Patent Review Processing System (PRPS) | USPTO
`
`http://www.uspto.gov/patents-application-process/appealing-patent-decis...
`
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`Home / Patents: Application Process / Patent Trial and Appeal Board / Trials /
`Patent Review Processing System (PRPS)
`
`PRPS (Patent Review Processing System) is the Board's e-filing (EF) and case management (CM) system for trial
`proceedings. Direct Link (https://ptabtrials.uspto.gov/).
`
`For questions regarding PRPS, please call the Board at (571) 272-7822. Support is provided Monday through
`Friday (except federal holidays) from 8:30 a.m. to 5:00 p.m. Eastern Time.
`
` 
`
` 
`
`New Maximum Daily Limit for Credit Card Payments, Effective June 1, 2015 (http://beta.uspto.gov/patent
`/laws-and-regulations/america-invents-act-aia/new-maximum-daily-limit-credit-card-payments)
`
`Notice Concerning Unavailability to the Public of the Patent Review Processing System on December 16-18,
`2014 (/sites/default/files/documents/prps_notice_20141216.pdf)
`
`PRPS change effective October 11, 2014:
`
`PRPS users who have a session that is idle for 25 minutes will receive a pop up warning message requesting the
`user to continue their session by actively clicking on the Ok button. The pop up warning message will display a 5
`minute countdown informing the user to actively click on the Ok button before the countdown ends. If there is
`no action by the user, then their session will end and if they want to continue the session, they will need to close
`their browser, reopen their browser to access the PRPS site and log back in. If you had entered information on
`the PRPS page without saving, you will lose the information. If you have saved your information, then it will be
`available when you log back in. For additional information, see FAQs A15, A16, A17, A18 and A20.
`
` 
`
`If you have any questions, you can contact the PTAB assistance line at 571-272-7822.
`
`As PRPS is a developing system, suggestions for improvement provide important input into its future design.
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`Patent Review Processing System (PRPS) | USPTO
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`http://www.uspto.gov/patents-application-process/appealing-patent-decis...
`
`After seeing PRPS work, you may have suggestions for improving it. If you have suggestions, please send them to
`PRPS-Suggestions@uspto.gov (mailto:PRPS-Suggestions@uspto.gov).
`
`Quick Start Guide (/sites/default/files/ip/boards/bpai/quick_start_guide_02_14_14.pdf)
`Information related to the Paper Reduction Act (/sites/default/files/ip/boards
`/bpai/information_related_to_paper_reduction_act.pdf)
`or technical reasons, the size limit for an uploaded document is currently limited to 25 megabytes. See FAQ
`A4 (/patents-application-process/appealing-patent-decisions/trials/patent-review-processing-system-prps-0).
`Internet Explorer 9 should be used for all filings as a petitioner or patent owner. A security question is asked
`at the initial stage (please answer "no") and the finance stage (please answer "yes"). Public documents may be
`viewed, however, using Internet Explorer 9, Firefox 26, Chrome 35, or Safari 6.
`If you are using Internet Explorer 10 or 11, you will need to add uspto.gov in the compatibility view settings.
`To add a site to the Compatibility View list
`1. Open the desktop, and then click the Internet Explorer icon.
`2. Tap or click the Tools button Tools, and then click Compatibility View settings.
`3. Under Add this website, enter the URL of the site (uspto.gov) you want to add to the list, and then  click
`Add.
`4. Click on Close.
`
`Video
`
`Low Resolution (http://helix-1.uspto.gov/asxgen/PRPSPromo-Helix.wmv)
`High Resolution (http://helix-1.uspto.gov/asxgen/PRPSPromo720p.wmv) (HD)
`
`1. Only PDF and MPEG format files (MPEG, MPG, MP1, MP2, MP3, M1A, M2A, M1V, MPA, MPV) may be uploaded
`in PRPS. Password-protected files will not be accepted. For text documents, such as MS Word® documents, users
`are encouraged to convert the document directly into a text-searchable PDF file, rather than printing the
`document and scanning it in as a PDF file.
