MPEP § 1002.02(j) — Petitions Decided by the Patent Trial and Appeal Board (Annotated Rules)

§1002.02(j) Petitions Decided by the Patent Trial and Appeal Board

USPTO MPEP version: BlueIron's Update: 2025-12-31

This page consolidates and annotates all enforceable requirements under MPEP § 1002.02(j), including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.

Petitions Decided by the Patent Trial and Appeal Board

This section addresses Petitions Decided by the Patent Trial and Appeal Board. Primary authority: 37 CFR 41.41(b)(2), 37 CFR 41.47(e)(2), and 37 CFR 41.50(c). Contains: 12 statements.

Key Rules

Topic

PTAB Jurisdiction

7 rules
StatutoryInformativeAlways
[mpep-1002-02-j-5512bc575f821d39ab3abea8]
Petitions to Institute a Trial Must Comply with PTAB Rules
Note:
Petitions to initiate a trial must adhere to the specific requirements set by the Patent Trial and Appeal Board as outlined in 37 CFR sections 42.4(a), 42.108, 42.208, 42.300, and 42.408.

4. Petitions to institute a trial. 37 CFR 42.4(a), 42.108, 42.208, 42.300, and 42.408.

Jump to MPEP Source · 37 CFR 42.4(a)PTAB JurisdictionPTAB Contested Case ProceduresEx Parte Appeals to PTAB
StatutoryInformativeAlways
[mpep-1002-02-j-e730ceeb30db6caabc90e5b1]
Petitions for PTAB Trial Must Comply with Rules
Note:
The rule requires that petitions to institute a trial before the Patent Trial and Appeal Board must adhere to specific procedural requirements.

4. Petitions to institute a trial. 37 CFR 42.4(a), 42.108, 42.208, 42.300, and 42.408.

Jump to MPEP Source · 37 CFR 42.4(a)PTAB JurisdictionPTAB Contested Case ProceduresEx Parte Appeals to PTAB
StatutoryInformativeAlways
[mpep-1002-02-j-e0c74c341087073f5357d65c]
Proper Course of Conduct for Interference or Trial Proceedings Required
Note:
The rule outlines the necessary actions and procedures to be followed in patent interference or trial proceedings before the Patent Trial and Appeal Board.

5. Determination of the proper course of conduct in an interference or trial proceeding. 37 CFR 41.104, 42.5.

Jump to MPEP Source · 37 CFR 41.104PTAB JurisdictionPTAB Contested Case ProceduresEx Parte Appeals to PTAB
StatutoryInformativeAlways
[mpep-1002-02-j-da4289f53b03b7cabc0c9a65]
Proper Course of Conduct in Interference or Trial Determined by PTAB
Note:
The rule outlines the proper actions and procedures to be followed during an interference or trial proceeding before the Patent Trial and Appeal Board.

5. Determination of the proper course of conduct in an interference or trial proceeding. 37 CFR 41.104, 42.5.

Jump to MPEP Source · 37 CFR 41.104PTAB JurisdictionPTAB Contested Case ProceduresEx Parte Appeals to PTAB
StatutoryInformativeAlways
[mpep-1002-02-j-7a14e7ea75705e1352ba609a]
Authorization to File Motions Other Than Petitions for Trial Institution
Note:
Permits filing motions other than petitions requesting the institution of a trial in PTAB proceedings.

6. Authorizations to file a motion other than a petition requesting the institution of a trial. 37 CFR 41.121 and 42.20 – 42.25.

Jump to MPEP Source · 37 CFR 41.121PTAB JurisdictionPTAB Contested Case ProceduresEx Parte Appeals to PTAB
StatutoryInformativeAlways
[mpep-1002-02-j-4c97ff4327a14a1e3fcc2f9a]
Authorization to File Motion for PTAB Trial Institution
Note:
This rule outlines the conditions and procedures for filing a motion other than a petition requesting the institution of a trial before the Patent Trial and Appeal Board.

6. Authorizations to file a motion other than a petition requesting the institution of a trial. 37 CFR 41.121 and 42.20 – 42.25.

