PTAB Issues New Guidance on Inter Partes Review

The Patent Trial and Appeal Board (PTAB) issued a guidance document addressing the impact of the SAS Decision on Inter Partes Reviews.

The PTAB’s guidance document outlines new procedures that will be followed in an Inter Partes Review (IPR) as a result of the U.S. Supreme Court’s SAS decision. According to the guidance, the PTAB will now institute an IPR as to either all claims challenged in the petition or none. In addition, if the IPR is instituted, all grounds raised relative to each claim will be considered by PTAB. The final written decision will address all claims challenged by the petitioner that remain pending at the time of decision as well as any new claims added via the amendment process.

For pending trials wherein the PTAB instituted the proceeding on only some of the challenges raised in the petition, the PTAB may issue an order supplementing the institution decision to institute on all challenges raised in the petition, and otherwise modify the schedule of the proceedings.

For more information on IPR practice before the PTAB, please contact us.