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USPTO Post-Grant Trials Handbook

USPTO Post-Grant Trials Handbook

By S. Benjamin Pleune, Christopher TL Douglas
Format
Softcover
$225.00

Softcover

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$225.00
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Overview

USPTO Post-Grant Trials Handbook covers the three new post-grant proceedings to challenge the validity of an issued patent introduced by the American Invents Act: inter partes review (IPR), post-grant review (PGR), and covered business method review (CBM).  These review proceedings have different requirements, restrictions, and review standards.  Accordingly, a party seeking to challenge the validity of an issued patent must consider each situation and determine which vehicles are available and decide which one to use. 

USPTO Post-Grant Trials Handbook starts with analysis of the petition for each of these procedures, describes how to address each incremental stage, and then culminates in appeals to the Federal Circuit.  It provides the attorney with:

  • Step-by-step guidance for negotiating filings, motions and discovery, offering insight and strategies for each aspect of the case along the way
  • Comparison charts covering the differences in procedures, availability, grounds, estoppel and standards for each type of proceedings
  • Checklists to ensure all requirements are included in petitions and responses
  • Timelines for each type of proceeding as an aid to keep on track and not miss important deadlines
  • Relevant codes, statutes and citations to PTAB precedential decisions

The United States Patent and Trademark Office (USPTO) periodically publishes statistics on the post-grant proceedings, which has shown a high number of IPR petitions being filed since the system became effective on September 16, 2012.  The CBM, which also became effective on September 16, 2012, is also regularly utilized, although the number of petitions is much lower compared to IPR due to the statutory restrictions that apply to the CBM.  Inter Partes Review, Covered Business Method challenges and Post-Grant Review represent the hottest area of patent law, and are currently widely popular mechanisms for challenging the validity of patents.  These post-grant trials have caused one of biggest strategic shifts in the way that practitioners approach both patent prosecution and patent litigation in decades. At the time of this publication, PGR has not been utilized nearly as much, mainly because PGR is only available to patents that have an effective filing date of March 16, 2013 or later and are issued under the new first to file system.  

Last Updated 10/27/2016
Update Frequency Updated annually
Product Line Wolters Kluwer Legal & Regulatory U.S.
ISBN 9781454886167
SKU 10041370-0001
Table of Contents

Chapter 1. HISTORY OF THE AMERICA INVENTS ACT
Chapter 2. TYPES AND CHARACTERISTICS OF PTAB PROCEEDINGS

  • § 2.01 Introduction
  • § 2.02 Inter Partes Review
  • § 2.03 Covered Business Method Review
  • § 2.04 Post-Grant Review
  • § 2.05 Other Post-Grant Challenges (Reexamination, Supplemental Examination)
  • § 2.06 Strategic Considerations
  • § 2.07 Overall Timing of PTAB Proceedings by Statute

Chapter 3. DRAFTING THE PETITION

  • § 3.01 Choosing to Move Invalidity to the USPTO
  • § 3.02 Petitioner Eligibility to File a Petition
  • § 3.03 Real Party-in-Interest/Privity
  • § 3.04 Elements of the Petition
  • § 3.05 Common Considerations When Drafting the Petition
  • § 3.06 Expert Declarations
  • § 3.07 Joinder
  • § 3.08 Co-pending Litigation
  • § 3.09 Pitfalls to Avoid

Chapter 4. DRAFTING THE PRELIMINARY RESPONSE

  • § 4.01 Background: Idea Versus Reality
  • § 4.02 Rules and Deadlines
  • § 4.03 Content of a Preliminary Response
  • § 4.04 Strategic Considerations: When to File and What to File

Chapter 5. INSTITUTION OF TRIAL

  • § 5.01 Introduction
  • § 5.02 The PTAB’s Administrative Patent Law Judges
  • § 5.03 The Threshold Used by the PTAB to Determine Whether to Institute a PTAB Proceeding
  • § 5.04 Claim Construction and the BRI Standard
  • § 5.05 Scheduling Conference
  • § 5.06 Objections to Evidence Introduced at the Preliminary Stage
  • § 5.07 Request for Rehearing
  • § 5.08 Supplemental Evidence and Supplemental Information
  • § 5.09 Protective Order and Confidentiality

Chapter 6. DISCOVERY AT THE PTAB

  • § 6.01 Introduction
  • § 6.02 Routine Discovery
  • § 6.03 Additional Discovery

Chapter 7. RESPONSE AND REPLY TO THE PTAB PETITION

  • § 7.01 Preparing a Patent Owner Response to the Petition
  • § 7.02 Contents of the Patent Owner Response
  • § 7.03 Use of Expert Declarations
  • § 7.04 Use of Fact Witnesses
  • § 7.05 Motions to Amend
  • § 7.06 Petitioner Reply Brief
  • § 7.07 Contents of Petitioner’s Reply
  • § 7.08 Strategic Use of Petitioner’s Reply
  • § 7.09 Prohibition on New Arguments in the Petitioner’s Reply

Chapter 8. PREPARATION FOR THE ORAL HEARING

  • § 8.01 Scheduled Date for the Oral Argument
  • § 8.02 Use of Demonstratives during Oral Argument
  • § 8.03 Use of Live Testimony during Oral Argument

Chapter 9. RESOLUTION OF THE PROCEEDING

  • § 9.01 PTAB Final Decision on the Merits
  • § 9.02 Requesting Adverse Judgment
  • § 9.03 Settlement of the Proceedings

Chapter 10. REQUESTS FOR REHEARING AND APPEALS

  • § 10.01 Request for Rehearing by the PTAB
  • § 10.02 Appeal to the Federal Circuit

Chapter 11. RELATED ACTIONS

  • § 11.01 Introduction
  • § 11.02 Patent Applications in Prosecution That Relate to the Patent in IPR
  • § 11.03 Reissue/Reexamination Proceedings of the Patent in IPR

APPENDICES

  • Appendix A 35 U.S.C. Ch. 31, §§ 311–319, Inter Partes Review
  • Appendix B 35 U.S.C. Ch. 32, §§ 321–329, Post-Grant Review
  • Appendix C 37 C.F.R. Pt. 42
  • Appendix D PTAB Precedential Opinions
     
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