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Post-Grant Proceedings Before the Patent Trial and Appeal Board

Date: 
September 2012
Practice Area(s): 
Post Grant Patent Proceedings

The America Invents Act created the Patent Trial and Appeal Board which is akin to the Board of Patent Appeals and Interferences and which will preside over various new proceedings designed to provide parties with a more effective venue in which to litigate patent validity. The most commonly used procedure will be inter partes review, which effectively replaces inter partes reexamination as of September 16, 2012. Other post-grant proceeding include Post-Grant Review and the Transitional Program for Covered Business Method Patents.

The above treatise, edited by Steven Kunin, Scott McKeown, Greg Gardella, Robert Mattson and Michael Kiklis, guides readers through the process of initiating a post-grant proceeding, taking discovery, seeking sanctions, proposing and opposing claim amendments, effectively advocating at the oral hearing, appealing to the Federal Circuit, and handling a wide array of issues involving co-pending district court litigation.

Updated at least once a year, Post-Grant Proceedings Before the Patent Trial and Appeal Board is a comprehensive and indispensable resource for anyone involved in a proceeding before the Patent Trial and Appeal Board.

Table of Contents:

Foreword
About the Authors and Editors
1. Introduction
2. Pre-filing considerations
3. Petition for Inter Partes Review
4. Preliminary Response by Patent Owner
5. Institution of Inter Partes Review
6. Discovery
7. Sanctions
8. Patent Owner Discovery Period 
9. Patent Owner Response and Proposed Amendments
10. Petitioner Discovery Period
11. Petitioner Reply and Opposition to Proposed Amendments
12. Supplemental Patent Owner Discovery 
13. Reply Concerning Proposed Amendments
14. Motions
15. Hearing
16. Final Written Decision 
17. Appeals to the Federal Circuit
18. Post Grant USPTO Patent Proceedings & Concurrent Litigation
19. Legislative Anomalies and Expected Technical Amendments 
20. Transitional Program for Covered Business Methods
21. Preview of Post-Grant Review Procedures
Appendix A: Consolidated Proposed Rules
Appendix B: America Invents Act