition was in compliance with the statutory requirements for a filing date. For petitions filed on or after March 19, 2013, however, the petitioner may file a request for a refund of any post-institution feed paid.

Yes, for example, Patent Center will have entries for the following:

  • 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

There are several ways derivation proceedings differ from other America Invents Act (AIA) proceedings:

Content: Derivation proceedings involve questions of inventorship, whereas other AIA proceedings involve questions of patentability.  

Timing: A derivation proceeding has a timing requirement that must be satisfied for the Board to institute the proceeding. 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.

Preliminary response: The respondent in a derivation proceeding is not permitted to file a preliminary response, whereas a patent owner in an AIA trial is permitted to file a preliminary response.  

Triggering a derivation: The standards to trigger a derivation are different than the standards to trigger an AIA trial. Specifically, a derivation proceeds only if the petitioner provides substantial evidence in the petition that the earlier claimed invention was derived. In contrast, an AIA trial will be instituted if the petitioner establishes either a reasonable likelihood that at least one challenged claim is unpatentable for an IPR or that it is more likely than not that at least one claim is unpatentable for a post-grant review or Covered Business Method.

As a petitioner, you should inform the Board in the petition when an involved patent application is not available to the public. Derivation proceedings involving unpublished applications are kept confidential until reviewed by the Board. Also, a petitioner who files confidential information with the petition may file a motion to seal with the petition.

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 parties’ application(s) until the parties’ 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.

See P-TACTS User Guide  [Derivation proceedings H2]

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.

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).

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.

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.

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 rquested. See 35 U.S.C. §§ 315(c) and 325(c), and 37 C.F.R. §§ 42.122(b) and 42.222(b). 

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.

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).

Parties are encouraged to use the heading appearing on papers entered by the Board in the case, which includes the name of the petitioner(s), name of the patient owner/respondent, case number, patent number, and title of the paper. A sample heading is provided here.

If you are a user who is designated as lead counsel or backup counsel, you should call the Patent Trial and Appeal Board (PTAB) at 571-272-7822 after the mandatory notice has been approved and request that the PTAB update their counsel information. 

See the P-TACTS User Guide, Filing Other Documents, G3.

Yes, evidence and other documents should not include non-useful personal confidential information, such as social security or taxpayer-identification numbers, dates of birth, names of minor children, financial account numbers, or full driving record. The Office will accept a redacted version and the submission should be accompanied by a paper noting the reasons for the redaction. See IPR2012-00001, Paper 36, pages 6-8.

A party may contact the Board to seek a waiver of the 15-page pagae limit. Please note that any prior authorization to extend the page limit on a motion does not apply to a request for rehearing on the decision of that motion.

For the purpose of page limits, a request for rehearing of a decision under 37 CFR § 42.71(d) must be filed in the form of a motion, which is limited to 15 pages (see 37 CFR § 42.24(a)(v)).

Any objection to evidence submitted after a trial has been institued (e.g., evidence submitted with a patent owner response or a reply) must be served on the opposing party within five business days of service of evidence to which the objection is directed. 37 C.F.R § 42.64(b)(1).

Yes, when the patent owner/respondent identifies its real party in interest or files a power of attorney, the Board will check the information with the assignment record (if any) to verify that the information is correct and that the paper is signed properly, if the patent or application has been assigned. Therefore, patent owners/respondents are encouraged to keep assignment records up to date.

When you file a petition for Inter Partes Review (IPR), you must pay both the inter partes request fee and post-institution fee. In addition, the appropriate request excess claims fee is required on filing if the petition is challenging more than 20 claims. The appropriate post-institution excess claims fee is also required on filing if the petition is challenging more than 20 claims. A filing date would not be accorded unless the required fees are paid. 

See P-TACTS User Guide [Fees E6]

Yes, the corrected petition must be filed within the time period set forth in the notice. Such a corrected petition must merely delete the portions related to the excess claims, and not add new arguments or make other substantive changes (e.g., new grounds). The original submission date of the petition will be accorded as the filing date.

