Patent Trial and Appeal Board (PTAB) FAQs

Work is underway to consolidate all PTAB FAQs on the list below. In the meantime, you can find other PTAB FAQs at: Ex parte appeals, AIA trials, and Hearings.

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Appeals - Filing

A request to withdraw an appeal may be filed any time before the decision is rendered. Withdrawal of an appeal may result in the abandonment of some or all claims. See MPEP §§ 1215.01, 1215.02, 1215.03. Appellant should file the request by facsimile transmission to 571-273-8300 or through online filing using Patent Center. Information about Patent Center can be found at https://www.uspto.gov/patents/apply/patent-center.

After receiving the second rejection of a claim, you have six months to file a notice of appeal. After filing a notice of appeal, an applicant becomes an appellant. As an appellant, you have two months after filing a notice of appeal to file an appeal brief.

When the Board assumes jurisdiction of an appeal, it will issue a docketing notice to you that includes the application number for the appeal and an appeal number. This docketing notice verifies that the Board received the appeal.

You may appeal a patent application after any claim has been twice rejected (i.e., two non-final rejections) or after the claim is subject to a final rejection.

Appeals

Judges are assigned to appeals according to a PTAB standard operating procedure based upon considerations such as their educational background, experience, workload, and conflicts.

An examiner can make a new ground of rejection on appeal. The examiner must, however, clearly designate in the examiner’s answer that the answer contains a new ground of rejection, and they must provide the appellant with the option to either maintain the appeal or reopen prosecution.

If you believe an examiner’s answer includes an undesignated new ground of rejection, and you want to reopen prosecution to enter an amendment, affidavit, or evidence in response, then you may file a petition seeking to designate the examiner’s answer as containing a new ground of rejection. The filing of this petition will put the appeal on hold until the petition is decided.

If your petition is granted, the appeal is terminated and prosecution is reopened. If your petition is denied, then the appeal continues, and you have the option to file a reply brief. 

 

 

[Examiner's answer]

No, an appellant cannot include any new affidavits or evidence in the appeal brief or reply brief.

 

 

[After notice of appeal]

Yes, with certain restrictions. 

Amendments filed after a notice of appeal, but before the appeal brief, may be filed to: 

  • Cancel claims
  • Comply with any requirement of form expressly set forth in a previous action by the examiner
  • Present rejected claims in better form for consideration on appeal
  • Amend the specification or claims upon a showing of good and sufficient reasons why the amendment is necessary and was not presented earlier

Amendments filed on or after an appeal brief may be filed to: 

  • Cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding
  • Rewrite dependent claims in independent form

 

[After notice of appeal]

The average appeal takes approximately 15 months. The USPTO refers to the time from when the Board receives jurisdiction over the appeal to when a decision is issued as “appeal pendency.”  

 

 

[Timing of an appeal]

An appeal will be expedited if the examination of an application was also expedited. No separate request is required to expedite an appeal. 

If the examination of an application is not expedited, there is no process before the Board to request expedited disposition of the case.

 

 

[Timing of an appeal]

Except in unusual situations, interviews are not permitted after the appeal brief is filed. 

If you have filed a notice of appeal but have not filed an appeal brief, you normally may have one interview with the examiner. 

 

 

[After notice of appeal]

By USPTO rule, an appeal brief must include the following sections:

  1. Identification of the real party in interest
  2. Identification of related appeals, interferences, and trials
  3. A summary of claimed subject matter
  4. Arguments as to why the examiner’s rejection was in error
  5. A listing of the claims subject to appeal.  

Further details as to the requirements for each of these sections may be found at MPEP 1205.

If an appellant submits a brief lacking one of the above sections, the Office will notify the appellant of the reasons for non-compliance and give the appellant a time period to file an amended brief. If the appellant does not file an amended brief that overcomes the reasons for non-compliance within the set time period, the appeal will be dismissed.

 

 

[Appeal filing]

You are not required to file a reply brief in response to an examiner’s answer unless the examiner’s answer includes a new ground of rejection. When the examiner’s answer includes a new ground of rejection, you must either file a reply brief to maintain the appeal or file a reply to reopen prosecution.

If you fail to respond to an examiner’s answer containing a new ground of rejection, the appeal may be dismissed regarding the claims subject to the new grounds of rejection. When all appealed claims are subject to the new grounds of rejection, the entire appeal may be dismissed.

 

 

[After notice of appeal]

Yes. Even if no reply brief is filed, the appeal forwarding fee must be paid before the period of time for filing a reply brief expires. If the forwarding fee is not paid, the appeal will be dismissed.

If you wish to request an oral hearing, you must also make that request by the due date for the reply brief.

 

 

[After notice of appeal]

By USPTO rule, a reply brief must contain certain information: 

  1. An identification page setting forth the appellant’s name(s), the application number, the filing date of the application, the title of the invention, the name of the examiner, the art unit of the examiner, and the title of the paper (i.e., Reply Brief); and
  2. Arguments as to why the examiner’s rejection was in error

Generally, the arguments should not repeat those presented in the appeal brief, but instead respond to arguments made in the examiner’s answer.

 

 

[After notice of appeal]

If you believe an examiner’s answer includes an undesignated new ground of rejection, you may either:

  • File a petition seeking to designate the examiner’s answer as a new ground of rejection, which would terminate the appeal; or
  • Continue with the appeal by filing a reply brief addressing the new rejection

 

[After notice of appeal]

If your appeal is unsuccessful, you may continue to prosecute the application before the examiner, request rehearing by the Board, or seek judicial review by the federal courts.

 

 

[Appeal outcome]

Yes, the Board may raise new grounds of rejection in an appeal decision. In such cases, the Board will designate the new grounds of rejection under a subheading that says “NEW GROUNDS OF REJECTION.”

 

 

[Appeal outcome]

If the examiner’s answer contains any new grounds of rejection, the reply brief should either request the appeal be maintained or request that prosecution be reopened.

If you request the appeal be maintained, the reply brief must address each new ground of rejection. The reply brief cannot include any claim amendments, affidavits, or other evidence. 

If you request that prosecution be reopened, you may file claim amendments, affidavits, or evidence responsive to the new grounds of rejection.

