Patent Review Processing System (PRPS)

PRPS Troubleshooting

Technical Issues

1. How can I access documents for a particular trial proceeding in the Search screen?

In the Search screen, click on the right-pointing icon to the left of the trial number (e.g., IPR2012-00xxx).  The icon will now face downward and the public documents for the selected trial proceeding will be listed.  Click on “View Document” to view a document.

2. When I do a search, I see a list of trial proceedings but cannot view the documents.  How do I view the documents?

Currently, certain documents may not be viewable for non-registered users using Internet Explorer 8.  This issue will be corrected in a future release.  Such documents may be viewed using other browsers, such as Chrome 21.

3. I paid the required fees by deposit account when I filed my petition, but the “Finance” tab shows that two payments were made.  How can I tell how much was successfully paid? 

Currently, when a user pays a fee amount by deposit account, two payments are shown in the “Finance” tab along with a credit of the same amount.  For example, the tab may show two payments of “$27,200.00” and a credit of “(27,200.00).”  Only one payment of $27,200.00, however, would be withdrawn from the deposit account.  This will be modified in a future release to show one transaction only.

Frequent Asked Questions (FAQs)

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 Information and Preliminary Response
G. Filing Other Documents

A. System Availability and General Information

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, and then click on “Direct Link” under “Patent Review Processing System (PRPS)”.

If you are using the Internet Explorer 8 browser, make sure you click “no” on the security warning page. 

Once you are registered, close out of the browser completely, and then bring the browser back up and go to 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 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. 

Petitions submitted via email must include:

• name of point of contact;
• email address of point of contact;
• patent number to which the petition corresponds;
• application number of the patent;
• 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 CFR 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) 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

 

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.  § 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 currently may not exceed 10 megabytes in size.  For technical reasons, USPTO has had to reduce the upload size temporarily from the originally stated 250 megabytes.  See Office Patent Trial Practice Guide, I.C. Electronic Filing.  USPTO expects to be able to increase the limit in future releases.

If you need to file a document that exceeds 10 megabytes, please call the Board at (571) 272-7822.

Users are encouraged to reduce the file size by:

1. splitting a large file into multiple smaller files; and/or
2. converting MS Word® documents into PDF files, rather than printing documents and scanning them in as 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?

There are no special naming conventions for documents.  PRPS will accept documents with any name that a major operating system will permit.  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 1 on Obviousness” or “Second Declaration of Dr. Smith.”

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.

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?

No. 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 submitted, 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 Trail Granted

            Request for Trial Granted in Part

            Request for Trial Dismissed

            Termination or Final Written Decision

            Review Certificate

B. Searching and Reviewing Documents

B1. Can I use PRPS to search for a proceeding without registering?

Yes, a non-registered user may search for a proceeding and review most 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, or patent number.

B3.  Will PRPS collect and report statistics on the proceedings?

Yes, PRPS will collect and report statistics about the new trials.  Currently, users may search for all of the proceedings based on a particular trial type, petition filing date, and patent number.  The next release of PRPS will likely have feature select reports on the public search page. 

B4. How can I get to the documents for a trial proceeding I have searched for?

There is a right-pointing icon to the left of the trial number (e.g., IPR2012-00xxx).  Click on that. The icon will now face downward and the documents for the selected trial proceeding will be listed. 

B5. 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 was not completed, a trial number will be provided but it will not be listed in the search results.

C. Registering as a PRPS User

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 CFR 11.6. 

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.

D. Filing a Petition

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.  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. 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 notify the petitioner of the defects.  When the regulatory defects are corrected within the time period set forth in the notice, the Office will accord the original submission date as the filing date. 

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.

D3. How will the Board review petitions for statutory and regulatory compliance?

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. 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:

• 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
• Certificate of service on the patent owner.

If any statutory requirement is not met, the petition is incomplete.

• The paralegal will 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 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.

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 will call the individual who filed the petition and explain the defect.
• The paralegal will enter a Notice of Defective Petition and the individual who filed the petition will receive notification by email.
• The defect may be corrected within one week and the petition will be accorded the filing date of the ORIGINAL submission.
• 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 will receive a copy via regular mail.

D4. If the correspondence address of record for the subject patent is not up to date, can the petitioner serve the petition on the patent owner at a different address?

Yes, the petition and supporting evidence must be served on the patent owner at the correspondence address of record for the subject matter.  The petitioner may additionally serve the petition and supporting evidence on the patent owner at any other address known to the petitioner as likely to effect service.  See §§ 42.105(a) and 42.205(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 CFR 42.106(b) and 42.206(b), and FAQ D3.

E. Fees

E1. Can I pay the fees using multiple forms of payment?

Yes, PRPS permits petitioners to select the payment methods (e.g., deposit account and credit card) and pay the fees using multiple forms of payment, such as paying a certain amount with a deposit account and the remainder with a credit card.

E2. Can I pay the fees using multiple credit cards for one transaction?

No, only one credit card may be used.  Parties may not split payment over multiple credit cards.  Further note that Treasury Department regulations limit a credit card payment to a $49,999.99 per day transaction.

E3. If I filed an incomplete petition with a payment of the appropriate fees and decided not to correct the petition, can I request a refund of the fees?

