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Explained: The PTAB and Post Grant Review

As a mechanism that protects new ideas and investments in innovation and creativity, the USPTO has various offices within, which serve specific functions, both to the general public and the organization itself. One such office is the PTAB. 


What is the PTAB?


The Patent Trial and Appeal Board (PTAB) is a body in the U.S. Patent and Trademark Office (USPTO) which oversees and takes care of the adjudication of post-issuance trial proceedings of patents like inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) review. The PTAB was created in 2012 by the America Invents Act which was previously referred to as the Board of Patent Appeals and Interferences (“BPAI”) which was later renamed by the AIA.


The Board hears appeals from adverse patentability decisions by patent examiners in original applications, reissues, re-examinations, and interferences. The PTAB is often the chosen legal avenue for the resolution of patent validity challenges and thus is instrumental in many patent disputes.


Members of PTAB/ How many PTAB judges are there? 


The Code of Laws of the United States of America establishes the Board's membership as follows:

  • Director.

  • Deputy Director.

  • Commissioner for Patents.

  • Commissioner for Trademarks.

  • Administrative Patent Judges. 

The PTAB consists of over 100 administrative patent judges (“APJs”). To issue decisions, the Board involves more than 100 APJs including Chief Administrative Patent Judge, Deputy Chief Administrative Patent Judge, Vice Chief Administrative Patent Judges, Lead Administrative Patent Judges, Administrative Patent Judges and people serving in many positions such as Supervisory Patent Attorneys, Patent Attorneys, Paralegal Specialists, Legal Instrument Examiners, Administrators, Analysts, and Support Specialists.  


PTAB General Processes


The PTAB has two divisions, namely; the Appeals Division that reviews decisions made by the examiners during active prosecution of patent applications, and the Trials Division that examines post-issuance proceedings.


The trials conducted in the Trials Division are relatively fast, inexpensive, and narrow in scope compared to litigation in other forums, such as district courts or the International Trade Commission. 


There are several types of adversarial post-grant proceedings at the PTAB, including inter parties review (IPR), covered business method review (CBM), and post-grant review (PGR). The process is as follows:


  • Pre-Institution Filings:

A party initiates a post-grant proceeding at the PTAB by filing a petition for review identifying, with particularity, each claim challenged, the grounds on which each challenge is based, and the evidence supporting each ground along with a written Testimony supporting the petition must be submitted. An IPR may not be instituted if the petition is filed more than 1 year after the date on which the petitioner/party is served with a complaint alleging patent infringement. Once the petition is filed and accepted by the Office after a procedural review, a filing date is awarded. 


The patent owner has three months to file an optional patent owner preliminary response, which can address reasons why the Board should decline to institute review of the challenged patent.


  • Institution of Trial:

The PTAB has up to three months to issue a decision on whether to institute trial after the earlier of (1) the patent owner’s preliminary response filing, or (2) the preliminary response due date. In its institution decision, the PTAB must either institute review of all grounds presented in the petition or deny institution entirely.


If the trial is instituted, the PTAB issues a Scheduling Order setting out due dates for the remaining stages of the case and it also establishes the timing of filings relating to evidentiary disputes and the tentative date of an oral hearing, which the parties must affirmatively request by a stated date.


  • Post-Institution Filings:

Upon the institution of trial, the patent owner is typically afforded around three months to file a patent owner’s response to the petition, or a motion to amend the challenged claims. The petitioner may then file a petitioner’s reply, which may only respond to arguments raised in the patent owner’s response or opposition to the motion to amend and respond to new patentability issues arising. The patent owner may respond with a sur-reply limited to responding to the petitioner’s reply.


  • Fact Discovery, Protective Orders, and Evidentiary Disputes:

Discovery in PTAB trials is divided into “routine” and “additional” discovery. Routine discovery is granted in every case and includes cross-examination of expert witness declarant testimony via deposition. Additional discovery in IPR proceedings are inquiries relating to the real-parties in interest in a proceeding, and the burden of proof for obtaining such discovery falls on the party seeking it.


  • Oral Hearing:

The parties may request an oral hearing before the panel of administrative law judges assigned to the case by the date stated in the Scheduling Order and must specify the issues to be argued when doing so. The petitioner generally presents first, followed by the patent owner. An oral argument in PTAB proceeding will be heard by a panel of three APJs, the composition of which is designated by the Chief Judge of the PTAB. The Chief Judge is directed, when possible, to match the technology preferences (e.g., chemical, electrical, mechanical) of the APJ with the subject matter of the patent under review. Further considerations include balancing the experience, workload, and jurisdiction of the APJs on the panel. APJs are also subject to strict conflict of interest policies and ethics rules.


  • Final Written Decision and Appeal:

The Board is required to issue a Final Written Decision within one year of instituting trial. In these decisions, the Board determines whether the petitioner met its burden of showing the unpatentability of the challenged claims by the quality of the evidence. 


Who are the Administrative Patent Judges?


APJs come from various backgrounds, but all have significant experience in patent law, and candidates with 10 to 15 years of litigating and/or prosecuting patents at Intellectual Property firms are preferred. They are required to have at least a bachelor’s degree in an engineering or scientific discipline, and some are former patent examiners and patent attorneys. Based on the sampling data of half of the APJs in PTAB from a recent survey, about 84% are former patent attorneys having practiced in the private sector, about one quarter have experience as examiners or other USPTO roles before becoming an administrative patent judge. A good 12% have experience clerking for the U.S. Court of Appeals for the Federal Circuit and 4 percent have experience in either the military, the Department of Justice, or the International Trade Commission. They are formally appointed by the Secretary of Commerce, in consultation with the Director of the PTO, and until recently were civil service employees with various job protections.


How do APJs and District Court Judges Differ?


In contrast to federal district court judges, APJs are more likely to possess substantive experience in patent law as well as the technical expertise of the patent under review. They are required to demonstrate the ability to litigate or draft decisions around patentability. As a formal agency adjudication under the Administrative Procedure Act, the factual findings of the PTAB are subject to judicial review under the substantial evidence standard. Substantial evidence is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion. The substantial evidence standard is generally considered more deferential than the clear error standard applied to appellate review of fact-finding by district courts, which may reflect Congressional recognition of the subject matter expertise of administrative adjudicatory bodies like the PTAB.


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