PTAB Proceedings

The patent litigation attorneys at the law offices of Thomas P. Howard, LLC handle administrative procedures to challenge, invalidate, or defend a patent, including post grant reviews and inter partes reviews, as well as ex parte appeals, before the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO).

Post grant review is a trial proceeding conducted at the PTAB to review the patentability of one or more claims in a patent on any ground that could be raised under 35 U.S.C. § 282(b)(2) or (3). Post grant review process begins with a third party filing a petition on or prior to the date that is 9 months after the grant of the patent or issuance of a reissue patent. The patent owner may file a preliminary response to the petition. A post grant review may be instituted if shown it is more likely than not that at least one claim challenged is unpatentable. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months). The post grant procedure generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA.

Inter partes review is a trial proceeding conducted at the PTAB to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103 (that is, novelty or non-obviousness), and only on the basis of prior art consisting of patents or printed publications. After the post-grant review period, an inter partes review may be instituted upon a showing that there is a reasonable likelihood that the petitioner of the inter partes review would prevail with respect to at least one claim challenged. If the proceeding is instituted by the PTAB as a result, then a final determination by the PTAB will be issued within 1 year (extendable for good cause by 6 months). Inter partes review may instituted against any patent issued before, on, or after September 16, 2012. The PTAB follows procedures modeled after the Federal Rules of Civil Procedures which are the civil procedure rules applied by federal district courts. A petitioner in an inter partes review may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that the petitioner raised or reasonably could have been raised in the inter partes review.

In both post-grant-review and inter-parties-review proceedings, either party can appeal directly to the U.S. Court of Appeals for the Federal Circuit.

PTAB proceedings are an effective tool to defend against patent infringement if promptly filed, precisely drafted, and persuasively argued.

Contact the attorneys at Thomas P. Howard, LLC to answer your questions regarding PTAB proceedings.


For a free consult regarding PTAB proceedings, please e-mail us, or call us at (303) 665-9845.