`
`2. PRPS sends an automatic email notification to the parties whenever a document is filed in a case. To view the
`document, you must access PRPS, open the applicable case in your docket, and select the document.
`
`3. To request a conference call for a particular case (e.g., to request authorization to file a motion), contact the
`Board at Trials@uspto.gov (mailto:Trials@uspto.gov). The email should copy the other party or parties to the
`proceeding, indicate generally the relief being requested or the subject matter of the conference call, state
`whether the opposing party or parties oppose the request, and include times when all parties are available.
`Unless otherwise authorized, do not include attachments in the email and do not use the Trials@uspto.gov
`(mailto:Trials@uspto.gov) email address for substantive communications to the Board. Parties may also contact
`the Board by telephone at (571) 272-7822.
` 
`
`4. Effective March 19, 2013, new fees will be charged for filing a petition for an inter partes review, post-grant
`review, or covered business method patent review. See Setting and Adjusting Patent Fees, 78 Fed. Reg. 4212,
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`Patent Review Processing System (PRPS) | USPTO
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`http://www.uspto.gov/patents-application-process/appealing-patent-decis...
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`4291 (37 C.F.R. § 42.15), available at http://www.gpo.gov/fdsys/pkg/FR-2013-01-18/pdf/2013-00819.pdf
`(http://www.gpo.gov/fdsys/pkg/FR-2013-01-18/pdf/2013-00819.pdf); also see FAQs E6-E7.
`
`5. Effective March 16, 2013, an applicant for a first inventor-to-file patent may file a derivation petition. See FAQs
`I1-I5.
`
`6. Effective January 14, 2013 (effective date of the AIA Technical Corrections Act), a petitioner may file an inter
`partes review petition challenging a first-to-invent patent or reissue patent upon issuance including during the
`first nine months after issuance.
`
`7. Should you encounter issues with using a particular deposit account in PRPS, please close out of the browser
`completely, clear the cookies in your browser, login to PRPS again, and input the correct deposit account
`number. If you are still unable to use the deposit account, please call the Board at (571) 272-7822.
`
`8. PRPS will be undergoing an upgrade on February 15, 2014. Please see the FAQs below for more information
`following the upgrade. Please note updated FAQs A9, B6, F8, F9, and G13 below.
`
`9. Effective October 11, 2014, the first backup counsel will have the same permissions as lead counsel and be
`permitted to upload documents and make changes to the counsel page.
` 
`
`A. System Availability and General Information
`B. Searching and Reviewing Documents
`C. Registering as a PRPS User
`D. Filing a Petition
`E. Fees
`F. Submission of Patent Owner/Respondent Information and Preliminary Response
`G. Filing Other Documents
`H. Joinder and Consolidation
`I. Derivation Proceedings
`
` 
`
`A1. How do I log on to PRPS?
`
`Go to the Patent Trial and Appeal Board (PTAB) Web page at: http://www.uspto.gov/ip/boards/bpai/index.jsp
`(/patents-application-process/appealing-patent-decisions/patent-trial-and-appeal-board-old), and then click on
`"Direct Link" under "Patent Review Processing System (PRPS)".
`
`Once you are registered, close out of the browser completely, and then bring the browser back up and go to
`https://ptabtrials.uspto.gov (https://ptabtrials.uspto.gov). You will receive an email containing the verification
`code.
`
`On the PRPS welcoming screen, click on Login and enter your User ID and password. When the screen asks for
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`the verification code, copy and paste the verification code from the email.
`
`A2. If PRPS is down during normal business hours or other unscheduled outage periods, may I file a petition or
`other documents via email or mail?
`
`If you have any difficulties with PRPS, please call the Board at (571) 272-7822.
`
`However, if PRPS is unavailable during normal business hours, petitions (and other documents) may be submitted
`to the Board via email: Trials@uspto.gov (mailto:Trials@uspto.gov).
`
`Petitions submitted via email must include:
`
`* name of point of contact;
`
`* email address of point of contact;
`
`* patent number to which the petition corresponds (or application number in the case of a derivation
`proceeding);
`
`* application number of the patent;
`
`* petitioner's application number (in the case of a derivation proceeding);
`
`* number of claims challenged;
`
`* type of trial proceeding;
`
`* power of attorney; and
`
`* fee, e.g., a deposit account authorization.
