What Goes On at the Board

“What goes on in your mind?” — The Velvet Underground

The USPTO’s Open Data Portal API covers a lot of ground — trademarks, patent examination data, maintenance fees, and more. This post covers one slice: the appeals, trials, and interferences endpoints, which return decisions from the Patent Trial and Appeal Board (formerly the Board of Patent Appeals and Interferences (BPAI)). Making sense of that data means knowing what it means, or at least what it relates to. Here’s the quick primer.

The Board runs several different kinds of proceedings, some of which no longer exist. An applicant’s ex parte appeal of the examiner’s rejection has a different procedural origin from a competitor’s attempt to kill an issued patent through inter partes review, even though both end up before the same Board. Confusingly, two of those proceeding types — inter partes review and inter partes reexamination — share half their name while being procedurally almost nothing alike. I memorized this taxonomy for the patent bar exam the way you memorize anything for a multiple-choice test — a list of names and deadlines with no weight behind them. It didn’t become real until I started practicing and looking at the data: who can bring each one, who decides it, and whether it’s still available.

The short version:

##The Applicant’s Appeal

Ex parte appeal happens when an applicant formally appeals the examiner’s rejection to the Board itself. Ex parte here means the only two parties are the applicant and the examiner, with no adverse third party — not that the rejection goes uncontested. The Board affirms, reverses, affirms in part, or remands. A losing party can optionally request rehearing, then appeal to the Federal Circuit or file a civil action under 35 U.S.C. § 145.

##When Two People Claim the Same Invention

Interference is the old mechanism for resolving a dispute over who invented something first, when two parties separately claim substantially the same invention. It only makes sense under a first-to-invent system, which the United States abandoned for applications with an effective filing date on or after March 16, 2013. Older applications can still theoretically interfere with each other — an interference can run for years — but the population of eligible cases keeps shrinking toward zero and won’t come back.

Derivation proceeding is the replacement created by the America Invents Act (AIA), and it asks a completely different question. Under first-inventor-to-file (FITF), priority isn’t about who invented first anymore — it’s about whether the first person to file stole the invention from someone else. A derivation petitioner has to be an applicant or patent owner with a competing claim to the same invention, and has to allege the earlier filer derived it from them without authorization. Mere earlier invention isn’t a derivation theory; it isn’t a theory at all anymore. Derivation is also genuinely rare, with single digits filed most years and some years none at all.

Neither of these is a validity challenge in the sense a competitor cares about. Both are inventorship-priority fights between people who each think the patent (or application) should belong to them.

##The AIA Trials, and Who’s Actually Allowed to Bring One

The America Invents Act created a new adjudicative animal on September 16, 2012: trial proceedings decided directly by administrative patent judges, not examiners, with discovery, expert testimony, and oral argument. Three of the four types are genuine third-party validity challenges, and each one has a different, specific answer to “who can bring this.”

Inter partes review (IPR) — anyone except the patent owner can petition, on novelty or obviousness grounds only (§ 102 or § 103), based only on patents and printed publications. Timing has real teeth: you can’t file until nine months after grant (or after any post-grant review on the same patent wraps up), and you’re barred if you were served with a complaint alleging infringement of that patent more than a year before you file (35 U.S.C. § 315(b)). You’re also barred if you already filed a declaratory judgment (DJ) action challenging the patent’s validity before petitioning — a counterclaim doesn’t count against you, but a first-filed DJ action does. You have to disclose real-party-in-interest and privity, specifically so a company can’t dodge the time bar or estoppel by routing the petition through a shell.

Post-grant review (PGR) has a much narrower filing window — nine months from grant or reissue, full stop — but much broader grounds: any invalidity theory except best mode, including § 101 and § 112, not just patents and publications. The catch is eligibility, not timing: PGR is only available for patents examined under first-inventor-to-file, meaning patents with an effective filing date on or after March 16, 2013. That’s why PGR petition volume has always trailed IPR by orders of magnitude — for years after AIA trials opened, there simply weren’t many FITF patents to challenge yet.

Covered business method review (CBM) doesn’t exist anymore. It was a transitional program under AIA § 18 with an eight-year sunset built into the statute itself, and it expired on September 16, 2020. While it was alive, it had the strictest standing requirement of any AIA trial: the patent had to claim a “covered business method” (financial-product-or-service-related, excluding anything that qualified as a “technological invention,” a carve-out that generated its own body of litigation about where the line sat), and — unlike IPR or PGR — the petitioner had to have actually been sued or charged with infringement of that specific patent. You couldn’t pre-emptively challenge a CBM patent the way you can with IPR. You had to already be in a real fight over it.

Derivation also counts as one of the four AIA trial types, even though — as covered above — it isn’t a validity challenge at all.

##The Other Reexam: Why “Review” and “Re-exam” Aren’t the Same Word Twice

Inter partes review and inter partes reexamination share a name and almost nothing else, and I think the naming similarity is the single biggest source of confusion in this whole area.

Inter partes reexamination was created by the American Inventors Protection Act of 1999, available for requests filed between November 29, 1999, and September 15, 2012 — a hard cutoff, not a phase-out, though requests already pending on that date kept running under the old rules for years afterward. The grounds are the same as IPR would later adopt — patents and printed publications only — and a third-party requester stays involved throughout the proceeding, which is what makes it inter partes. But procedurally, it’s an examination: it runs in front of an examiner in the Central Reexamination Unit, not administrative patent judges, and it’s appealable to the Board the same way an ordinary prosecution rejection is. IPR is inter partes reexamination’s direct doctrinal successor — same requester eligibility concept, same evidentiary scope — redesigned as a trial decided by the Board itself from day one, instead of an examination that merely ends up at the Board on appeal.

Ex parte reexamination is older still — it’s existed since 1981 and, unlike inter partes reexam, it’s still available today. Anyone can request one, including the patent owner, and the requester can stay anonymous. But once the reexamination starts, a third-party requester is cut out of further participation. There’s no adversary left in the room after that point, which is the ex parte half of the name.

Both reexam types get their own control-number series distinct from ordinary application numbers: 90-series for ex parte reexam, 95-series for inter partes reexam, and a 96-series added later for reexaminations ordered out of supplemental examination proceedings under 35 U.S.C. § 257. If you ever see one of those control numbers in what looks like an ordinary appeal record, that’s why.

##BPAI to PTAB Is a Rename

The Board of Patent Appeals and Interferences (BPAI) existed from 1982, when the Federal Courts Improvement Act merged the old Board of Appeals and Board of Patent Interferences, until September 15, 2012. It heard ex parte appeals, interferences, and — starting in 1999 — inter partes reexamination appeals.

On September 16, 2012, the AIA renamed and reconstituted it as the Patent Trial and Appeal Board (PTAB). Same institution, continuous jurisdiction over ex parte appeals and interferences, plus the brand-new original trial jurisdiction over IPR, PGR, CBM, and derivation. “BPAI decision” and “PTAB decision” describe the same body across a name change, with September 16, 2012 as the real dividing line for what kind of new proceeding could be filed on any given day.