The United States Patent and Trademark Office (USPTO) processes most properly executed applications with little fanfare. However, its Patient Trial and Appeal Board (PTAB) conducts trials using a three-judge panel to address inter partes reviews (the most common), post-grant and covered business method review proceedings. It hears appeals when applications are denied, as well as reexamination proceedings. It also hands down decisions regarding interferences.
PTAB proceedings have become increasingly common since the America Invents Act of 2011. Unlike hearings in district courts or the International Trade Commission, PTAB proceedings move relatively quickly, are inexpensive, and have a narrow scope.
What is the process?
There is a six-step process:
- Pre-institution filings: This petition for review identifies the claims challenged and the grounds for the challenge. Expert testimony is included in writing. The petitioner bears the burden of proof. The patent owner has three months to respond.
- Institution of trial: The PTAB will approve or deny a trial. The trial format depends upon the type of proceedings. PTAB issues a scheduling order, setting due dates for the remaining stages of the case.
- Post-institution filings: This involves the owner’s response and rebuttal to the petition. The petitioner then files a reply to the arguments raised. The patent owner can reply to the petitioner’s reply, and they also file an amendment to their challenged claims. The petitioner may file an opposition to the amendment.
- Fact discovery, protective orders and evidentiary disputes: Discovery involves the categories of routine and additional discovery. Parties can file corrections, grounds for objection to the evidence and motions to exclude.
- Oral hearing: The petitioner goes first, presenting to the judges. The owner follows. Neither side may present new arguments, but demonstrations are allowed. Counsel for each party is typically the sole presenters, but live testimony is sometimes allowed.
- Final written decision and appeal: The board generally issues a decision within one year of instituting the trial. The ruling determines if the petitioner met their burden of proof. The board issues a ruling of patentability for the individual claims covered in the hearing. The losing party can appeal to the Court of Appeals for the Federal Circuit.
These are complicated cases
This six-step process gives a broad overview; however, individual cases will have their own specific details to address within each step of the PTAB process. Those contemplating a petition or responding to one should discuss the details of the dispute with an intellectual property attorney with experience handling cases involving PTAB proceedings.