A fee is currently required for each claim in excess of 20 claims. Beginning March 19, 2013, separate fees will be required for each claim in ecess of 15 claims and 20 claims, respectively. See http://www.uspto.gov/aia_implementation/fees.jsp. The Office will notify the petitioner of any fee deficiencies. When the petitioner pays the required excess claims fees within the time period set forth in the notice, the Office will accord the date on which the fees are paid as the filing date.

A petitioner may file a request for a refund of the petition fees when the petition is not accorded a filing date for a failure to meet a statutory requirement. The request will be considered by the Board.

 

 

See P-TACTS User Guide [Fees E3]

Yes, the petitioner should list other related review proceedings, as related matters, including those that are being filed concurrently or subsequently. This will promote administrative efficiency as the Board may assign the same panel to all related review proceedings.

Claim charts should be presented in a readable format so that a reader (e.g., the patent owner or a deciding official) is able to locate the disputed claim limitations and the relied-upon portions of the prior art quickly. Presenting claim limitations and prior art teachings in a single column format and/or without appropriate spacing creates inefficiency and, at times, appears to circumvent the page limit set forth in 37 C.F.R. § 42.24. Claim limitations should be presented in a separate column (e.g., claim limitations should be presented in a separate column (e.g., claim limitations in the left column and prior art teachings in the right column), and each claim should be presented in a separate chart.

The prefixes of trial proceeding numbers track the fiscal year. Fiscal year 2013 started on October 1, 2012. Thus, any petitions filed between October 1, 2012 and September 30, 2013 will receive a trial proceeding number with a prefix of "2013" (e.g., IPR2013 or CBM2013).

No, only one credit card may be used. Parties may not split payment over multiple credit cards. Furthoer note that Treasury Department regulations limit a credit card payment to a $49,999.99 per day transaction.

Yes, 35 U.S.C. § 311(a) provides that, subject to certain requirements, "a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent." This provision is not limited to utility patents.

No. Extensive usage of claim charts in a petition is discouraged.

The rules require that a petition identify how the challenged claims are to be construed and how the claims are unpatentable under the statutory grounds raised. This information is to be provided pursuant to the page limit requirements, which require double spacing. Additionally, the rules require that the petition specify where each element of a challenged claim is to be found in theprior art. The element by element showing may be prvided in a claim chart, which is permitted to be written with single spacing. See § 42.6(a)(2)(iii). Placing one's argument and claim construction in a claim chart to circumvent the double spacing requirement is not permitted, and any such argument or claim construction amy not be considered by the Board.

The Board previously accepted a few petitions with claim charts that included claim constructions, arguments, and explanations as to how the claim is unpatentable because the procedure for filing AIA petitions was new. However, correction is now required when a petition includes improper usage of claim charts.

No, organizations must be represented by counsel. The party's mandatory notice information should specify both lead and back-up counsel. See 37 C.F.R. § 42.8(b)(3).

Yes, an inventor may appear pro se if he or she is the owner of the challenged patent (or application in the case of a derivation proceeding).

Yes, a party may file a power of attorney using a customer number, and identify a specific registered patent practitioner that is associated with the customer number as lead or backppup counsel. See § 1.32.

Note that the party is required to identify a specific registered practitioner as lead counsel in a proceeding. § 42.10. Further, the party must ensure that using a customer number in a power of attorney would not violate any protective order because all of the registered patent practitioners that are associated with the customer number may have access to the file records of the proceeding.

Yes, the patent owner/respondent may designate the attorney of record in the subject patent or application as the lead or back-up counsel. See § 42.8(b)(3). Therefore, the attorney of record in the subject patent or application, acting as a representative of the patent owner/respondent, may logon to PRPS and designate himself or herself as lead or back-up counsel for the proceeding.

Yes, if the patent owner/respondent wishes to designate a lead counsel or a back-up counsel who is not already counsel of record in the subject patent, a power of attorney must be filed with the designation of counsel. See § 42.10. The power of attorney must be signed properly, such as signed by the assignee of the entire interest of the patent (see §1.32(b)), and uploaded as a PDF file.

