The First Year of PTAB Patentability Challenges

Today marks the one year anniversary of the new patent challenge mechanisms of the America Invents Act (AIA). Over the past few months there have been many noteworthy rulings in the 550+ Inter Partes Review (IPR) proceedings and 50+ Covered Business Method (CBM) proceedings. This week, I will look at the rulings that helped shape post grant practice before the PTAB over the first year. Today we start at the beginning with formal petition practice. Later this week, I will look at other phases of the proceeding, up to the time of oral argument such as effective petition practices, motion practice, joinder practice, and requests for additional discovery. While these rules and best practices are certain to evolve further, the PTAB’s decisions over the past year provide invaluable guidance far beyond that provided in the statute, legislative history, rules and notices.

The first step in any IPR, CBM or PGR proceeding is the preparation and filing of the petition.  Once filed, a petition is reviewed for compliance with various formatting requirements, page limits, mandatory notices, etc. Formalities requirements are handled in a manner akin to ex parte prosecution. If the petition is deemed “defective” the filing date is still accorded and the submitting party is given several days to submit or correct the missing information so long as the re-submission can be accomplished without substantive change to the petition. Typically, such defects are a relatively minor concern, typical examples include:

1. Improper margins, page limits exceeded
2. Improper exhibit numbering
3. Incomplete mandatory notices
4. Failure to identify related proceedings
5. Non-compliant claim charts

Of the above categories, the first 4 are straight forward. The last category, covers a myriad of issues. In short, while the text of a petition must be double spaced, claim charts can be single spaced. As the PTAB does not want filers to infuse claim charts with extraneous content, such as argument, charts are carefully reviewed by PTAB paralegals to ensure that the filer is not attempting to side step the strict page limits. The PTAB requires charts of a two column format, with minimal prose. Ideally, a chart will look much like the fact section of a typical PTAB opinion.

If a petition is deemed compliant the first official communication is likely to be a Notice of Filing Date Accorded. The notice in IPR2013-00033 (Paper 14, Oct. 26, 2012) is representative and reminds the parties of the due date for the Patent Owner’s Mandatory notices (21 days), Preliminary Response (3 months), requirements for pro hac vice admission and the requirement to file documents electronically

Alternatively the Board may deem the petition “incomplete,” and thus not entitled to a filing date, if correction of the error or omission may require a substantive change to the petition or the accompanying exhibits; such is far less commonplace now that we have had 12 months of filings. Still, such a filing could be very problematic for an IPR filer approaching the end of their 12 month filing window.

Once getting past the paralegals and securing a filing date, perhaps the most important aspect of petition drafting is tested. Tomorrow I will walk through effective presentation techniques.