Jump to MPEP Source · 37 CFR 41.121PTAB JurisdictionPTAB Contested Case ProceduresEx Parte Appeals to PTAB
StatutoryInformativeAlways
[mpep-1002-02-j-1cbce8e03559ae51f2cdd225]
Motions Allowed Before PTAB
Note:
This rule outlines the various motions that can be made before the Patent Trial and Appeal Board, including requests for oral argument, arbitration, sanctions, and more.
7. Motions including, but not limited to:
  • a. Requests for oral argument on an issue raised in a paper. 37 CFR 41.124(a) and 42.70.
  • b. Requests to authorize binding arbitration to determine any issue. 37 CFR 41.126(a).
  • c. Imposition of a sanction against a party for misconduct. 37 CFR 41.128(a) and 42.12(a).
  • d. Requests for additional discovery. 37 CFR 41.150(c) and 42.51(b)(2).
  • e. Motions to exclude evidence. 37 CFR 41.155(c) and 42.64(c).
  • f. Motions in limine for a ruling on the admissibility of evidence. 37 CFR 41.155(d) and 42.64.
  • g. Motions to compel testimony or production of documents or things. 37 CFR 41.156 and 42.52(a).
  • h. Motions related to the taking of testimony, including motions to quash. 37 CFR 41.157 and 42.53.
  • i. Admissibility of expert testimony. 37 CFR 41.158 and 42.65.
  • j. Requests for recognition of counsel pro hac vice in an interference or trial proceeding. 37 CFR 41.5(a) and 42.10(c).
  • k. Disqualification of counsel for cause, subject to certification by the Chief Administrative Patent Judge, in an interference or trial proceeding. 37 CFR 41.5(b) and 42.10(d).
  • l. Requests for withdrawal of counsel in an interference or trial proceeding. 37 CFR 41.5(c) and 42.10(e).
  • m. Motions to seal a document or thing in a trial proceeding. 37 CFR 42.14, 42.54, and 42.55.
  • n. Motions to expunge confidential information. 37 CFR 42.56.
  • o. Requests to treat a settlement agreement as business confidential information. 37 CFR 42.74(c).
  • p. Motions by patent owners to amend a patent in an inter partes review or post-grant review proceeding. 37 CFR 42.121(a), 42.221(a).
  • q. Motions to submit supplemental information. 37 CFR 42.123(a), 42.223(a).
  • r. Motions to correct a clerical or typographical errors in a petition for inter partes or post-grant review. 37 CFR 42.104(c), 42.204(c), 42.304(c).
  • s. Requests for joinder. 37 CFR 42.122(b), 42.222(b).
  • t. Requests to make a settlement agreement available to a Government agency or other person. 37 CFR 42.74(c).
Jump to MPEP SourcePTAB JurisdictionEx Parte Appeals to PTABPTAB Contested Case Procedures
Topic

Reply Brief Filing

2 rules
StatutoryInformativeAlways
[mpep-1002-02-j-737c9991a01a9863fc85a09f]
Reply Brief Must Address New Arguments Not Raised Previously
Note:
A reply brief must address new arguments not previously raised in the appeal brief or responsive to an examiner's argument.

1. Requests in a reply brief to consider a new argument not previously raised in an appeal brief or not responsive to an argument raised by the examiner. 37 CFR 41.41(b)(2).

Jump to MPEP Source · 37 CFR 41.41(b)(2)Reply Brief FilingReply Brief and ForwardingEstoppel After Judgment
StatutoryInformativeAlways
[mpep-1002-02-j-01c09b3b6c357f2a80ecb9fc]
Reply Brief Must Include New Arguments Not Previously Raised
Note:
A reply brief must include any new arguments not previously raised in the appeal brief or not responsive to an examiner's argument.

1. Requests in a reply brief to consider a new argument not previously raised in an appeal brief or not responsive to an argument raised by the examiner. 37 CFR 41.41(b)(2).

