Patent Trial and Appeal Board (PTAB) Attorneys
The Messner Reeves patent litigation team of attorneys handles administrative procedures to challenge, invalidate, or defend a patent. Patent challenges before the Patent Trial and Appeal Board (PTAB) are a key component of a comprehensive patent enforcement or defense strategy. PTAB proceedings can effectively defend against patent infringement when they are filed in a timely manner, carefully drafted, and compellingly argued.
Our patent litigation team has expertise in all PTAB proceedings, including inter partes reviews (IPRs) and post-grant reviews (PGRs). Our patent litigation attorneys represent patent owners and petitioners across many sectors, including:
- Electronics
- Biotechnology
- Manufacturing
- Consumer products
- Software
- Pharmaceuticals
- Medical devices
Many of our patent litigation attorneys have a degree in chemical or electrical engineering, further solidifying their experience and understanding of the relevant fields of IP law.
PTAB
PTAB, or Patent Trial and Appeal Board, is a tribunal within the U.S. Patent and Trademark Office (USPTO). The Leahy-Smith America Invents Act (AIA) of 2011 created the PTAB to hear challenges to the validity of patents already granted by the USPTO.
The PTAB reviews appeals from applicants who are dissatisfied with a primary examiner’s final rejection or second adverse decision. To appeal, an applicant must file a notice of appeal, a brief in support, and pay the required fees within the specified time frame. The patent litigation attorneys at Messner Reeves can help with every step of this process to secure the best outcome in your case.
Other PTAB/patent litigation issues our attorneys handle include:
IPR
An Inter Partes Review (IPR) is a trial proceeding that takes place before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO). An IPR reviews the patentability of a patent’s claims after the patent has been issued.
Anyone who is not the owner of the patent can file an IPR petition. An IPR petition can be filed any time after the nine-month mark following the patent grant but within 12 months of being served with a complaint alleging infringement. The PTAB will either deny or institute a trial within about six months of receiving the petition. If a trial is initiated, it will usually be resolved within one year, with some exceptions. A panel of three administrative patent judges (APJs) typically decides IPRs. If you would like more information about filing an IPR petition, our patent litigation attorneys can help.
PGR
PGR stands for Post-Grant Review, a trial process conducted by the PTAB to review the patentability of a patent’s claims. A patent is only eligible for PGR if it is subject to the first-inventor-to-file provisions of the AIA. However, a PGR petition must be filed within nine months after the patent is granted. A PGR can be filed on any grounds that dispute the validity of a patent claim, except for failure to disclose the best mode requirement. The PTAB usually decides on PGRs within a year, but in some cases, the time frame may be as long as 18 months. PGRs have a broader scope of challenges than inter-part reviews (IPRs). Parties who receive an adverse ruling from the PTAB can appeal to the Court of Appeals for the Federal Circuit. Our patent litigation attorneys can help, even if your case rises to this level.
Ex Parte
An ex parte appeal to the PTAB Patent Trial and Appeal Board (TTAB) is a review of a rejected patent application. It is an alternative to continuing prosecution with the examiner. For the review, the application must be submitted as is, without making any substantive changes.
The appeal process includes:
- Briefs: The applicant and examiner submit written briefs to the Board.
- Oral hearing: The applicant can request an oral presentation to the Board.
- Board review: The Board reviews the briefs and attends the oral hearing. Then, it’s up to them to affirm or reverse the examiner’s decision.
An applicant can file an ex parte appeal after a patent application is rejected twice or after a final Office Action is issued. The patient litigation team at Messner Reeves can review the circumstances of your patent to determine if an ex parte appeal may be an appropriate action.
Our attorneys have the post-issuance proceedings (PTAB) expertise necessary to provide you with the best outcome possible. With experience representing clients of all sizes and across countless sectors, our team is well-equipped to successfully manage any PTAB proceedings your company might face.