No. Pending inter partes reexaminations will not be converted into inter partes review proceedings. Proceedings for inter partes reexamination filed prior to September 16, 2012, will proceed to conclusion even if the proceedings last beyond September 16, 2012

Inter partes review replaces inter partes reexamination as an avenue for a third party's patentability challenge and the provision in the AIA for inter partes review is effective on September 16, 2012.

The schedule for each proceeding will be set by the Board. Ordinarily, a patent owner will have three months to file a response and/or amendment.

No.

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, according to 37 C.F.R. § 42.5(c)(2). 

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. However, no extensions of time will be granted for any statutory time period.

 

See P-TACTS User Guide, System availability and general information, A7.

Appellant can notify the Board of recent related court proceeding/appeal/interference by filing a communication listing the caption of the case, proceeding number and decision date and including a copy of the decision. If you need further information, contact PTAB at 571-272-9797.

You must use the lead counsel's user ID to submit any document in the proceeding, even when you used a different user ID to file the petition. To upload the document, see FAQ G1.

A trial proceeding will be listed in the search results only when the (multi-step) process of submitting a petition for instituting a trial proceeding via P-TACTS has been successfully completed. If the process of filing a petition is not yet completed or was never completed, a trial number will be provided but it will not be listed in the search results.

Trials - AIA

The petitioner bears the burden to demonstrate that the challenged patent is a covered business method patent and that at least one claim of the challenged patent is not directed to a technological invention to show that the petitioner has standing to proceed.  The showing for both covered business method patent and technological invention is based on what is claimed.

Once a petition is submitted, a PTAB paralegal will review the petition for statutory and regulatory compliance. There are certain statutory requirements that must be met for a petition to be accorded a filing date. The following is a list of the top five things the paralegal will be looking for in inter partes review (IPR) and post grant review (PGR) petitions:

  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. 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 will contact the Board panel assigned to the case and let the panel determine the appropriate remedy. If the deficiency is not corrected within a time period set by the panel, the panel may dismiss the petition.

There are also certain regulatory requirements in Part 42 of Title 37, Code of Federal Regulations, that must be met (for example, word count, font size, signature, and identification of lead and backup 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 counsel of record for the petitioner will receive a notification by email. Although 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 panel who may initiate a conference call or issue an Order to Show Cause, and terminate the petition 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.

 

See P-TACTS User Guide, Filing a petition, D3. 

AIA trials are governed by statutes, rules, and case law. The U.S. Supreme Court as well as the United States Court of Appeals for the Federal Circuit issue decisions that apply to AIA trials. The PTAB also has precedential and informative decisions regarding AIA trials. Lastly, the PTAB publishes a Trial Practice Guide that answers many questions about AIA trials. 

Learn more about the sources of authority for AIA trials: 

The patent owner must first register with a MyUSPTO account. 

After logging into P-TACTS and using the email address (user ID), the patent owner clicks on the “Enter Appearance As Patent Owner/Respondent” link to begin the process within the Mandatory Notice Wizard. P-TACTS will provide a screen to search for the proceeding by America Invents Act (AIA) review case number, patent number, or application number, and enter mandatory notice information (e.g., identifying the real party in interest, lead and backup counsel, and related matters). 

Once the patent owner submits the mandatory notice information and a Board paralegal verifies the information, the patent owner will receive an approval email. The patent owner may then upload documents (e.g., preliminary response, motions). 

The "Enter Appearance As Patent Owner/Respondent" option should only be used to begin participating in a proceeding as the patent owner. Once a patent owner has been verified and is participating in a proceeding, the verification process should not be used again. Instead, the patent owner should upload any documents, including any subsequent mandatory notices, from the AIA case viewer. 

See P-TACTS User Guide [Submission of patent owner/respondent information and preliminary response F1]

Trials - Petitions

Anyone except the government and the patent owner can file a petition for an AIA trial. 

To file a petition for an inter partes review (IPR) or post grant review (PGR), the petitioner does not need to have been sued for infringement. 