 

 

[After notice of appeal]

You should file a reply brief within two months of either:

  • The date of the examiner’s answer, or 
  • A decision refusing to grant a petition to designate a new ground of rejection in an examiner’s answer

Extensions of time are generally not permitted, but may be granted when a reply cannot be filed within two months. In such cases, the period for submitting a reply brief will be extended for sufficient cause and for a reasonable time specified. The request for an extension must be filed by the date the reply brief is due. Filing a request for an extension does not mean the extension has been granted.

 

 

[After notice of appeal]

No. The Board does not have the authority to issue a patent. If an appellant is successful on appeal, the application is returned to the examiner, who will decide whether to issue a patent for the application or to make a new rejection.

 

 

[Appeal outcome]

No, examiner’s objections are not appealable to the Patent Trial and Appeal Board. The Board’s jurisdiction is limited primarily to review of examiner’s rejections based on unpatentability. 

The Board also does not review matters of examiner procedure, such as a requirement for restriction or election of species, finality of a rejection, non-entry of claim amendments, and holdings of abandonment. Applicants can seek review of these matters by filing a petition to the Director of the U.S. Patent and Trademark Office.

 

[Appeal filing]

Patent Trial and Appeal Board (PTAB) - Appeals - Procedures

Yes. However, the filing of an RCE after a timely filed Request for Rehearing and prior to the Board's decision on the Request for Rehearing will result in a dismissal of the Request for Rehearing. See also MPEP § 706.07(h) and 37 CFR § 1.114(a)(3) for procedures for filing an RCE after a Board decision and before an appeal to a court.

Yes, appellant may include other new issues in a reply brief. Appellant is not limited to responding only to the new rejection or new issue raised in the examiner's answer. However, new or non-admitted amendments/affidavits must not be included. 37 CFR 41.41(a)(2).

The examiner may provide a supplemental examiner's answer, with the Technology Center Director's or his or her designee's approval, to respond to the new issue(s) raised in the reply brief. The appellant cannot request that prosecution be reopened after such a supplemental examiner's answer. The appellant may file another reply brief under § 41.41 to any supplemental examiner's answer within 2 months from the date of the supplemental examiner's answer. 37 CFR 41.4(3)(b). Extensions of time under § 1.136(a) are not applicable.

If all of the claims under appeal are subject to the new ground of rejection, the examiner should dismiss the entire appeal by following the procedure set forth in the MPEP 1215 (e.g., if no claims stand allowed, the application is considered as abandoned on the date after the reply or reply brief is due).

If only some of the claims under appeal are subject to the new ground of rejection, the examiner should notify the appellant that the appeal as to the claims subject to the new ground of rejection is dismissed and the claims subject to the new ground of rejection are canceled. The dismissal of the appeal as to some of the claims on appeal operates as an authorization to cancel those claims and the appeal continues as to the remaining claims. Examiner may use the following draft form paragraph to notify the appellant:

Appellant failed to respond to the examiner's answer that includes a new ground of rejection mailed on [1]. Under 37 CFR 41.39, if an examiner's answer contains a rejection designated as a new ground of rejection, appellant must, within two months from the date of the examiner's answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, to address each new ground of rejection, to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection. In view of appellant's failure to file a reply or a reply brief within the time period set forth in 37 CFR 41.39, the appeal as to claims [2] is dismissed, and these claims are canceled. Only claims [3] remain in the application. The appeal continues as to these remaining claims. The application will be forwarded to the Board after mailing of this communication.

Examiner Note:
1. In bracket 1, insert the mailing date of the examiner's answer.
2. In bracket 2, insert the claim numbers of the claims subject to the new ground of rejection.
3. In bracket 3, insert the claim numbers of the claims that are not subject to the new ground of rejection.

If the reply is not fully responsive to the new ground of rejection, but the reply is bona fide, examiner should provide a 30-day or 1-month time period, whichever is longer, for appellant to complete the reply pursuant to § 1.135(c). If the reply is non-bona fide (e.g., does not address the new ground of rejection by presenting a new argument or amended claims), examiner must sua sponte dismiss the appeal as to the claims subject to the new ground of rejection if the two month time period to reply to the examiner's answer has expired. The examiner should notify the appellant that they have the balance of any remaining time period to correct the non-bona fide reply. Extensions of time under § 1.136(a) are not applicable. 37 CFR 41.39(c). It would be improper for the examiner to sua sponte dismiss the appeal until the time period for reply has expired.

Yes, the examiner may make the next Office action final unless the examiner introduces a new ground of rejection that is neither necessitated by the applicant's amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP 706.07(a).

Yes. However, the filing of an RCE after a timely filed Request for Rehearing and prior to the Board's decision on the Request for Rehearing will result in a dismissal of the Request for Rehearing. See also MPEP § 706.07(h) and 37 CFR § 1.114(a)(3) for procedures for filing an RCE after a Board decision and before an appeal to a court.

Yes, appellant may include other new issues in a reply brief. Appellant is not limited to responding only to the new rejection or new issue raised in the examiner's answer. However, new or non-admitted amendments/affidavits must not be included. 37 CFR 41.41(a)(2).

The examiner may provide a supplemental examiner's answer, with the Technology Center Director's or his or her designee's approval, to respond to the new issue(s) raised in the reply brief. The appellant cannot request that prosecution be reopened after such a supplemental examiner's answer. The appellant may file another reply brief under § 41.41 to any supplemental examiner's answer within 2 months from the date of the supplemental examiner's answer. 37 CFR 41.4(3)(b). Extensions of time under § 1.136(a) are not applicable.

If all of the claims under appeal are subject to the new ground of rejection, the examiner should dismiss the entire appeal by following the procedure set forth in the MPEP 1215 (e.g., if no claims stand allowed, the application is considered as abandoned on the date after the reply or reply brief is due).

