Patent Trial and Appeal Board


Patent Trial and Appeal Board

If a patent dispute cannot be resolved through negotiation or cease and desist letters, litigation can become the only alternative.  The typical venue for patent litigation is federal courts.  However, the Patent Trial and Appeal Board (“the PTAB”), which is part of the U.S. Patent and Trademark Office (USPTO), may also be an option.  PTAB proceedings are an alternative to traditional litigation in federal court and federal law sets out specific procedures for them which can be more streamlined than federal court.

Proceedings Before the Patent Trial and Appeal Board

The Leahy-Smith America Invents Act (AIA) sets out patent litigation procedures. This relatively new law intends to provide a more efficient method of resolving patent disputes without having to file claims in federal court. Some matters the Patent Trial and Appeal Board hears involve:

  • Inter partes review (IPR)
  • Post grant review proceedings (PGR)
  • Covered business method patents (CBM)
  • Ex parte reexamination
  • Derivation proceedings

The new PTAB proceedings differ from the previous reexamination and interference process, though they retain similar principles and characteristics.  First, our patent attorneys will carefully evaluate your situation and counsel you as to whether PTAB proceedings are an efficient and favorable alternative to litigation for your case. We will consider many factors when making such determinations, including:

  • The different burdens of proof in each proceeding
  • The background of fact finders and the nature of fact-finding
  • How any relevant estoppel claims will affect the case

Cases Before the PTAB

The AIA specifies certain types of cases that can avoid litigation by instead engaging in Patent Trial and Appeal Board proceedings.  Administrative patent judges who fully understand all of the nuances and technicalities of patent law hear these proceedings, which often result in a swifter resolution of patent issues and disputes.  We may initiate these proceedings before pursuing a lawsuit or concurrently with a lawsuit in federal court.  A concurrent proceeding will allow the PTAB to determine key validity matters to avoid having to litigate such issues.

The PTAB handles issues related to:

Inter Partes Review – IPR allows you to challenge the validity of a patent claim (or more than one claim) based on obviousness or lack of novelty. If your patent is subject to post grant review, you will need to wait to file an IPR until the expiration of the eligibility period.  For more information, see our inter partes review page.

Post Grant Review – In PGR proceedings, the Patent Trial and Appeal Board will review one or more claims regarding an eligible patent to determine patentability. This can include invalidity determinations based on prior art, patentable subject matter, enablement, written descriptions, or definiteness. Third parties can initiate these proceedings by filing a petition during the eligibility period of a patent grant or a patent reissue resulting from applications filed since March 15, 2013.  For more information, see our post grant review page.

Covered Business Method – In CBM reviews, the PTAB reviews the patentability of claims in a covered business method patent. This review applies similar procedures and standards as post grant reviews. To file this type of petition, someone must face an allegation of patent infringement.

Derivation – In derivation proceedings, the Patent Trial and Appeal Board determines whether an applicant inventor derived an invention from a petitioner. Derivation proceedings before the Patent Trial and Appeal Board replace interference claims filed after March 16, 2013.

Reissues and reexaminations – These are actions that are filed after patent issuance and may or may not have deadlines.  For more information, see our Ex parte Reexamination page.

Contact Us

At Mandour & Associates, we know how to handle patent-related claims and can identify when to use PTAB proceedings in addition to or in lieu of federal district court litigation.  To discuss any legal issues or disputes relating to the PTAB, please contact us.

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