To file a petition for a covered business method review (CBM), the petitioner must be sued for infringement before filing a petition. 

See AIA Trial Types.

The statutory basis that can be asserted in the AIA trial proceeding are set by statute and specific to the type of proceeding.

For an IPR, a petition can assert grounds of invalidity only under 35 U.S.C. §§ 102 and 103 and must be based on patents or printed publications. 

For a CBM and PGR, a petition can assert grounds of invalidity under 35 U.S.C §§ 101, 102, 103, and 112 (except "best mode") and also must be based on patents and printed publications.

Yes. A word count limit applies to petitions, patent owner preliminary responses, patent owner responses, petitioner replies to patent owner responses, and any sur-replies filed in AIA trial proceedings. For all other briefing, a page limit applies. 

The rules set a limit of 14,000 words for petitions requesting IPR and derivation proceedings, and a limit of 18,700 words for petitions requesting PGR and CBM proceedings.

Based on the Board’s experience, one petition is typically sufficient to challenge the claims of a patent in most situations. The Board recognizes, however, that there may be circumstances in which more than one petition may be necessary. For more information about multiple petitions, see the Trial Practice Guide.

To request an IPR of up to 20 claims, the filing fee is $19,000. To request IPR of 20 or more claims, there is an additional fee of $375 per claim for each claim in excess of 20. 

To request a PGR of up to 20 claims, the filing fees is $22,500. To request a PGR of 20 or more claims, there is an additional fee of $475 per claim for each claim in excess of 20. 

These fees are the same for small and micro entities. See the USPTO Fee Schedule.

You may file a motion to correct a clerical or typographical mistake in a petition. A substitution of new analysis for the analysis provided in the original petition is not an acceptable correction.

After a petition has been filed, the Board has three months from the date that a patent owner files a preliminary response, if any, to decide whether to institute a trial. If a trial is instituted, the Board has twelve months to issue a final written decision, subject to an extension of up to six months for good cause. 

If a patent owner does not file a preliminary response, the Board has three months from the due date for the preliminary response to decide whether to institute a trial. 

These deadlines are set by statute.

By USPTO rule, a petitioner must certify the patent or application is available for review and the petitioner is not barred or stopped from seeking the proceeding. Additionally, a petitioner must identify each claim that is challenged and the specific statutory grounds on which each challenge is based, provide a claim construction for the challenged claims, and state the relevance of the evidence to the issues raised. Furthermore, a petitioner must identify how the construed claim is unpatentable over the relevant evidence. Our Trial Practice Guide provides more details about the required content of a petition.

An excess claims fee is required for each claim in excess of 20 claims as of October 2, 2020. The United States Patent and Trademark Office (USPTO) will notify you, as the petitioner, of any fee deficiencies. When you pay the required excess claims fees within the time period set forth in the notice, the USPTO will accord the date on which the fees are paid as the filing date.

See P-TACTS User Guide [Fees E4]

Trials - Institution Phase

No, a patent owner is not required to file a preliminary response to a petition. However, a patent owner may file a preliminary response to argue that the Board should not institute an AIA trial. If the Board does not institute an AIA trial, then the proceeding is over. 

The patent owner preliminary response is an opportunity for a patent owner to:

  • Point out that they believe the petition’s evidence or reasoning is insufficient or mistaken
  • Point out if the petitioner is too late (has a “time bar”)
  • Argue that the Board should not institute an AIA trial based on discretionary factors

Even if the patent owner does not file a preliminary response, a patent owner may file a response to the petition after institution (in the event that the Board institutes an AIA trial). If a patent owner does not file a preliminary response, the Board will access the petition to determine whether a trial should be instituted.

If a petitioner files a petition and the Board staff accepts the petition’s filing, the Board will issue a notice according the petition a filing date. The patent owner preliminary response is due within three months from the date that the Board issues this notice.

A patent owner is not required to file a response to a petition. If a patent owner does not file a preliminary response, the Board will issue a decision on institution based upon the petition and the evidence cited in the petition. Even if the patent owner does not file a preliminary response, a patent owner may file a response after institution (in the event that the Board institutes an AIA trial).

