Contested Proceedings Before the New Patent Trial and Appeal Board: Navigating PTO Practice Under the New Procedures

April 3, 2012
Strafford Publications
Live 90-minute CLE webinar/teleconference: 1:00pm-2:30pm EDT

Scott McKeown and Greg Gardella of Oblon Spivak will be participating in the above webinar. 

This CLE webinar will provide guidance for patent practitioners on the new Patent Trial and Appeal Board, meeting the requirements, and preparing for contested proceedings.


The new USPTO will conduct post-grant patent review proceedings as administrative trials, including post-grant and inter-partes reviews, and a transitional program for business method patents. Due to the adjudicative model of these proceedings, the USPTO created a new Patent Trial and Appeal Board (PTAB).

The recently issued PTAB rules for implementing the proceedings represent one of the largest USPTO rule making efforts to date. The post-grant rule packages span hundreds of pages and outline scheduling, discovery procedures, motion practice, settlement, protective orders, and trial practice.

Counsel to stakeholders and challengers alike must understand the breadth and import of these rules and how these new USPTO proceedings may change the face of patent litigation.

Listen as our authoritative panel of experienced patent counsel examines the new PTAB and procedures for contested proceedings, and offers guidance for PTO trial and appellate practice.


  1. Overview of the PTAB
    1. Composition and Structure
    2. Mandate and Jurisdiction
    3. Rules of Practice before the PTAB
  2. Institution of Proceedings
    1. Petition
    2. Preliminary Response
    3. Decision
  3. Trial Practice
    1. Scheduling Order
    2. Discovery & Production
    3. Motion Practice
    4. Oral Argument
    5. Decision
    6. Settlement
    7. Appeal
  4. Co-Pending Litigation and Concurrent PTO Proceedings
    1. Deadlines Triggered by Co-Pending Litigation
    2. District Court Estoppel
    3. PTO Estoppel
    4. Merger


The panel will review these and other key questions:

  • What changes does the PTAB bring? How does it differ from the Board of Patent Appeals and Interferences (BPAI)?
  • What impact will the new PTAB have on ongoing reexaminations?
  • What factors should counsel consider when deciding whether to file in the district court or the PTAB?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.