`
`In addition, a petition or document submitted via email or other means must: (1) be accompanied by a motion
`requesting acceptance of the submission, and (2) identify a date of transmission where a party seeks a filing date
`other than the date of receipt at the Board. 37 C.F.R. § 42.6(b). It is important to note that a petition will not be
`accorded a filing date unless it is accompanied by a payment of the appropriate fees (e.g., a deposit account
`authorization).
`
`Paper filing via EXPRESS MAIL® (or by means at least as fast and reliable as EXPRESS MAIL®) is authorized only if
`both PRPS and the Board's email address (Trials@uspto.gov (mailto:Trials@uspto.gov)) are unavailable. The
`mailing address is:
`
`Mail Stop PATENT BOARD
`
`Patent Trial and Appeal Board
`
`United States Patent and Trademark Office
`
`PO Box 1450
`
`Alexandria, Virginia 22313-1450
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`Patent Review Processing System (PRPS) | USPTO
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`http://www.uspto.gov/patents-application-process/appealing-patent-decis...
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`For hand delivery or delivery via FEDEX, UPS, etc.:
`
`Mail Stop PATENT BOARD
`
`Patent Trial and Appeal Board
`
`United States Patent and Trademark Office
`
`Madison Building (East)
`
`600 Dulany Street
`
`Alexandria, Virginia 22313
`
`A3. Will extensions of time be available?
`
`If PRPS is down during normal business hours, a party may contact the Board and request a one-day extension of
`time for due dates that are set by rule or orders of the Board. 37 C.F.R. § 42.5. In the unlikely event that an
`administrative patent judge is not available to rule on the extension, the Board may grant an extension the day
`after the paper is due. However, no extensions of time will be granted for any statutory time period.
`
`A4. What is the megabyte limit for a document upload?
`
`A single uploaded file may not exceed 25 megabytes in size. For technical reasons, PRPS is unable to accept files
`over 25 megabytes at this time. USPTO expects to be able to increase the limit in future releases.
`
`If you need to file a document that exceeds 25 megabytes, please call the Board at (571) 272-7822.
`
`Users are encouraged to reduce the file size by:
`
`splitting a large file into multiple smaller files; and/or1.
`
`
`converting MS Word® documents into PDF files, rather than printing documents and scanning them in as2.
`PDF files.
`
`A5. Is there a limit to the number of documents that can be uploaded per filing?
`
`No.
`
`A6. Are there any naming conventions for documents or character restrictions? (revised - Mar. 20, 2014)
`
`There are no special naming conventions for documents, but the number of characters is limited. The user will be
`prompted to provide a name that will appear in the docket listing. This name should be simple and descriptive,
`such as "Jones Motion to Amend" or "Second Declaration of Dr. Smith." Document names must be less than 255
`characters.
`
`A7. Will the Office provide forms (e.g., power of attorney or IPR transmittal) for filing documents in a proceeding?
`
`PRPS provides screens for the parties to enter certain information (e.g., lead and back-up counsel and real party
`in interest). However, the Office does not have forms beyond those PRPS fillable screens. While forms may
`become available with future releases, most filings will be part of motion practice rather than pre-defined forms.
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`A8. How can I check whether I filed a document properly?
`
`After you upload a document in the proper format (i.e., PDF or MPEG for exhibits and PDF for all other
`documents) and click "Submit," you will receive an acknowledgement on the screen in PRPS and a filing receipt
`via email if the document is filed properly. If you did not receive an acknowledgement on the screen or a filing
`receipt via email, the document most likely has not been uploaded properly and you should contact the Board at
`(571) 272-7822. You may also check whether the document is listed in the file contents of the proceeding.
