USPTO page breaks down elements of process for protecting patent rights
Defending your patent rights and undermining a patent challenger’s arguments that your claims are invalid are goals for Patent Trial and Appeal Board (PTAB) trials, from a patentee’s perspective.
Given what is at stake for many independent inventors, the notion of going to trial may be daunting. At uspto.gov/patents/ptab/trials, the USPTO breaks down the trials process into categories to make the subject more understandable.
Among those major topics:
Inter partes review: Inter partes is a Latin phrase that translates to “between the parties.” This is a trial conducted at the board to review the patentability of one or more claims in a patent—only on a ground that could be raised under U.S. Patent Code Sections 102 or 103, and only relating to prior art consisting of patents or printed publications.
Section 102, entitled “Conditions for Patentability,” describes some conditions when a patent should not be granted to an inventor based on the concept of novelty. These conditions generally involve an invention that is already known publicly.
Section 103 involves the premise of non-obviousness. It stipulates that a patentable invention must not have been obvious to a “person having ordinary skill in the art” in view of the appropriate prior art.
Post-grant review: This is a trial proceeding conducted at the board to review patentability of one or more claims in a patent on any ground listed under U.S. Patent code Section 282(b)(2) and (3), which include the grounds available in inter partes reviews, as well as defenses under Sections 112 and 251.
Transitional Program for Covered Business Method Patents (TPCBM): This covers actions involving financial products or services. Specifically, the America Invents Act describes a covered business method patent as one 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” but not for a “technological” invention.
The TPCBM is a trial conducted at the board to review the patentability of one or more claims in a covered business method patent. TPCBM proceedings generally use the standards and procedures of a post-grant review. This process sunset for new petitions as of September 16, 2020, as the original transitional program was not extended.
A Statistics link on the USPTO’s Trials page shows that from October 1, 2020 through August 31, 2021, 93 percent of trial types filed were via inter partes review.
Email questions/suggestions regarding the trials process to [email protected].
PTAB Inventor Hour Webinars: If you are an inventor or new to PTAB proceedings, you can learn foundational information about ex parte appeals, America Invents Act trials, and PTAB operations at these free webinars. The next two are on November 18 and December 16, both from noon to 1 p.m. ET. Presentation materials and recordings will be posted for these and other previous sessions.
Each episode also features useful information about PTAB statistics, practice tips, and board history. Further, each episode introduces a judge and/or PTAB staff member so you may link names and faces.
To access a webinar, visit uspto.gov/patents/patent-trial-and-appeal-board/inventor-hour-webinars. Questions in advance or during the webinar are welcome. Email [email protected].