Board offers a variety of ways to help inventors succeed during proceedings
Since the 1800s, inventors unsatisfied with an examiner’s rejection of their patent claims have had the option to file an ex parte appeal—on or from one side only—with the Patent Trial and Appeal Board (PTAB or board). Beginning in 2013, the board started hearing inter partes disputes, in which a third party challenges the validity of an issued patent.
To help inventors understand what happens when they come before the PTAB and to increase inventors’ chances of success, the board offers a variety of virtual resources for the public. These include webinars, articles, webpages, and free legal tools.
Monthly webinars: The board offers two different webinars each month.
Inventor Hour webinars (uspto.gov/about-us/events/inventor-hour-events) cover PTAB proceedings at a high level, addressing need-to-know topics such as how the PTAB fits into the intellectual property litigation system, information on the ex parte and inter partes processes, and experiences of inventors who have successfully appeared before the board. Inventor Hour webinars are designed for those completely new to PTAB practice.
Boardside Chat webinars (uspto.gov/patents/ptab/ptab-boardside-chats) provide a deep dive into PTAB processes and feature in-depth discussions on topics such as evaluating common arguments, options after a final rejection, and preparing for an appeal brief.
Those interested in attending one of the PTAB’s webinars can register through the respective PTAB webpage. Slide materials, along with previously recorded sessions, are available on the respective PTAB webpages, too.
Inventors Digest articles: The PTAB publishes a monthly article in Inventors Digest magazine (inventorsdigest.com) focusing on various aspects of practicing before the PTAB.
As one example, the October 2021 article discusses filing an ex parte appeal with the PTAB. The April 2022 article addresses defending a patent in an America Invents Act (AIA) proceeding.
‘New to PTAB?’ webpage: The PTAB created a special webpage (uspto.gov/patents/patent-trial-and-appeal-board/about-ptab) to assist those appearing before the board. Written in plain language, the “New to PTAB?” webpage explains the fundamentals of board proceedings, how to conduct a hearing, and where to find case information.
The webpage also provides links to helpful resources and will soon be offered in 10 different languages for non-English-speaking inventors.
Free legal assistance for ex parte appeals: Inventors interested in filing an appeal may qualify for the PTAB Pro Bono Program (uspto.gov/patents/patent-trial-and-appeal-board/patent-trial-and-appeal-board-pro-bono-program-independent). This matches financially under-resourced inventors with volunteer registered patent practitioners who provide free legal assistance in preparing ex parte appeals to the PTAB.
Inventor-volunteer practitioner matches are made by the PTAB Bar Association, which is independent of the USPTO. The PTAB Pro Bono Program will eventually be expanded to include AIA trial proceedings.
Ex parte appeal brief template: For inventors who want to go it alone without the aid of legal counsel, the PTAB created an appeal brief template.
The template (uspto.gov/patents/patent-trial-and-appeal-board/resources/preparing-ex-parte-appeal-brief) is a Word document that walks the viewer through the various parts of an appeal brief, explains the information required in each part, and offers examples of each part. In addition to the appeal brief template, inventors may access an instructional PDF and video about how to assemble an appeal brief.
The PTAB is always eager to improve its services for inventors. Questions and suggestions may be submitted on the PTAB Help webpage (uspto.gov/patents/ptab/ptab-help) under the “Feedback and Suggestions” section. Or call (571) 272-9797.