The Preparation and Pace of the PTAB

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Post-Grant Insights is a video series produced by Ropes & Gray that examines the nuances of bringing a patent dispute before the U.S. Patent Trial and Appeal Board.

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The motions that are filed at the U.S. Patent Trial and Appeal Board (PTAB) all need to be authorized in advance of filing. For most motions, the parties must request a phone conference, and there's a very active practice of getting on the phone with the PTAB and opposing counsel. In these calls you must not only present arguments, but also react to what the PTAB panel is suggesting – judges deliver a lot of important guidance during these calls.

There are a couple of aspects of this process that some clients are surprised by: one is the substantive level of detail in these calls, even if they're proposed for the purpose of doing something administrative. For example, because the PTAB panel is so informed about its cases from the very beginning, the judges may dig into very substantive details even in a call that starts off about scheduling.

Because of the surge of issues that can arise, we find it's really important for our attorneys to establish an open line of communication with our clients. It enables us to understand the kinds of issues that may come up in these calls, so we're ready and have our positions laid out. Strategic planning and preparation can really make the difference between a result that a company is unhappy with and one that's a great win for the client.

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