Yes, a petitioner may file a request for a refund of the petition fees when the petition is not accorded a filing date for a failure to meet a statutory requirement. 

E4. If I paid the base petition fee for a petition that challenges 25 patent claims, but failed to pay the excess claims fees upon filing, will the petition be accorded a filing date?

A fee is required for each claim in excess of 20 claims.  The Office will notify the petitioner of any fee deficiencies.  When the petitioner pays the required excess claims fees within the time period set forth in the notice, the Office will accord the date on which the fees are paid as the filing date. 

E5. When the Office notifies me of a fee deficiency for excess claims, can I file a corrected petition that challenges 20 or fewer claims rather than paying the excess claims fees, so that the petition will be entitled to a filing date as of the original submission date?

Yes, the corrected petition must be filed within the time period set forth in the notice.  Such a corrected petition must merely delete the portions related to the excess claims, and not add new arguments or make other substantive changes (e.g., new grounds).  The original submission date of the petition will be accorded as the filing date.

F. Submission of Patent Owner Information and Preliminary Response

F1. How does a patent owner inform the Board that I want to participate in an AIA proceeding as a patent owner and provide mandatory notice information under § 42.8?

First, the patent owner must register as a PRPS user and get a user ID.  After logging on to PRPS using the user ID, the patent owner should click on the “New Petitions” tab and select “Patent Owner Participation” to begin the process.  PRPS will provide screens to enter initial information (e.g., name, address, and power of attorney) and search for the proceeding by patent number.  Once the patent owner submits the initial information and the Board paralegal verifies the information, the patent owner will receive an email notification.

After that, the patent owner should logon to PRPS again, click on the trial number under the “My Docket” tab, and click on “Start Patent Owner Response.”  PRPS will provide screens to enter mandatory notice information (e.g., identifying the real party in interest, lead and back-up counsel, and related matters). 

Please note that PRPS will require that a file be uploaded as a preliminary response.  At this time, however, the patent owner may upload the preliminary response or instead a PDF file stating that the preliminary response will be filed at a later date or that the preliminary response is waived. 

F2. Can a patent owner file a power of attorney appointing a new attorney in a proceeding?

Yes, if the patent owner wishes to designate a lead counsel or a back-up counsel who is not already counsel of record in the subject patent, a power of attorney must be filed with the designation of counsel.  See § 42.10.  The power of attorney must be signed properly, such as signed by the assignee of the entire interest of the patent (see § 1.32(b)), and uploaded as a PDF file. 

F3. Can a patent owner identify the attorney of record in the patent as the lead or back-up counsel in the proceeding?

Yes, the patent owner may designate the attorney of record in the subject patent as the lead or back-up counsel.  See § 42.8(b)(3).  Therefore, the attorney of record in the subject patent, acting as a representative of the patent owner, may logon to PRPS and designate himself or herself as lead or back-up counsel for the proceeding.

F4. Can a power of attorney using a customer number be submitted in a proceeding?

Yes, a party may file a power of attorney using a customer number, and identify a specific registered patent practitioner that is associated with the customer number as lead or back-up counsel.  See § 1.32. 

Note that the party is required to identify a specific registered practitioner as lead counsel in a proceeding.  § 42.10.  Further, the party must ensure that using a customer number in a power of attorney would not violate any protective order because all of the registered patent practitioners that are associated with the customer number may have access to the file records of the proceeding. 

F5. Will the Office check the patent owner’s real party-in-interest information and power of attorney against the assignment recorded in the Office?

Yes, when the patent owner identifies its real party-in-interest or files a power of attorney, the Board will check the information with the assignment record (if any) to verify that the information is correct and that the paper is signed properly, if the patent has been assigned.  Therefore, patent owners are encouraged to keep assignment records up to date. 

F6. If the patent owner’s real party-in-interest is different than the assignee of record in the subject patent, can the patent owner submit the new assignment with the identification of the real party-in-interest?

Yes, when the patent owner identifies the real party-in-interest in PRPS, the patent owner may upload a file (in PDF format) that contains the new assignment.  The patent owner should also file a copy of the new assignment with the Office’s Assignment Recordation Branch.

F7. When can I file a patent owner preliminary response?

The three-month time period for filing a patent owner preliminary response runs from the date on which the Board enters a Notice of Filing Date Accorded to Petition.  If the patent owner wishes to file a preliminary response or a statement to waive the preliminary response, the patent owner must file the preliminary response or statement within the three-month time period.

G. Filing Other Documents

G1. How do I file other documents (e.g., a motion to seal or proposed protective order)?

After you logon to PRPS using your user ID,

• select the relevant trial number from the “My Docket” tab;
• click on the “Upload Document” tab;
• select a file and document type (Notice is the default);
• enter a descriptive document name;
• select availability; and
• click on “Upload File” and then “Submit.”

Once the transaction is completed, you will receive an email acknowledgement.

G2. How do I request a joinder?

Any request for joinder must be filed as a motion under § 42.22, no later than one month after the institution date of any IPR or PGR for which joinder is requested.  See 35 U.S.C. 315(c) and 326, and §§ 42.122(b) and 42.222(b). To upload a motion using PRPS, see FAQ G1.