If only some of the claims under appeal are subject to the new ground of rejection, the examiner should notify the appellant that the appeal as to the claims subject to the new ground of rejection is dismissed and the claims subject to the new ground of rejection are canceled. The dismissal of the appeal as to some of the claims on appeal operates as an authorization to cancel those claims and the appeal continues as to the remaining claims. Examiner may use the following draft form paragraph to notify the appellant:

Appellant failed to respond to the examiner's answer that includes a new ground of rejection mailed on [1]. Under 37 CFR 41.39, if an examiner's answer contains a rejection designated as a new ground of rejection, appellant must, within two months from the date of the examiner's answer, file either: (1) a request that prosecution be reopened by filing a reply under 37 CFR 1.111; or (2) a request that the appeal be maintained by filing a reply brief under 37 CFR 41.41, to address each new ground of rejection, to avoid sua sponte dismissal of the appeal as to the claims subject to the new ground of rejection. In view of appellant's failure to file a reply or a reply brief within the time period set forth in 37 CFR 41.39, the appeal as to claims [2] is dismissed, and these claims are canceled. Only claims [3] remain in the application. The appeal continues as to these remaining claims. The application will be forwarded to the Board after mailing of this communication.

Examiner Note:
1. In bracket 1, insert the mailing date of the examiner's answer.
2. In bracket 2, insert the claim numbers of the claims subject to the new ground of rejection.
3. In bracket 3, insert the claim numbers of the claims that are not subject to the new ground of rejection.

If the reply is not fully responsive to the new ground of rejection, but the reply is bona fide, examiner should provide a 30-day or 1-month time period, whichever is longer, for appellant to complete the reply pursuant to § 1.135(c). If the reply is non-bona fide (e.g., does not address the new ground of rejection by presenting a new argument or amended claims), examiner must sua sponte dismiss the appeal as to the claims subject to the new ground of rejection if the two month time period to reply to the examiner's answer has expired. The examiner should notify the appellant that they have the balance of any remaining time period to correct the non-bona fide reply. Extensions of time under § 1.136(a) are not applicable. 37 CFR 41.39(c). It would be improper for the examiner to sua sponte dismiss the appeal until the time period for reply has expired.

Yes, the examiner may make the next Office action final unless the examiner introduces a new ground of rejection that is neither necessitated by the applicant's amendment of the claims nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p). See MPEP 706.07(a).

Patent Help - Business Methods - Other

The petitioner bears the burden to demonstrate that the challenged patent is a covered business method patent and that at least one claim of the challenged patent is not directed to a technological invention to show that the petitioner has standing to proceed.  The showing for both covered business method patent and technological invention is based on what is claimed.

LEAP

To request LEAP participation, please complete a LEAP Practitioner Request for Oral Hearing Participation and Verification Form, available at the LEAP website, www.uspto.gov/leap.  

The Verification Form requires you, as a LEAP practitioner, to affirm your eligibility for the program, and must include your name, email, telephone, firm name (if applicable), address, scheduled hearing date, and signature. The Request for Oral Hearing Participation must include the scheduled hearing date, your name, email, telephone, firm (if applicable), address, and signature.

Substantive oral argument appearances, in the context of the Patent Trial and Appeal Board, generally include substantive oral arguments made during an ex parte appeal hearing or oral hearing for a post grant proceeding, wherein the arguments go to the merits of the case. 

In a federal tribunal, such as a U.S. district court or a U.S. court of appeals, substantive oral argument appearances generally include substantive oral arguments that go to the merits of the case, rather than to ancillary issues that arise, such as during status conferences or during discovery disputes. 

If you doubt as to whether an appearance qualifies as a substantive oral argument for purposes of determining LEAP eligibility, you can email LEAP@USPTO.gov

We have two main goals for our Leap into Experience Advancement Program (LEAP):

  • The intellectual property (IP) law community needs highly skilled practitioners, and the United States Patent and Trademark Office heavily invests in the success of America’s IP law community. LEAP helps train junior practitioners who will become the next generation of IP lawyers. 
  • It can be difficult for practitioners to gain court experience, especially for underrepresented groups such as women and minorities. LEAP provides unique access and training opportunities for every demographic.

Please visit the LEAP website, www.uspto.gov/leap, to obtain a LEAP Practitioner Request for Oral Hearing Participation and Verification Form.

No, a conference call where you addressed the PTAB does not count as a substantive oral argument for purposes of determining LEAP eligibility.

No, the Patent Trial and Appeal Board does not draw any inference about the importance of an issue, or the merits of the party’s arguments regarding that issue, from the party’s decision to have (or not to have) a LEAP practitioner argue.

The seven years started on the date you first became licensed or registered, whichever occurred earlier. In this case, the seven-year eligibility period started the day you first became licensed to practice law, i.e., when you were admitted to a U.S. state or District of Columbia Bar, 10 years ago.

Please email your completed Verification Form and Request for Oral Hearing Participation to PTABHearings@uspto.gov.

LEAP practitioners may participate in conference calls, pre-hearing conferences, and depositions. We encourage LEAP practitioners to participate in all aspects of PTAB proceedings as part of our commitment to fostering the next generation of IP lawyers.

A LEAP Practitioner Request for Oral Hearing Participation and Verification Form must be completed for each individual proceeding in which LEAP participation is desired. You remain eligible for LEAP as long as you have seven or fewer years of experience and three or fewer prior substantive oral arguments.  

Requiring a new Request and Verification Form for each proceeding ensures that you confirm your eligibility and continue to meet these requirements.

Maybe. If you are permitted to argue at an oral hearing—e.g., you are admitted pro hac vice as backup counsel and lead counsel is present at the hearing—and you otherwise meet the requirements for LEAP eligibility, then you may argue as a LEAP practitioner.

On the day of their LEAP request, a practitioner must have seven or fewer years of experience as a licensed attorney or registered agent. Seven years begins on the date the practitioner is first licensed or registered, meaning the date the practitioner is admitted to a U.S. state or District of Columbia Bar or becomes a registered patent agent at the United States Patent and Trademark Office, whichever occurs earlier.

The purpose of LEAP is to encourage parties to utilize the skills of practitioners without extensive oral advocacy experience.  If a party does not have an eligible LEAP practitioner, then this program is not available to that party, and additional oral argument time may not be requested on that basis.  

However, at the start of the oral hearing, you may inform the panel of judges if there are issues you believe requires additional oral argument time, beyond the amount previously allocated.  

