Patent Trial and Appeal Board

The PTAB is the body within the U.S. Patent and Trademark Office (USPTO) vested with authority to decide issues of patentability in trial proceedings including:

The Board also decides ex parte appeals of patent applications that have been rejected twice by the examiner..  If your appeal is not timely filed then it will be dismissed and the application will be abandoned.

IPR v. PGR

  • Both are third party challenges to patent claims
  • An IPR proceeding limited to the grounds of novelty and non-obviousness in view of prior patents, published patent applications, and other printed publications.
    • A PGR proceeding by contrast can be based on ineligible subject matter, lack of utility, lack of novelty, obviousness, lack of written description or enablement, and/or double patenting (i.e., almost all invalidity challenges except those based in equity jurisprudence, including allegations of inequitable conduct).

Patent Practitioners

The USPTO registers patent attorneys and patent agents.  
Both have demonstrated “possessed of the necessary qualifications to render to applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the [USPTO].”
1. Technical qualifications, e.g. hard science degree
2. Pass an exam on PTO Rules, Procedures, and Patent Law
3. Patent agents do not have legal training and are expressly prohibited from giving legal advice.  Since PTAB is quasi-judicial, Patent agents cannot represent litigants before the PTAB.

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