One Year Later: Observations From The First Year Of Contested Proceedings At The USPTO

The America Invents Act -

September 16, 2013 marks the one-year anniversary of the implementation of the America Invents Act, and with it, Covered Business Method (CBM) and Inter Partes Review (IPR) proceedings. To date, the Patent Trial and Appeal Board (PTAB) has received 482 petitions for IPR and 53 petitions for CBM. With a number of decisions already reached and many other cases progressing through the various stages of trial, we now have some insights into how the PTAB will conduct these new proceedings.

A Just, Speedy, and Inexpensive Resolution -

When creating the rules for contested proceedings under the America Invents Act, the United States Patent and Trademark Office (PTO) recognized the need for a just, speedy, and inexpensive resolution of every proceeding. That recognition, set forth in Rule 42.1 (b), explicitly undergirds the PTO’s construction of its rules. In exercising its judgment, the PTO explicitly and frequently relies on this rule. Parties must keep the PTAB’s expressed need at the forefront when seeking all manner of relief, from joinder to additional discovery.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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