No. You may quality as a LEAP practitioner only if you are otherwise eligible to practice before the PTAB. A law student who is not registered with the USPTO or admitted as an attorney to a U.S. state or District of Columbia bar is not eligible to practice before the PTAB, and thus, cannot qualify as a LEAP practitioner.

There is no minimum amount of time for which a LEAP practitioner must speak to receive the additional 15 minutes of argument time, as long as the LEAP practitioner has a substantive role in the argument. It is up to the party to decide how to apportion the argument time between the LEAP practitioner and other counsel. 

A practitioner may submit a LEAP request after the date for oral hearing has been set.  If a practitioner submits a LEAP request before the hearing date is set, the Board will decline the request as premature and ask the practitioner to resubmit the request once a hearing date is available.

No. We are not allowing for exceptions to the LEAP eligibility requirements at this time. However, the Board encourages participation and involvement in oral arguments even if the practitioner does not quality as a LEAP practitioner.  

A practitioner may request to share oral argument time as well as confer with more experienced counsel during the argument.  Additionally, the Board encourages other forms of participation in Board proceedings, including handling conference calls and sharing cross examination of a witness with other counsel upon agreement by the other party.

Yes, LEAP practitioners may argue at hearings for appeals that are part of the Fast-Track Appeals Pilot Program.

Patent Trial and Appeal Board (PTAB) - P-TACTS - Filing Other Documents

If you are a user who is designated as lead counsel or backup counsel, you should call the Patent Trial and Appeal Board (PTAB) at 571-272-7822 after the mandatory notice has been approved and request that the PTAB update their counsel information. 

See the P-TACTS User Guide, Filing Other Documents, G3.

After you log into MyUSPTO and access the P-TACTS system, please file the 'Other Documents' by following these steps:. 

To file a document, after the petition has been submitted, not including a motion or rehearing request:

  • Log into P-TACTS
  • Go to My Docket
  • Select the AIA review case number to open Case Viewer
  • Select the “Add” button and select “File other documents” from the menu option

To file a motion, after the petition has been submitted:

  • Log into P-TACTS
  • Go to My Docket
  • Select the AIA review case number to open Case Viewer
  • Select the “Add” button and select “File a motion” from the menu option
  • Select the sub-menu option: File a motion, File an opposition, or File a reply

To file a rehearing request, after a decision has been entered:

  • Log into P-TACTS
  • Go to My Docket
  • Select the AIA review case number to open Case Viewer
  • Select the “Add” button and select “File a rehearing request” from the menu option

See P-TACTS User Guide [Filing Other Documents G1]

The email addresses of all counsel listed on the Counsel tab for a case receive email notifications when something happens (e.g., a document is filed) in a case. Thus, parties should make sure all appropriate counsel are listed and their email addresses are correct. 

For all newly filed America Invents Act Review cases in P-TACTS, the counsel’s email address (their email user ID) will receive notifications from P-TACTS.

See P-TACTS User Guide [Filing Other Documents G5]

Yes. A PDF or MPEG file uploaded to P-TACTS maintains its original form, meaning it will include any metadata in the original file. Only the content of the file itself is part of the record, however, not the metadata. Parties may remove metadata from files prior to uploading.

See the P-TACTS User Guide, Filing Other Documents, G6.

P-TACTS

No. If a petitioner files multiple petitions challenging the same patent, the petitioner should number the exhibits uniquely for both cases, such as 1001-1099 for case #1 and 1101-1199 for case #2. See 37 C.F.R. § 42.63(c). 

Similarly, the patent owner in this situation should number the exhibits uniquely for both cases, such as 2001-2099 for case #1 and 2101-2199 for case #2. Therefore, if the Board consolidates the cases, the exhibits will be uniquely numbered in the consolidated AIA reviews.

See P-TACTS User Guide, Filing a petition, D9.

No. The petitioner's mandatory notices must be filed as part of the petition itself. See 37 C.F.R. §§ 42.8(a)(1), 42.104, 42.204, 42.304, and 42.405.

See P-TACTS User Guide, Filing a petition, D8.

The USPTO will provide the petitioner one month from the Notice of Incomplete Petition to correct the petition. Please see 37 C.F.R. §§ 42.106(b), 42.206(b), and 42.407(b), and the P-TACTS User Guide, FAQ, section D3.

See P-TACTS User Guide, Filing a petition, D6. 

You must use the lead counsel's email address user ID or first backup counsel email address user ID to submit any document in the proceeding, even if a different email address user ID was used to file the petition. To upload the document, see How do I file other documents (e.g., a motion to seal or proposed protective order)?

See P-TACTS User Guide, Filing a petition, D5. 

Yes, the petition and supporting evidence must be served on the patent owner at the correspondence address of record for the subject matter, but the petition and supporting evidence may also be served on the patent owner at any other address known to the petitioner as likely to effect service under §§ 42.105(a), 42.205(a), and 42.406(a).

 

See P-TACTS User Guide, Filing a petition, D4. 

No, it is not.

 

See P-TACTS User Guide, Searching and reviewing documents, B4.

Yes. PTAB publishes performance benchmarks for dispositions, pendency, inventory, and other tracking measures on the USPTO PTAB Statistics webpage.

 

See P-TACTS User Guide [Searching and reviewing documents B3]

Yes, you can search for an AIA Review by the AIA Review case number, Party Name, AIA Review/Case type, Patent Number, Application Number, or Technology Center.

 

See P-TACTS User Guide [Searching and reviewing documents B2]

Yes. All public AIA Review cases can be searched in P-TACTS without registering. All public documents associated with the public cases can be viewed. Please be aware that: 1) scanned PDF documents are not converted to an optical character recognition (OCR) PDF and any text contained in a scanned PDF document is not searchable; and 2) nonpublic documents will be listed when conducting a case search, but the document contents will not be viewable.  

 

See P-TACTS User Guide [Searching and reviewing documents B1]

You can access P-TACTS at https://ptacts.uspto.gov/ptacts/ui/home.

