Chapter 1. Introduction to PTAB Practice

• Author: Erika Harmon Arner and Joseph E. Palys
• Pages: 1-10

When the Leahy-Smith America Invents Act (AIA) was signed into law on

September 16, 2011, it created a new practice in patent law: patent trials

before a newly created Patent Trial and Appeals Board (PTAB) within the

U.S. Patent and Trademark Ofce (Ofce). This chapter discusses the essen-

tial framework of the PTAB and the patent trial proceedings before the PTAB.

I. Legal Authority and Regulations

A. Statut ory Provisions

The AIA amended 35 U.S.C. §6 to establish the PTAB, or Board, which

includes the director, the deputy director, the commissioners for patents and

trademarks, and the administrative patent judges (APJs), and which replaces

the Board of Patent Appeals and Interferences (BPAI).

1

Those on the Board,

particularly the APJs, are persons skilled in patent matters.2 Trial proceed-

ings before the Board are heard by a panel of three members of the Board.

3

1. 35 U.S.C. §6(a). All citations to Title 35 of the U.S. Code are to the 2006 Edition,

Supplement 5 (2011), in effect as of Jan. 3, 2012, as amended by the Leahy-Smith America

Invents Act, Pub. L. No. 112-29 (Sept. 16, 2011) [hereinafter AIA], unless noted otherwise.

2. Id.

3. 35 U.S.C. §6(b)–(c).

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Chapter 1

Introduction to PTAB Practice

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