Patent Trial and Appeals Board (PTAB) Experienced Lawyers
The Patent Trial and Appeals Board (PTAB) at the United States Patent and Trademark Office (USPTO) conducts patent-specific trials, including inter partes reviews (IPR), post-grant reviews (PRG), covered business method patent reviews (CBM) and derivation proceedings. The PTAB also hears appeals from adverse examiner decisions in patent applications and reexamination proceedings and renders decisions in interference cases. Case in the PTAB move incredibly fast and involve a lot of technical procedures that are not commonly practiced by Federal court litigators. At the same time, however, too often patent prosecution firms attempt to act as trial counsel before the PTAB without the support of experienced litigators. Dunlap Bennett & Ludwig brings the best of both worlds, combining our stellar patent prosecution team with our patent infringement litigation team in proceedings before the PTAB.
Two Skill-Sets – One Experienced Team
Because the American Invents Act (AIA) is such a new law (2013), few law firms or lawyers have much or even any experience before the Patent Trial and Appeals Board. We have been there and know the ropes. By combining both the highly technical skills and world-class oral advocacy and trial skills of our teams into a cohesive unit physically based just minutes from the PTAB’s location we offer experience and a financially sound approach to PTAB cases. Further, we are there for the inevitable appeal. The team has repeatedly managed and won numerous appeals before the Federal Circuit. Whether you are an attorney looking for solid patent or local support in front of the PTAB, or a patent holder we will leverage our knowledge and strategies claim constructions, expert witness selection, local counsel before the PTAB and presentation of the case in a comprehensive and sensible manner. To learn more about our patent infringement team, visit our Patent Infringement lawyers web page.
Inter Partes Review. An IPR challenges the patentability of at least one claim in a patent using prior art only, on the grounds of anticipation alone or obviousness alone, or both. For more details and the statute, please visit the UPSTO Inter Parties Review web page.
Post Grant Review Proceedings. The PGR procedure requires the Board to review patentability at least one claim for any of a number of reasons, including prior art, written description, definiteness, invalidity based on patentable subject matter, and enablement. For more information see the USPTO PGR web page.
Covered Business Method. A CBM review involves the patentability of at least one claim in a covered business method patent and generally follows the same procedures as a PGR, except that the third-party petitioner must have been accused of infringement of the patent in suit. For more information see the USPTO CBM web page.
A patent examiner’s adverse decision may be appealed to the PTAB. Typically, before filing an appeal we will recommend that the applicant conduct an interview with the patent examiner to understand the basis for the rejection, and then to determine whether the basis is reasonable or not. The appeal is initiated by filing a notice of appeal with the PTAB, and then within two months thereafter, filing an appeal brief. When the patent examiner who issued the rejection receives the brief they have the option to reopen the prosecution to enter a new basis for the rejection, withdraw the rejection or to keep their objections and file an answer to the appeal. If the examiner decides to file an answer then the applicant has two months after the answer to file a reply brief, and if it makes sense, to request an oral argument before the PTAB.
The total number of final trials and adverse decisions to the patent holder (i.e. finding claims invalid etc.) are disproportionately high. It is important to have a team like Dunlap Bennett & Ludwig’s joint litigation – prosecution team on your side.
Judicial Review of the Patent Trial and Appeal Board Decision
A PTAB decision may generally be appealed directly to the United States Court of Appeals for the Federal Circuit, which will be reviewed based on the administrative record created in the PTAB proceeding.
Because our PTAB team is part and parcel of our Federal District court patent infringement litigation team, we can work parallel strategies both inside and outside of the PTAB arena.