 

See P-TACTS User Guide [System availability and general information A1] 

P-TACTS is only compatible with Google Chrome (version 91.0.4472.77 or higher) browser or Microsoft Edge (102.0.1245.39 and higher) browser.  Other browsers, such as Firefox, are not supported. We highly encourage using Google Chrome as your browser. Additionally, display resolution settings at 1600 pixels are recommended for viewing the search window and results table.

To sign in for the first time, go to the USPTO website and create an account in MyUSPTO.

  1. Click on “MyUSPTO”
  2. Click on “Create a USPTO.gov account”
  3. Enter the required information in MyUSPTO.

After your account has been successfully verified, access the PTAB P-TACTS system link and sign in with your same MyUSPTO account information. The next time you log into the P-TACTS system, you will be automatically logged in if you have previously logged into your MyUSPTO account.

If cases are not displayed in your My Docket interface, please contact the Patent Trial and Appeal Board (PTAB or Board) at 571-272-9797 or PTABP-TACTSAdmin@uspto.gov and request a docket transfer for your MyUSPTO registered email address. 

See P-TACTS User Guide [System availability and general information A2] 

You must update your MyUSPTO email address first. Once your new email address is verified, access the PTAB P-TACTS system link and sign in using your MyUSPTO account information. The next time you log into the P-TACTS system, you will be automatically logged in if you have previously logged into your MyUSPTO account. 

To transfer your P-TACTS case docket or particular AIA Review cases, contact PTAB P-TACTS Admin at PTABP-TACTSAdmin@uspto.gov and request a docket transfer for your MyUSPTO registered email address.

 

See P-TACTS User Guide, System availability and general information A4

Please call the Board at 571-272-9797 if you are unable to access the system. 

If P-TACTS is unavailable, parties may notify the Board of the service of petitions or other associated documents by email, copying opposing counsel, at Trials@uspto.gov. The email notification to the Board should NOT include attachments.

Notification to the Board of petitions served via email must include:

  • Name of point of contact
  • Email address of point of contact
  • Patent number to which the petition corresponds (or application number in the case of a derivation proceeding)
  • Application number of the patent
  • Petitioner's application number (in the case of a derivation proceeding)
  • Number of claims challenged
  • Type of trial proceeding
  • Power of attorney
  • Fee (e.g., a deposit account authorization)

In addition, if a petition or document is served on another party via email or other means, it must be followed by a later-filed motion requesting acceptance of the submission once P-TACTS is available. The petition or document will be accorded the date on the certificate of service as the identified filing date.  37 C.F.R. § 42.6(b).

It is important to note that a petition will not be accorded a filing date unless it is accompanied by a payment of the appropriate fees (e.g., a deposit account authorization).

Paper filing via overnight delivery is authorized only if both P-TACTS and the Board's email address at Trials@uspto.gov are unavailable. 

The mailing address is:

Mail Stop PATENT BOARD
Patent Trial and Appeal Board
United States Patent and Trademark Office
PO Box 1450
Alexandria, Virginia 22313-1450

For hand delivery or delivery via FEDEX, UPS, etc.:

Mail Stop PATENT BOARD
Patent Trial and Appeal Board
United States Patent and Trademark Office
Madison Building (East)
600 Dulany St.
Alexandria, Virginia 22313

 

 

See P-TACTS User Guide [System availability and general information A6] 

A single file may not exceed 25 megabytes in size when uploading. 

If you need to file a document and it exceeds 25 megabytes, please follow the instructions below to reduce the file size.

  • Split a large file into multiple smaller files; and/or
  • Convert Microsoft Word documents into searchable PDF files, rather than printing documents and scanning them as flat PDF files.

See P-TACTS User Guide [System availability and general information A8] 

No. However, only certain document types are allowed to be uploaded during a specialized process, such as initiating a new petition or entering an appearance as patent owner or respondent.

See P-TACTS User Guide, System availability and general information, A9. 

You must update your MyUSPTO email address. Once your new email address is verified, access the PTAB P-TACTS system link and sign in with your same MyUSPTO account information. The next time you log into the P-TACTS system, you will be automatically logged in if you have previously logged into your MyUSPTO account. To transfer your P-TACTS case docket or particular AIA Review cases, contact PTAB P-TACTS Admin at PTABP-TACTSAdmin@uspto.gov and request a docket transfer for your MyUSPTO registered email address.

Please note, inactive cases will not be transferred to your new account. If you need full access to any of the inactive cases not transferred, contact PTAB P-TACTS Admin at PTABP-TACTSAdmin@uspto.gov.

 

See P-TACTS User Guide [System availability and general information A5] 

There are no special naming conventions for documents, but document names must be 75 characters or less. Use the name that will appear in the docket listing. It should be simple and descriptive, such as "Jones Motion to Amend" or "Second Declaration of Dr. Smith." 

 

See P-TACTS User Guide [System availability and general information A10] 

If a document is mistakenly filed, please contact PTAB AIA Trials at 571-272-7822 or at trials@uspto.gov.

 

See P-TACTS User Guide [System availability and general information A13] 

Yes, more than one person can review documents or upload documents in a proceeding at the same time, even if they are sharing a user ID.

 

See P-TACTS User Guide [System availability and general information A14] 

Yes, for example, Patent Center will have entries for the following:

  • Petition Requesting Trial
  • Request for Trial Granted
  • Request for Trial Denied
  • Request for Trial Dismissed
  • Trial Termination or Final Written Decision
  • Trial Review Certificate Issued

 

See P-TACTS User Guide [System availability and general information A15] 

Yes, we provide API access to the P-TACTS data through the Open Data Portal. To access the PTAB API, visit the USPTO API Catalog.

 

See P-TACTS User Guide [System availability and general information A16] 

P-TACTS is intended for the general public. Due to limitations of equipment and bandwidth, P-TACTS is not intended to be a source for bulk downloads of USPTO data. Individuals, companies, IP addresses, or blocks of IP addresses who, in effect, deny service to the general public by generating unusually high numbers of daily P-TACTS accesses (e.g., searches, pages, document retrievals), whether manually or in an automated fashion, may be denied access to P-TACTS without notice.

For a single AIA Review case number, all proceeding documents may be downloaded in bulk by accessing the USPTO PTAB Decisions portal.

