The PTAB

The Patent Trial and Appeal Board (PTAB) is an administrative court within the United States Patent and Trademark Office (USPTO). It was created by the Leahy-Smith America Invents Act (AIA) of 2011 and began operations on September 16, 2012. Before the AIA, the PTAB was called the Board of Patent Appeals and Interferences (BPAI). The PTAB has two primary functions: (1) Adjudicating ex parte appeals from USPTO patent prosecution: when a patent examiner issues a final rejection of a patent application, the applicant can appeal to the PTAB. The PTAB is a three-judge panel of Administrative Patent Judges (APJs) who review the examiner's rejections and either affirm (rejections stand), reverse (application should be allowed), or issue new grounds of rejection. This is an 'ex parte' proceeding — only the applicant and the USPTO are involved, no third party. (2) Conducting AIA trial proceedings — IPR and PGR: the AIA created three new trial proceedings for challenging the validity of issued patents: Inter Partes Review (IPR), Post-Grant Review (PGR), and the now-expired Covered Business Method Review (CBM). These are 'inter partes' proceedings — the petitioner (a third party challenging the patent) and the patent owner are both active participants. PTAB panels of three APJs preside over the proceedings. The PTAB is composed of Administrative Patent Judges (APJs), who are technically trained attorneys with PhD-level expertise in specific technical fields. As of 2024, the PTAB has over 200 APJs. PTAB decisions are appealed to the Court of Appeals for the Federal Circuit.

An Inter Partes Review (IPR) and an ex parte appeal at the PTAB are two completely different types of proceedings, despite both being decided by PTAB judges. Ex parte appeal: (1) Who can file: only the patent applicant (the person whose application was rejected by the examiner); (2) What it challenges: an examiner's rejection of a PENDING application — the application has not yet become a patent; (3) When: after the examiner issues at least a first rejection and a final rejection; appeal filed within 2 months of the final rejection (extendable to 6); (4) Parties: only the applicant and the USPTO are involved — it's 'ex parte' (one-sided); (5) Goal: get the PTAB to reverse the examiner and allow the application (resulting in a patent), or get new grounds addressed; (6) No estoppel: ex parte appeals create no estoppel against the applicant's future patent rights; (7) Cost: USPTO appeal fee ~$890 (large entity, $445 small entity) for Notice of Appeal + same for Forward of Appeal; professional fees $5,000–$20,000+. IPR: (1) Who can file: any third party (not the patent owner), typically a company being sued for or threatened with patent infringement; 1-year bar from service of infringement complaint; (2) What it challenges: an ISSUED PATENT — a patent that has already been granted and is being asserted or threatens to be asserted; (3) When: any time after the patent has been granted for 9 months; (4) Parties: the petitioner (challenger) and the patent owner are both active participants — it's inter partes (two-sided); (5) Goal: have the PTAB invalidate or cancel one or more claims of the patent; (6) Estoppel: if IPR is instituted and leads to a Final Written Decision, the petitioner is estopped from raising in district court or ITC any ground it raised or reasonably could have raised in IPR; (7) Cost: USPTO IPR filing fee $19,500 (includes up to 20 claims); professional fees $50,000–$200,000+ through Final Written Decision.

After the PTAB issues a Final Written Decision (FWD) in an IPR proceeding, several things happen: (1) Immediate effect: the PTAB's findings take effect and, if claims are canceled, those claims are gone — the patent owner cannot enforce canceled claims. Claims that are confirmed as patentable remain valid (though the patent owner cannot use the IPR proceeding to estop future challengers from raising new prior art). (2) Request for Director Review: under the Arthrex (S.Ct. 2021) remedy, any party can request that the USPTO Director review the PTAB's FWD. The Director has discretion to review and may affirm, reverse, or remand the panel's decision. The Director can also initiate sua sponte review. Director Review is a significant new option for parties who believe the PTAB panel made a legal error. (3) Rehearing request: the losing party can request rehearing from the PTAB panel within 30 days of the FWD — pointing out specific errors in the panel's decision. Rehearing is decided by the same panel. (4) Federal Circuit appeal under 35 U.S.C. § 141(c): either party (petitioner or patent owner) may appeal the FWD to the Federal Circuit within 63 days of the FWD (or Director Review decision). The Federal Circuit reviews PTAB's factual findings for substantial evidence and legal conclusions de novo. Importantly, IPR institution decisions (whether the PTAB decided to institute the IPR in the first place) are generally not reviewable on appeal from the FWD (Cuozzo Speed Technologies v. Lee, S.Ct. 2016). (5) IPR estoppel takes effect: once the FWD is issued (not from institution), the petitioner is estopped from asserting in district court or ITC any ground it raised OR reasonably could have raised in the IPR. This estoppel is the primary downside of IPR for patent challengers — if the IPR is unsuccessful, the challenger cannot raise those same obviousness/anticipation grounds in district court. (6) Parallel district court litigation: if patent litigation was pending when the IPR was filed, the district court may have stayed the litigation pending the IPR outcome. After the FWD, the stay is typically lifted and litigation resumes — but with the benefit of the PTAB's claim construction and prior art findings providing some settlement pressure.