`
`A9. If the wrong document is submitted, can it be deleted through the PRPS interface? (revised - February 14,
`2014)
`
`Yes, as long as the document has not yet been submitted. When uploading a document, users should ensure that
`the correct file has been selected before clicking the "Upload File" button. If the wrong document is uploaded
`but the "Submit" button has not yet been clicked, you may delete the document by clicking the trash can icon
`shown on the screen. Once all documents are uploaded, the user must click the "Submit" button to complete the
`submission. Documents uploaded, but not yet submitted, have not been filed with the Board.
`
`If the wrong document was uploaded and the "Submit" button was clicked, you should file the correct document
`and a motion to expunge the wrong document as soon as possible. Any motion to expunge filed on the same
`day as the wrong document will generally be granted.
`
`A10. Can more than one person work on a case at the same time?
`
`Yes, more than one person may review documents or upload documents in a proceeding at the same time, even
`if they are sharing a user ID.
`
`A11. Will the PAIR record for the challenged patent show whether a petition has been filed or a decision on the
`petition has been granted?
`
`Yes, for example, PAIR will have entries for the following:
`
`Petition Requesting Trial
`
`Request for Trial Granted
`
`Request for Trial Granted in Part
`
`Request for Trial Denied
`
`Request for Trial Dismissed
`
`Trial Termination or Final Written Decision
`
`Trial Review Certificate Issued
`
`A12. Is there any application programming interface (API) access to PRPS?
`
`No, API access to PRPS is not permitted at this time.
`
`A13. Can I download information in bulk from PRPS?
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`PRPS is intended for use by the general public. Due to limitations of equipment and bandwidth, PRPS is not
`intended to be a source for bulk downloads of USPTO data. Individuals, companies, IP addresses, or blocks of IP
`addresses who, in effect, deny service to the general public by generating unusually high numbers of daily PRPS
`accesses (e.g., searches, pages, document retrievals), whether generated manually or in an automated fashion,
`may be denied access to PRPS without notice.
`
`A14. How do I enter a foreign address in PRPS?
`
`Certain screens in PRPS allow for the entering of address information (e.g., for a petitioner or patent
`owner/respondent's real party in interest). In the case of a foreign address, users should select the appropriate
`country in the "Country" field, select the blank "-" entry in the "State" field, and then input the next three lines of
`the foreign address in the "Address Line 1," "City," and "Postal Code" fields.
`
`A15. If I am idle in PRPS for less than 30 minutes, what will happen? (July 11, 2014)
`
`Nothing as long as you are active-(key strokes, clicks, etc.)--, you can continue to work as you normally do.
`
`A16. If I am idle in PRPS for 30 minutes or more, will I lose any of the completed uploads or activities from the
`timed-out session if I clicked on the save button? (July 11, 2014)
`
`No. If you enter some data fields, then either click on the submit button or the save button to complete the
`activities, all changes will be saved into the PRPS system, and will not be lost from the session time-out. All
`documents are saved when you click on the upload button, so all uploaded documents will not be lost when you
`are timed out.
`
`A17. If I am idle in PRPS for 30 minutes or more, will I lose any of the data entered from the timed-out session if I
`did not click on the save button? (July 11, 2014)
`
`You will lose any data entered on the last screen in which you were active before becoming idle. For example, if
`you were on the counsel page and were entering data for the backup counsel but did not finish and your system
`was idle for 30 minutes or more, the data entered on that page would be lost.
`
`A18. What will happen if I am idle for 30 minutes, how do I get back into my session? (July 11, 2014)
`
`You will have to close your browser and reopen your browser to access the PRPS website. You can open the case
`again from 'My Docket' and locate the hyperlink under 'My Pending Tasks' to continue working on the case. Once
`you have uploaded all your documents, then you can submit them.
`
`A19. What happens if I upload a document but do not click the "Submit" button? (new - August 12, 2014)
`
`Users must click the "Submit" button to complete a submission. Documents uploaded, but not yet submitted,
`have not been filed with the Board and will be deleted automatically after 30 days.
`
` 
`A20. If I am idle in PRPS for 25 minutes, what will happen? (Oct. 9, 2014)
`
`A pop up warning message will appear asking the user to click on the Ok button to continue their session. The
`pop up warning message will include a 5 minute countdown informing the user to click the Ok button before the
`countdown time limit has expired.
