The PTAB E2E filing system was designed for filing electronically all documents related to Inter Partes and Post Grant Reviews, Transitional Program for Covered Business Method Patents, and Derivation Proceedings. Because electronic filing is the default manner in which documents are to be filed with the Board, 37 C.F.R. § 42.6 (b), and since E2E is different from the filing system used by the United States Patent and Trademark Office (USPTO), knowledge and understanding of both systems is essential.
Filing a New Petition
To initiate a proceeding in front of the PTAB, a petition is filed challenging at least one claim of a subject patent. Using E2E, the Petitioner must submit the petition documents and enter the patent number(s) in question, the claims challenged, real party information, counsel information, and payment. Petitioner is also required to key in the statutory ground (35 U.S.C 101, 35 U.S.C 102, or 35 U.S.C 103, or 35 U.S.C 112) and prior art citations related to the challenged claims.
When uploading the Petition Documents (the Petition itself, a Power Of Attorney, and all Exhibits), be sure to select the appropriate paper type and whether the documents will be classified as public, for Board use only, or private. A nice feature of E2E is that the exhibit numbers automatically advance, making it easier to upload a large number of documents without losing track. Once the petition has been submitted, PTAB E2E will e-mail a petition receipt to the petitioner and the petition will appear on the dashboard of the user who filed the petition. It is important to note that a petition may only be considered if the Petitioner provides a copy of all Petition Documents to the Patent Owner, 35 U.S.C. § 312(a)(5), so be sure to also serve the papers using Priority Mail Express or its equivalent, 37 C.F.R. § 42.6(e)(1). Once the Patent Owner has responded to the Petition, however, all parties may agree to electronic service going forward.
Filing Documents in a PTAB Proceeding
Once a Petition has been filed, the user can manage the documents by accessing the PTAB E2E “Dashboard” screen, which gives an overview of the AIA Reviews associated with the user account. Clicking on the AIA Review name takes you to another screen listing the challenged claims and relevant information and parties. This screen also has a tab where all documents associated with the proceeding are available for review or download.
In order to upload a document for the proceeding, select “AIA Review Actions” from the top right of the page and select whether to file a motion, rehearing request or other document. Select the document you wish to upload, the paper type and whether to remain public or private and make sure to click “Done.” This will upload the document to the PTAB E2E site and an automatically generated email notification will be sent to all relevant parties. The email will not include a copy of the document(s) but all documents are available for download and PTAB rules state that any documents filed must also be served simultaneously upon opposing counsel, 37 C.F.R. § 42.6(e)(2).
Although very user friendly, all websites have their tricks and occasional errors. Luckily, there are many FAQ and user guide documents available through the PTAB website and nothing resolves an issue more quickly than a good old-fashioned call to the Help Desk.