 

See P-TACTS User Guide [System availability and general information A17] 

To enter a foreign address, input values in the address fields. Address Line 1, Address Line 2, City, and Postal Code (Zip) fields are not required. 

 

See P-TACTS User Guide [System availability and general information A18] 

As long as the idle time during your session is within 30 minutes, you are not required to remain active. After the 30-minute time limit on continuous inactivity has been reached, you will be logged out of MyUSPTO and P-TACTS and will be required to log back into the system. To remain active, any key stroke, clicks, mouse movement, etc., will maintain your current working session.

 

See P-TACTS User Guide [System availability and general information A19] 

When initiating a new petition, any document uploaded in the Create New Petition Wizard using the “Add to list” button on the Petition documents section will be saved and may be accessed at a later time from the List of Documents table. 

For motions and rehearing requests, you must select the “Save documents” button within the "File a motion" or "Rehearing request" modal to save uploaded documents. You can access saved documents from the Motions and/or Rehearing tabs. 

All other documents currently do not have a save option within the "File other documents" modal and must be resubmitted. 

 

See P-TACTS User Guide [System availability and general information A20 

Any information entered on the current page will be lost unless the “Save” or “Add” button has been selected.

 

 

See P-TACTS User Guide [System availability and general information A21] 

The following are common errors:

  • Failure to set forth claim construction of disputed or important claim terms expressly in a claim construction section
  • Exhibits do not match the documents listed in the Exhibit List
  • Failure to identify related matters or provide a statement that there are no related matters
  • Exhibits are not sequentially numbered in the 1001-1999 range
  • Failure to identify lead or backup counsel as required by 37 C.F.R. §§ 42.8 and 42.10
  • Margins less than 1 inch as required by 37 C.F.R. § 42.6(a)
  • Failure to certify that the petitioner is not barred or estopped from requesting a review as required by 37 C.F.R. § 42.104(a) or § 42.204(a)
  • The petition and supporting documents are served on the patent owner at an address that is not the correspondence address of record for the subject patent as required by 37 C.F.R. § 42.105(a) or § 42.205(a)
  • The petition and supporting documents are served on the patent owner later than the filing of the petition

See P-TACTS User Guide, Filing a petition, D10.

P-TACTS provides screens for the parties to enter certain information, such as lead and backup counsel and real party in interest. However, the USPTO does not have forms beyond those P-TACTS fillable screens.

See P-TACTS User Guide, System availability and general information, A11. 

The My Docket portal provides a Motions tab and a Rehearing Requests tab that show content across all of your cases. Within each of these tabs, three groupings of Pending, All, and Unsubmitted are provided for quickly locating the document for an America Invents Act (AIA) Review case. 

Additionally, Case Viewer includes the same Motions tab and Rehearing Requests tab but is AIA Review case number specific.

 

See P-TACTS User Guide, System availability and general information, A24

No, the petitioner's patent application must be filed with the USPTO like any other application through Patent Center. P-TACTS should only be used to file the petition for a derivation proceeding with the Board. A petitioner should, however, file a copy of its application as an exhibit to the petition.

See P-TACTS user guide, Derivation proceedings, H3.

P-TACTS - My Docket view

The default view is 25 cases. To view more cases, you can change the page quantity selection on the bottom right of the My Docket interface.

See P-TACTS User Guide, System availability and general information, A23

Hearings

The USPTO will issue a Notice of Oral Hearing setting forth the date, time, and hearing room location. This notice is typically issued a few weeks before the scheduled date of the hearing.

Although an examiner can attend a hearing, it is rare that an examiner appears. If the examiner will appear at the hearing, the Board will notify the appellant in advance.

The Board will typically hold a hearing if at least one party requests it.

Witnesses are generally not permitted in appeal hearings. Witnesses may be permitted in an AIA trial hearing subject to authorization by the Board. 

Yes, if an appellant finds it absolutely necessary to request a hearing be rescheduled, then the appellant may respond to a Notice of Hearing by confirming attendance for the originally scheduled hearing and submitting a request to reschedule the date of the hearing. 

The rescheduling request may be submitted either simultaneously with the response to the Notice of Hearing, or subsequently. Rescheduling and postponement requests are, however, discouraged.

Yes, the Board provides court reporters for all hearings. Transcripts are available to parties, usually within four weeks of the hearing.

You must file a written request for an oral hearing within two months of the date of the examiner’s answer or the date of filing a reply brief, whichever is earlier. The written request must be in a separate paper captioned “REQUEST FOR ORAL HEARING.” The request must be filed with the appropriate fee.

Most hearings are open to the public and anyone may attend as long as there is space in the hearing room. Some hearings may be designated non-public, with only parties associated with the case allowed to observe.

If an appellant requests a hearing, then the Board typically honors that request and schedules a hearing. However, in the unusual circumstance that the Board decides that a hearing is not necessary, the Board will notify the appellant. For example, an oral hearing may not be not necessary if the Board has become convinced, prior to a hearing, that the examiner’s position cannot be sustained.

No, pursuant to 37 CFR § 1.26(a), a change of purpose after the payment of a fee, such as when a party desires to withdraw a patent filing for which the fee was paid, including an application, an appeal, or a request for an oral hearing, will not entitle a party to a refund of such fee. See 37 CFR § 1.26(a) Refunds.

Please refer to the Notice of Oral Hearing which sets forth the date, time and hearing room location for your hearing. If you have not received one, one will be issued in due course.

Yes. A request for oral hearing must be filed as a separate paper (i.e. not within the notice or any other paper), and the required fee must be paid, in accordance with 37 CFR § 41.47 within 2 months from the date of the examiner's answer or supplemental examiner's answer. See also Section 1209 of the Manual of Patent Examining Procedure for additional guidance. A PTO Form can be found at http://www.uspto.gov/web/forms/sb0032.pdf. In due course the Board will send a notice of hearing indicating when the oral hearing is scheduled. Further hearing information can be found at http://www.uspto.gov/ip/boards/public_hearing_info.jsp

Yes. A written request for a telephonic or video hearing must be filed with the Board. This can be part of the hearing request, or filed upon receipt of the Board's notice of hearing. The request should be sent by facsimile transmission at 571-273-0299, if sent in response to the notice of hearing.