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` 
`
`B1. Can I use PRPS to search for a proceeding without registering?
`
`Yes, a non-registered user may search for a proceeding and review documents related to a proceeding. However,
`if you want to file a document or submit a fee payment in a proceeding, you must be a registered PRPS user.
`
`B2. Can I search for a proceeding by the patent owner?
`
`No, you may search for a proceeding by the petitioner's name, petition type, patent number, or application
`number (for derivation proceedings).
`
`B3. Will PRPS collect and report statistics on the proceedings?
`
`Yes, PRPS will collect and report statistics about the new proceedings. Currently, users may search the
`proceedings based on a particular trial type, party name, petition filing date, institution date, patent number, and
`application number (for derivation proceedings).
`
`B4. Why are there gaps between trial proceeding numbers?
`
`A trial proceeding will be listed in the search results only when the (multi-step) process of submitting a petition
`for instituting a trial proceeding via PRPS has been successfully completed. If the process of filing a petition is not
`yet completed or was never completed, a trial number will be provided but it will not be listed in the search
`results.
`
`B5. Why have the prefixes of trial proceeding numbers changed from "2012" to "2013" (e.g., IPR2012 to IPR2013)?
`
`The prefixes of trial proceeding numbers track the fiscal year. Fiscal year 2013 started on October 1, 2012. Thus,
`any petitions filed between October 1, 2012 and September 30, 2013 will receive a trial proceeding number with
`a prefix of "2013" (e.g., IPR2013 or CBM2013).
`
`B6. Why are there gaps between paper numbers in some proceedings? (revised - February 14, 2014)
`
`In some previous versions of PRPS, PRPS assigned a sequential number (Paper 1, 2, 3, etc.) to a paper
`immediately when the paper was uploaded. Thus, if a user uploaded a paper but then deleted it before
`submitting, the assigned number was not reassigned, causing a gap in the numbering of papers in that
`proceeding. In the current version of PRPS, papers are assigned a number only when the submission process is
`completed, so there are no gaps in paper numbers.
`
` 
`
`C1. Who can register?
`
`Anyone can register to use PRPS and obtain a user ID, such as a pro se patent owner or an attorney who is not
`registered to practice before the Office under 37 C.F.R. § 11.6.
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`C2. What information is required to register?
`
`When you are registering to use PRPS, you have to select a unique user ID and password, and enter your name
`and an email address. If you are a USPTO registered practitioner, you should enter your registration number.
`
`C3. Can I share my user ID with my paralegals or other attorneys in my organization?
`
`Yes, a single user ID may be shared among a working group. It is important to keep in mind, however, that PRPS
`docket display is based on the user ID. Therefore, the registered user must ensure that sharing his or her user ID
`would not violate any protective order.
`
` 
`
`D1. When will my petition be accorded a filing date?
`
`Once the Office reviews the petition and determines whether the petition is complete and the appropriate fees
`have been paid, the Office will send a notice to the petitioner and patent owner/respondent. The submission date
`of the compliant petition will be accorded as the filing date.
`
`If the petition complies with all of the statutory requirements (see 35 U.S.C. 135, 312, and 322), the original
`submission date of the petition will be accorded as the filing date. Conversely, no filing date will be accorded if a
`statutory requirement is not satisfied. For example, for fee deficiencies, the Office will accord the later submission
`date when all appropriate fees have been paid because the fees are required by statute. See, e.g., 35 U.S.C.
`312(a)(1).
`
`In the situation where a petition complies with all of the statutory requirements but contains only regulatory
`defects, the Office will accord the filing date of the original submission and notify the petitioner of the defects.
`The regulatory defects must then be corrected within the time period set forth in the notice.
`
`D2. Will the Office terminate the proceeding if I filed a complete petition that contains regulatory defects and
`failed to correct the defects within the time period set forth in the notice?
