Best practices for PTAB success

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Best practices for PTAB success

Terry Stanek Rea of Crowell & Moring had some helpful tips for dealing with the Patent Trial and Appeal Board for preliminary responses, amendments, discovery, deposition evidence, objections to evidence and hearings



Speaking at the AIPLA Annual Meeting, Rea noted the high percentage of patent owners providing preliminary responses to petitions. “Best practice in most cases is to file a preliminary response because if you can stop the trial there, you can run back to the judge and say, ‘They couldn’t even get past the institution!’ It is gold plating the patent.”

The successful substantive arguments she has seen include claim constructions that permit petitioners to address fundamental gaps in the prior showing without requiring counter expert testimony.

Talking about depositions, Rea warned against advising your client not to answer. “If there is any disagreement between the parties you are supposed to call Ghostbusters!” she said, referring to the Board. “You are supposed to call PTAB right then and there at the deposition and say there has been a disagreement.”

In hearings, Rea warned that PTAB judges are extraordinarily prepared with probing questions. She said it is important to answer the questions asked, and to the required level of detail. Judges will keep asking the question until they get an answer, she said. “You are dealing with very sophisticated judges that probably know the record as well as you are supposed to.”

Presenters collectively need to be prepared on all issues, but there is no shame in a speaker deferring to a colleague. Rea said to be prepared to make multiple responses to the tough issues in your case, and be prepared for hypotheticals.

Rea said to consider using multiple presenters. “Nobody can know the record absolutely perfectly,” she said. “So have some of your colleagues with you and they can assist with answering some of the questions if they are outside your scope. I wouldn’t be embarrassed, the PTAB is there to pull out the best information possible.”

She added: “I think of it as being more like a Federal Circuit hearing than anything in a district court. Your job is to actually answer the question, give the judges what they want and hopefully persuade them that your side wins.”



more from across site and SHARED ros bottom lb

More from across our site

Counsel explain how AI can create brand protection headaches, but also be used to fight fakes
An AI copyright update in the UK and IP protection efforts by Temu and WeChat were also among the top talking points this week
Mary Till says she has been helping clients navigate policy questions, including staffing concerns at the office
A seminal decision concerning second medical use patents and questions over confidentiality were among the top talking points this fortnight
Managing IP considers some of the key themes from the 2025 Annual Meeting and offers some tips for London 2026
A comparison of the 2024 and 2025 editions of the Managing IP EMEA Awards reveals the firms and companies that have been dominating Europe’s IP market year after year
Tuesday's coverage includes BD tips for aspiring partners, and a foray into the world of SEPs
Exclusive data reveals law firms are failing to go above and beyond for their corporate clients, with in-house counsel saying advisers should consider more transparent billing processes
Arty Rajendra and Gary Moss discuss why ‘thorough and intense’ preparation, plus the odd glass of wine, led to a record FRAND victory for their client
Monday’s coverage includes news of a potentially 'game-changing' trademark development in China and how practitioners are using AI
Gift this article