Hearings may be held in-person at USPTO headquarters in Alexandria, Virginia, or at any of the USPTO regional outreach offices located in Detroit, Denver, Dallas, and San Jose. 

The location for the hearing depends on where the judges on the panel are located. For example, if two judges on the panel are in Alexandria and one judge is in Dallas, then the parties may request that the hearing be held either in Alexandria or Dallas.

 

[Hearings]

Yes, hearing rooms are outfitted with A/V equipment for presenting slides. Appellants must request the audio visual equipment in writing and provide the slides at least five days in advance of their scheduled hearing.  No new evidence is permitted.

 

[Hearing]

Patent Trial and Appeal Board (PTAB) - Procedures - Other

If appellant wishes to file a second appeal, appellant must file a second notice of appeal and an appeal brief in compliance with § 41.37(c)(1). Once the notice of appeal and appeal brief fees have been paid, however, a second set of notice of appeal and appeal brief fees will not be required except if a final Board decision has been made on the first appeal. SeeRules of Practice Before the Board of Patent Appeals and Interferences, 69 Fed. Reg. 49959 [PDF], 49975 (August 12, 2004) (final rule)), answer to Comment 44. If, however, the fees set forth in 37 CFR 41.20 have increased since they were previously paid, then applicants must pay the difference between the current fee(s) and the amount previously paid.

Yes. The examiner must notify applicant as to whether or not the paper is entered for purposes of appeal.

Such an affidavit or other evidence will not be entered for purposes of appeal since it does not overcome all rejections under appeal. 37 CFR 41.33(d)(1).

Section 1.116 applies in this situation. Such an amendment filed after a final action is not entered as a matter of right. It may be admitted if it cancels claims or complies with any requirement of form expressly set forth in a previous Office action; presents rejected claims in better form for consideration on appeal; or amends the specification, including claims, upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.

The term, "other evidence," includes: declarations and exhibits, but it does not include information disclosure statements (IDS).

37 CFR 1.111 would apply to such an amendment. 37 CFR 1.116 would not apply since it is limited to amendments and affidavits or other evidence filed after final action and prior to or with any appeal. If the amendment were filed after a notice of appeal, 37 CFR 41.33 would apply.

No, appellant may not request that prosecution be reopened under § 41.50(a)(2)(i) in response to the supplemental examiner's answer since the Board remanded the application before the effective date. Appellant may request that prosecution be reopened in response to a supplemental examiner's answer written in response to the remand by the Board, only if: (1) the remand is on or after the effective date, and (2) the remand is for further consideration of a rejection. The Board should indicate in the remand if § 41.50(a)(2)(i) applies. Thus, appellant may not request that prosecution be reopened under § 41.50(a)(2)(i) if the remand is for another reason.

No, the Office will accept an appeal brief filed before September 13, 2004, that complies with either former 37 CFR 1.192(c) or new 37 CFR 41.37(c), even if the fee for the brief was timely filed on or after September 13, 2004.

Yes, appellant may reinstate the appeal by filing a reply brief that addresses the new ground of rejection. The appeal can also be reinstated by filing a complete new brief in compliance with 37 CFR 41.37. If instead of the Office action being mailed prior to September 13, 2004, the Office action was mailed on or after September 13, 2004, appellant cannot reinstate the appeal by filing a reply brief that addresses the new ground of rejection but instead can only be reinstated by filing a complete new brief in compliance with 37 CFR 41.37.

The date of receipt by the Office (or date of deposit with the USPS as set forth in 37 CFR 1.10) of the notice of appeal will be used as the date of filing the notice of appeal as set forth in 37 CFR 41.37(a). See MPEP § 512. The brief is required to be filed within two months from the date of filing the notice of appeal. The time period allowed for reply to the action from which the appeal was taken is no longer relevant. Appellant may petition for extensions of time under 37 CFR 1.136(a) for patent applications or 37 CFR 1.550(c) for reexamination proceedings.

No, an amended appeal brief, based on an appeal brief originally filed prior to September 13, 2004, would be acceptable if it complies with either former § 1.192 or § 41.37(c), regardless of when the Office mailed a Notice requiring correction of the noncompliant appeal brief.

Any affidavit or other evidence filed after a final rejection, or an appeal, on or after the effective date, will be subject to the revised or new rules (i.e., the revised § 1.116 or new § 41.33).

Yes, an examiner's answer mailed on or after September 13, 2004 may include a new ground of rejection (with Technology Center Director or designee approval) in compliance with § 41.39. Any examiner's answer mailed before September 13, 2004, however, may not include a new ground of rejection. See former § 1.193.

Yes, the examiner may provide a supplemental examiner's answer (with Technology Center Director or designee approval) if it is mailed on or after September 13, 2004 in response to any new issue raised in a reply brief, even if the reply brief was filed before September 13, 2004. Appellant may file another reply brief in compliance with § 41.41 to reply to the supplemental examiner's answer within two months from the date of mailing of the supplemental examiner's answer. Extensions of time under § 1.136(a) are not applicable to the two-month time period.

Appellant must file the second appeal brief (in compliance with the format and content requirements of § 41.37(c)) within two months from the date of filing the second notice of appeal, even if the first notice of appeal and the first brief were filed before the effective date. The two month time period is extendable under the provisions of § 1.136 for patent applications and § 1.550(c) for ex parte reexamination proceedings. See § 41.37(e).

Yes, extensions of time under § 1.136(a) are required for filing an RCE or amendment after two months from the filing of the notice of appeal, even if the RCE or amendment is filed within the three months from the mailing of the action from which the appeal was taken.

Yes, any appeal brief filed on or after September 13, 2004 must be in compliance with the requirements set forth in § 41.37(c) and be accompanied by the appropriate fee under § 41.20(b)(2). If the brief does not comply with § 41.37(c), an amended brief will be required under § 41.37(d).

Exception: If the appeal brief is filed with a certificate of mailing or transmission under § 1.8 and the date on the certificate of mailing or transmission is before September 13, 2004, the appeal brief may comply with either former § 1.192 or new § 41.37, even if the appeal brief is received by the Office on or after September 13, 2004.

