Ptab: Understanding Its Role in Patent Law

Introduction

The Patent Trial and Appeal Board (PTAB) is a specialized tribunal within the U.S. Patent and Trademark Office (USPTO). It plays a crucial role in shaping the boundaries and validity of patents. This article will walk you through the PTAB’s function, the types of cases it hears, why parties might choose to file with it, how appeals work, and the significant impact of the Supreme Court’s 2021 decision in U.S. v. Arthrex.

What Is the PTAB?

The PTAB is an administrative body established to review patent-related disputes and appeals. It is composed of administrative patent judges with technical and legal expertise. The Board replaced the former Board of Patent Appeals and Interferences in 2012 when the America Invents Act (AIA) took effect.

Key Roles:

Review of Ex Parte Appeals: The PTAB hears appeals from applicants who have had their patent applications finally rejected by a USPTO patent examiner.
AIA Trials: Established under the AIA, these include:
- Inter Partes Review (IPR): Challenges to the patentability of granted patents based on prior art (§ 102 or § 103) and limited to patents and printed publications.
- Post-Grant Review (PGR): A broader challenge mechanism available for a limited time after a patent issues.
- Covered Business Method (CBM) Review: Was available for challenging certain financial or business method patents under transitional rules (set to expire, with many aspects already phased out).

Types of Cases the PTAB Hears

Ex Parte Appeals: If a patent applicant disagrees with a final rejection from an examiner, they can appeal to the PTAB. The Board will review briefs from the applicant (and sometimes from the examiner) before rendering a decision.
Inter Partes Review (IPR): A third party can challenge the validity of a patent by petitioning the PTAB to institute IPR, primarily based on prior art references under §§ 102 and 103.
Post-Grant Review (PGR): A petitioner can challenge newly issued patents (within nine months of issuance) on a broader set of grounds (not limited to prior art).
Derivation Proceedings: These proceedings determine whether the inventor named in a patent application derived the claimed invention from someone else.

Why File with the PTAB?

Cost Efficiency: PTAB proceedings (like IPR) can be more cost-effective than full-blown federal court litigation.
Technical Expertise: PTAB judges typically have technical backgrounds and in-depth knowledge of patent law, making them well-suited to evaluate complex patents.
Streamlined Process: AIA trials often proceed on accelerated timelines compared to district court litigation (e.g., an IPR must be completed within 12-18 months after institution).
Strategic Leverage: Challenging a patent via IPR can influence ongoing district court litigation or encourage settlement negotiations.

Appealing a PTAB Decision

Ex Parte Appeals: If you disagree with a PTAB decision in an ex parte appeal, you can appeal to the U.S. Court of Appeals for the Federal Circuit.
AIA Trials: Final written decisions in IPR, PGR, or CBM are also appealed to the Federal Circuit.

The Federal Circuit’s jurisdiction allows it to review questions of law de novo (e.g., claim construction), while giving deference to factual findings by the PTAB.

U.S. v. Arthrex (2021) and Its Impact

On June 21, 2021, the U.S. Supreme Court issued a landmark decision in U.S. v. Arthrex, case number 19-1434. The case centered on whether administrative patent judges (APJs) at the PTAB were constitutionally appointed. The Court found that APJs, as previously structured, wielded authority that should be reserved for officers appointed by the President and confirmed by the Senate.

What Changed?

Director’s Authority: The Supreme Court severed portions of the statute that prevented direct review by the Director of the USPTO. Now, the Director (a presidentially appointed and Senate-confirmed official) has the power to review and rehear final PTAB decisions.
Constitutional Fix: By granting the Director final review authority, APJs are effectively “inferior officers,” making their appointment consistent with constitutional requirements.
Practical Effect: Parties challenging or defending a patent before the PTAB can request a rehearing by the USPTO Director. This additional review step can significantly influence strategic decisions and case outcomes.

Conclusion

The PTAB is a pivotal forum for resolving patent disputes and shaping how patents are interpreted and enforced. Whether you’re a patent applicant appealing an examiner’s final rejection or a third party challenging a patent’s validity, the PTAB offers a technically adept and often more cost-efficient venue. Keep in mind that U.S. v. Arthrex has changed how PTAB decisions are reviewed, adding a layer of oversight by the USPTO Director and ensuring alignment with constitutional requirements.

Understanding the PTAB – What It Is, What It Does, and the Impact of U.S. v. Arthrex