`
`Once the time period for correcting regulatory defects has expired, the petition will be forwarded to a Board
`judge who may initiate a conference call and/or issue an Order to show cause. If the petitioner fails to respond to
`such an Order appropriately, the proceeding may be terminated. It is important to note that the petitioner will
`not be entitled to a refund of any fees paid because the petition was in compliance with the statutory
`requirements for a filing date. For petitions filed on or after March 19, 2013, however, the petitioner may file a
`request for a refund of any post-institution fee paid. See FAQ E7.
`
`D3. How will the Board review petitions for statutory and regulatory compliance? (revised - March 28, 2014)
`
`Once a petition is submitted via PRPS, a Board paralegal will review the petition for statutory and regulatory
`compliance.
`
`First, there are certain statutory requirements in 35 U.S.C. 135(a), 312(a), and 322(a) that must be met for a
`petition to be accorded a filing date. The following is a list of the "top 5" things the paralegal will be looking for
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`in IPR, PGR, and CBM petitions:
`
`Appropriate fee successfully paid,
`Identification of the patent and the specific claim(s) being challenged,
`Identification of the real party in interest,
`Copies of the patents and printed publications relied upon in the petition, and
`Evidence (e.g., certificate of service) that a copy of the petition was provided to the patent owner.
`
`The following are the "top 4" things the paralegal will be looking for in DER petitions:
`
`Appropriate fee successfully paid,
`Identification of the petitioner's pending application,
`Identification of the respondent's earlier filed patent or application, and
`Evidence, (e.g., certificate of service) that a copy of the petition was provided to the respondent.
`
`If any statutory requirement is not met, the petition is incomplete.
`
`The paralegal may call the individual who filed the petition and explain the deficiency.
`The paralegal will enter a Notice of Incomplete Petition and the individual who filed the petition will receive
`notification by email.
`The deficiency may be corrected within one month and the petition will be accorded the filing date of the
`NEW submission.
`If the deficiency is not corrected within one month, the petition will be dismissed. One exception is when the
`petitioner challenges more than 20 claims (15 beginning March 19, 2013) but does not pay the excess claims
`fees - the petitioner will receive notification and can file a request to have the Board review just the first 20
`challenged claims (15 beginning March 19, 2013).
`
`Second, there are certain regulatory requirements in part 42 of 37 C.F.R. that must be met (e.g., page limits, font
`size, signature, identification of lead and back-up counsel).
`
`If any regulatory requirement is not met, the petition is defective.
`
`The paralegal may call the individual who filed the petition and explain the defect.
`The paralegal will enter a Notice of Filing Date Accorded to Petition and the individual who filed the petition
`will receive notification by email.
`While the petition will be accorded the filing date of the ORIGINAL submission, the defect must be corrected
`within one week.
`If the defect is not corrected within one week, the petition will be forwarded to a Board judge who may
`initiate a conference call and/or issue an Order to show cause, and terminated if the petitioner fails to
`respond to such an Order.
`
`If there are no statutory or regulatory errors with the petition, the paralegal will enter a Notice of Filing Date
`Accorded to Petition, the petitioner will receive notification by email, and the patent owner/respondent will
`receive a copy via regular mail.
`
`D4. If the correspondence address of record for the subject patent or application is not up to date, can the
`petitioner serve the petition on the patent owner/respondent at a different address?
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`Yes, the petition and supporting evidence must be served on the patent owner/respondent at the
`correspondence address of record for the subject matter. The petitioner may additionally serve the petition and
`supporting evidence on the patent owner/respondent at any other address known to the petitioner as likely to
`effect service. See §§ 42.105(a), 42.205(a), and 42.406(a).
`
`D5. After I file a petition, how do I file a follow-on document (e.g., a motion to expunge)?
`
`You must use the lead counsel's user ID to submit any document in the proceeding, even when you used a
`different user ID to file the petition. To upload the document, see FAQ G1.
`
`D6. If a petition is incomplete, how much time do I get to complete it?
`
`The Office will provide the petitioner one month from the Notice of Incomplete Petition to correct the petition.
`Please see 37 C.F.R. §§ 42.106(b), 42.206(b), and 42.407(b), and FAQ D3.
