From the BPAI to the PTAB: A Short History of the Board

The Patent Trial and Appeal Board is now one of the most closely watched tribunals in U.S. patent law. It did not appear from nothing. It grew out of an older body, the Board of Patent Appeals and Interferences, and its powers, structure and constitutional footing have been reshaped by Congress and the Supreme Court. For an overview of what the Board does today, see the guide page on the Patent Trial and Appeal Board. This page tells the story of how it got there.

The Board of Patent Appeals and Interferences

Before 2012, the USPTO’s adjudicating body was the Board of Patent Appeals and Interferences (BPAI). It had two main jobs:

• Ex parte appeals. An applicant whose claims had been rejected by an examiner could appeal to the BPAI, as could a patent owner in reexamination. Most of the BPAI’s docket consisted of these appeals.
• Interferences. Under the first-to-invent system, when two parties claimed the same invention, the BPAI ran an interference proceeding to decide which of them invented first.

The BPAI also heard appeals in inter partes reexamination, a proceeding created in 1999 in which a third-party requester could participate. It was the closest thing the Office had to an adversarial validity challenge, though it ran through an examiner rather than as a trial.

The America Invents Act

The Leahy-Smith America Invents Act, signed in September 2011, rewrote 35 U.S.C. § 6 to replace the BPAI with the Patent Trial and Appeal Board, effective September 16, 2012. The new Board consists of the Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and administrative patent judges, and it generally decides cases in panels of at least three members.

The PTAB took over the BPAI’s appeal work and gained new adjudicative responsibilities:

• Inter partes review, replacing inter partes reexamination as the main third-party challenge on patents and printed publications;
• Post-grant review, allowing broader challenges within nine months of grant for first-inventor-to-file patents;
• Covered business method review, a transitional program for certain financial-services patents that sunset in 2020; and
• Derivation proceedings, addressing whether an earlier applicant derived the invention from a later one.

The first AIA trials moved quickly; see the first AIA review hearing held at the USPTO. The procedural rules that govern these trials have been revised many times since; see how the PTAB trial rules have changed since 2012.

The end of interferences

The AIA also moved the United States from first-to-invent to first-inventor-to-file for applications with claims having an effective filing date on or after March 16, 2013. Under the new system, priority contests between independent inventors no longer make sense, so interferences have no role for those applications. They remain available only for the shrinking set of applications and patents still governed by pre-AIA law, and they have become rare. Derivation proceedings address the remaining concern: someone who copied another’s invention and filed first.

Oil States: is IPR constitutional?

Patent owners soon argued that letting an executive agency cancel issued patents violated the Constitution. In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC (2018), the Supreme Court rejected that challenge. It held that granting a patent is a matter involving public rights, that Congress may assign reconsideration of that grant to the USPTO, and that IPR therefore does not violate Article III or the Seventh Amendment right to a jury. The Court stressed the narrowness of its holding, leaving other questions, such as due process challenges, for another day.

Arthrex: who has the final word?

The next challenge concerned the administrative patent judges themselves. In United States v. Arthrex, Inc. (2021), the Supreme Court held that the unreviewable authority APJs exercised to issue final decisions in IPRs was incompatible with their status as inferior officers under the Appointments Clause. The Court’s remedy was to hold the statutory bar on Director review unenforceable in that respect, so that the Director, a principal officer appointed by the President and confirmed by the Senate, may review the Board’s final written decisions.

The USPTO then set up a Director Review process. That process has been adjusted several times through interim procedures, guidance and rulemaking, so current USPTO materials should be checked for details.

Key takeaways

• The BPAI handled ex parte appeals and interferences before 2012.
• The AIA created the PTAB effective September 16, 2012 (35 U.S.C. § 6), adding IPR, PGR, CBM review and derivation proceedings.
• Interferences have largely faded with the move to first-inventor-to-file.
• Oil States (2018) upheld IPR against Article III and Seventh Amendment challenges.
• Arthrex (2021) required that the Director be able to review Board final decisions.