Your Ultimate Guide: FAQs About PTAB Proceedings Explained


Exploring the complexities of Patent Trial and Appeal Board (PTAB) proceedings can feel like wandering through a maze. You’ve got questions, and you’re not alone. Whether you’re an inventor, a startup, or a multinational corporation, understanding the ins and outs of PTAB proceedings is crucial to protecting your intellectual property. This article is your beacon in the fog, designed to shed light on the most frequently asked questions about PTAB proceedings. From the basics of initiating a trial to the nuances of appeals, we’ve got you covered. Let’s jump into the world of PTAB proceedings and arm you with the knowledge you need to navigate it with confidence.

Overview of PTAB Proceedings

When diving into the waters of intellectual property protection, you’ll find that Patent Trial and Appeal Board (PTAB) proceedings play a crucial role. Understanding this process is vital for innovators and companies aiming to safeguard their inventions. Here’s a breakdown of what you need to know.

PTAB proceedings are a mechanism for challenging the validity of patent claims at the United States Patent and Trademark Office (USPTO). They provide a faster alternative to traditional litigation, often resulting in a decision within 12 to 18 months. There are several types of PTAB proceedings, including Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method (CBM) review. Each serves a specific purpose and has unique eligibility criteria.

  • Inter Partes Review (IPR) is the most common form, focusing on the novelty and non-obviousness of patent claims using prior art.
  • Post-Grant Review (PGR) allows for a broader range of challenges, including issues of patentability, but must be filed within nine months of a patent’s issuance.
  • Covered Business Method (CBM) review targets patents related to financial products and services, excluding technological inventions.

To initiate a PTAB proceeding, a petitioner must file a request that demonstrates a reasonable likelihood of prevailing on at least one of the challenged claims. The process involves multiple stages, from preliminary response by the patent owner to a final written decision by the PTAB judges.

For those exploring the PTAB world, it’s important to note that decisions can be appealed to the United States Court of Appeals for the Federal Circuit. This provides an additional layer of scrutiny and ensures that PTAB rulings are consistent with broader legal standards and principles.

Equipping yourself with a deep understanding of PTAB proceedings is imperative for effectively managing and protecting your patent portfolio. As you traverse the complexities of intellectual property protection, remember, thorough preparation and strategic thinking are your best allies.

Initiating a PTAB Trial

When you’re faced with a patent dispute or infringement issue, initiating a Patent Trial and Appeal Board (PTAB) trial can be a pivotal step towards protecting your intellectual property rights. Understanding the procedure for starting a PTAB trial is crucial for innovators, entrepreneurs, and legal practitioners alike. Here’s what you need to know to navigate this process effectively.

Filing a Petition is the first formal step in launching a PTAB proceeding. Whether it’s an Inter Partes Review (IPR), Post-Grant Review (PGR), or Covered Business Method (CBM) review, the petition must be prepared meticulously. It should present a compelling case that the patent in question is not as novel or as non-obvious as claimed. This involves citing prior art or other evidence that undermines the patent’s validity.

The Statutory Deadline is a critical factor you must adhere to. For an IPR, the petition must be filed no later than one year after being served with a patent infringement lawsuit. For a PGR, the window is narrower, with the petition needing submission within nine months of the patent’s grant or issuance. Adhering to these deadlines is non-negotiable for the proceeding to be considered by the PTAB.

The Fee Structure for submitting a petition is also an essential aspect to consider. PTAB proceedings can be costly, with fees varying based on the type of review being sought and the number of claims challenged. As of the current guidelines:

Type of Review Fee for Challenging up to 20 Claims
IPR $15,500
PGR $16,000
CBM $16,000

Additional fees apply for each claim beyond the initial 20, emphasizing the need for strategic planning in claim selection.

After filing, the PTAB decides whether to institute a review based on the petition’s merit. This initial phase is your opportunity to make a strong case for why the patent should not stand as is. If the board agrees to institute a review, the proceeding moves to the trial phase, where both parties present evidence, expert testimonies, and arguments.

