PTAB Proceedings

What it is

Patent disputes that are decided at the Patent Trial and Appeal Board ("PTAB") rather than in federal court. The Board is part of the patent office, and it does two very different jobs: it hears challenges to whether a granted patent should have issued at all, and it hears appeals from an examiner who will not allow an application.

Both are trial-like proceedings — filings, evidence, and a panel of judges who decide — and both run on a fairly compressed schedule.

The proceedings

Inter partes review. The most common way to challenge a granted patent's validity, brought by someone facing an infringement claim or simply a competitor's patent standing in the way. IPR proceedings typically rely on certain types of prior art for invalidity arguments.

Post-grant review. A broader challenge available only in the first nine months after a patent grants, reaching validity grounds inter partes review does not — indefiniteness, inadequate written description, and subject-matter eligibility among them.

Ex parte appeals. When an examiner will not allow your application after prosecution has run its course, the next step is an appeal to the Board rather than to a court.

Which side you are on

Defending a patent. Someone has petitioned to invalidate a patent you own. This could be part of a patent licensing process where an accused infringer attempts to invalidate a patent it is accused of using.

Challenging a patent. Someone else's patent stands between you and a product, a customer, or a deal, and a validity challenge at the PTAB can be faster than proving the same thing in district court.

Appealing a rejection. An examiner has rejected your application and further argument at the examiner level is not moving it. An appeal restarts the argument in front of a different decision-maker.

What happens next

If you are on the receiving end of a petition challenging your patent or a final rejection of your patent application—do not delay since it takes time to prepare a correct response. Call or email us and we will put an engagement agreement in place before you send anything confidential.