`
`D7. Can I present claim charts and arguments in landscape orientation?
`
`No. All documents, other than drawings, must be written in portrait orientation including claim charts and
`arguments. The Board previously accepted a few petitions with claim charts written in landscape orientation
`because the procedure for filing AIA petitions is new.
`
`Switching from portrait orientation to landscape orientation within a document (e.g., a petition) creates
`inefficiency for the reviewing officials at the Board. Therefore, correction is now required when a document or
`portions thereof (e.g., claim charts) are written in landscape orientation. This is consistent with the policy set forth
`in § 42.1(b) and the practice set forth in § 1.52(a)(1)(iii) for filing papers that are to become a part of the
`permanent record in the application or patent files within the USPTO.
`
`D8. Can a petitioner file mandatory notices in a separate document?
`
`No. The petitioner's mandatory notices must be filed as part of the petition itself. See §§ 42.8(a)(1), 42.104, 42.204,
`42.304, and 42.405. The Board previously accepted a few improper mandatory notices because the procedure for
`filing AIA petitions is new. However, correction is now required when a petitioner's mandatory notices are not
`filed as part of the petition.
`
`D9. If I am filing two petitions challenging the same patent, should I use the same exhibit numbers in both cases?
`
`No. In the situation where a petitioner files multiple petitions challenging the same patent, the petitioner should
`number its exhibits uniquely for both cases, such as 1001-1099 for case #1 and 1101-1199 for case #2. See §
`42.63(c). Similarly, the patent owner in such situation should number its exhibits uniquely for both cases, such as
`2001-2099 for case #1 and 2101-2199 for case #2. Therefore, if the Board decides to consolidate the cases, the
`exhibits would continue to be uniquely numbered in the consolidated proceeding.
`
`D10. What are the most common errors found in petitions? (revised - February 11, 2014)
`
`The following are the top 10 common errors:
`
`1. Improper usage of claim charts by including arguments, claim construction, and/or legal analysis in a claim
`chart (see FAQ D12);
`
`2. Failure to set forth claim construction of disputed or important claim terms expressly in a claim construction
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`section;
`
`3. Exhibits do not match the documents listed in the Exhibit List;
`
`4. Failure to identify related matters or provide a statement that there are no related matters;
`
`5. Exhibits are not sequentially numbered in the 1001-1999 range;
`
`6. Failure to identify lead or back-up counsel as required by §§ 42.8 and 42.10;
`
`7. Margins less than 1 inch as required by § 42.06;
`
`8. Failure to certify that the petitioner is not barred or estopped from requesting a review as required by §
`42.104(a) or § 42.204(a);
`
`9. The petition and supporting documents are served on the patent owner at an address that is not the
`correspondence address of record for the subject patent as required by § 42.105(a) or § 42.205(a); and
`
`10. The petition and supporting documents are served on the patent owner later than the filing of the petition.
`
`D11. Can I file a petition seeking an inter partes review of a plant patent?
`
`Yes, 35 U.S.C. § 311(a) provides that, subject to certain requirements, "a person who is not the owner of a patent
`may file with the Office a petition to institute an inter partes review of the patent." This provision is not limited to
`utility patents.
`
`D12. Can claim charts include claim constructions, arguments, and explanations as to how the claims are
`unpatentable? (revised - February 11, 2014)
`
`No. Extensive usage of claim charts in a petition is discouraged.
`
`The rules require that a petition identify how the challenged claims are to be construed and how the claims are
`unpatentable under the statutory grounds raised. This information is to be provided pursuant to the page limit
`requirements, which require double spacing. Additionally, the rules require that the petition specify where each
`element of a challenged claim is to be found in the prior art. The element by element showing may be provided
`in a claim chart, which is permitted to be written with single spacing. See § 42.6(a)(2)(iii). Placing one's argument
`and claim construction in a claim chart to circumvent the double spacing requirement is not permitted, and any
`such argument or claim construction may not be considered by the Board.
`
`The Board previously accepted a few petitions with claim charts that included claim constructions, arguments,
`and explanations as to how the claim is unpatentable because the procedure for fili