Patent Trial and Appeal Board
United States patent law |
---|
Legislation |
Types of patent claims |
Procedures |
Other topics |
The Patent Trial and Appeal Board (PTAB) is an
Structure
The PTAB is primarily made up of an Appeals Division and a Trial Division. The Appeals Division, with over 100
The PTAB is headed by a Chief Administrative Patent Judge, currently Scott R. Boalick.[3]
Procedures
An applicant can appeal the examiner's decision to the PTAB. The appeal procedure is described in section 1200 of the U.S. Manual of Patent Examining Procedure (MPEP).[4]
Typically, appeals to the PTAB are conducted ex parte. Decisions of the PTAB are typically rendered as an opinion.
Appeals
Decisions of the PTAB can be further appealed to the
An alternative path is a civil action against the
The United States Congress, however, can change the patent laws, and thus override a precedential decision of the Supreme Court, but only for future cases and not retrospectively.
Constitutionality
In 2007,
Starting in 2014, parties challenged the constitutionality of the PTAB to review and cancel patent claims under the
Claim construction standards
In January 2016, the United States Supreme Court agreed to hear a challenge to the legitimacy of the patent standards used in the Patent Trial and Appeal Board during inter partes review.[8][9] In the case, Petitioner Cuozzo Speed Technologies, LLC, argued that the PTAB's use of the "Broadest Reasonable Construction" (BRI) claim construction standard exceeded their authority, and that Congress had legislated that they follow the "Phillips" claim construction standard used in other U.S. Courts. [10] On June 20, 2016, the Supreme Court issued their opinion, upholding the PTAB's BRI claim construction standard.[11] In response, in May 2018, the USPTO proposed adopting the Phillips claim construction.[12]
Principal Officers versus Inferior Officers
On October 31, 2019, a three judge panel of the United States Court of Appeals for the Federal Circuit held that the administrative patent judges (APJs) were Principal Officers of the United States due to the construction of the statute creating their offices. The panel further held that the members of the Board were unconstitutionally appointed under the Appointments Clause, which would require appointment through the President and confirmation by the Senate. They rectified the situation by severing the portion of the statute that restricted removal of the members of the Board, thus rendering them Inferior Officers of the United States.[13]
Upon appeal, the Supreme Court of the United States issued its decision on June 21, 2021, that affirmed that APJs were considered principal officers with "unreviewable authority", and thus had been appointed unconstitutionally. However, to remedy the matter, the Court made it so that all decisions made by the PATB were subject to review by the Director of the Patent Office, who was an appointed position.[14]
See also
References
- ^ "Appeals (Patent Trial and Appeal Board)". United States Patent and Trademark Office. Retrieved 4 December 2014.
- ^ "Trials (Patent Trial and Appeal Board)". United States Patent and Trademark Office.
- ^ Board of Patent Appeals and Interferences
- ^ USPTO, Chapter 1200 Appeal, Manual of Patent Examining Procedure.
- ^ John F. Duffy, Are Administrative Patent Judges Unconstitutional?, 2007, Patently-O Patent L.J. 21, or Duffy, John F., "Are Administrative Patent Judges Unconstitutional?" . Available at ssrn.com
- ^ "The Road To Oil States: How AIA Reviews Got To The Justices". Law360. Retrieved 13 September 2017.
- ^ "OIL STATES ENERGY SERVICES, LLC, PETITIONER v. GREENE'S ENERGY GROUP, LLC, ET AL" (PDF). supremecourt.gov. Retrieved 12 May 2018.
- ^ "Docket sheet summarizing Supreme Court case". Docket Alarm. Retrieved 20 January 2016.
- ^ "Cuozzo Speed Technologies, LLC v. Lee - SCOTUSblog". SCOTUSblog. Retrieved 2018-08-13.
- ^ "Cuozzo Opening Petition to the U.S. Supreme Court". Docket Alarm. Retrieved 20 January 2016.
- ^ "Cuozzo Speed Technologies, LLC, Petitioner v. Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office, 15-446, Adjudged to be AFFIRMED Breyer J (U.S. Jun. 20, 2016)". Retrieved 23 November 2016.
- ^ "USPTO Proposes Claim Construction Rule Change from BRI to Philips in AIA Review Proceedings". The National Law Review. Retrieved 2018-08-13.
- Moore, Kimberly Ann (October 31, 2019). "Arthrex, Inc. v. Smith & Nephew, Inc"(PDF). www.cafc.uscourts.gov. United States Court of Appeals for the Federal Circuit. Retrieved November 4, 2019.
- ^ Liptak, Adam (June 21, 2021). "Supreme Court Says Over 200 Patent Judges Were Improperly Appointed". The New York Times. Retrieved June 21, 2021.
External links
- Patent Trial and Appeal Board (PTAB) on the USPTO web site