Understanding these steps is vital for successfully initiating and exploring through a PTAB trial. With the right preparation and strategy, you can effectively address patent disputes and protect your intellectual assets.

PTAB Trial Process

When you’re exploring through the complexities of PTAB proceedings, knowing the ins and outs of the PTAB trial process is crucial. This phase kicks in after the Patent Trial and Appeal Board decides to review a patent’s validity based on your petition. Here’s what you need to know about the journey from petition to decision.

First off, preparation is key. Once your petition for a review is granted, you’ll enter a phase where preliminary responses from the patent owner are considered. This is your chance to solidify your position. Ensure that your arguments against the patent’s validity are backed by strong evidence and prior art that questions its originality or applicability.

During the trial phase, both parties have the opportunity to present testimonies, expert declarations, and cross-examinations. This is a critical time where the strength of your argument is tested against the patent owner’s defense. Here’s a simplified breakdown of the trial stage:

  • Pre-trial Motions: Set the boundaries for the trial, including what evidence will be admissible.
  • Discovery Phase: Exchange relevant documents and testimonies with the patent owner.
  • Oral Hearings: Present your case in front of a panel of administrative patent judges.

The PTAB then moves into a deliberation phase, meticulously reviewing all the evidence, arguments, and legal precedents before reaching a decision. Remember, the goal of the PTAB trial is to ensure that patents uphold the highest standards of innovation and do not stifle competition by granting undue monopolies.

Timeliness is a hallmark of PTAB proceedings, with statutory deadlines guiding each step:

Stage Timeline
Filing of Petition Day 0
Preliminary Response 3 Months After
Decision to Institute 6 Months After
Final Written Decision 12 Months After

Adhering to these deadlines ensures that the process moves forward without unnecessary delays. Keep in mind, exploring through a PTAB trial requires meticulous planning, a thorough understanding of patent law, and a strategic approach to evidence presentation.

Appeals and Review

After exploring the complexities of PTAB proceedings, you might wonder about the possibility of appealing the board’s decision. Understanding the appeals process is crucial for planning your next steps should you find the outcome less than favorable.

Federal Circuit Appeals

The primary avenue for appealing a PTAB decision is through the United States Court of Appeals for the Federal Circuit. This court specializes in patent law and holds the authority to review PTAB decisions. But, it’s important to note that the Federal Circuit will only review the record established before the PTAB. New evidence is generally not permissible.

To initiate an appeal, you must file a notice of appeal within 63 days after the PTAB’s final decision. The timeline is strict, and your preparation for the appeal should begin well before receiving the PTAB’s final determination to ensure no deadlines are missed.

Precedential and Informative Decisions

The PTAB also has a mechanism for designating certain decisions as either precedential or informative, which provides guidance for future cases. A precedential decision is binding on future PTAB panels, whereas an informative decision is not binding but offers insight into the Board’s general consensus on certain issues. Monitoring these decisions can be invaluable for understanding how your appeal might be viewed or for anticipating potential challenges in your PTAB proceeding.

Rehearing Requests

Before moving to an appeal, consider requesting a rehearing with the PTAB. This request must be filed within 30 days of the decision. A rehearing request is your opportunity to point out any overlooked aspects or misunderstandings in the original decision. While not always granted, a successful rehearing can alter the outcome without the need for an appeal.

Each of these options requires careful thought and preparation. Whether you’re considering an appeal to the Federal Circuit, monitoring the PTAB’s precedential decisions, or contemplating a rehearing request, being well-informed will enhance your ability to navigate post-PTAB proceedings effectively.


Exploring the complexities of PTAB proceedings requires a keen understanding of the post-trial phase, especially when it comes to appeals and rehearings. Remember, timing is crucial, from filing a notice of appeal to submitting a rehearing request. Keeping an eye on precedential decisions will guide your strategy and potentially influence the outcome of your case. With meticulous preparation and strategic decision-making, you’ll be better equipped to challenge PTAB decisions effectively. Armed with this knowledge, you’re now ready to take on the post-PTAB proceedings with confidence.