For an IPR trial to be instituted, the petitioner bears the burden of proof to show a reasonable likelihood that one or more of the challenged claims are unpatentable. For a PGR or CBM trial to be instituted, the petitioner bears the burden of proof to show that it is more likely than not that at least one challenged claim is unpatentable.

Yes. If the Board institutes a trial, then all of the challenged claims and grounds will be at issue in the trial.

Trials - Trial Phase

If the Board institutes an AIA trial, the Board will issue a Scheduling Order. The Scheduling Order will set due dates for taking action, including filing briefs. 

The parties may request changes to the due dates by requesting a conference call with the Board, and they may talk to each other and agree to different dates as long as they notify the Board of these changes. 

The Board may also issue a revised Scheduling Order as the trial progresses, for example, if a patent owner files a revised motion to amend under the Motion to Amend Pilot Program. 

Yes, a patent owner may amend the claims in a patent after a trial is instituted, subject to certain requirements. The Board is also conducting a pilot program for motions to amend. 

The pilot program provides patent owners with two options not previously available:

  • The first option is that a patent owner may choose to receive preliminary guidance from the Board on its motion to amend.  
  • The second option is that a patent owner may choose to file a revised motion to amend after receiving the petitioner’s opposition to the original motion to amend or after receiving the Board's preliminary guidance (if requested).

If a patent owner does not elect either of those options, then motion to amend practice is essentially unchanged. 

For more information regarding motions to amend, please see our pilot program concerning motions to amend. 

A patent owner also has the option to seek amendments through reexamination and reissue. For more information about reexamination and reissue, please see our Federal Register Notice.

In instituting a trial, the Board will either institute on all claims challenged in the petition and on all grounds in the petition, or institute on no claims and deny institution. 

The Board will not institute on fewer than all claims or all challenges raised in a petition.

Yes, the parties may enter into a settlement agreement, and the Board expects that a proceeding will terminate after a settlement agreement is filed. However, depending on the status of the proceeding, the Board may proceed to a final written decision.

If the parties disagree on the conduct of the AIA trial or seek to file a motion, the parties must consult with each other before contacting the Board. The parties should jointly contact the Board by sending an email to trials@uspto.gov. The email should explain whether the parties disagree, the nature of the disagreement, and the times that are mutually agreeable for a conference call. 

In these situations, the Board may have a conference call with the parties to resolve an issue that arises during an AIA trial. On the conference call, the Board may resolve the issue or may choose instead to issue an order after the conference call. The Board may also resolve the issue by email or order without conducting a conference call.

At the trial phase, the petitioner must establish the unpatentability of the instituted claims by a preponderance of the evidence.

Trials - Derivations

Yes, a derivation petition must be filed during the one-year period following the date on which the respondent’s claim was granted or published in a published application, whichever is earlier.  

Generally, the Board will not decide whether to institute a derivation proceeding until the respondent’s case is either:

  • In condition for allowance, or 
  • Patented and the petitioner’s application is in condition for allowance but for the respondent’s earlier prior art being applied against the petitioner’s later application. 

We encourage parties to let the Board know when these conditions are met as soon as possible.

Though not required by statute, the Board generally follows the same timing for derivation proceedings as other America Invents Act trials, with a goal of issuing a final written decision within one year from a decision to institute. 

We always encourage parties to a derivation to meet and confer for the purposes of settlement. The Board will accept a settlement in a derivation proceeding unless it is inconsistent with the evidence of record. Also, the parties to a derivation proceeding may resort to binding arbitration to determine inventorship.

As the petitioner, you must have a patent application on file directed to a derived invention. Your petition must set forth with particularity the basis for finding that an inventor named in the earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application was filed.  

As the petitioner, you must:

  • Identify which earlier-filed application or patent is disputed; and 
  • Provide substantial evidence to show that the petitioner’s inventor conceived of and communicated the claimed invention, and the respondent’s inventor lacked authorization for filing the earlier application
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