Jump to MPEP Source · 37 CFR 41.41(b)(2)Reply Brief FilingReply Brief and ForwardingPTAB Jurisdiction
Topic

Oral Hearing

2 rules
StatutoryInformativeAlways
[mpep-1002-02-j-06f257b126c951f5396e3038]
New Argument Based on Recent Decision Allowed at Oral Hearing
Note:
Allows the use of a new argument in an oral hearing if it is based on a recent relevant decision from the Patent Trial and Appeal Board or Federal Court.

2. Requests in an oral hearing to rely on a new argument based upon a recent relevant decision of the Patent Trial and Appeal Board or a Federal Court. 37 CFR 41.47(e)(2).

Jump to MPEP Source · 37 CFR 41.47(e)(2)Oral HearingPTAB JurisdictionEx Parte Appeals to PTAB
StatutoryInformativeAlways
[mpep-1002-02-j-680087bc7128d20478f4bae0]
Request for New Argument Based on Recent Decision at Oral Hearing
Note:
Allows requesting a new argument in an oral hearing if based on a recent relevant decision from the Patent Trial and Appeal Board or Federal Court.

2. Requests in an oral hearing to rely on a new argument based upon a recent relevant decision of the Patent Trial and Appeal Board or a Federal Court. 37 CFR 41.47(e)(2).

Jump to MPEP Source · 37 CFR 41.47(e)(2)Oral HearingPTAB JurisdictionEx Parte Appeals to PTAB
Topic

New Ground of Rejection by Board

1 rules
StatutoryInformativeAlways
[mpep-1002-02-j-ff275e6fc4752cf4c8ddff80]
Request for Rehearing on Panel Failure to Designate New Ground of Rejection
Note:
This rule outlines the procedure for requesting rehearing when a panel fails to designate a new ground of rejection in its decision.

3. Requests made in a request for rehearing to review a panel’s failure to designate a new ground of rejection in its decision. 37 CFR 41.50(c).

Jump to MPEP Source · 37 CFR 41.50(c)New Ground of Rejection by BoardRequest for RehearingBoard Decision Types
Topic

Board Decision

1 rules
StatutoryInformativeAlways
[mpep-1002-02-j-e0747a7de967498cf55c11db]
Petition to Review New Ground of Rejection in Board Decision
Note:
This rule permits a request for rehearing to challenge the failure of a panel to designate a new ground of rejection in its decision.

3. Requests made in a request for rehearing to review a panel’s failure to designate a new ground of rejection in its decision. 37 CFR 41.50(c).

Jump to MPEP Source · 37 CFR 41.50(c)Board DecisionPTAB JurisdictionEx Parte Appeals to PTAB

Citations

Primary topicCitation
PTAB Jurisdiction37 CFR § 41.104
PTAB Jurisdiction37 CFR § 41.121
PTAB Jurisdiction37 CFR § 41.124(a)
PTAB Jurisdiction37 CFR § 41.126(a)
PTAB Jurisdiction37 CFR § 41.128(a)
PTAB Jurisdiction37 CFR § 41.150(c)
PTAB Jurisdiction37 CFR § 41.155(c)
PTAB Jurisdiction37 CFR § 41.155(d)
PTAB Jurisdiction37 CFR § 41.156
PTAB Jurisdiction37 CFR § 41.157
PTAB Jurisdiction37 CFR § 41.158
Reply Brief Filing37 CFR § 41.41(b)(2)
Oral Hearing37 CFR § 41.47(e)(2)
PTAB Jurisdiction37 CFR § 41.5(a)
PTAB Jurisdiction37 CFR § 41.5(b)
PTAB Jurisdiction37 CFR § 41.5(c)
Board Decision
New Ground of Rejection by Board
37 CFR § 41.50(c)
PTAB Jurisdiction37 CFR § 42.104(c)
PTAB Jurisdiction37 CFR § 42.121(a)
PTAB Jurisdiction37 CFR § 42.122(b)
PTAB Jurisdiction37 CFR § 42.123(a)
PTAB Jurisdiction37 CFR § 42.14
PTAB Jurisdiction37 CFR § 42.4(a)
PTAB Jurisdiction37 CFR § 42.56
PTAB Jurisdiction37 CFR § 42.74(c)

Source Text from USPTO’s MPEP

This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.

BlueIron Last Updated: 2025-12-31