Yes, a brief filed before September 13, 2004 that is compliant with the new § 41.37(c) will be acceptable.

If the notice of appeal is filed before September 13, 2004, the time period for filing an appeal brief will be the time period set forth in former § 1.192(a) which provides that the appellant must file an appeal brief: (1) within two months from the date of filing of the notice of appeal; or (2) within the time allowed for reply to the action from which the appeal was taken, if such time is later.

The time period set forth in former § 1.192(a) also applies if the notice of appeal is filed with a certificate of mailing or transmission in compliance with § 1.8 and the date on the certificate of mailing or transmission is before the effective date of September 13, 2004, but the notice of appeal is received by the Office on or after September 13, 2004. The two month time period will begin on the date of receipt of the notice of appeal.

If you received a Notice of Non-Compliance regarding your appeal brief, the relevant contact information for the paralegal or supervisory paralegal is included on the Notice. If you are unable to contact either, contact Merrell Cashion at 571-272-9797. For reexamination appeal briefs, please contact Merrell Cashion.

Appellant can notify the Board of recent decisions by filing a communication listing the caption of the case, proceeding number and decision date and including a copy of the decision. An example of such circumstances would be where a pertinent decision of a court or other tribunal was not published until after the brief or reply brief was filed. If you need further information, contact either Dale Shaw or Kimberly Jordan at 571-272-9797.

Information on the federal register notices concerning the streamlined brief review can be found at the following link: http://www.uspto.gov/ip/boards/bpai/procedures/guidance_noncompliant_briefs.jsp

Information on the brief review checklists can be found at the following link: http://www.uspto.gov/ip/boards/bpai/procedures/guidance_noncompliant_briefs.jsp

Appellant must notify the Board of changes in the real party in interest by filing a communication indicating the new real party in interest as well as when the change took effect. The identification of the real party in interest allows members of the Board to comply with ethics regulations associated with working in matters in which the member has a financial interest to avoid any potential conflict of interest. If you need further information, contact either Dale Shaw or Kimberly Jordan at 571-272-9797.

Yes, the BPAI has a laptop (does not have internet capabilities - any information will need to be stored on a flashdrive or CD), projector, and screen. You must request the audio visual equipment in writing at least three days in advance of the scheduled hearing, so it can be set up prior to your hearing. No new evidence is permitted. You can send your request by facsimile transmission to 571-273-0299.

Trials

Appellant can notify the Board of recent related court proceeding/appeal/interference by filing a communication listing the caption of the case, proceeding number and decision date and including a copy of the decision. If you need further information, contact PTAB at 571-272-9797.

Like in a post grant review, parties to a covered method patent review are permitted to settle.  A settlement terminates the proceeding with respect to the petitioner, and the Board may terminate the proceeding or issue a final written decision. 

Yes, the AIA requires the Office to prescribe sanctions for abuse of discovery, abuse of process, or any other improper use of the review, such as to harass or cause unnecessary delay or an unnecessary increase in the cost of the proceeding.

Yes, a patent owner is estopped from taking action inconsistent with any adverse judgment including obtaining in a patent a claim that is patentably indistinct from a finally refused or cancelled claim or amending its specification or drawing in a way that it was not permitted to do during the proceeding.

Where another matter involving the same patent is before the Office during the pendency of the covered business method review, the Board may enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation, or termination of any such matter.  Joinder may be requested by a patent owner or petitioner.

A petitioner for covered business method review may request to cancel as unpatentable one or more claims of a covered business method patent granted under the first-to-file provisions of the AIA on any ground, but limited prior art shall apply for those challenged covered business method patents granted under the first-to-invent provisions of Title 35.

A covered business method review is statutorily required to be complete within one year of institution, except that the time may be extended up to six months for good cause. 

Like in a post grant review, where a covered business review is instituted and not dismissed, the Board shall issue a final written decision.  The decision shall address the patentability of any challenged patent claim and any new claim added via amendment during the covered business review.

Yes, a petitioner in a covered business method review may not request or maintain a subsequent proceeding before the Office with respect to any claim on any ground raised or reasonably could have been raised in the covered business method review.  By contrast, a petitioner in a covered business method review may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that the petitioner raised. 

In determining whether a patent is for a technological invention, the following will be considered on a case-by-case basis:  whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution. 

The definition for a covered business method patent provided in the AIA provides that a covered business method patent is “a patent that claims a method or corresponding apparatus for performing data processing . . . , except that the term does not include patents for technological inventions.”  (Emphasis added.)  The determination of whether a patent is a covered business method patent subject for review therefore will be based on what the patent claims.

Charged with infringement means a real and substantial controversy regarding infringement of a covered business method patent exists such that the petitioner would have standing to bring a declaratory judgment action in Federal court. 

A covered business method review may be requested except during the period in which a petition for post-grant review could be filed, e.g., 9 months after the issuance of a patent that is subject to the first inventor-to-file provisions.  The transitional review program is available for non-first-to-file patents, even within the first nine months of the grant of such patents.

Only a person who is sued or charged with infringement of a covered business method patent may petition for a covered business method review of the patent.

Generally, the AIA provides that covered business method reviews will employ the standards and procedures of a post grant review, subject to certain exceptions such as the grounds for challenge and the scope of estoppel.

In administering the program, the Office will consider the legislative intent and history behind the public law definition and the transitional program itself.  For example, the legislative history explains that the definition of covered business method patent was drafted to encompass patents “claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity.”  157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Senator Schumer).  This remark tends to support the notion that “financial product or service” should be interpreted broadly. 

The AIA provides that the covered business review provision sunsets after 8 years from the effective date of the provision.  Accordingly, the Office will not accept new petitions for covered business method review filed on or after September 16, 2020.

The effective date for the covered business method review provision in the AIA is September 16, 2012.

A covered business method review is available for all patents issuing from applications subject to first-inventor-to-file provisions of the AIA as well as those patents issuing from applications subject to the first-to-inventor provisions in current Title 35, provided that the patent is drawn to a covered business method.  The AIA specifies that a covered business method patent is a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.  The AIA does not specify what a patent for a technological invention covers, and therefore, the Office has promulgated a rule for technological invention.

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