Precedential Decisions Offer Guidance on Real Party-In-Interest Practice at the PTAB
Petitions in post-grant proceedings before the Patent Trial and Appeal Board (PTAB) are considered by the PTAB only if the petitioner identifies all of the real parties-in-interest. See, e.g., 35 U.S.C. § 312(a)(2). Three recent precedential decisions by the PTAB provide guidance on when a petitioner’s mandatory notices can be updated without assigning a new filing date to the petition, and when failure to name a real party-in-interest is deemed improper and can doom a petition.
The PTAB permitted petitioners to update their mandatory notices by adding a previously unidentified real party-in-interest without altering the filing date of the petition. Adello Biologics LLC v. Amgen Inc., PGR2019-00001 (PTAB Feb. 14, 2019) (Paper 11) at 2. The PTAB determined that, upon being notified by the patent owner that the unnamed entity should have been named, petitioners “promptly investigated the issue.” Id at 2.