The one-year bar is a critical timing requirement for Inter Partes Reviews under 35 U.S.C. § 315(b): an IPR petition may not be filed by a person who has been 'served with a complaint alleging infringement of the patent' more than one year before the IPR petition is filed. Key aspects: (1) Trigger: service of a complaint — not filing, not a cease-and-desist letter, not receipt of a demand letter, not learning about the patent. The one-year clock starts ticking when the complaint is formally served under Federal Rules of Civil Procedure. (2) One year: 365 days from service date. A complaint served on January 15 creates a bar on January 15 one year later — the IPR petition must be filed by January 14 of the following year. (3) Who is barred: the person who was served, privy of that person, or real party in interest — these concepts are interpreted broadly. If a parent company was served, a subsidiary filing an IPR may be barred even though the subsidiary was not directly served. (4) Dismissed complaint: even a complaint that is later voluntarily dismissed may start the one-year clock — the Federal Circuit has held that service of a later-dismissed complaint triggers the bar (Click-to-Call Technologies v. Ingenio, Fed. Cir. 2018). This is one of the most litigated aspects of IPR practice. (5) Multiple defendants: if Company A is served and Company B is later accused, Company B has its own one-year clock from Company B's own service date. But if B is in privity with A (e.g., same corporate family), B's clock may start from A's service date. (6) Declaratory judgment actions: if a declaratory judgment plaintiff files a complaint FIRST (before being sued), does that start the one-year clock? The Federal Circuit has held it does not — the bar only applies when a complaint ALLEGES INFRINGEMENT against the petitioner, not when the petitioner itself brings a DJ action. (7) Why the bar matters: patent owners sometimes use the threat of a lawsuit as a deterrent to IPR — if they can delay serving the infringement complaint long enough, the one-year clock ensures the accused infringer focuses on litigation defense rather than filing an IPR. Conversely, sophisticated accused infringers often file IPR petitions immediately upon receiving a complaint, well within the one-year window, to get the benefit of the lower PTAB burden of proof.

PTAB institution rates for IPR petitions have varied significantly over time and have been a subject of considerable debate and policy reform. Historical data: (1) Early years (2012–2014): institution rates were very high — approximately 80–90% of IPR petitions that met the minimum requirements were instituted. The patent community referred to the PTAB as a 'patent death squad' because so many instituted IPRs resulted in claim cancellation. (2) Post-2014 reforms: institution rates declined somewhat as the PTAB developed guidance on what constitutes a sufficiently strong petition. By 2018–2020, institution rates were approximately 60–65% of filed petitions (or 70–75% of petitions that cleared the threshold hurdle). (3) NHK-Fintiv rule (2020): the PTAB adopted a discretionary denial framework allowing it to decline to institute IPR when parallel district court litigation is proceeding on an overlapping schedule — to avoid duplicative proceedings and waste of resources. This significantly reduced institution rates in cases where district court trial dates were approaching. Institution rates dropped to approximately 55–60% as the Fintiv discretionary denial framework took effect. (4) Current state (2023–2026): the USPTO periodically issues updated guidance on institution practices. Director Review under Arthrex provides an additional mechanism for parties who believe institution was improperly denied or granted. The current institution rate for petitions that meet the reasonable likelihood threshold is approximately 55–70% depending on technology area. (5) Post-institution outcomes: of petitions that ARE instituted, approximately 75–80% result in at least some claims being canceled or amended. Only about 20–25% of instituted IPRs result in all challenged claims being confirmed as patentable. From the perspective of the petitioner: approximately 40–45% of all filed IPR petitions result in at least some claim cancelation (combining the institution rate with the post-institution outcome statistics). The PTAB remains a powerful and economically significant forum for patent invalidity challenges.